Attorney Steve® Fashion Law Essentials - Copyright Registration, Enforcement, Arbitration, Mediation & Litigation
Perhaps you're a clothing designer who believes to have designed unisex clothing that will change the way the world sees garments. Or, you operate an Etsy store out of your house that makes unique and quirky dresses. Regardless of the type of clothing being made or the designs being used, there are many important aspects of Fashion Law that are necessary to know to avoid future legal blunders.
Trademark, Copyright, or Patent (which option is best)?
One of the most common questions that comes up when talking about fashion laws is whether a fashion design is filed as a trademark, copyright, or patent. Knowing the differences between copyright and trademark are obviously essential to this process. Trademark is defined by the United Patent and Trademark Office, (USPTO), as “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.”
To better understand trademarks, service marks, and related subjects take a look at our post HERE. Trademark is a massive aspect of fashion law since brand relevance (logos and brand names) and unique recognition is necessary given the competitive nature of fashion. Trademark protection is important to seek to protect your fashion logos, product names and slogans used to market your fashion.
A Patent is basically a new, useful and non-obvious invention, defined by the USPTO as “a property right granted by the Government of the United States of America to an inventor "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time in exchange for public disclosure of the invention when the patent is granted.” In most cases, patents are not the main form of design protection for the fashion industry.
Copyright, on the other hand, is defined by the Copyright Alliance as “a collection of rights that automatically vest to someone who creates an original work of authorship – like a literary work, song, movie or software.” For an in-depth explanation of registration and definition take a look at our blog HERE. This form of intellectual property protection is the most prominent in the fashion world since copyright protects "original works of authorship fixed in a tangible medium of expression." A fashion design that is unique can be copyrighted.
One large aspect of copyright law is that it does not protect useful things but instead protects artistic or literary things. Clothes, whether you believe it or not, have an inherent use whether that be keeping you warm, dry, or something else. For this reason, the entire clothing article cannot be copyrighted, instead, the fabric design can. Fabric design is essentially the design on fabric, for example, imagine a famous artist collaborates with a large fashion house on a series of dresses with the artist's famous flower painting on them. The artist's famous flower print on the dress can be copyrighted but the rest of the dress cannot.
Knock-Offs VS Counterfeits
There also seems to be a lot of confusion surrounding knock-offs and counterfeits within the fashion industry (which is rampant). A fashion knock-off is defined by Merriam-Webster as:
“a copy that sells for less than the original” so think of an imitation basically.
Whereas, a counterfeit is defined as:
“made in imitation of something else with intent to deceive”.
To better understand this think of the bags street vendors try to sell on city streets. They frequently have the branding of a famous company like Dior or Louis Vuitton which can be legitimate or illegal and counterfeit. Knock-offs are simply items, garments in this case, that are “inspired” by or resemble the original but they are not, and instead, they are "trading off" the original fashion designer and thus can result in counterfeiting claims, or claims of copyright or trademark infringement.
Counterfeits are and should be illegal but knock-offs may or may not be and are actually viewed as a positive aspect of fashion (building off other ideas). Allowing creators to be inspired by others and subsequently create their own version of another's work is what can leads to new trends. Trends drive up sales across the board for both high-end brands and lower-end more accessible brands too. There are unfortunate losers in this industry though, and that is commonly the smaller brand that gets copied by a larger brand. To best fight this kind of fight, the smaller designer should have her designs federally registered and have a knowledgeable attorney at the ready to send cease and desist letters or file infringement lawsuits in federal court seeking an injunction to stop future sales.
Registering Fashion Designs
Protecting fashion designs can be very challenging. First, let's rule out patent protection for the general reason stated above. So, we're left with copyright and trademark both of which are essential to the fashion industry.
Copyright registration is a three-part process: filing the application, depositing copies of your work, and paying the filing fee at the standard rate of $65. Once these steps have been done correctly and the U.S. Copyright Office has received said materials the work is registered (it can take 3-6 months to obtain registration, but the protection date will relate back to the date of the original filing). The registration form can be found HERE and more information about Copyright benefits can be found in our blog HERE.
Trademark registration for your fashion logos and product names (and marketing slogans) is a little more complex with the process having five main steps which are:
(1) Selecting a good mark that has a good chance of being registered
(2) Preparing and submitting the application
(3) Preparing and submitting the "specimen" (sample of how your company is using the mark in commerce)
(4) Working with the USPTO examining attorney (including responding to any "office action letters" that may require tweaks to your application
(5) Waiting for final approval (could take 4-7 months)
There are many nuances to each of these steps which this video HERE will explain and provide an example application.
Key Fashion Law Cases
One of the most famous case studies is the Christian Louboutin S.A. v. Yves Saint Laurent America Inc., No. 11-3303 (2d Cir. 2012). The context surrounding the case is that Louboutin had a registered trademark for having a red-soled shoe, the iconic “red bottoms” or “bloody sole”. YSL had come out with a line of monochromatic shoes, meaning that the entire shoe is one color, and one of the shoes had a similar color to the Louboutin red on its sole along with the rest of the shoe. Louboutin sued YSL for trademark infringement and lost with the Judge Marrero stating that color was not protectable, this turned the industry upside down. When the case went to the second circuit court of appeals it was ruled that Louboutin's trademarked sole still applies but only to a contrasting sole, so YSL or anyone else could still make monochromatic shoes.
A second famous case involves two cheerleader uniform designers and manufacturers, see STAR ATHLETICA, L.L.C. v. VARSITY BRANDS, INC.. Issues first arose when a former employee of Varsity went to work at Star and used/copied some of the designs that were copyrighted by his previous employer. The court looked at two different aspects of clothing, the cut of the garments versus the design/images on the garments. In the end, the Supreme Court determined that if a design or image can be “removed” or separated from the original article of clothing then it is copyright protectable but the cut of the garment is not. To better explain this, think of an interesting design or pattern on a shirt, if that design were to be framed as a painting it would be copyrightable and so, therefore, the design on the shirt is too.
If you are a fashion designer in California or Arizona, call us to discuss your case (we offer low consultation fees for fashion designers). We can help you decide which form of intellectual property is right for you, and we can help you protect and enforce your IP. Call us at (877) 276-5084 or fill out our contact form to have a fashion attorney contact you. Go here to learn more about our Jewely copyright services.