How
often do you see knock-offs or imitations of pricier designer clothes?
The piracy of design is commonplace in the fashion industry today,
partly due to advances in technology and mostly due to inconsistencies
in the law. However, protections in law do exist. Federal Copyright
Law separates clothing into two categories, fabric design and dress
design, though they are often referred to by the same name. 1 Fabric
design is the image imprinted on a fabric, for example, a sunflower.
The sunflower design or pattern can either appear once on the fabric
or multiple times. On the other hand, dress design graphically sets
forth the shape, style, cut and dimensions for converting fabric into
a finished clothing garment. 2
It is well settled that fabric designs are afforded copyright protection,
but it is not so clear whether this same protection applies to dress
designs. In numerous cases, courts have deemed that fabric designs
rise to the level of works of art or prints, and therefore should
receive like protection. The protection a fashion designer is given
extends to the actual fabric, but not to the garment itself. 3
When courts are confronted with an infringement action, they
apply the "ordinary viewer" test to determine the similarity
of the works. This test evaluates whether the "ordinary observer,"
unless he/she set out to detect the differences, would be inclined
to overlook the fabrics and deem they look the same. 4
Although courts have been forbearing in interpreting infringement
actions, getting federal registration for a designer's fabric design
is worthwhile. It is inexpensive, fairly easily attainable and protects
against, at a minimum, the exact copying of the creative fabric design.
Where fabric designs have long received the blessing of the Copyright
Office and the courts, dress designs have not received the same treatment.
This stems from clothing committing the cardinal sin of being useful.
That is to say, clothing's primary purpose is to cover and protect
and its secondary purpose is decoration. 5
Useful articles are protectable under copyright
law only to the extent that they contain "physically or conceptually
separable elements" that are unrelated to its utility. 6
In the seminal case in such separability analysis
the Supreme Court upheld the copyright in a statuette used as a lamp
base. It was found that although the lamp base performed a useful
function, its artistic element was separable from this function. One
way of understanding this complicated analysis is to envision whether
or not the item itself would be something worthy of exhibiting as
artwork absent its utilitarian function. Courts have been divided
on whether physical or conceptual separability is necessary.
After analyzing case law and the House Committee's Report of the 1976
Copyright Act, it stands that conceptual separability alone will suffice.
7 The question
then arises as to when conceptual separability exists in order to
earn copyright protection. The court found in a 1980 case that belt
buckles are conceptually separable from their utility because people
have worn buckles as ornamentation for parts of the body other than
the waist. In a recent case, a district court held that a hand-tailored
leather vest and dress did not include any copyrightable elements
that were capable of existing independently of the articles of clothing
themselves. The court found that every arguably aesthetic element
of the designs played a utilitarian function in clothing in which
it was embodied; from the look of stitchwork to the shape of clasps
to the placement of seams, artistic and functional elements of the
designs were inextricably interwoven in the articles of clothing in
which they appeared. 8 It
is not clear under what circumstances case law will determine a garment
element to be conceptually separable from the garment itself. Meanwhile,
arguing the element is a work of art can result in copyright protection.
Applying for copyright protection is the first step in reducing the
incidence of design piracy. It is well established that copyright
protection is available for fabric designs. There are two steps in
analyzing whether copyright protection is available for the clothing
garment. First, if the article for which protection is sought does
not have an intrinsic utilitarian function, the garment is eligible
for copyright protection. If the garment does have a utilitarian function,
then the copyright protection is available only if the garment includes
separable copyrightable elements. 9
In the event that copyright protection
is not available, there are alternative areas of law that may provide
shelter for clothing designers. These areas include: patent, trademark,
unfair competition, and misappropriations/conversion. A design patent
serves to protect that which gives a distinctive appearance to articles
of manufacture, whether from their configuration or ornamentation.
10 A trademark
protects against the unauthorized use of one's mark to identify the
goods of another. In recent years, another aspect of trademark law,
trade dress, the overall appearance of a product, has been expanded
to include a product's design as another avenue for protection. 11
An unfair competition claim may be made where the
defendant copied the plaintiff's design and that copy is "passed
off" as the plaintiff's product. Lastly, misappropriations protect
against the appropriation and exploitation of another's labor, investment,
and skill and conversion protects against the wrongful possession
of a tangible embodiment of a work. 12
Although copyright is the most frequent guard against
design piracy, alternative areas of law should be explored to determine
what other protections are available.
1 Melville
H. Nimmer and David Nimmer, Nimmer on Copyright §2.08 [B][3]
(2001).
2 Id. at [H][1].
3 Jennifer Mencken, A Design for the Copyright
of Fashion, 1997 B.C. Intell. Prop. & Tech. F. 121201.
4 Id.
5 Peter K. Schalestock, Forms of Redress for
Design Piracy: How Victims Can Use Existing Copyright Law, 21
Seattle Univ. L.R. 113 (1997).
6 Id.citing 17. U.S.C. 101 (1996).
7 Supra note 1.
8 Morris v. Buffalo Chips Bootery, Inc., 160 F.Supp.2d
718 (2001).
9 Supra note 6.
10 Rocky Schmidt, Comment: Designer Law: Fashioning
a Remedy for Design Piracy, 30 UCLA L. Rev. 861 (1983).
11 Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
120 S.Ct. 1339, U.S.(2000).
12 Supra note 10.
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