Unlike their European Union counterparts, where protection of fashion
designs has always been a part of the legal and cultural "fabric," for
years the U.S. has lagged behind and failed to provide a clear framework
for protecting fashion designs against infringement. While design
patent and trade dress law have provided limited protection, fashion
companies trading in the U.S. have never been able to rely on copyright
law to protect their unique and novel designs, and as a result,
knockoffs have become a way of life in the U.S. fashion industry.
the past five years there has been a legislative groundswell to change
this, with no success until, perhaps, now. In 2006, Representative Bob
Goodlatte (R-VA) and six co-sponsors introduced the Design Piracy
Prohibition Act (DPPA)2, the first proposed extension of the Copyright
Act giving limited protection to fashion designs (not only apparel, but
footwear, headgear and eyewear). The bill provided for a three-year
period of protection, with registration a prerequisite for enforcement.
Despite support from several well-known designers and New York‟s Council
of Fashion Designers of America (CFDA), however, the bill met with
resistance on Capitol Hill, and stalled in committee.
principal opponent of the DPPA has been the American Apparel &
Footwear Association (AAFA). The AAFA has argued, among other things,
that the Copyright Office would never be able to handle the flood of
applications; the proposed protection standard was not sufficiently well
defined; and the standard for infringement was too vague, so that the
courts would spend years trying to define it, rather than enforcing it.
The AAFA's strong lobbying efforts were a major reason why the DPPA has
never made headway in Congress.
Over the next several years,
representatives of the CFDA and AAFA periodically attempted to work
together to refine the language of the DPPA, but could not come to a
consensus. In the meantime, the bill continued to languish. In 2007 and
2009, the DPPA was reintroduced, both in the Senate3 and the House4, by
the likes of Senator Charles Schumer (D-NY), Orrin Hatch (R-UT), Lindsey
Graham (R-SC), and Hillary Clinton (D-NY), and Representatives William
Delahunt (D-MA), Jerrold Nadler (D-NY), and Charles Rangel (D-NY).
However, despite the backing of these heavyweights, the bill again
stalled, as the AAFA continued to lobby against its passage.
seen enough, Senator Schumer went to work behind the scenes, imploring
the CFDA and the AAFA to sit down and hammer something out. The result
is the Innovative Design Protection and Piracy Prevention Act (IDPPPA)5,
introduced on August 5, 2010 by Senator Schumer and ten co-sponsors.
This bill enjoys the support of both the CFDA and AAFA, whose members
together represent a majority of the creative designers, manufacturers,
and suppliers in the fashion industry. According to The New York Times,
the bill is expected to pass this fall with backing from both sides of
The IDPPPA shares certain features with its failed
predecessors: it is specific to fashion designs; a high standard of
originality must be met; any protection lasts only three years; and
independent creation precludes liability. The negotiations facilitated
by Senator Schumer, however, resulted in the introduction of several new
features, including a "substantially identical" infringement standard;
no registration requirement; a heightened pleading standard designed to
discourage litigation; and a home sewing exception, allowing an
individual to copy a protected design for personal, non-commercial use.
With these changes, the fashion industry now enthusiastically awaits
passage of this landmark bill.
Not surprisingly, over the years
the prospect of copyright protection for fashion designs has been the
subject of much academic debate. Two law professors in particular, Kal
Raustiala (UCLA) and Christopher Sprigman (Univ. of Va.), have argued
that freedom to copy actually benefits the fashion industry.7 According
to Raustiala and Sprigman, there is a "piracy paradox" in the industry:
copying results in greater industry-wide sales, causing design trends to
have a shorter lifespan, which, in turn, spurs innovation.8 Now,
commenting on the new IDPPPA, Raustiala and Sprigman have continued to
argue that "Mr. Schumer‟s bill is a cure that would be worse than the
illness. With copyright protection fashion prices would rise, and the
creative cycle would slow down."9
Raustiala and Sprigman‟s
"piracy paradox" theory has been heavily criticized by their colleagues
in academia. Four years ago, law professor Susan Scafidi (Fordham), who
was integrally involved in the development of the various protection
bills, testified before Congress at a hearing on the original DPPA.
Among other things, Scafidi drew a distinction between designs
influenced by trends and those that are knockoffs, testifying that a
properly worded bill would "both promote innovation and preserve the
development of trends."10 Scafidi further argued that "copyright law is
clearly capable of protecting specific expressions while allowing trends
and styles to form," noting that while well-known designers may be able
to take advantage of trademark and trade dress law as a partial
stopgap, such an option was unavailable to young designers.11
recently, law professors C. Scott Hemphill (Columbia) and Jeannie Suk
(Harvard) have concurred with Scafidi and taken issue with Raustiala and
Sprigman, arguing that while copying may play a role in fashion, it is
not the driving force behind innovation.12 Indeed, Hemphill and Suk
argued that allowing "close copying" may incentivize the creation of
designs that are difficult to copy, as opposed to those that are truly
innovative.13 Believing, like Scafidi, that copying can be regulated
without undermining the fashion industry, Hemphill and Suk also
supported the extension of copyright law to cover fashion designs.14
Now, with introduction of the IDPPPA, and its protection against the
copying of "substantially identical" designs, it appears that Raustiala
and Sprigman have lost the academic debate.
While the IDPPPA is
expected to pass, the proof as to its impact will be in the pudding. As
Raustiala and Sprigman have already pointed out, the bill "takes a very
narrow . . . approach[,] . . . protect[ing] only „unique‟ designs -
those that are truly new and distinguishable."15 Further, the
"substantially identical" standard, akin to the definition of a
trademark counterfeit, may encourage copycats to make little tweaks to
try to avoid infringement. Thus, fashion design protection still faces a
two-step process: first, passage of the IDPPPA after a lengthy
five-year buildup; and second, potentially, years of interpretation, as
the courts attempt to apply the statute to litigated claims. Only time
will tell if the IDPPA is a fashion industry friend or faux; however,
all can agree (except maybe Raustiala and Sprigman) that the IDPPA
should have a strong deterrent effect, and represents a "significant
step forward for both U.S. intellectual property law and for the fashion
1 This article was written by Louis S. Ederer, an
Intellectual Property partner in Arnold & Porter‟s New York City office, and Maxwell Preston, an
associate at Arnold & Porter.
5055, 109th Cong. (2006), available at http://thomas.loc.gov/cgi-bin/query/z?c109:H.R.5055:.
3 S. 1957, 110th Cong. (2007), available at http://thomas.loc.gov/cgi-bin/query/z?c110:S.1957:.
4 H.R. 2196, 111th Cong. (2009), available at http://thomas.loc.gov/cgi-bin/query/z?c111:H.R.2196:.
5 S. 3728, 111th Cong. (2010), available at http://thomas.loc.gov/cgi-bin/query/z?c111:S.3728:.
Horyn, Schumer Bills Seeks to Protect Fashion Design, N.Y. TIMES ON THE RUNWAY BLOG (Aug. 5,
2010, 10:43 PM) http://runway.blogs.nytimes.com/2010/08/05/schumer-bill-seeks-to-protect-fashion-design/.
7 See Kal
Raustiala & Chris Sprigman, The Piracy Paradox: Innovation and
Intellectual Property in Fashion Design, 92 VA. L. REV. 1687,
8 See id. at
9 Kal Raustiala & Christopher Sprigman, Why
Imitation Is the Sincerest Form of Fashion, N.Y. TIMES, Aug. 13,
2010, at A23.
Piracy Prohibition Act: Hearing on H.R. 5055 Before the Subcomm. on Courts, the
Internet and Intellectual Prop. of the H. Comm. on the Judiciary, 109th Cong. (July 27, 2006) (statement of Susan
Scafidi, Prof. Fordham Law School) [hereinafter Scafidi Testimony] , available
11 See Scafidi Testimony, supra note 10.
12 See C. Scott
Hemphill & Jeannie Suk, The Law, Culture, and Economics of Fashion,
1147, 1161 (2009).
13 Hemphill & Suk, supra note 12, at 1174-80.
14 Hemphill & Suk, supra note 12, at 1187.
Raustiala & Christopher Sprigman, Why Imitation Is the Sincerest Form of
Fashion, N.Y. TIMES, Aug. 13, 2010, at A23.
Scafidi (Professor, Fordham Law), IDPPA: Introducing the Innovative Design
Protection and Piracy Prevention Act, a.k.a. Fashion Copyright, COUNTERFEIT CHIC (Aug. 6,
. . . .
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