IP Protection in the Fashion Industry - September 21, 2012 Presented by Erica D. Klein

IP Protection in the
                                Fashion Industry

September 21, 2012
Presented by Erica D. Klein

OVERVIEW OF PRESENTATION

 Introduction
 Current IP Protection Relevant to Fashion
 Legislative Efforts Directed at Fashion
 Other Legal Paradigms to Protect Fashion
 Practical Tips

WHAT IS INTELLECTUAL PROPERTY?

 Intellectual Property, or “IP”, is a catch-all
 term that covers intangible rights in various
 creations
 IP laws enable a person/entity to claim
 ownership over intangible assets and
 exploit their value
 IP laws cover distinct rights, though
 protections are not mutually exclusive

CURRENT IP PROTECTIONS
RELEVANT TO FASHION

  Copyright
  Patent
  Trademark
  Trade Dress

COPYRIGHT OVERVIEW
Protection for original work of authorship fixed in a tangible medium
Includes pictorial, graphic and sculptural works
May be registered or unregistered
Federal registration
  Evidence of ownership
  Supports copyright infringement action
  Permits recovery of damages
Exclusive rights
    Reproduction
    Distribution
    Public performance
    Public display
    Derivative works
Protection lasts for: (a) life of author plus 70 years; or (b) if anonymous work,
pseudonymous work, or work made for hire, 95 years from first publication or
120 years from creation, whichever expires first

COPYRIGHT PROTECTION
FOR FASHION ITEMS

 Work must be original

 Fabric design / print protectable

 Fashion design may be protectable as sculptural or graphic work

 Design sketches / photographs protectable as pictorial works

LIMITATIONS OF COPYRIGHT
PROTECTION FOR FASHION ITEMS

 “Useful articles” doctrine states that protection is only
 available if there is an expressive component “separable
 from its useful function”
 Separability may be physical or conceptual
   Example:

 Most clothing, shoes, handbags don’t qualify
 Infringement requires unauthorized use or copying
 (access + substantial similarity)
 Independent creation of identical work is not infringement

PATENT OVERVIEW
 Protection for novel, non-obvious product or process
 Utility patent
  Protects inventions that serve a useful purpose
 Design patent
  Protects aesthetic / ornamental features of an invention
  Must be new and original
 Registration (i.e. issued patent) required for protection
 Protection lasts for: (a) 20 years from the filing date for a
 utility patent; and (b) 14 years from the filing date for a
 design patent

PATENT PROTECTION
FOR FASHION ITEMS

 Utility patent protection has been successfully sought for
 manufacturing processes and inventive aspects of fashion
 articles

 Design patent protection has been successfully sought for
 sufficiently new and ornamental designs

LIMITATIONS OF PATENT PROTECTION
FOR FASHION ITEMS

 Novelty and non-obviousness are high bar
  Example: ‘90s boot cut vs. ‘70s bell bottom
 For design patent, design cannot be dictated by
 function: must be primarily ornamental
 Copying is not required, but infringement requires
 substantially similar to the ordinary observer
 Process is often impractical for fashion industry
  Expensive
  Preparation of patent application is time consuming
  Patent examination may take several years

TRADEMARK OVERVIEW
Word, name, symbol used to indicate the source of goods/services

May be registered or unregistered
Federal registration
  Exclusive right to use the mark nationwide
  Legal presumption of ownership and validity
  Supports federal suit for trademark infringement
Protection based in part on inherent nature of mark
  Fanciful (i.e. made up) terms have most protection
  Descriptive terms and surnames require secondary meaning
Protects link between product and source: doesn’t protect product itself
Mark must be in use to perfect and maintain protection
Protection may last indefinitely, so long as mark is in use

TRADEMARK PROTECTION
FOR FASHION ITEMS
 Protects brand names, logos

 May protect well-known attributes of product

 Though not always

TRADE DRESS PROTECTION
FOR FASHION ITEMS

 Protects “look and feel” of product
 Originally applied to product packaging or design

 Requires “secondary meaning” for registration
 Some success in fashion context
 But not always

LIMITATIONS OF TRADEMARK /
TRADE DRESS PROTECTION
FOR FASHION ITEMS

 No protection for trade dress if no secondary meaning
 Trademark may be difficult to enforce if it contains
 descriptive terms
 Enforcement efforts are expensive
 Infringement requires “likelihood of confusion as to source
 or sponsorship”
   Similarity / calling to mind not enough

LEGISLATIVE EFFORTS
DIRECTED AT FASHION
 Since 1910, over 80 amendments proposed
 Pending legislation
   Would extend copyright protection for the appearance of an article
    of apparel, as well as its ornamentation
       “Apparel” broadly defined to mean clothing (including
        undergarments, outerwear, gloves, footwear and headgear),
        handbags, purses, wallets, tote bags, belts and eyeglass frames
   Design Piracy Prohibition Act (H.R. 2196)
      Introduced April 30, 2009
      Requires registration within 6 months of creation
   Innovation Design Protection and Piracy Prevention Act (S.3728)
      Introduced December 6, 2010 (by NY Senator Chuck Schumer)
      Protection arises upon creation

OTHER LEGAL PARADIGMS
TO PROTECT FASHION

 Contract Law
   Confidentiality / Nondisclosure Agreements
   Agreements with designers, photographers
   Restrictions on in-store photography
 Trade Secret Law
   Safeguard information that provides a competitive advantage, which is not
    generally known or reasonable ascertainable
 Digital Millennium Copyright Act (DMCA)
   Limit / prevent online copying and publication of images
 Anti-cybersquatting Consumer Protection Act (ACPA) and Uniform Domain
 Name Dispute Resolution Policy (UDRP)
   Prevent use of domain names similar to brand names
 Rights of Publicity
   Protect personal name, likeness, voice and other identifying characteristics

Practical Tips

  Choose protectable marks and designs
  Provide notice of rights

  Put agreements in place
  Be consistent in use
  Educate consumers and employees
  Keep records of use over time
  Monitor competitors
  Seek professional advice!

Questions?

                                                 Erica D. Klein
                                                  212.715.9205
                                            eklein@kramerlevin.com

© 2012 Kramer Levin. All rights reserved.