Fashion & Intellectual Property

Monica Gutierrez | 6/9/16

Fashion. It means different things to different people. To some, fashion can mean artistic works that take considerable thought and skill. To others, a t-shirt is a t-shirt no matter the label. But where should the law stand? Is fashion art that ought to be afforded the protection of the law in the same way paintings, poetry, and sculptures are protected? Or is fashion too inconsequential, too functional to be protected?

Today, the law seems to favor the latter. Although intellectual property law has afforded some protection to fashion designs (through Design Patents and Trademarks, mostly), designers are often faced with little recourse when one of their designs is copied. The following blog post will provide a quick outline of protections afforded to fashion designs through intellectual property law.

Design Patents

Design patents offer one potential type of protection for fashion designs and designers. Design patents provide patent protection to inventors of new, original, and ornamental designs for an article of manufacture. 35 U.S.C. §171 (2006). If granted, a design patent can exclude others from using their designs for 14 years. Id. Although at first glance, this provision sounds like it could protect fashion, an “ornamental” design could be denied protection as a result of being “functional.” Therefore, in order to qualify for a design patent, a work must not be the product of purely functional requirements. Id.

In fashion, however, courts are often unable to separate the useful nature of clothing and accessories from their aesthetic components. Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010). For example, is creating a shoe made of a lightweight rubbery material with holes in it an aesthetic decision? Or is it functional? After all, a lightweight shoe is easy on the feet and holes allow for breathability. But using foam for a shoe looks incredibly futuristic and could be used for purely aesthetic reasons. Using this example, it is not hard to see why courts have so much trouble distinguishing an ornamental feature from a functional one. As a result, design patents prove not only difficult for fashion designers to obtain, but even harder to effectively use to protect their designs from potentially infringing designs.

Trademarks

Where design patents have fallen short, trademarks have picked up some of the slack. Generally, fashion designers find the most protection by trademarking their work. Trademark laws are designed to protect the public from confusion over the source of goods or services. To merit protection, a plaintiff must prove that its mark bears a “distinctive quality” or show that its mark has acquired secondary meaning in the public’s mind. 15 U.S.C. §1127 (2006). Secondary meaning means consumers have begun to associate a certain feature with the source of the good. Id.

Like design patents, trademark law has a similar “functionality” limitation. Id. A feature cannot be trademarked if it is “functional.” Id. In Inwood Laboratories v. Ives Laboratories, the Supreme Court defined a feature as functional if “it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” 456. U.S. 844 (1982). The line between what is purely aesthetic and what is functional is also difficult to draw. Courts have been divided on how to apply the trademark functionality doctrine to fashion designs.

The courts in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., discussed this inherent difficulty. 778 F. Supp. 2d 445 (S.D.N.Y 2011). Christian Louboutin is a notable fashion footwear designer. He received a trademark for red-lacquered soled shoes in 2008 after continuously using the red sole feature in his shoes since 1992. In his trademark application for the red sole, he stated that the red soles were a source-identifying mark that had acquired secondary meaning, rather than a utilitarian (i.e., functional) feature of the shoe. Id.

Subsequently in 2011, Louboutin brought an action against designer Yves San Laurent, for a shoe with a red sole, almost identical to the shade of Louboutin’s red sole. Initially, the district court ruled than an entity in the fashion industry could never trademark a single-color gesture because use of a single color would always be functional in fashion. The court explained that the color red in fashion is used functionally, “to attract, to reference, to stand out, to blend in, to beautify, to endow with sex appeal…” Id. However, in 2012, the Second Circuit overruled the district court, stating that a fashion designer could trademark a single-color feature, stating Louboutin had established secondary meaning in a red-soled shoe with a contrasting shoe color. Meaning Louboutin had not acquired secondary meaning for a red shoe with a red sole, but only for a dark colored shoe with a red sole. Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 220 (2d Cir. 2012). As you can imagine, the case did little to help fashion designers understand the line between a purely aesthetic feature and functionality. The Second Circuit did not comment further on the distinction.

The big take away is, yes, fashion designs can be afforded the protection of trademark law if they acquire secondary meaning. But for the vast majority of fashion designers out there, acquiring secondary meaning seems impossible. First, the industry is fickle by nature, with ever-changing seasons and trends, few designers will ever have the opportunity to acquire secondary meaning in the minds of consumers. Additionally, without protection, a fashion designer is unlikely to encounter a design that another brand hasn’t already used in some form or another. How can a design acquire secondary meaning in the minds of consumers if another designer can use or is going to use the same exact design at any given point in time? It takes time and money to acquire secondary meaning. The nature of trademark law when applied to fashion makes it incredibly unlikely that a fashion designer will be able to effectively protect their work.

Although copyright law doesn’t afford much protection to fashion designs currently, it may be able to provide the fashion industry with the protection it seeks in the future. Copyright protection is extended to original works of authorship fixed on a tangible medium where they are perceived or can be perceived with the help of a device. 17 U.S.C. §102(a). The protection is only extended to certain types of works: literary, musical, dramatic, pantomimes and choreography, pictorial, graphic or sculptural, motion pictures and audiovisual, sound recordings, and architectural works. Id.

Currently, jewelry receives copyright protection, as set forth in DBC of New York, Inc. v. Merit Diamond Corp., where the court stated: “works of art including jewelry are copyrightable.” 768 F. Supp. 414, 416 (S.D.N.Y 1991). Belt buckles are also copyrightable. Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989(2d Cir. 1980). Belt buckles that have a separable sculptural element and an ornamental principal purpose are considered to be jewelry and therefore receive protection. Id. Fortunately, fabric designs are also afforded protection under copyright law. Currently, fabric designs are categorized as “writings” for the purpose of copyright protection. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960).

Regarding copyrights in fabric designs, the end result is that fabric designs are protected while dress designs are not. For example, if a designer was to design his or her own fabric and incorporate said fabric into a dress, the dress wouldn’t be copyrightable, but the fabric would be. As always, the problems arise when trying to differentiate between what is functional and what is ornamental.

Since functional elements of works are not subjected to copyright protection, the distinction in functionality in clothing is hard to distinguish. Most cases suggest that clothing inherently functional, and thus various attempts to copyright articles of clothing have failed. See Morris v. Buffalo Chips Bootery, Inc., 160 F. Supp. 2d 718, 721 (S.D.N.Y. 2001). Consequently, fashion designers most sought after product is not afforded copyright protection.

This lack of protection has resulted in numerous fashion designs being copied. It has created a slew of issues and has left out an entire genre of creative, artistic people from being able to protect their works. The hope that fashion designers have is that one day a fashion design will be considered copyrightable, and a clear line will be drawn between what is functional and what is ornamental. After all, many choices designer makes (the color, the fabric, the silhouette, the fit, etc.) are aesthetic choices. An argument can be made that they are functional, but how are these decisions any different from an architectural work or a painting? These choices are a product of the creative process fashion designers put into their works. If the purpose of copyright law is to “promote the Progress of Science and the useful Arts”, it seems clear that fashion should be afforded the protections other works of art get to enjoy.

Photograph by José Goulão – originally posted to Flickr as Moda Lisboa 2008, CC BY-SA 2.0, https://commons.wikimedia.org/w/index.php?curid=5575960