Advertisement

July 25, 2014

S. 3523: Louboutin, Lululemon, and Fashion Design: Finally Getting Some Respect?

A few weeks ago, the Second Circuit’s ruling in the Louboutin decision made clear that color as a trademark can be protected in the fashion industry.  Recently, Lululemon has sued Calvin Klein for design patent infringement over the design of yoga pants. And just before Fashion Week in New York City, New York Sen. Chuck Schumer introduced Senate Bill 3523 entitled the “Innovative Design Protection Act of 2012” seeking to amend the US Copyright Act to extend protection to fashion design. Coincidence? Perhaps, but the fashion industry has been waiting a long time for this type of protection.

The stumbling block that the fashion industry has faced in the US  has been the “functionality doctrine.”  Under historic US jurisprudence, articles of clothing have generally been considered utilitarian and unprotected since the form and shape of the clothing were considered functional to its purpose regardless of the design. Nevertheless, some design patents for various features on articles of clothing, including shoes, have been issued over the years.  And the Second Circuit in its Louboutin decision reversed the District Court’s finding that color is functional in the fashion industry and cannot be protected as a trademark. Copyright protection has never extended to articles of clothing, with the possible exception of costumes, but only to individual design elements that can be “separated” from the overall design. S.B. 3523, like its predecessors before it, seeks to change that.

The Bill seeks to amend Chapter 13 of the Copyright Act which covers “Protection of Original Designs” to add “fashion design” as a specific type of protected design. Currently, the statute generally protects “an original design of the useful article which makes the article attracted more distinctive in appearance to the purchasing or using public” and specifically protects the design of “vessel features.” “Fashion design” is defined in the Bill as “the appearance as a whole of an article of apparel, including its ornamentation; and includes original elements of the article of apparel or the original arrangement or placement of original or non-original elements as incorporated in the overall appearance of the article of apparel that are the result of the designer’s own creative endeavor and provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.” The word “apparel” includes men’s, women’s, or children’s clothing (including undergarments outerwear gloves footwear and headgear), handbags, purses, wallets, tote bags, belts and eyeglass frames. Protection would exist for three years upon the earlier of the date of publication of the registration under the statute or the date the design is first made public as defined in the statute.

One design would not infringe another  if it was “not substantially identical in overall visual appearance to and as to the original elements of the protected design; or is the result of independent creation;” or falls within the “home sewing” exception. To be “substantially identical” the apparel must be “so similar in appearance as to be likely to be mistaken for the protected design, and contains only those differences in construction or design which are merely trivial.” Infringing articles would include unauthorized designs copied from a protected design or image thereof, but would not include an illustration or picture of a protected design in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture, or similar medium.

A design owner may maintain an action for infringement after the design is made public and it has complied with the 21 notice requirement proscribed in the Bill. Liability will be limited only to damages and profits accrued after the date on which the infringement action is commenced. Limited liability for sellers, importers, and distributors of infringing articles is added ,while ISPs and search tools are exempted from liability.

Previous efforts to protection fashion through the Copyright Act have failed.  It remains to be seen whether this Bill will become law.

©1994-2014 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.

About the Author

Susan Neuberger Weller, Trademark Attorney, Mintz Levin, Law Firm
Member

Susan is a member in the firm’s Washington, D.C. office and has managed the firm's trademark practice for over 10 years. For over 25 years, her practice has involved all aspects of intellectual property and related corporate business transactions, with a particular emphasis on domestic and international trademark and copyright searching, prosecution, enforcement, counseling, and litigation. She specializes in trademark, copyright, domain name, trade dress, and related areas of Internet, e-commerce, unfair competition, customs, and advertising law, as well as intellectual...

202-585-3510

Boost: AJAX core statistics

Legal Disclaimer

You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's  Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on www.NatLawReview.com are intended for general information purposes only. Any legal analysis, legislative updates or other content and links should not be construed as legal or professional advice or a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of information between you and the National Law Review website or any of the law firms, attorneys or other professionals or organizations who include content on the National Law Review website. If you require legal or professional advice, kindly contact an attorney or other suitable professional advisor.  

Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is www.NatLawReview.com  intended to be  a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. 

Under certain state laws the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the Texas Board of Legal Specialization, nor can NLR attest to the accuracy of any notation of Legal Specialization or other Professional Credentials.

The National Law Review - National Law Forum LLC 4700 Gilbert Ave. Suite 47 #230 Western Springs, IL 60558  Telephone  (708) 357-3317 If you would ike to contact us via email please click here.