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By Anthony V. Lupo, Sarah L. Bruno and Amy E. Salomon
On August 5,
2010, US Sen. Charles Schumer, D-NY, introduced S. 3728, the Innovative Design Protection
and Piracy Prevention Act. If passed, the Act would extend copyright protection
to fashion designs, including many types of men's, women's, and children's
clothing; handbags, purses, wallets, duffel bags, suitcases, tote bags, and
belts; and eyeglass frames. Currently, designers can get limited protection for
portions of their designs through trademark, trade dress, and design patent
law, but the Act would mark the first time Congress explicitly protected
fashion design by statute. In a nod to European copyright law, designers would
benefit from protection of the Act without having to register their designs
with the US Copyright Office.
fashion designers will view the legislation as a welcome step in the right
direction, there are several limits on the scope of protection under the Act.
Only fashion designs that are the result of the designer's "own creative
endeavor" and that "provide a unique, distinguishable, non-trivial and
non-utilitarian variation over prior designs" are protectable. Furthermore,
only fashion designs created after the passage of the Act will be protected,
and the copyright will last for just three years. Thus, designs created before
the Act passes will not be eligible for protection, and all copyrighted designs
will revert to the public domain after the three-year term. Given the seasonal
trends of the fashion industry, however, the three-year protection period may
not be worrisome to many designers. Finally, designers must meet a heightened
"particularity" standard when pleading the elements of their claim. For
example, a designer must plead with particularity facts establishing that the
infringer saw or had knowledge of the protected design.
to these limits on the scope of protection, there are several ways to escape
liability entirely under the Act. Potential infringers have a defense if their
design is not "substantially identical" to the protected design, or if it is
the result of independent creation. The Act also contains a "Home Sewing Exception,"
which exempts single copies of copyrighted designs made for personal use or for
the use of an immediate family member, and that are not sold in the market.
Thus, come Halloween, parents need not fear liability under the Act for basing
a child's home-sewn costume off of a protected design.
Though no one
can be certain whether the Act will become law, it is currently before the
Senate Judiciary Committee, and The New York Times reports that it is expected to
pass this fall. If it does, fashion designers would have a new, long-awaited
avenue to protect their original creations.
Anthony Lupo, a partner at Arent Fox and a member of the executive
committee, co-chairs the entertainment/intellectual property group of
the firm. Anthony was named as the number one intellectual property
attorney by the Washington Business Journal and Chambers USA
ranked him as one of the few Tier 1 lawyers for Intellectual Property.
In this regard, they described Anthony as the "go to" Intellectual
Property lawyer on the East Coast for television and movie studios
including representing Pixar Animation Studios, Discovery Channel,
Travel Channel, Warner Bros. Entertainment Inc., Turner Broadcasting
System, Inc., and Disney. Although Anthony primarily works in the area
of entertainment law and intellectual property law, he also acts as
general counsel for a number of high-end Italian fashion and luxury
goods companies, including handling corporate, real estate, employment,
and re-organization. He has a very diverse practice but specializes in
copyright, entertainment, trademark, advertising and e-commerce law, and
has significant experience in representing movie studios, computer and
gaming companies and television stations. His practice also covers
advertising rights of publicity, counterfeiting, sweepstakes and
contests, online gaming, product recall and CPSC, international market
entry, gray-market goods, distance learning, technology transfer and
licensing. Anthony is also on the board of the Smithsonian National Zoo
and Discovery Channel Global Education Fund. Sarah Bruno practices in the areas of intellectual property, advertising and marketing, e-commerce, privacy and promotions.Amy Salomon is an associate in the litigation group and the intellectual
property group. She works on a wide range of intellectual property
matters, including foreign and domestic copyright and trademark
enforcement, domain name disputes, and internet enforcement. She also
works on intellectual property litigation. Her general litigation
practice focuses on white collar crime and complex commercial
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