Is The Design Piracy Protection Act A Step Forward For Copyright Law Or Is It Destined To Fall Apart At The Seams?

Tuesday, July 1, 2008 - 01:00

Fashion has permeated nearly every medium of American culture, including television , with programs such as "Project Runway" and "What Not to Wear;" movies , such as "The Devil Wears Prada;" magazines , including "Vogue," "Glamour" and "Elle;" art , such as the Metropolitan Museum of Art's Costume Institute, which houses a collection of more than 30,000 costumes, fashions and accessories, and music , with musicians such as Madonna, Sean "P. Diddy" Combs and Gwen Stefani wielding influence beyond the stage with their styles and fashion lines. In addition, fashion retailers, such as Zara, Forever 21 and H&M, are bringing runway fashions - which at one point were accessible only to the über wealthy - to the masses at bargain prices. Despite the proliferation of fashion within American popular culture, fashion designs have historically received limited protection under U.S. intellectual property laws, and design piracy or "knocking off" has become increasingly prevalent. In an effort to curb the spread of design piracy, the Council of Fashion Designers of America, (CFDA), a not-for-profit trade association made up of over 300 American fashion and accessory designers, is lobbying Congress to consider the Design Piracy Protection Act, a bill aimed at providing intellectual property protection for fashion and accessory designs.

Under current United States copyright law, copyright protection exists to protect literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial, graphic and sculptural works, motion pictures and other audiovisual works, sound recordings and architectural works. However, the Copyright Act does not protect most "useful articles," i.e. , items having an "intrinsic utilitarian function," unless they contain features that can be identified separately from and can exist independently of the useful aspects of the article.1Most fashion designs have traditionally been viewed as useful articles, rather than as artistic creations, and thus have fallen outside the scope of copyright protection.

Because copyright law has historically failed to protect fashion designs, designers have sought protection under other branches of intellectual property law, including trademark and patent law, with varying levels of success. A trademark is a distinctive name, logo or symbol which is used by an individual or company to identify the source of its products to consumers and to distinguish its products from those of other entities. While the fashion industry invests heavily in policing its brands from illegal counterfeits, only the actual trademarked name or logo - such as the name "Louis Vuitton" or the Chanel "double C" logo - is protected, not the underlying product or garment design. Therefore, reliance by fashion designers on trademark law has been limited.

Trade dress, another aspect of trademark law, is another avenue of protection relied on by fashion designers with limited success. Trade dress refers to the overall visual appearance of a product or its packaging, which may include graphic design, shape and/or color. To prevail on a trade dress claim, a plaintiff designer must establish that his/her trade dress: (i) is inherently distinctive or possesses "secondary meaning," i.e. , the public associates the product or packaging with a single source and (ii) is likely to be confused by consumers with the defendant's trade symbol. The United States Supreme Court has held that product design alone is not inherently distinctive under trademark law, and thus a designer must prove that his/her design has acquired "secondary meaning" in order to gain trade dress protection.2On the whole, the rapid pace of the fashion cycle prevents all but the most well-known designers from establishing secondary meaning for their products. Fashion designers likewise struggle with the second prong of the trade dress test. While some recognized designers have succeeded in showing consumer confusion between original and pirated designs, the confusion element is harder to prove for lesser known designers.

Fashion designs have also received limited intellectual property protection under U.S. patent law. Patent law provides that "whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor."3However, because many apparel designs are adaptations of previously existing designs, and are not "new" in the sense that patent law requires, most will not qualify for design patent protection.4In addition, design patents are ill-suited for fashion designs for other practical reasons, including (i) the patent application process is costly, lengthy and the prospects of protection are uncertain and (ii) design patent protection lasts for fourteen years, which is too long to fit sensibly in the fast-paced fashion market.

Due to the inadequacy of the current intellectual property landscape, many fashion designers have voiced support for the Design Piracy Protection Act (DPPA), which was introduced in both the U.S. House of Representatives and Senate in 2007. This bill represents a Congressional response to the prevalence of design piracy within the fashion industry. While piracy is not new in the fashion industry, the pace of copying has increased significantly with the sophistication of technology. The DPPA seeks to amend Chapter 13 of the U.S. Copyright Act to add copyright protection for fashion designs and accessories for a term of three years. The bill defines "fashion design" as the "appearance as a whole of an article of apparel, including its ornamentation." "Apparel" includes "an article of men's, women's or children's clothing, including undergarments, outerwear, gloves, footwear, and headgear; handbags, purses and tote bags; belts and eyeglass frames." A fashion designer seeking protection under the DPPA must apply for copyright registration of his/her design within three months from the time the design is first made available to the public. Once the design is registered, the designer would receive a three-year copyright, under which he/she could seek recovery against infringers in the form of statutory damages of $250,000 or $5 for each copied item, whichever is greater.5

Proponents Of The DPPA: Fits Like A Glove

The DPPA is supported by the CFDA, as well as many legal scholars. Advocates for the DPPA argue that if copying is permitted, the public good suffers because free riding lowers the financial incentives that designers have to produce new works. In today's world, certain fashion designs are not simply viewed as useful articles, but as artistic works of art. Thus, supporters of the DPPA argue that U.S. copyright law should provide fashion designers with protections against piracy similar to those protections offered to creative entrepreneurs in other industries, such as music, film, publishing and fine art.

Designers are also championing the DPPA to combat the noticeable change in the way the fashion industry operates. While some degree of copying or "referencing" other designs has always been an inevitable part of the fashion world, design piracy has become rampant in the digital world. In fact, a representative for the CFDA recently stated that while designers spend "tens of thousands" to produce a runway show to showcase their designs, they are not able to recoup those costs when "their designs are stolen before the applause has faded[because] software programs develop patterns from photographs taken at the show and automated machines then cut and stitch copies of designers' work from those patterns."6

Opponents Of The DPPA: A Wolf In Sheep's Clothing

Critics of the DPPA argue that copying in the fashion industry does not hinder creativity and may even spark innovation. In an article by law professors Kal Raustiala and Christopher Sprigman titled "The Piracy Paradox: Innovation and Intellectual Property in Fashion Design," Raustiala and Sprigman assert that the fashion industry profits by setting trends in clothing, and that the fashion industry's ability to create trends is based on designers' relative freedom to copy. If copyright law were extended to fashion designs, the fashion industry would have a much harder time creating and responding to trends. Raustiala and Sprigman further note that U.S. copyright law prohibits not only identical copies, but also any work that is "substantially similar" to a pre-existing copyrighted work. As such, the DPPA may not only prevent the promulgation of designs that are copies of earlier fashions, but may prevent the dissemination of designs that are completely original but merely resemble or were influenced by prior designs.7

The American Apparel & Footwear Association (AAFA), which represents many of the industry's major brands and companies, likewise opposes the DPPA. The AAFA argues that the DPPA would open the door to numerous frivolous lawsuits and place a colossal cost burden on companies trying to verify whether a referenced design has been approved for copyright protection. In fact, after working with the CFDA to iron out the proposed language of the DPPA, the AAFA recently announced its rejection of the bill. Among the unresolved sticking points cited by the AAFA were: (i) inadequate provisions ensuring that only original designs would receive copyright protection; (ii) a potential for significant disruption in trade and new liabilities with U.S. Customs in the form of civil detentions and criminal penalties; (iii) added costs associated with anticipated lawsuits and research of copyrighted designs; and (iv) stifling the speed to market for legitimate companies.8This recent rejection is a major setback for the CFDA and diminishes the prospects of any immediate Congressional consideration of the DPPA.

Conclusion: The DPPA Is Fashion Forward

Despite the reasonable arguments asserted by industry opponents, we agree with advocates of the DPPA who see the current state of intellectual property law as deficient with respect to fashion designs. Without legal protection, emerging and innovative entrepreneurs will continue to be exposed to design pirates and may be discouraged from pursuing a career in fashion design. If one of the major policies of copyright law is to promote investment in creativity by protecting artists from pirates, then Congress should provide fashion designers recourse when competitors blatantly copy the designer's work.

The DPPA is a reasonable solution to design piracy. The bill seeks a modest term of copyright protection, which appears to be calibrated to address the period of time during which fashion designs are most at risk of being infringed and during which fashion designers are most likely to be harmed financially by the sale of infringing goods. In addition, the time frame to apply for copyright registration is likewise limited, as filing an application is required within three months from the time the design is first made available to the public. While the DPPA is not without flaws, and would likely benefit from clarification as to what types of designs are protected and what constitutes infringement, it is a step in the right direction. The road ahead for the DPPA is unclear, but the DPPA offers fashion designers hope that their contributions to the fashion world, and American society at large, will be recognized, respected and finally considered worthy of protection.

1See 17 U.S.C. §§ 101 and 102 (2008).

2See Wal-Mart Stores, Inc. v. Samara Bros. Inc., 529 U.S. 205, 213 (2000).

3 35 U.S.C. § 171 (2008).

4See In re Bartlett, 300 F.2d 942, 943-44 (C.C.P.A. 1962) ("The degree of difference required to establish novelty occurs when the average observer takes the new design for a different, and not a modified already-existing, design.").

5See H.R. 2033 and S. 1957 (110th Congress) (2007).

6See Megan Williams, Fashioning a New Idea: How the Design Piracy Prohibition Act is a Reasonable Solution to the Fashion Design Problem, 10 Tul. J. Tech. & Intell. Prop. 303, 312 (2007) (citing A Bill to Provide Protection for Fashion Design: Hearing before the Subcommittee on Courts, the Internet, and Intellectual Property on H.R. 5055, 109th Cong. 9 (July 27, 2006)). H.R. 5055 was the predecessor to the DPPA, but is identical in all material respects.

7See Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1687, 1689 (2006).

8See Kristi Ellis, AAFA Rules Out Copyright Protection Deal , Women's Wear Daily, March 11, 2008.

Ronald Urbach is a Partner and Jennifer Soussa is an Associate in the Advertising, Marketing and Promotions practice group of Davis & Gilbert LLP.

Please email the authors at rurbach@dglaw.com or jsoussa@dglaw.com with questions regarding this article.