Every month, shoppers spend billions (yes, billions) of dollars on counterfeit versions of designer goods and with social media’s ability to create a fervor over so many things, fashion chief among them, the knockoff industry is set to keep growing.
Since the only way to truly blot out counterfeits would be to end demand for your product, protecting what you can of your intellectual property is key to keeping goods from being overtaken by counterfeits — and making money.
Here, WWD breaks down the main elements of intellectual property for a handbag, the most commonly counterfeited luxury product, so you can know what to protect and how. A starter list of law firms with dedicated retail and fashion practices is included since there’s no time to waste when it comes to IP.
Copyright: This is best for literary and purely artistic work. Copyright has long barred any protection for things with a physical function, including clothing, shoes and bags — no matter how structural or considered — from copyright protection. One exception that should be of interest to fashion is jewelry and artistic hardware, which are, generally speaking, subject to copyright. Wholly unique fabric prints can also earn a copyright.
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Design Patent: While utility patents are generally for useful and truly novel inventions, like a new type of hand bag clasp, they don’t have a lot to offer in terms of design coverage. That’s where design patents come in. A design patent covers the ornamental design of a functional item — the way an article looks. Ornamented handbags can often be protected with a design patent, as can shoes with particular outward design aspects.
Trademark/Trade Dress: Trademark is best for signs, logos and symbols that signal a brand, and it’s rightly the crux of protecting many elements of intellectual property in fashion (and the source of logos splashed on so many leather goods). While trademark will protect a brand’s logo and any other registered marks, trade dress protection extends to packaging and, in certain cases, the exterior of an item as a whole. Hermès, for example, has been able to protect its Birkin bag under trade dress, because the flap and belt combination alone signal to a potential consumer that it’s an Hermès Birkin bag, not just any leather purse.
Hardest Elements to Protect: Despite often being central to any bag, especially of the “It” variety, outlines and shapes (be it a tote or drawstring bucket), typeface, patterns that aren’t new or novel and designs inspired by or representing those found in nature are difficult if not impossible for brands to protect legally.
Most Copied Elements of a Bag: When it comes to well-executed fakes, there may be only subtle differences in quality — a fake serial number or un-embossed hardware to signal a counterfeit item — elements that an average consumer may not even know to look for. But certain elements are mainstays of counterfeits, including hardware, monogram patterns, trim and colorways widely associated with (and usually trademarked or patented by) a brand.
Once you understand what elements of your design can be protected, the next step is getting the law officially behind you. Here, WWD suggests where to turn for legal help and the questions to ask when you get there.
Big Law Firms with Dedicated Retail Practices:
Arent Fox LLP
Baker McKenzie
Debevoise & Plimpton LLP
Freshfields Bruckhaus Deringer
Morrison & Foerster LLP
Kelley Drye & Warren LLP
Kilpatrick Townsend & Stockton LLP
Boutique Firms with Dedicated Retail Practices:
Davidoff Hutcher & Citron LLP
Gabay-Rafiy & Bowler LLP
Hand Baldachin & Amburgey LLP
Marquart & Small LLP
Questions to Ask a Lawyer Before You Sign On:
What’s your background in fashion and related areas of law?
What fashion or retail clients have you worked with recently and in the past?
Have you successfully handled issues like mine before?
Can you estimate the cost of pursuing this matter? (Lawyers expect this question — don’t hesitate.)
Tip: The Fashion Law Institute at Fordham University hosts a monthly Pop-Up Clinic that offers free legal counsel and referrals. The next clinic is April 21 and appointments are required.