Fashion Design:
Thinking Across Boundaries
Margaret Hallet
University of Connecticut
School of Law
May 2008
Overview
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Prevalence of Copying in Fashion Industry
Impact of Technology on Copying
Where Does Fashion Fit Within Various IP
Protections?
Current Status of IP Protections Available to
Fashion Designers
Impact of Low-IP Equilibrium in Fashion Industry
Where Do We Go From Here?
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Prevalence of Copying in the
Fashion Industry
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Widespread and largely accepted
Large retailers like H & M and Zara actually
specialize in copying
Trends are created by copying and remixing
designs
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Impact of Technology on
Copying
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Digital photography
Digital design platforms
Internet
Global outsourcing of manufacture
More flexible manufacturing technologies
H & M Designer Allen Schwartz declares that he
has “collections that emulated runway trends,
which would be delivered to stores so quickly,
they beat other major designers to the racks.”
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Zara
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Spanish retail chain that uses a proprietary IT system
to shorten their production cycle.
Company receives daily email streams from store
managers signaling new trends, fabrics, and cuts from
which its designers quickly prepare new styles.
Fabric is cut in an automated facility and sent to
workshops.
High-tech distribution system ensures the finished
items are shipped and arrive in stores within 48 hours.
Entire process takes 30 days (most competitors take
from 4-12 months).
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Independent Designers
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Favianna
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Clothing company manufactured copies of designer
dresses worn by celebrities at the 2006 Emmy Awards
three days after the event.
Narcisco Rodriguez
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Rodriguez designed Carolyn Bessette
Kennedy’s wedding gown.
One copyist sold 80,000 copies.
Rodriguez was only able to sell 45.
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Application of IP to Fashion
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Copyright
Trademark
Trade dress
Patent
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Copyright
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EU:
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IP Protection based on © law
US:
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Most promising form of protections
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needs only to be “original” – much lower bar than “novelty”
No filing requirement; protection is secured automatically
when the work is created
Lack of protection stems from rule largely denying ©
protection to the class of “useful articles”
Sketch may be protected, but not actual garment
© law does not apply since the article’s expressive
component is not separable from its useful function
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Trademark
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Useful when a fashion design visibly
integrates a trademark to an extent
that it becomes and element of the
design
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Ex: Burberry’s distinctive plaid
Ex: Louis Vuitton handbags covered with “LV” mark
For a majority of garments, the trademarks are not
visible or only subtly displayed (on buttons, tabs on
side or back of item) and, therefore, do not prevent
design copying.
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Trade Dress
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Limited to non-functional design elements that are “sourcedesignating” rather than merely ornamental.
U.S. law: Wal-Mart Stores, Inc. v. Samara Bros., Inc. held
that product design “almost invariably serves purposes
other than source identification.” Someone seeking TD
protection for any product design is required to show that
the design has acquired “secondary meaning.” To meet
this requirement, a designer must show that “in the minds
of the public, the primary significance of a product feature
or term is to identify the source of the product rather than
the product itself.” 529 U.S. 205 (2000)
Standard is hard to meet in fashion industry, especially by
new designers due to costs, time, and uncertainty.
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Patent
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Substantive Issues:
 Design patents are limited to designs that are truly “new” &
must be novel and non-obvious
 Does not extend to designs that are merely re-workings
 Design patents sometimes encounter problems with
functionality
Procedural Issues:
 Process of preparing a patent application is expensive and
lengthy
 Design patents are too slow given the short shelf-life of
most fashion designs (often more than 2 years)
 Uncertainty (approx 1/3 applications denied)
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Current Status of IP Protections
Available to Fashion Designers
France
 “unity of art” approach
 Protection is provided under sui generis design laws and ©
laws
 1994 – Yves Saint Lauren successfully
sued American designer Ralph Lauren
from copying a popular design for a
tuxedo dress in French court under
© law in Societe Yves Saint Laurent
Couture S.A. v. Societe Louis Dreyfus
Retail Mgmt. S.A., [1994] E.C.C. 512
(Trib. Comm. (Paris)).
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Japan
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Protects the form, pattern, or color of an object
Requirements include: visual appeal to aesthetic
sense, industrial usability, novelty, ease of creation,
and uniqueness
Length of protection: 20 years
Registration takes an average of 6-7 months
No fashion designs listed as registered on the
Design Gazette (where registered designs are
published)
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EU Protections
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Created uniform design protection for fashion designs
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Unregistered
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Design must be new and give an overall impression different from
known designs
Design = “the appearance of the whole or a part of a product
resulting from the features of, in particular, the lines, contours,
colors, shapes, texture, and/or materials of the product itself
and/or its ornamentation”
Protects against deliberate copying
Term- 3 years starting from date on which the design is first made
available to the public in any of the 25 countries of the EU
Registered
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Protect against both deliberate copying and the independent
development of a similar design
Term – 5 years, renewable for 4 additional 5 year renewable terms
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US Proposed Protections
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Design Piracy Prohibition Act (H.R. 5055/H.R. 2033) –
currently pending
Expansion of vessel hull protection provided in Ch 13
of the Digital Millennium Copyright Act
Would provide limited © protection to fashion designs
Fashion design = “the appearance as a whole of an
article of apparel, including its ornamentation”
Must be attractive or distinct in appearance to the
purchasing or using public
Term of protection – 3 years
Registration – creator must register the design within 3
months of the design’s publication
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International Agreements
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Berne Convention for the Protection of Literary &
Artistic Works
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Preable provides that signatories are “equally animated by
the desire to protect, in as effective and uniform a manner
as possible, the rights of authors in their literary and artistic
works.”
Does not include fashion design in its list of what falls
under “literary or artistic works,” but some have suggested
that it is implied
Interpretation has not yet been addressed by WIPO, which
acts as the administrative arm of Berne
Only applies to the extent such protection is afforded to
nationals under a country’s own domestic regime.
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International Agreements (cont)
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Trade-Related Aspects of IP Rights (TRIPs)
 Seeks to harmonize international IP rights by setting a minimum
level of protection each signatory government must provide
 Article 25(2) states: “Each Member shall ensure that
requirements for securing protection for textile designs, in
particular in regard to any cost, examination or publication, do not
unreasonably impair the opportunity to seek and obtain such
protections. Members shall be free to meet this obligation
through industrial design law or through copyright law.”
 Under narrow reading, US is in compliance due to limited TM and
© protections available
 Under broad reading, it may be construed that signatories must
provide IP rights equivalent to those given to other artists; in this
case, US would be in breach
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Impact of Low-IP Equilibrium
in Fashion Industry
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Impact on economy
Benefits to industry as a whole
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“The Piracy Paradox”
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Induced obsolescence
Anchoring
Negative impact on SMEs
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Impact on Economy
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Knock-offs provide less expensive copies and
have economic utility
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IP protections will slow the fashion cycle leading
to higher prices to offset lack of demand for new
trends
Licensing costs resulting from IP protection
increase prices
IP protections did not negatively affect other
industries such as music and film
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“The Piracy Paradox”
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Introduced by Kal Raustiala & Christopher
Sprigman
Copying fails to deter innovation in the fashion
industry because copying is not very harmful to
originators, and may actually promote innovation
and benefit originators.
Reasons
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Induced obsolescence
Anchoring
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