By Allan J. Sternstein and Neal G. Massand, Dykema Gossett PLLC
*This article was first published on insidecounsel.com.
For decades, fashion designers have watched their new designs be quickly copied with knock-off pieces that pop up on the open market shortly after the originals appeared on runways. Advances in technology have allowed copied designs to appear more quickly and more prevalently on the market. Today, copyists immediately take photos as the new design comes down the runway or into stores and send the pictures to factories to begin manufacturing knock-offs literally seconds after the new designs appear. To the frustration of the designers, U.S. Copyright laws have provided little, if any, protection. This may soon change.
Under Section 101 of the Copyright Act, the design of a useful article, e.g., an article of clothing, is considered a copyrightable pictorial, graphic or sculptural work under the statute "only if, and only to the extent that, such design incorporates . . . features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." The prevailing law, however, is that fashion designs in apparel are not copyrightable under the Copyright Act because they are not separable from the useful article, i.e. from the clothing itself. Accordingly, copyright protection has been denied for fashion designs and designs of such useful articles.
In 1998, Congress added Chapter 13 to the Copyright Act with passage of the Vessel Hull Design Protection Act, adding an exception to the above rule. Under that Act, copyright protection is provided for an original design of a useful article, defined in the Act as a vessel boat hull, which makes the article attractive or distinctive in appearance. In August of this year, the Innovative Design Protection and Piracy Prevention Act was submitted to Congress. Under this proposed law, Chapter 13 of the Copyright Act is amended to expand the definition of a useful article to include an article of apparel. In other words, the Copyright Act would finally include, by statute, articles of apparel and fashion design, and copyright protection of these articles could be obtained. The proposed amendments also include provisions for vicarious liability and/or contributory infringement so that those who provide photos or other information to direct infringers would also be liable. This would significantly alter the landscape in the apparel and fashion markets.
These proposals have generated mixed reactions from those in the fashion industry. Some retailers sell both original designs and knock-offs in the same store. Also, some fashion designers have expressed concerns that distinguishing an original design from designs that have been previously created will make the amendments difficult to enforce. Nevertheless, it is clear that designers who create high-end original designs and the retailers who sell them will significantly benefit if and when the proposed amendments take effect.
Allan Sternstein is the director of the Intellectual Property and Intellectual Property Litigation Department in the Chicago office of Dykema.
Neal Massand is an associate in the Intellectual Property Department in the Dallas office of Dykema.