DRAFT
To:
AIPLA Board of Directors
From: Industrial Designs Committee
Date: October 20, 2011
Re:
Proposed Resolution on H.R. 2511, The Innovative Design Protection and Piracy
Prevention Act
RESOLVED, that the American Intellectual Property Law Association (AIPLA) continues to
favor, in principle, enactment of fashion design protection.
FURTHER RESOLVED, that AIPLA supports enactment of H.R. 2511, Innovative Design
Protection and Piracy Prevention Act, (Goodlatte), 112th Cong., 1st Sess. (2011), or similar
legislation.
SPECIFICALLY, while AIPLA supports the H.R. 2511, AIPLA strongly recommends that:
1. The definition of “apparel” be non-limiting;
2. A “substantial similar” infringement standard be adopted,;
3. Any infringement test that approximates a “point of novelty” test be eliminated;
4. Color be a consideration in determining the scope of protection of a fashion design;
5. Notice not be required for recovery of damages;
6. Sellers and distributors of infringing designs be liable for their infringement;
7. Registration be required for fashion designs, and the power to enforce said registrations
be vested to the Secretary of the Treasury and Postal Service;
8. Fashion designs be immune from false marking liability, or in the alternative that
standing to bring false marking suits be limited the U.S. Government; and
9. Design patents be permitted to co-exist with protection for fashion designs under the Act.
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Past Actions
520-03 Design Protection
RESOLVED, that the American Intellectual Property Law Association (AIPLA) favors, in
principle, legislation to provide prompt, inexpensive, and effective protection against copying the
appearance of articles of apparel.
(Board of Directors Meeting – July 19, 2007.)
520-04 Design Protection
RESOLVED that the American Intellectual Property Law Association supports enactment of
H.R. 2033, Design Piracy Prohibition Act, and strongly recommends that the following changes
be made:
1. The definition of “apparel” be non-limiting;
2. Articles of apparel be protected as a “whole”;
3. Independent creation be a defense for fashion designs;
4. The provision of inter partes cancellation proceedings for fashion designs within the
Copyright Office be removed;
5. Design patents be permitted to co-exist with protection for fashion designs under the Act;
and
6. Infringement require that the accused fashion design be “closely and substantially
similar” to the protected design.
(Board of Directors Meeting – October 20, 2007.)
520-05 Design Protection
RESOLVED that the American Intellectual Property Law Association supports enactment of S.
1957, Design Piracy Prohibition Act, and strongly recommends that the following changes be
made:
 The definition of “apparel” be non-limiting;
 Articles of apparel be protected as a “whole”;
 Independent creation be a defense for fashion designs;
 The provision of inter partes cancellation proceedings for fashion designs within the
Copyright Office be removed;
 Design patents be permitted to co-exist with protection for fashion designs under the Act.
(Board of Directors Meeting – October 20, 2007.)
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Discussion
Congress has considered whether and how to protect fashion design for almost a century.1
This summer, the House Judiciary Committee again took up the task with the introduction of
H.R. 2511, the Innovative Design Protection and Piracy Prevention Act (“IDPPPA”). The Act
extends sui generis protection to fashion design via amendment of the Vessel Hull Design
Protection Act, 17 U.S.C. 1301 et seq. The Judiciary Committee held a hearing on July 15, 2011,
on H.R. 2511, but has not yet begun mark-up.
The Industrial Design Committee (“Committee”) has supported such protection for
fashion design, as well as industrial design protection generally.2 This memorandum summarizes
Committee member commentary on H.R. 2511, following a brief review of Committee and
AIPLA positions on the Vessel Hull Design Protection Act and prior fashion bills. The
Committee is currently voting on a resolution on H.R. 2511 via its AIPLA micro-site, which it
hopes to report to the Board by the 2011 Annual Meeting. A copy of the resolution is attached
hereto. Both documents are informed in great part by the Committee’s previous work in the area,
for which we recognize Vince Garlock, Jack Hicks, Christopher Carani, Perry Saidman and
others for memoranda, articles and commentary on earlier bills and particularly Prof. Bill Fryer
for same and his detailed comments on H.R. 2511. Much of this source material and a draft of
H.R. 2511 are available at the Committee’s micro-site.
I.
Vessel Hull and Fashion Design Protection / Bills To Date
Vessel Hull Protection and H.R. 2696 (1997). As originally drafted, H.R. 2696
provided broad protection for useful articles. However, Congress’s ultimate enactment applies
only to vessel hull designs. 17 U.S.C. 1301.
In its position, the AIPLA Board noted that existing patent, copyright, and trademark law
left gaps in protecting certain industrial designs. The Board supported previous legislation to
correct these deficiencies, dating back to at least 1982. The Board noted a specific void in
protection of vessel hulls after the U.S. Supreme Court held state design protection statutes
preempted by federal law in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 171
(1989).
The Board applauded H.R. 2696 as “a significant initial step in resurrecting sui generis
design protection,” but felt that it should “cover the range of industrial designs protected by its
predecessors in earlier Congresses.” The Board noted approval of then pending, since enacted
industrial design protection by the European Commission, which encompasses a wide array of
statutory subject matter not limited to a single field. The Board took the position that “[t]he
United States should protect its designers equally well [as the European Union] and not cede the
1 By one count, the current bill, H.R. 2511, would be the ninety-fourth attempt in Congress since 1914 to achieve
greater IP protection for fashion designs. Sara R. Ellis, Copyrighting Couture: An Examination of Fashion
Design Protection and Why the DPPA and IDPPPA Are a Step Towards the Solution to Counterfeit Chic, 78
Tenn. L. Rev. 163 (2010). As of the writing of the article, the latest bill was S. 3728 (2010) and the count was
ninety-three. H.R. 2511 is the only fashion design legislation to be introduced subsequently.
2 See, e.g., the Industrial Designs Committee memorandum AIPLA Proposed Resolution Regarding Design
Piracy Prohibition Act (2007)
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field to our global competitors.”
Relevant to H.R. 2511, the Board opposed provisions in H.R. 2696 terminating design
protection when a design patent or copyright issued.
Fashion Design and HR 2033 (2007). AIPLA’s most recent position on fashion design
protection was in 2007. That Fall, the Board passed two resolutions, one regarding each of the
House (H.R. 2033) and Senate (S. 1957) versions of the Design Piracy Prohibition Act. Those
bills sought to protect fashion design by amendment of the Vessel Hull Design Protection Act.
As noted above, this sui generis form of protection was originally intended to serve the
needs of many industries, with the vessel hull industry being the first beneficiary when passed in
1998. However, the bills sought to carve out modified rules that would apply to fashion designs,
instead of just adding Fashion Designs to the statutory subject matter of Vessel Hull Design
Protection Act.
The AIPLA Board resolution on H.R. 2033 is as follows3:
“RESOLVED that the American Intellectual Property Law
Association supports enactment of HR2033, Design Piracy
Prohibition Act, and strongly recommends that the following
changes be made:
1 - The definition of “apparel” be non-limiting;
2 - Articles of apparel be protected as a “whole”;
3 - Independent creation be a defense for fashion designs;
4 - The provision of inter partes cancellation proceedings for
fashion designs within the Copyright Office be removed;
5 - Design patents be permitted to co-exist with protection for
fashion designs under the Act; and
6 - Infringement require that the accused fashion design be “closely
and substantially similar” to the protected design.”
While neither H.R. 2033 nor S. 1957 passed, the most recent fashion bills have adopted
recommendations 2, 3, and 4, protecting articles as a whole, allowing an independent creation
defense and foreclosing inter partes proceedings by omission of a registration scheme.
However, “apparel” is still specifically limited, a design patent terminates protection and the
infringement standard is “substantially identical.”
Fashion Design and S. 3728 (2010). In 2010, the Senate Judiciary Committee
reintroduced fashion design protection, with this legislation receiving a full hearing. Entitled the
“Innovative Design Protection and Piracy Prevention Act”, the bill was passed through the
Judiciary Committee in December 2010, but did not receive a vote by the full Senate before the
3 The resolution to S. 1957 was identical to the H.R. 2033 resolution, except it omitted #6. The reason for this
omission was that the Board wished for the House to adopt the “closely and substantially similar” provision
contained in S. 1957.
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close of the 111th Congress. The Industrial Design Committee took no formal action or position
on this bill.
II.
The Innovative Design Protection and Piracy Prevention Act, H.R. 2511 (2011)
The IDPPPA was introduced into the House in July 2011 as H.R. 2511, with the House
Judiciary Committee holding a hearing on July 15. The bill has not been marked-up, and is
identical to the final version of S. 3728 (2010). The Judiciary Committee’s website posts a video
and transcript of this hearing with written testimony.
Reason for Legislation. As detailed in the Committee’s prior work in this area and the
July 15 hearing, fashion designers currently cobble together protection in the U.S. from design
patents, trademark/trade dress and/or copyright law. However, there is a strong concern that
these mechanisms do not adequately protect original fashion designs. Design patents are
relatively expensive, take more than one year to obtain, and generally only protect a single
design. Indeed, design patents are used regularly only by a very small number of apparel
designers (most notably in the athletic shoe industry, which is dominated by larger firms with
significant resources). Trademark and trade dress protection requires that the design acquires
secondary meaning to the consumer, which may require either significant advertising or time.
Copyright protection is only available when the design itself can be separated from the article in
which it is embodied, which is often difficult to prove when the design merges with the
utilitarian function of the apparel. Given this absence of protection, fashion designers are almost
always denied exclusive rights to their creations.
The digital media age has exacerbated this problem. Copyists, often located off shore,
are able to download images of successful designs from the internet, and use computer modeling
to produce exacting copies within days of the design's public disclosure. Conversely, fashion
designs are generally introduced to the public approximately six months before being released to
stores. This lag time allows copyists to replicate successful designs, without the attendant startup or development costs and risks that the original designer had to overcome. Creators of
original fashion designs are precluded from the economic benefit that follows from the
production of mass-market and more affordable versions.
Further, there is significant concern that the lack of design protection disproportionately
affects emerging designers.4 Because of the significant costs associated with producing a fashion
line, along with their lack of notoriety in the consuming public and inability to command top
prices for their innovative designs, emerging designers without capital reserves are most likely to
be harmed when copyists knock-off their designs and enter the market before the originally
designer is able.
Consequences of Enactment. The Committee has concluded in the past that protection
for fashion designs would lead to more innovation because designers could recoup their initial
investment and infuse that money in further innovation. Short term, limited protection would
4 See, e.g., Innovative Design Protection and Piracy Prevention Act: Hearing on H.R. 2511 Before the Subcomm.
on Intellectual Prop., Competition, and the Internet of the H. Comm. on the Judiciary, 112th Cong. (2011)
(statements of Prof. Jeannie Suk, Harvard Law School, and Lazaro Hernandez, co-founder Proenza Schouler)
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further the Constitutional goals from Article I, Section 8, Clause 8 to provide incentives for
designers to create original designs. Furthermore, since copying would be illegal, the copyists
would have to come up with their own designs or sufficiently alter existing designs, thus
increasing innovation.
This Committee noted in 2007 its belief that the American fashion design industry may
continue to exist without additional protection, but there is concern that rapid technological
development has exponentially increased one's ability to copy fashions causing a paradigm shift.
Specifically, changes to manufacturing processes and supply chains in the fashion industry, have:
(1) increased the speed at which copies can enter the market, often allowing copyists to enter the
market before the original designer; and (2) discouraged new designers from making the
significant financial commitment necessary to expand, or sometimes even continue, their product
line.
Specific Concerns with H.R. 2511:
While the Industrial Designs Committee supports enactment of H.R. 2511, or similar
legislation, the Committee feels that there are number of provisions that may be unworkable or
where improvement is preferable.
1.
“Apparel” definition. H.R. 2511 states, “term ‘apparel’ means (A) an article of men’s,
women’s, or children’s clothing, including undergarments, outerwear, gloves, footwear,
and headgear; (B) handbags, purses, wallets, tote bags, and belts; and (C) eyeglass
frames.” The Act’s definition suggests that the list of apparel is limited to items listed.
This Committee opposes limited statutory subject matter (as we did in 2007), instead
favoring statutory indication that the list would be non-exclusive. Specically, we would
suggest replacing the term “means” with the word “includes”.
2.
Registration Requirement. Unlike vessel hull designs and previous fashion bills, there
is no registration of fashion designs under the Act. This provision seems to be a
compromise between the members of the industry (designs and manufacturers). While
lack of registration allows designers to have protection upon public disclosure of their
designs, lack of a registration precludes customs enforcement. Because many of the
fashion copyists are located abroad, and the Act as currently written gives immunity for
sellers/distributors who provide the name of their supplier, the current remedies of this
bill will frequently be ineffective. Often, the only remedy a designer would have is
customs enforcement, because there is no domestic entity upon which liability would
attach.
3.
Originality and Infringement Standards. The Act has a heightened originality and
infringement standard as compared to the Copyright standards of originality and
substantial similarity for infringement. Instead, the Act requires that a design be
“substantially identical” to a protected design for infringement to lie. This is a very high
burden, which would allow copyists to escape liability with only very minor variations.
Effectively, this high standard would take the teeth out of the bill and would prevent the
Act from achieving its goal of protecting emerging fashion designers from copyrists.
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4.
Statutory Subject Matter. Fashion designs are defined as being
(a) the appearance as a whole of an article of apparel,
(b) including its ornamentation; and also including
i. includes original elements of the article of apparel or
ii. the original arrangement or placement of original or non-original elements as
incorporated in the overall appearance of the article of apparel that
A. are the result of a designer’s own creative endeavor; and
B. provide a unique, distinguishable, non-trivial and non-utilitarian variation over
prior designs for similar types of articles.
This is a very confusing, and possibly unworkable, standard. While it would be
preferable for this standard to be streamlined, it is noted that this standard is significantly
higher than the de minimis originality standard generally applied to copyrights.
5.
Ability of Color to Differentiate Fashion Designs – H.R. 2511 adds language added to
17 U.S.C. § 1303 regarding color: “The presence or absence of a particular color or
colors or of a pictorial or graphic work imprinted on fabric shall not be considered in
determining the protection of a fashion design under section 1301 or 1302 or in
determining infringement under section 1309.” Color arrangement plays a vital role in
fashion design, and is central to consumer appeal. While we note that color arrangement
may be protected under the current Copyright scheme as being separable from the
underlying article, protecting a design through copyright currently is very difficult. So
much so that this is a reason designers have lobbied for sui generis protection. There
seems to be very little reason to remove such an important part of fashion design from the
subject matter of this legislation.
6.
“Point of Novelty” Infringement Test. There is some concern that the language in 17
U.S.C. § 1309(e)(3)(A) would approximates a “point of novelty” test. There had been
much debate and confusion about the design patent infringement standard that required
infringement of original elements of a design (aka “point of novelty”) as well as
infringement in the overall appearance. The U.S. Court of Appeals for the Federal
Circuit resolved this problem by eliminating the point of novelty test for design patents in
Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) (en banc). Having statutory
language that could be construed as requiring a point of novelty test for fashion designs
could be equally problematic. To remove this ambiguity, the phrase “and as to the
original elements of” in 17 U.S.C. § 1309(e)(3)(A) should be deleted.
7.
Design Notice and Effect of Omitting Notice – The Act predicates recovery of damages
on the infringer having notice (either through marking or receipt of written notice) of the
protected design. Additionally, the Act allows the Court to order the owner of a design to
reimburse an infringer for any contractual obligation or reasonable expense incurred prior
to receiving written notice of an unmarked design. These provisions are unreasonably
burdensome. Often, copyists are taking published photographs from runway shows or the
red carpet, running them through CAD programs, and producing copies within days of a
designs release. The designer on the other hand, due to the industry's custom of
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producing shows in six months in advance of the season for prospective buyers, will be
second to market with their own designs. Further, should the current bill's “substantially
identical” infringement standard be retained, along with the heightened originality
standard for statutory subject matter, access and substantial identicality should be
sufficient for proof of the copyists knowledge (which can be rebutted by affirmative
defenses such as independent creation).
8.
Liability for Sellers/Distributors – The Act currently allows for sellers/distributors to be
immune from liability if they provide the name of their supplier. Given that many times
the ultimate supplier will be a foreign based entity, enforcement of a protected design
under this Act would often be difficult or practically impossible. Without liability for
sellers and distributors, domestic designers will be unable to attach liability to copyists.
An example5 of how a product would be affected under the scheme in H.R. 2511:
Designer A discovers that his eyeglass frame design is being sold at
Store B without her authority. She notifies Store B. Store B gives her
the contact information for the source of the goods which is Distributor
C located in the US. Designer A notifies Distributor C. Distributor C
gives her the contact information for the source of its goods which is
Manufacture C, located in China. At that point, Store B and Distributor
C can sell through their entire inventory of infringing eyeglass frames.
Designer A is effectively left without a remedy. (Arguably she can go
chase down Manufacturer D in China.)
This cycle could repeat itself again and again – season after season, dress after dress,
shoe after shoe – with impunity.
9.
Customs Enforcement – The Act does not allow for customs enforcement of protected
fashion designs. Given that many times the ultimate supplier will be a foreign based
entity, customs enforcement would be a strong mechanism for enforcing the rights of a
designer.
10. Transfer of Ownership and Title of Design Right – Currently, the legislation only
allows for transfer of a registered design right under 17 U.S.C. 1320. The current
language is ambiguous as to the transfer of unregistered designs. If the current nonregistration system be enacted, it would be prudent to have a mechanism for designers to
assign rights in their unregistered designs.
11. Attorneys' Fees. The Act provides for an award of attorney’s fees to the prevailing party
within the discretion of the Court.
12. Co-existence of Design Patents and Fashion Design Registration. Fashion Design
protection would terminate upon issuance of a design patent under 17 U.S.C. § 1329. The
5 This example was created by Perry J. Saidman and Christopher V. Carani in response to the 2010 version of the
IDPPPA (S. 1957).
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Committee previously recommended adding an amendment to provide that design patents
and fashion design protection may co-exist. Fashion design protection is limited to the
overall appearance of an article, while design patent protection may cover only a portion
of a design; therefore there could be conflict where the claim of the design patent is not
co-extensive with the overall appearance of the article.
13. False Marking – Currently, the Vessel Hull Design Protection Act provides for a private
actors to bring qui tam false marking suits on behalf of the U.S. Government over falsely
marked designs. It is also noted that the false marking provisions in 17 U.S.C. § 1326
have not been affected by the recent changes to patent false marking from the America
Invents Act (H.R. 1249), where such actions regarding patents were heavily restricted and
which limited standing to bring suit to the U.S. Government. Given the Act's specific
aim to protect emerging designers, as well as the prolific nature of patent false marking
suits, removal of false marking liability (or limiting standing to the U.S. Government)
will enable designers to create without threat of frivolous lawsuits.
Conclusion
Ultimately, the Committee feels very strongly in legislation is needed to protect fashion
designs. The current legislation, H.R. 2511, being an acceptable compromise between key
industry collations has much merit. However, the Committee feels strongly that certain sections
of the legislation may be unworkable or create unintended consequences for designers. We
would strongly recommend that the Board of Director adopt this resolution, along with each
specific recommendation therein.
Respectfully submitted,
Garfield Goodrum, Vice-Chair
Jason T. Somma, Member
9/11
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Committee Vote
Total Active Voting Members of Committee: 73
Total Active Voting Members Casting Votes: 39 (53.4%)
Resolution – Innovative Design Protection and Piracy Prevention Act (H.R. 2511)
1. SUPPORTS enactment of fashion design protection in general.
2. OPPOSES the Act’s current definition of “apparel,” which states: “‘apparel’ means (A) an article
of men’s, women’s, or children’s clothing, including undergarments, outerwear, gloves, footwear,
and headgear; (B) handbags, purses, wallets, tote bags, and belts; and (C) eyeglass frames.” 17
U.S.C. § 1301(b)(9). The Committee RECOMMENDS the definition of apparel be non-limiting by
replacing the term “means” to read “includes”.
3. OPPOSES the Act’s heightened infringement standard of “substantially identical” as compared
with the substantial similarity standard that is applied to copyrights and design patents. See 17
U.S.C. §§ 1301(b)(10) and 1309(e)(3)
4. OPPOSES the language added to 17 U.S.C. § 1303 regarding color: “The presence or absence of
a particular color or colors or of a pictorial or graphic work imprinted on fabric shall not be
considered in determining the protection of a fashion design under section 1301 or 1302 or in
determining infringement under section 1309.”
5. SUPPORTS the three (3) year term of protection. 17 U.S.C. § 1305(a)(2)
6. RECOMMENDS removing the notice requirement for fashion designs. The Committee
RECOMMENDS amending 17 U.S.C. § 1307 by inserting a new 17 U.S.C. § 1307(c) stating,
“Omission of the notice prescribed in section 1306 shall not prevent any recovery for infringement
of a fashion design protected under this chapter,” along with an exception in 17 U.S.C. § 1307(a).
7. OPPOSES immunity for sellers/distributors under 17 U.S.C. § 1309(d).
8. OPPOSES an infringement test that approximates a “point of novelty” test, and RECOMMENDS
amending 17 U.S.C. § 1309(e)(3)(A) to delete the phrase “and as to the original elements of”.
9. OPPOSES elimination of a registration requirement for fashion designs. The Committee
RECOMMENDS requiring registration for enforcement, as with copyright, and deleting the phrase
"Registration shall not apply to fashion designs," from 17 U.S.C. § 1310(a), and also
RECOMMENDS deleting the amendments to 17 U.S.C. § 1328 that limit enforcement by the
Secretary of the Treasury and Postal Service to Vessel Hulls.
10. RECOMMENDS amending 17 U.S.C. § 1320(b) to provide for transfer of ownership of a
protected (but unregistered) fashion design.
10/11
VOTE
YES – 35
NO- 3
Abstain -1
No Reply - 0
YES – 25
NO- 12
Abstain -1
No Reply - 1
YES – 23
NO- 13
Abstain – 2
No Reply - 1
YES – 24
NO- 11
Abstain -3
No Reply - 1
YES – 32
NO- 5
Abstain -1
No Reply - 1
YES – 31
NO- 5
Abstain -1
No Reply - 2
YES – 30
NO- 4
Abstain - 4
No Reply - 1
YES – 28
NO- 5
Abstain - 5
No Reply - 1
YES – 32
NO- 5
Abstain - 1
No Reply - 1
YES – 32
NO- 2
Abstain -3
No Reply - 2
DRAFT
Resolution – Innovative Design Protection and Piracy Prevention Act (H.R. 2511)
11. SUPPORTS the Act’s provision of allowing the award of attorney’s fees to the prevailing party
as within the discretion of the Court. 17 U.S.C. § 1323(d)
12. RECOMMENDS that the Act be amended to remove liability for false marking of protected
fashion designs from 17 U.S.C. § 1326.
13. RECOMMENDS that 17 U.S.C. § 1326 be amended to align with the false marking provisions
of the America Invents Act (H.R. 1249), including limiting standing to bring suit to the U.S.
Government.
14. RECOMMENDS adding an amendment to 17 U.S.C. § 1329 to provide that design patents and
fashion design protection may co-exist.
11/11
VOTE
YES – 36
NO- 1
Abstain -1
No Reply - 1
YES – 28
NO- 8
Abstain - 2
No Reply - 1
YES – 31
NO- 4
Abstain - 2
No Reply - 2
YES – 34
NO- 3
Abstain - 1
No Reply - 1