New York
Senator Charles Schumer recently introduced the Innovative Design Protection
and Piracy Prevention Act, S. 3728, to create the first statutory protection
specific to fashion designs. This bill, proposed to amend the US Copyright Act,
provides intellectual property protection to apparel, footwear, accessory
designs, eyeglass frames and handbags. If enacted, this law will provide
recourse against illegal copying and allow designers to compete more
effectively on the international stage and on the
Internet.
In a
pre-Internet era, copyright protection of fashion designs was less important
because designers benefited from lead time before their designs, which were
often seasonal, would be copied. The low costs of off-shoring and the Internet
as an indispensable commercial tool have extinguished the designers' lead time
advantage and created an ideal environment for fashion pirates. The proposed
legislation would significantly impact designers who, because of the speed of
the Internet, sometimes see their original designs copied and sold worldwide
before the original goods even reach the market. For example, copiers instantly
send digital photographs from fashion shows in New York or red carpet events in
Los Angeles to low-cost manufacturers for copying and the copied designs are
available within days for worldwide distribution through Internet auctioneers
and brokers.
Fashion
designs currently stand in a negative intellectual property space. Apparel is
considered a "useful article" and therefore ineligible for copyright
protection. Moreover, fashion designs rarely meet the requirements for design
patent protection and only textile designs that embody applied art or patterns
are generally eligible for copyright protection.
Previous
legislation granting protection specific to fashion designs has been
unsuccessful because the proposed rights were deemed too broad and likely to
stifle competition. This bill, however, provides limited intellectual property
protection to new and original designs, and has the support of the Counsel of
Fashion Designers of America and the American Apparel & Footwear
Association. Fashion heavy weights, Narciso Rodriguez and Diane Von
Furstenberg, moreover, support this legislation.
The Bill in Detail
If
enacted, this law will protect fashion designs that are the result of a
designer's own creative endeavor and offer "unique, distinguishable,
non-trivial and non-utilitarian variation over prior designs for similar types
of articles." In particular, new and original designs will be protected against
designs that are "substantially identical" in overall appearance to the
original designs and to their specific elements.
Substantially Identical
In the
case of a fashion design, the term "substantially identical" means an article of
apparel so similar in appearance as likely to be mistaken for the protected
design and that contains only trivial differences in construction.
Pleading With Particularity
The bill
imposes a heightened standard of pleading, and requires a plaintiff to plead
with particularity facts to establish that:
- Plaintiff's
design is protected.
- Defendant's
design infringes the protected design.
- The
protected design or its image was available in a location, manner and duration
that it can reasonably be inferred from the totality of the surrounding facts
and circumstances that defendant saw or otherwise had knowledge of the design.
Three-Year Term
New and
original fashion designs would be protected for three years under the proposed
law. Designs created before the enactment of the bill, however, would remain in
the public domain.
Registration Not Required
Notably
absent from the legislation is a registration requirement. Because fashion
designs that meet the bill's requirements are automatically protected, a
significant burden on the US Copyright Office is avoided. Moreover, the absence
of a registration step favors designers who would likely have difficulty
registering every design that they publish or display.
Defenses and Exceptions
To
successfully defend against a claim for infringement of a fashion design, a
defendant must show that its design was created independently or is not
substantially identical in overall visual appearance to the protected design or
to its elements. If enacted, this law would recognize that a given design may
be identical to a protected design while not infringing, provided that the
subsequent design was independently created, a defense similar to that already
available under applicable copyright law. The law would also recognize a "home
sewing exception" for individuals who replicate designs for their own personal,
non-commercial use.
Damages
The
proposed bill allows the designer to recover damages adequate to compensate for
the infringement, and the court is permitted, in its discretion, to increase
such damages to an amount not to exceed US$50,000 or US$1 per copy.
Alternatively, the court may award the designer the infringer's profits from
the sales of the infringing copies. Retailers and consumers, however, would not
be liable for purchasing or selling unlawful copies of protected designs. The
proposed legislation also permits injunctive relief which is perhaps the most
valuable remedy for an original designer.
Practical Considerations
Internet Sales and Advertising
Most
counterfeit traffic is the result of Internet sales and advertising. This
legislation will reduce if not eliminate illicit Internet commerce because
copiers will be threatened with liability for selling or advertising
unauthorized copies of original designs.
Internet Records
Because
of the heightened pleading standard, designers who want to assert their rights
would need to have created and preserved records of their designs and the
publication of their designs. Such records will undoubtedly have to include
third parties' site visits and downloads for all websites on which a design is
displayed. To facilitate monitoring and tracking of downloaded fashion,
designers will have to rely on embeds and other forensic tools.
Evidence of Consumer Confusion
Because
the "substantially identical" test is similar to the likelihood of confusion
test of trademark law, it could become necessary for designers to preserve
evidence of consumer confusion between the protected and infringing designs.
Usefulness
Some
argue that permissible copying of fashion designs fuels creativity and
innovation. Moreover, purported "knock-offs" could arguably increase the value
of original designs. In fact, designers such as Karl Lagerfeld and Vera Wang
are "knocking themselves off" by designing special collections for lower-end
retail stores in an attempt to expand their brand.
In
addition to shielding designers from copiers who, because of the Internet,
instantly rob designers of their original works, this law, if enacted, will
also affect the Internet sphere by limiting the availability of counterfeit
goods. This legislation, which has bipartisan support, was introduced in the
Senate in August and should be monitored by the industry over the coming
months.
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