From the sensual red bottom of a Christian Louboutin heel, the iconic Louis Vuitton “LV” symbol, and the infamous “Nike Swoosh,” fashion is all around. Whether you strive to obtain the new “it bag,” or the new sneakers that “just dropped,” everyone interacts with fashion on a daily basis. Fashion can serve as a symbol of style or status, and it can serve as a way for some to communicate themselves to the world. But behind all the glitz and glamor of the fashion world, the law bolsters the brands that permeate our country. Fashion lawyers can work on a variety of issues relating to fashion, including litigating IP rights, in-house business advisement, or employment matters.[1] Similar to other fields of law, fashion law deals with many hard-pressing questions. While fashion law is still a burgeoning specialty, this has not stopped the rise of numerous legal dilemmas relating to the fashion industry.
Due to the growing fashion sector—especially in the digital medium—fashion lawyers are required to deal with a large number of issues related to intellectual property. Intellectual property law has always played an important role in the fashion industry; more specifically, intellectual property plays a pivotal role in protecting a brand and its integrity. Intellectual property in America, however, is limited in the protections it has to offer to the fashion industry.[2] While fashion is seen as an artform within its community, the American legal system does not necessarily see it as such, and these thoughts are reflected in its limited protections available to the artists in the field. This blog post will provide a brief introduction on the four major intellectual property regimes and how they work together to protect—or not protect—the creations of American fashion designs.
There are four major intellectual property regimes that work together to provide protections for various forms of intellectual property—patent, copyright, trademark, and trade secret. While all four of these areas protect different types of intellectual property, in the fashion industry, they all fall short of providing the necessary protections for fashion designers.[3] Patents are most recognized for the protections they offer to invention. There are three types of patents: utility patents, design patents, and plant patents.[4] The most relevant to the fashion industry is the design patent. Design patents only protect an item’s ornamental appearance.[5] In order to qualify for a design patent, the relevant ornamental design must be both novel and nonobvious.[6] Clothing—which is often categorized in broad categories such as shirts, pants, etc.—struggle to overcome this standard, as most articles of clothing can be quickly classified into one of these categories, defeating novelty.[7] Furthermore, patent law allows the court to reference elements from numerous works to make a determination on obviousness.[8] For example, if previous work A contains element 1, previous work B contains element 2, and previous work C contains element 3, the court may look to all three of these and determine whether a person having ordinary skill in the art—likely a designer—would have seen the combination of these elements as obvious. Because of these practices, most clothing designs are ineligible for patent protection.[9] More importantly, patents are extremely time consuming and expensive to obtain.[10] As a result, most fashion houses try and seek protection elsewhere.
A second type of intellectual property that may be available to fashion designers is copyright. Copyright provides protections for any new creative expression encompassed in a tangible medium.[11] Copyright, however, is not available to anything that is useful or utilitarian.[12] Articles of clothing, which cover the body and provide warmth, are deemed useful and thus ineligible for copyright protection.[13] Copyright isn’t completely useless to designers, however. Copyright may be used to protect their creative expressions such as “sketches, patterns, and other two-dimensional aspects….”[14] Furthermore, the doctrine of conceptual separability allows for the protection of useful articles where the relevant feature can be perceived as a work of art separate from the relevant article, and would otherwise qualify for copyright protection on its own.[15]The ability to protect a design using conceptual separability, however, is only utilized to protect pictorial, graphical, and sculptural works that would otherwise not be protected due to their connection with a useful article.[16] As such, while copyright can provide protections for parts of the designer’s work, it is extremely limited in the protections it provides for the overall garment.
Trademark and trade dress also provide some assistance, but they too are extremely limited in the protection they provide for clothing. Trademark is vital in providing protections for companies, where a good or mark serves as a source identifier.[17] Trademark largely serves to protect the logos and names of companies.[18] However, that is the extent of the protection under trademark specifically. Trademark, therefore, is not useful in protecting garments themselves. Trade dress, on the other hand, can protect the overall presentation of a garment more broadly, but again protection is limited to its ability to serve a source-identifying function.[19] For example, Christian Louboutin has acquired protections for his iconic “red sole.”[20] This protection, however, is extremely hard to achieve and was only conferred to Louboutin upon a showing of acquired distinctiveness through advertising, media, and surveys.[21] Acquired distinctiveness, or a showing that a mark has gained a source identifying function through the efforts of the mark owner, for many designers, is difficult and often not feasible to establish.[22] Largely, this is due to the short life span of fashion.[23] For many houses, there are a number of shows a year and, therefore, it is hard to prove that a particular garment has acquired such popularity as to identify the designer as the source. Trademark and trade dress, therefore, do not provide the necessary protections for designers.
Lastly, trade secret protects that which is not commonly known to the public and has been subject to reasonable efforts to maintain secrecy.[24] Parts of the industry such as suppliers or processes can be protected using trade secret.[25] Trade secret, however, does not necessarily serve as the best option to protect designs themselves. Similar to the other areas of intellectual property, trade secret law falls short of ensuring designers have protection for their works.
Intellectual property is vital in the fashion world. It should serve to protect the creations of those who work extremely hard to provide their creative expression to the world. The current American intellectual property system, however, does not reward those that create the garments that so many people around the world love and enjoy. There have been numerous bills proposed to expand protections for fashion or, arguably, create them altogether. Yet, they have all failed. Therefore, to this day, counterfeiting runs rampant in the fashion industry, and there are companies which are built on models of stealing designs from fashion designers both big and small. By exploring intellectual property issues in the fashion world, it may allow for lawyers and creatives alike to work together to expand the protections for those in the fashion industry. But for now, designers have little to no legal recourse.
[1] Sally Kane, An Overview of Fashion Law, The Balance Careers, https://www.thebalancecareers.com/fashion-law-2164606#:~:text=Fashion%20attorneys%20advise%20clients%20on,employment%2C%20and%20labor%20relation%20issues., last updated Nov. 16, 2018.
[2] See Denisse F. Garcia, Fashion 2.0: It’s Time for the Fashion Industry to Get Better-Suited, Custom-Tailored Legal Protection, 11 Drexel L. Rev 337, 341 2018).
[3] See John Zarocostas, The role of IP rights in the fashion business: US perspective, World Intell. Prop. Org. (Aug. 2018), https://www.wipo.int/wipo_magazine/en/2018/04/article_0006.html.
[4] Determine the type of Intellectual Property protection that you need, U.S. Patent and Trademark Off., https://www.uspto.gov/patents/basics/patent-process-overview#step1, last visited Feb 23, 2022.
[5] Kristin Sutor, Comment, In Fast-Fashion, One Day You’re in, and the Next Day You’re Out: A Solution to the Fashion Industry’s Intellectual Property Issues Outside of Intellectual Property Law, 2020 Mich. St. L. Rev. 853, 867 (2020).
[6] Sutor, supra note 4.
[7] Sutor, supra note 4, at 867–68.
[8] See Sutor, supra note 4, at 868.
[9] Sutor, supra note 4, at 867–68.
[10] Jóna N. Mays, The art we wear, 22 J. World Intell. Prop. Org. 300, 308 (2019).
[11] See Sutor, supra note 4, at 869; see Mays, supra note 8, at 307.
[12] See Sutor, supra note 4, at 869; see Mays, supra note 8, at 307.
[13] Sutor, supra note 4, at 869 (explaining that clothing serves the function of covering the body).
[14] Mays, supra note 8, at 307.
[15] Mays, supra note 8, at 307; see Star Athletica v. Varsity brands, Inc., 137 S. Ct. 328 (2016).
[16] See Star Athletica L.L.C. v. Varsity brands, Inc., 137 S. Ct. 328 (2016); see Copyright Doctrine of Conceptual Separability: Separating the artistic from the Utilitarian, SpicyIP (Oct. 1, 2020), https://spicyip.com/2020/10/copyright-doctrine-of-conceptual-separability-separating-the-artistic-from-the-utilitarian.html#:~:text=The%20conceptual%20separability%20doctrine%20essentially,aspects%20of%20the%20useful%20article.
[17] See Mays, supra note 8, at 306.
[18] Sutor, supra note 4, at 882.
[19] Sutor, supra note 4, at 883–84.
[20] Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2012).
[21] Louboutin, 696 F.3d at 206.
[22] Garcia, supra note 2, at 347–48.
[23] Id.
[24] See David I. Zalman et. al., Don’t Let Your Competitor Wear it Better: Protect Your Fashion Trade Secrets, Retail Info. Sys. (Sep. 15, 2015), https://risnews.com/dont-let-your-competitor-wear-it-better-protect-your-fashion-trade-secrets.
[25] Zalman et. al., supra note 21.