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Posted: December 06, 2012

Revenge of the prom dress

Fashion Wars episode 100,001

Peter Lemire

Over the years, our firm has represented numerous apparel companies with regard to intellectual property matters, and we have observed many of the difficulties these companies face in protecting the value of their designs. The interesting aspect facing apparel companies is that often times the “low brow” fashion of graphic T-shirts and sneakers are more protectable than the “high brow,” haute-couture fashions of world-famous designers. 

Apparel companies are a good example of where two different theories of intellectual property protection come together and, to some extent, overlap. When applied to an apparel company, the two main forms of protection we are talking about are trademarks and copyrights.

While design patents may be applicable, the practical considerations of time and cost usually rule them out for fashion-oriented clothing; they cost too much and take too long to gain the protection. In the case of the graphic T-shirt, the graphical design that is applied to the T-shirt is protectable under copyright law as two-dimensional artwork. Therefore, another T-shirt company cannot copy the graphical design or, with knowledge of someone else’s design, create something that is substantially similar. 

On the other hand, decorative elements such as the three stripes that appear on Adidas shoes are protectable trade dress and as in the Payless case, shoes with two or four similar stripes are considered to infringe Adidas’s trademark rights. In each of these instances, it is important to note that the design of the clothes themselves is not protectable, only the aesthetic design elements that are added to the clothing.

Producers of high-end designer clothing have a bit more of a challenge when it comes to protecting their products. In these sorts of situations, the actual design of the clothes is most often the desired aspect of the product. The tough thing for the designers is that these features are not currently protectable under any theory of law in the United States. 

This is why you can go to your local discount clothing retailer and buy designer “knock offs.” In the recent case of Jovani Fashion, Ltd. v. Fiesta Fashions, the 2nd Circuit Court of Appeals upheld this concept by stating the it is well settled that articles of clothing are considered “useful articles” and are not protected by the copyright act and that design elements may have protection under copyright law only in the situation where the elements are 1) physically severable or 2) conceptually severable from the clothing itself. 

The case involved a fight surrounding the design of prom dresses. Specifically, Jovani claimed that Fiesta illegally copied Jovani’s design for a prom gown that had an “arrangement of decorative sequins and crystals on the dress bodice; horizontal satin ruching at the dress waist ,and layers of tulle on the skirt.” 

While I am not exactly sure what ruching or tulle are, they don’t seem to be a stand-alone product that you can remove and sell by themselves. Furthermore the adornment of the clothing with these features doesn’t seem to transform the concept of the gown into something altogether different; it’s still a gown, now it just has ruching and tulle.

So what would satisfy the courts requirements? In the case, the court cites Halloween costumes for one, although I would probably guess that most of Cee Lo Green’s outfits would also qualify.

So what does all of this mean for clothing and apparel companies out there? If you make Halloween costumes you should be pretty pleased with the decision because you can copyright your costume designs and sue infringers to your heart’s content.  Likewise, manufactures of articles such as T-shirts, hoodies and other clothes that incorporate printed graphical designs – those graphical designs are copyrightable and you would be wise to get registrations on all of your designs. 

If you make clothing that won’t change over time and isn’t really based on yearly trends (think Levi Jeans), then design patents may be an interesting route to protect the aesthetic look of your clothes. To those that are looking to get into high fashion, some thoughtful planning on how you are going to insulate yourself from the knock-off issue is probably in order.

One solution might be to have a business operation that isn’t directly affiliated with your high-end line that sells lower priced knock-offs. That will allow you to capture both market segments and hopefully avoid the issue of someone else profiting off of your hard work.

Of course, there are always calls to amend the copyright laws to allow for the protection of clothing designs and legislation to do that is introduced every year. Ultimately, these bills fail because when you start to get into it these issues, they are complex. For example, could a company copyright something like the butterfly collar and essentially have a monopoly on it for 95 years? 

Although the chance of getting something through Congress is probably pretty small, apparel companies would be wise to keep a watchful eye on what is going on in Washington. It could change the nature of your business overnight.

Peter Lemire is a founding member of the intellectual property law boutique, Leyendecker & Lemire. Leyendecker & Lemire specialize in patents, trademarks and related complex civil litigation. Peter Lemire can be reached directly at 303.768.0641 or peter@coloradoiplaw.com. Visit www.coloradoiplaw.comfor further information, including Leyendecker & Lemire’s weekly blog, “Control, Protect & Leverage.” 

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