Intellectual Property Rights in the Fashion Industry - Chicago-Kent

By: Harshini Tippareddy

One of the major contributors to the U.S. economy is the fashion industry. Fashion is a $1.2 trillion global industry, with more than $250 billion spent annually just in the United States.[1] As trends constantly evolve and brands create new, innovative designs each season, major retailers, wholesalers, design houses, and individual designers look to forms of intellectual property for protection.[2]

The general policy of intellectual property law is to encourage innovation so that the public at large can benefit from it. Since the invention is for the public’s benefit, and not to make the inventors rich, striking this fine balance between incentivizing the inventors to create has lawyers and judges testing the boundaries every day.

Copyrights

U.S. copyright law protects “original works of authorship fixed in a tangible medium of expression.”[3] Since the current copyright statute doesn’t offer protection to fashion designs, courts interpreting copyright law have consistently declined to extend protection to clothing because its utilitarian uses outweigh the ornamental features.[4] The style of the dress, regardless of how original or nonessential for function that design may be, is not copyrightable.[5] However, some elements of clothing are fully protectable if the artistic features incorporated in the clothing are “separately identifiable and ‘capable of existing independently as a work of art.’”[6]

In Kieselstein-Cord v. Accessories by Pearls, Inc., the court determined whether a belt buckle, serving a utilitarian function designed to fasten belts and hold up articles of clothing, could receive copyright protection.[7] The district court held that the “pictorial, graphic, or sculptural features” couldn’t be identified separately from the utilitarian aspects.[8] On appeal, the court stated, “this case is on the razor’s edge of copyright law” as it was testing the fine boundaries.[9] The appellate court reversed the district court’s holding because the “sculptured designs cast in precious metals-decorative in nature and used as jewelry,” were separate enough to be protected.[10] To clarify further, when an element of the clothing is taken off, it should be able to independently meet the requirements for copyright protection.

Trademarks

Trademarks are used to distinguish products and brands from one another, and can play a pivotal role in protecting the designer’s reputation.[11] Words, phrases, symbols, and designs convey a great deal to the consumer regarding the level of quality and goodwill of a brand.[12] Oftentimes, marks make it easier for consumers to quickly identify the source of the product and reflect a brand’s quality.[13]

In 1975, famous international fashion house Bottega Veneta presented its first collection of handbags featuring a design on the outside consisting of thin strips of fabric threaded together.[14] Over the years, the design, famously known as the “Bottega Weave”, became a recognizable feature referring to the fashion house.[15] Unlike other fashion brands, Bottega Veneta didn’t use a logo or a brand name on the outside of its products, and the weave design served as the product’s visual signature alerting consumers.[16] When Bottega Veneta first applied to register the weave design in 2007, the examiner refused the design four times on grounds that: the design served a utilitarian advantage of strength and durability, the mark was non-distinctive, and the mark was only ornamental.[17] In response, Bottega Veneta demonstrated that the design served as a visual indicator that immediately notified consumers that the product was from their brand.[18] The weave served no function, as it did not make the products more durable or strong.[19] Bottega Veneta offered evidence of acquired distinctiveness because of the longstanding use of the design, the amount of money spent on promoting and advertising the goods with the design, the commercial success of the products, and the media references to consumers’ singular association of the design with Bottega Veneta.[20] In 2013, the Trademark Trial and Appeal Board (TTAB) ruled for Bottega Veneta and overturned the examiner’s refusal. The board wrote that there was ample evidence that the “applicant’s weave design is recognized by consumers as a trademark for applicant’s goods.”[21] Although this case opens the door for other designers to seek trademark protection, it exemplifies the problems faced by fashion brands in obtaining intellectual property rights. The protection granted to Bottega Veneta in this case is very narrow, making it easy for competitors to infringe. The board specifically noted that the trademark only applied to a weave design that is identical to the mark described in the application, right down to the millimeter of fabric.[22]

While brands like Bottega Veneta fight to obtain a trademark in the first place, other fashion brands fight to enforce their trademark rights. Over the years, Adidas has aggressively protected the stripe design with countless lawsuits and trademark oppositions against retail chains and fashion designers, ranging from Forever21 to Marc Jacobs.[23] Adidas, the holding company for the Adidas Group, has a registered trademark for their famous “Three Stripe” design.[24] Recently, the German sportswear giant sued Puma over this trademark.[25] Adidas claims that Puma’s soccer cleats using four diagonal stripes on the side infringe the company’s famous three-stripe design. Adidas argues that Puma’s design is “a blatant attempt…to trade on the goodwill and commercial magnetism adidas has built up in the three-stripe mark and to free-ride on adidas’s fame as a preeminent soccer brand.”[26] Although Adidas’s strategy of fiercely protecting its “Three Stripe” trademark might seem trivial and unnecessarily aggressive to some, this is the cornerstone of trademark law. The mark is meant to protect against consumer confusion.[27] In other words, it is all about prohibiting copied labels and designs that deceive consumers into believing that copied design is an original.

Patents

When thinking of fashion design and intellectual property, copyright and trademarks immediately come to mind, but patent protection is another avenue for designers to protect their technical innovations. Patents give designers the right to exclude others from making, using, offering for sale, importing or selling their invention in the United States.[28] Some examples of fashion patents include the technology used to manufacture CROCS shoes, wrinkle-free fabrics, UV-filtering textiles that are resistant to fire, and water-repelling textiles.[29]

In 1987, a Danish biotech company, Novozymes, pioneered the use of enzymes in fabric treatments.[30] Novozymes patented a technology for the treatment of “stone washed” jeans using an enzyme called cellulase.[31] Cellulase would remove some of the indigo dye from denim giving the fabric a worn appearance.[32] Within three years of the patent, most of the denim finishing industry was under license from Novozymes to use cellulase.[33] Today, Novozymes holds more that 4,200 active patents.[34]

Another revolutionary fashion invention worthy of patent protection was awarded to Suberis, an innovative fabric made of cork. Designed by an Italian designer, Anna Grindi, Suberis was said to be tough, resistant, delicate to touch, and comfortable to wear.[35] Ms. Grindi experimented with cork in the late 1990s by testing out various ingredients and adding them to cork in a pressure cooker.[36]

The Take-Away

Even though designs are afforded protection in the form of copyrights, trademarks, and patents, the fashion industry has faced numerous hurdles trying to obtain this protection. While the law wants people to express themselves freely, it doesn’t want to extend protection to anything that serves a utilitarian purpose and hinders further invention. In the courts view, clothing may look fashionable and trendy, but its primary purpose is to cover us up.

The fashion industry has lobbied Congress to modernize intellectual property law to allow for greater protection, but none have come to pass.[37] In 2012, Senator Chuck Schumer of New York proposed the Innovative Design Protection Act of 2012 to grant copyright protection to fashion designs.[38] Unfortunately, with the transition between the 112^th and 113^th Congress in 2013, the Act didn’t survive.[39] While most of society enjoys fashion and invests on trendy designs, the fashion industry eagerly waits for Congress to revise intellectual property law to afford them greater protection.

Although current intellectual property laws are partially to blame for the lack of greater protection for fashion designs, the fashion industry has also neglected to pursue all avenues of intellectual property rights.[40] Many brands protect their trademarks but forget other aspects of their designs that may also be protectable. The short life cycle of a product as fashion trends come and go has deterred fashion houses from pursuing all avenues of design protection.[41] However, while some trends change, some stay timeless and classic for ages. If a design succeeds and the designer has not obtained protection in the appropriate time frame, infringers will be able to copy their designs. In the long term, cheap knock-offs can damage the brand’s goodwill in the form of lost sales, loss of value to their new designs, existing portfolio and inventory. [42] Intellectual property rights can boost income through sales, licenses, and commercialization of existing and new products.[43] In the current cutthroat business environment, intellectual property rights can provide a competitive advantage for the fashion industry to further innovation and creative expression.[44]

[1] Joint Economic Committee Democratic Staff, The Economic Impact of the Fashion Industry, U.S. Congress (Feb. 6, 2015), https://maloney.house.gov/sites/maloney.house.gov/files/documents/The%20Economic%20Impact%20of%20the%20Fashion%20Industry%20–%20JEC%20report%20FINAL.pdf.

[2] Julie Zerbo, Intellectual Property is an Enormous Asset in the Fashion Industry, The Fashion Law (July 27, 2016), http://www.thefashionlaw.com/home/intellectual-property-is-an-enormous-asset-in-the-high-fashion-industry.

[3] 17 U.S.C. §102 (2015).

[4] Beth Hutchens, Don’t Copy My Blue Suede Shoes: Copyright Protection for Fashion Designs, IP Watchdog (September 23, 2010), http://www.ipwatchdog.com/2010/09/23/copyright-protection-for-fashion/id=12602/.

[5] Melville Nimmer, Nimmer on Copyright § 2.08[H] (1979).

[6] Kieselstein-Cord v. Accessories by Pearl, Inc., 489 F.Supp. 732, 735 (S.D.N.Y. 1980).

[7] Id.

[8] Id.

[9] Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 990 (2^nd Cir. 1980).

[10] Id. at 989.

[11] Julie Zerbo, Trademark Law, The Fashion Law (Sept. 19, 2016), http://www.thefashionlaw.com/learn/trademark-law/.

[12] Id.

[13] Id.

[14] Appeal Brief for Application, In re: Bottega Veneta International S.a.r.l., No. 77219184, (T.T.A.B. June 29, 2007), http://ttabvue.uspto.gov/ttabvue/v?pno=77219184&pty=EXA&eno=6.

[15] Id.

[16] Id.

[17] Id.

[18] Id.

[19] Id.

[20] Id.

[21] Id.

[22] Julie Zerbo, Cases of Interest: In re Bottega Veneta International S.a.r.l., The Fashion Law (October 6, 2016), http://www.thefashionlaw.com/learn/in-re-bottega-veneta-international-sarl.

[23] Julie Zerbo, Adidas Settles Lawsuits with Marc Jacobs and Forever 21, The Fashion Law (Feb. 2, 2016), http://www.thefashionlaw.com/home/adidas-settles-suits-with-marc-jacobs-and-forever-21.

[24] Legal Notice, Adidas Group, http://www.adidas-group.com/en/service/legal-notice/.

[25] Bill Donahue, Adidas Sues Puma Over ‘Three-Stripe’ Trademark, Law360 (Feb. 21, 2017, 2:38 PM EST), https://www.law360.com/articles/893823/adidas-sues-puma-over-three-stripe-trademark.

[26] Id.

[27] David V. Radack, Likelihood of Confusion-The Basis for Trademark Infringement, TMS (Dec. 2002), http://www.tms.org/pubs/journals/jom/matters/matters-0212.html.

[28] 35 U.S.C. § 271 (2015).

[29] Filma V. Head, Intellectual Property in the Fashion Design Industry, Altacit Global, http://www.altacit.com/publication/ipr-in-fashion-industry/#i_10.

[30] IP and Business: Intellectual Property in the Fashion Industry, WIPO Magazine, May/June 2005, at 16, http://www.wipo.int/export/sites/www/wipo_magazine/en/pdf/2005/wipo_pub_121_2005_05-06.pdf.

[31] Id.

[32] Head, supra note 29.

[33] WIPO, supra note 30.

[34] Head, supra note 29.

[35] Kate Singleton, Turning Cork Into Couture, N.Y. Times, Aug. 22, 2011, http://www.nytimes.com/2011/08/23/fashion/23iht-FCORK23.html.

[36] Id.

[37] Christiane S. Campbell, Protecting Fashion Designs Through IP Law, Duane Morris (Apr. 14, 2015), http://www.duanemorris.com/articles/protecting_fashion_designs_through_ip_law_5516.html.

[38] Tori Telfer, Fashion Designs Aren’t Protected By Copyright Law, SO Knockoffs Thrive as Designers Suffer, Bustle, Sept. 3, 2013, https://www.bustle.com/articles/4527-fashion-designs-arent-protected-by-copyright-law-so-knockoffs-thrive-as-designers-suffer.

[39] Id.

[40] Zerbo, supra note 2.

[41] Id.

[42] Id.

[43] Id.

[44] Id.