This article has been written by Nishant Gulyani, pursuing the Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.
For once in your life, every one of you must have thought about how all these fashion brands have exact similar designs and what are the laws behind them. This article will explore the laws related to the multi-billion dollar fashion industry in the United States.
You will learn how trademarks, copyright, and patents can protect your clothing brands as well as their designs. You will also learn about the landmark cases related to the fashion industry and the steps were taken by the US government to enhance the scope of protection for fashion brands under intellectual property laws. By the end of this article, you will get to know the most appropriate category of intellectual property rights suitable for your brand and the process of seeking protection under the same.
The US fashion industry and the laws applicable to it
The fashion industry in the United States is constantly evolving, trying to adjust to customer trends and new technology. It is the biggest fashion industry in the world by valuation, worth $368 billion, with some of the heavyweight brands amounting to the largest share of that, i.e. Nike, Gap, and TJX. But it still faces a loss of approximately $250 billion every year due to the inability of American laws to grant protection to fashion brands and independent designers for their clothing designs.
So, here arises a question about whether you can also copy someone else’s design without getting caught. Although it’s not suggested, you can do it and get away with it in 90% of cases, and that’s what most American fast fashion brands are doing. As per the Economic Times report, the US-based fast-fashion brand Forever 21 has been sued by various other big fashion giants as well as other small independent fashion artists for copying their designs. And it’s not only fast-fashion labels who imitate designers. High fashion designers copy other high fashion designers day and night.
The laws that can help you protect your brand/designs
According to 15 U.S.C. § 1127, the primary purpose of trademarks is to identify the source behind the goods, so the protection available through trademark law is limited to the brand logos and doesn’t cover the clothing and other elements of clothing like design, fabric or color. In layman’s language, it can be said that trademark law prohibits someone from selling and passing off his goods as that of another (say, Nike).
- For instance, if someone imitates the logo of Nike on their jacket then that is prohibited by law. But that protection is only limited to the logo or label of Nike on the jacket and not to the design of the jacket.
There is one way by which you can protect not only your logo but also your design through trademark law i.e. through acquired distinctiveness (15 U.S.C. § 1052(f)). It implies that after the continuous use of your design for a long time, when consumers start associating that design solely and exclusively with your brand, only then trademark protection can be given through acquired distinctiveness for your design as a whole. But till the time you will acquire distinctiveness in the market, that same design would be out of fashion.
Patents are granted for inventions or any process that is new and inventive. In the case of clothing, protection is available in the form of design patents. But is it useful for protecting your clothing designs? Not really, as according to 35 U.S.C. § 171, design patents are granted to someone for their new, original, and ornamental design. What is new and non-obvious, and all the general clothing items like T-shirts and trousers, are automatically disqualified for patent protection (as there is nothing new and non-obvious about shirts and jeans).
As per 17 U.S.C. § 102(a), copyright protection is given to the creators of artistic, literary, musical, dramatic, pictorial, graphic, and sculptural works to protect their creativity. In the context of clothing, the copyright law in the United States is a bit vague and has various loopholes.
According to the US Copyright Law, the main motive behind giving copyright protection is to strike a balance between public benefit and the creator’s rights. There should be an incentive to promote creativity and innovativeness among the general public, but those incentives shouldn’t become a fear in the minds of other people to continue their creative and artistic work. Therefore, there is no copyright protection available for facts or language having a utilitarian aspect. In layman’s language, it implies the US Copyright Law doesn’t protect useful articles.
The elements of clothing that can be separated from the useful aspect of clothing can be granted copyright protection under US Copyright Laws. Under this exception, the prints or fabric designs can be protected by copyright as they can be separated from the useful aspect/element of clothing and can be viewed as artistic work. For example, if you have designed a T-shirt with an original graphical or pictorial print on it, then you can seek copyright protection for that print (as it is a creative element) but you can’t seek copyright protection the design of that t-shirt i.e. on any cuts or color (as it is a useful or functional element)
How can you seek this protection?
Points to remember
- It can only restrict others from copying your logo or label on their clothing and not the fabrics or designs.
- It is only helpful for big brands and not for small independent designers.
Points to remember
- Your design should be new, original, and non-obvious.
- Getting a design patent can be too costly for independent designers (it costs thousands of dollars).
- The duration of a design patent is 15 years, in which the fashion or trend can change over 15 times.
Although it is not compulsory to register your work to get copyright protection, it is always advisable to get your work registered for facilitation of infringement suits or transfer of rights. You can register your work by submitting an application form along with copies of your work to the US Copyright office.
Points to remember
Only those elements of your clothing that can be separated from the useful or functional element of it can be protected by copyright. Ex. Prints or fabrics and not the entire design.
What has been done by the US Government?
There have been in total three attempts by the US congress to solve this issue by hearing three different copyright bills:
- Design Piracy Prohibition Act ( introduced in 2009)
- Innovative Design Protection and Piracy Prevention Act ( introduced in 2010)
- The Innovative Design Protection Act ( introduced in 2012)
The primary objective of all these bills was common i.e. to remove the concept of Separability from the US Copyright Act and offer copyright protection to the designs of the fashion brands as a whole instead of just protecting the creative elements of it. But Sadly, all of these bills weren’t passed in congress and the law remains vague in the context of copyright protection available to the fashion brands for their clothing designs.
Star Athletica v. Varsity Brands
Facts of the case in brief
In this case, the respondent Varsity Brands, a leading manufacturer of cheerleading uniforms, with over 200 registered dimensional designs such as lines or zigzag patterns sued Star Atletica, which is a marketer of cheerleading uniforms, for copyright infringement.
Are the designs or graphics capable of copyright protection?
As per 17 U.S.C. § 102, copyright protection is given to the creators of artistic, literary, musical, dramatic, pictorial, graphic, and sculptural works to protect their creativity. 17 U.S.C. § 101 defines “pictorial, graphic, and sculptural works to include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints, and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.
The Supreme Court held that only those creative elements of clothing that can be separated from the useful aspects of clothing can be granted copyright protection. So, the designs on the uniform manufactured by Varsity Brands consisting of zigzag patterns and chevrons can be registered and protected as copyright.
Analysing it further
This judgment has strengthened copyright protection for garment designs by establishing a two-part test to assess whether artistic components of a useful object are copyrightable. The most confusing questions regarding the scope and applicability of the copyright laws have been made evident through this judgment, i.e.:
What can’t be protected by copyright?
The court also stated that copyright affords “no right to prohibit any person from manufacturing [clothing] of identical shape, cut, and dimensions (as they are considered the functional elements of clothing).
What can be protected by copyright?
The “two-dimensional designs appearing on the surface of [clothing]”, including “combinations, positionings, and arrangements” of shapes, colors, lines, etc., are protected by copyright. (As they are the independent creative elements of the clothing). So, if that creative element (say, print on a t-shirt) is removed from the T-shirt, it (print) still has an independent creative identity of its own that should be protected by copyright. The reason behind this principle of separability, i.e., to separate useful and creative elements of clothing, is to avoid creating a monopoly on useful articles such as bags, clothes, or shoes.
Christian Louboutin S.A. v. Yves Saint Laurent America
In this case, Louboutin, a famous brand selling shoes with bright red soles, filed a trademark infringement suit against YSL for using a similar color of sole on some of their shoes, as it would cause confusion in the minds of average American consumers and hence result in a loss for Louboutin.
Can the exclusive right to use a specific color on the sole of a shoe be granted to a brand?
15 U.S.C. § 1127 defines a trademark as any word, symbol, or device which a person has a bonafide intention of using in commerce and can distinguish its product from those of other sellers. The bright red sole of the Louboutin was registered as a trademark with the USPTO and, according to 15 U.S.C. § 1057(b) a certificate of registration implies that a mark is valid.
The district court held that giving an exclusive right to use the red color on the sole of Louboutin is too broad and would hamper the competition in the market.
As stated in the judgment, an exclusive right to use color in a product can’t be granted as color is an important feature of all creative and innovative product designs. Moreover, a color could be registered as a trademark, but only in distinct patterns or combinations of colors that show a deliberate attempt to create a distinctively recognized mark incorporated into the goods.
- The best possible way to solve this issue is to make some necessary changes to the IDPA (Innovative Design Product Act) and present it to congress. It is the only way of bringing a more appropriate law and starting a discussion on the issue of fashion copyright by creating awareness and highlighting the seriousness of this issue in the eyes of the general public.
- People should be educated about the importance of logos or labels on their garments, as the re-introduction of logos on various products like clothes, shoes, and bags can provide legal protection to the creators or designers of the work, and there will be very little chance of infringement.
- Another way to lower copying instances by various fashion brands is by increasing the dependence on design patents instead of copyrights, especially for established brands with a substantial amount of money. Design patents should be seen as more of an investment by patenting products that have a sale value in more than one season in the market.
All the loopholes discussed above, when considered together, are the answer to the very question asked on the topic of the article itself, i.e. why does American law not prohibit brands from copying each other? Whether it is the concept of separability or the expensive design patents or the incapability of trademarks to protect whole designs. Each of these factors has led to copying by these American fashion entities in the name of inspiration. But it can be tackled by adopting a separate provision that can provide registered as well as unregistered community design rights, granting protection to clothing and other accessories as a whole and not to the specific creative elements only. This provision has already been present in the laws of the European Union governing the fashion industry, which has given EU designers an edge over US designers. Another step to resolving this issue could be raising awareness among the general public about using the existing intellectual property rights for protecting clothing designs, as explained in the above article.
- Julia Brucculieri, How Fast Fashion Brands Get Away with Copying Designers, Huffpost, ( April 9, 2018) https://www.huffpost.com/entry/fast-fashion-copycats_n_5b8967f9e4b0511db3d7def6
- Can you copyright clothing designs?, New Media Rights, (October 27, 2020) https://www.newmediarights.org/business_models/artist/can_you_copyright_clothing_designs
- Can I use copyright to protect my fashion designs?, copyright alliance https://copyrightalliance.org/education/qa-headlines/copyright-fashion-designs/
- John Zarocostas, The role of IP rights in the fashion business: a US perspective, WIPO Magazine, (August 2018) https://www.wipo.int/wipo_magazine/en/2018/04/article_0006.html
- Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc., Case text, (August 10, 2011) https://casetext.com/case/christian-louboutin-sa-v-yves-saint-laurent-am-inc
- FindLaw FOR LEGAL PROFESSIONALS, https://codes.findlaw.com/us/title-17-copyrights/17-usc-sect-101.html
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