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Design Piracy -- Pilaging on the High Financial Seas of Fashion
 

Design Piracy -- Pilaging on the High Financial Seas of Fashion

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Antitrust Paper, Spring 2009

Antitrust Paper, Spring 2009

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    Design Piracy -- Pilaging on the High Financial Seas of Fashion Design Piracy -- Pilaging on the High Financial Seas of Fashion Document Transcript

    • ANTITRUST LAW DESIGN PIRACY PILAGING ON THE HIGH FINANCIAL SEAS OF FASHION Kathleen Broughton CWRU School of Law
    • April 27, 2009 Abstract Fashion design provides insight to culture, geographical climate and political statements all of which defines the periodic time. People, since the beginning of time, have used clothes to define themselves. Fashion designers are paid for their talent and creativity. Their talents are no different than that of the painter and his canvas, the scientist and his laboratory, and the singer and his studio. A fashion designer deserves protection for his intellectual property when such innovation qualifies under similar arts deemed protected by intellectual property law. This paper will explore the background of antitrust and anti-competition issues arising from the lack of legal protection available to fashion design. It will then discuss the different types of intellectual property protection available and the associated financial costs of not extending protection to fashion design. An argument will then be presented drawing the concerns of allowing fashion design to receive statutory protection. The overall goal of this paper is to discuss the infringement issues that arise from no available intellectual property protection for fashion design and provide meaning to why fashion design should be protected under copyright law. Introduction In the spring of every year, thousands of college students gear up for having a week of relaxation and social interaction by flocking to warm climates with sandy beaches. At the same time, thousands of fashion related personnel—designers, runway models, the media, high powered executives and influential people—flock to fashion capitals of the world—Milan, New York City, and, above all, Paris—to participate in Fashion Week. This 2
    • spectacular week of displaying up and coming trends publicly is when a designer can display their predictions for what the next little black dress looks like. It is an opportunity for bold moves of new talents and classic revivals of established designers. The one unfortunate scenario for all designers, regardless of skill or establishment in the industry, is the preying of new designs by secondary hacks—design pirates—who take a designer’s eloquently crafted new innovation and transform it into a cheap, replicated version of the original high-glam ingenious work. This act of intellectual property stealing is legal because, unfortunately, no statutory protection is allocated to fashion design. Typically, intellectual property rights span to all ideas and inventiveness, regardless if it is scientific, artistic, or symbolic to define products. Fashion design is a very fruitful industry both in artistic creation and in financial benefit. With the wide array of protected intellectual property, it is appropriate to extend protection to fashion design. Protection of fashion design is a growing need as the economic stakes of the fashion industry increases. The United Kingdom government reports that the wholesales sales revenue for U.K. designers was at 600M GBP in 1997.1 Sales revenues grew at an increase of over 225% from 1990, where the combined wholesales revenue was at a mere 185M GBP. 2 Amazingly, the UK government indicates that their sales revenues are modest compared to the leading fashion industry countries. It is reported that France’s industry in 1997 is valued at a comparable 900M GBP, while Italy earned approximately 1.5B GBP the same year as the United States has the astonishing record of 5.2B GBP in sales.3 At that time, the British government rationalized that sales from fashion design would continue to 1 See Designer Fashion, Section 6. http://www.culture.gov.uk/images/publications/fashion.pdf (last visited April 13, 2009). 2 Id. 3 Id. 3
    • rise in future years based on trends of consumers, sponsorship of events by non-fashion companies, support of the media and continued outstanding innovation from fashion designers. The media likely does have a strong influence on the behavior of the consumers and continues to display to the general public the positive emotions associated with wearing trendy and stylish clothing. Network television, for example, has spun reality T.V. from people surviving on an island to fashion designers expunging creative fashion innovation on a whim to Tim Gunn, Heidi Klum, Michael Kors and Nina Garcia on Project Runway. The general public grows more star-struck with time and the appeal of wearing “designer” clothing becomes more of a need of the middle class rather than a luxury afforded only to economically wealthy. These trends of the media, and the responses by the general public, prove that fashion design is an important aspect of popular culture. Fashion plays an important role in defining culture of any society; it is timeless and holds a defined and large economic stimulus. As the global society is more self-focused, fashion becomes an even greater source of defining an individual’s sense of wealth and character. It is apparent in such strips as Rodeo Drive of Los Angeles and 5th Avenue in New York that the elite pride their financial wealth and parade it around by wearing stylish couture exclusively made designs. The exclusive designs made by high-end fashion realtors are investments for some people – just as certain cars or jewelry has appreciative value to it. The value is initiated by the designer and the worth in the design. A fashion designers ideas and implementation of such ideas should receive credit and be afforded intellectual property rights. Since there is no protection, the designs of fashion trickle down the realty pipelines over time until the once $5000 runway gown becomes the bargain basement $50 muumuu. Thus, the 4
    • questions evoked are why is there no protection and what alternative steps were attempted to gain protection; what previous forms of protection were attempted; where should the limits be placed on protection; and how should enforcement be handled and regulated. Design piracy, an act that has pillaged itself in fashion design for decades, will continue to escalate unless protection is adopted and enforced. Antitrust and Unfair Competition Multiple attempts to protect fashion design are apparent from the various forms of traditional IP protection designers and companies have tried. Protection has also been attempted by anti-compete clauses and organizations formed just to protect fashion design. The Fashion Originator’s Guild, an organization created in 1933 to prevent the copying of clothing designs, provided a registration scheme for manufacturers with the intent to boycott retailers if the retailers were found to sell copied designs of the manufacturers. The Guild consisted of 176 manufacturers of women’s garments and accounted for more than 38% of all women’s garments wholesaling at $6.75 and up, and more than 60% of those garments of $10.75 and above. The Federal Trade Commission brought suit against the Guild in the Second Circuit Court claiming violation of section 1 of the Sherman Act, section 12 of the Clayton Act, and section 41 of the Federal Trade Commission Act. 4 Collectively, the Guild was charged with illegally creating a contract, combination or conspiracy to restrain trade or commerce among the several states related to fashion designs.5 The Court found that “the purpose and object of this combination, its potential power, its tendency to monopoly, the coercion it could and did practice upon a rival method of competition, all brought it within the policy of the prohibition declared by the 4 Fashion Originators' Guild, Inc. v. FTC, 312 U.S. 457 (1941). 5 15 U.S.C.S. §1 5
    • Sherman and Clayton Acts.”6 The decision found by the Supreme Court has kept any further development of a coalition to protect fashion design. Section 1 of the Sherman Act makes illegal every contract, combination or conspiracy in restraint of trade or commerce among the several states;7 Section 2 makes illegal every combination or conspiracy which monopolizes or attempts to monopolize any part of that trade or commerce.8 A complete monopoly is not necessary to establish a violation of the Sherman Act. To prove a violation of the Sherman Act regarding a monopoly, proof must be made to indicate that the public was deprived of the advantages of free competition. The restraints of trade found in Fashion Guild were illegal per se. In a per se violation of the Sherman Act there must be a motive to create a restraint on trade as well as an agreement among the parties to act in such a manner as to restrict trade. In comparison to a violation of antitrust laws, a corporation can also commit a tort of unfair competition.9 This tort is another form which some companies have approached the way to combat design piracy. 6 Fashion Originators' Guild, Inc. v. FTC, 312 U.S. 457 (1941). 7 15 U.S.C.S. §1 8 15 U.S.C.S. §2 9 The 3rd Restatement of Unfair Competition, section 1(a) states: One who causes harm to the commercial relations of another by engaging in a business or trade is not subject to liability to the other for such harm unless: (a) the harm results from acts or practices of the actor actionable by the other under the rules of this Restatement relating to: (1) deceptive marketing, as specified in Chapter Two; (2) infringement of trademarks and other indicia of identification, as specified in Chapter Three; (3) appropriation of intangible trade values including trade secrets and the right of publicity, as specified in Chapter Four; or from other acts or practices of the actor determined to be actionable as an unfair method of competition, taking into account the nature of the conduct and its likely effect on both the person seeking relief and the public; 6
    • In Millinery Creator’s Guild v. FTC, a 1941 case also heard by the Supreme Court, focused on restricting trade related to the production of woman’s fashion hats.10 In Millinery Creator’s Guild, “the members of the guild were designers and manufacturers of women's hats, and it was stipulated by the parties that tendency and purpose of the plan under which the guild operated was to limit retail dealers and deprive the public of the benefits of competition as to price and otherwise in the sale of stylish hats.”11 The Commission found that the effect of the plan was to limit competition and create a monopoly in the sale of women’s hats. The Court held this case was parallel to Fashion Originators’ Guild but the plan did not explicitly state price-fixing, any illegal restraint of trade, deterioration of product quality, nor show any monopolistic characteristics. Rather, the plan requires competition by member’s skill and organization rather than by appropriation of skill and organization of others through limiting the retail dealers’ source of supply to inhibit price competition.12 Despite the holding in Fashion Originators’ Guild and Millinery Creator’s Guild, efforts to restrict design piracy have still been attempted by various entities through other traditional forms of intellectual property rights. Intellectual Property Protection a. Copyright Copyright protection is the main form of intellectual property protection for creative works of artistic expression and is currently based upon the laws of the 1976 Copyright Act. Copyright law is federal and governed by the United States Code Section 17. Under 17 U.S.C. §102(a), “copyright protection subsists…in original works of authorship 10 Millinery Creator's Guild, Inc. v. Federal Trade Com., 312 U.S. 469 (1941). 11 Id. 12 Id. 7
    • fixed in any tangible medium of expression.”13 Copyright protection is available to the copyright owner for the life of the author plus seventy years.14 Copyright protection is available for an extremely broad range of expressions, including literary works, music, choreographic expressions, paintings, drawings, sculptures, and even architectural works.15 Copyright protection is, therefore, available for a wide array of creative expression. For a work to be copyrightable, it must be original. “Original, as the term is used in copyright, means only that the work was independently created by the author…and that it possesses some minimal degree of creativity.”16 The term original was under question in Feist because the subject matter was focused on whether or not telephone directories are copyrightable. The Feist Court found that although the facts, the names and contact information of the people, were not copyrightable, the actual organization and details of displaying the facts were a mode of creative expression and thus protectable under copyright law.17 A scintilla of creativity is necessary, at least, to gain protection. In 1903 the Supreme Court first began to analyze the term original in Bleinstein v. Donaldson Lithograph Company. In Bleistein, the Court was dealing with chromolithograph designs that were created for an advertisement by the plaintiff through derivative works.18 The question was whether or not the plaintiff’s chromolithographs were protected by copyright law and, if such protection exists, whether or not the defendant’s infringed the 13 17 U.S.C. §102a 14 17 U.S.C. §302 15 17 U.S.C. §102a 16 Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). 17 Id. 18 A derivative work is a personal reaction to an original work of expression. The copyright protection extended to the derivative work is the originality found in such derivative work and is protected independently from the original work. Copyright protection for derivative works is available because of fair use and is protected under 17 U.S.C. 103 and 107. 8
    • plaintiff’s works. The court held that chromolithographs are protectable by copyright law because “originality appears to lie in the very act of producing the tangible work, rather than in the act of forming an intellectual creation in the mind, then transferring it to written form.”19 Thus, originality is focused on the actual product not the way in which it is derived. The Court, in regard to copying, recognized that “if a copyrighted article has merit and value enough to be the object of piracy, it should also be of sufficient importance to be entitled to protection.”20 This established concept of protecting expressions that succumbs to piracy should apply to fashion design. Fashion can be original in design. If it were not, then fashion week would not receive the hype and revenue as it does—twice a year in the cities of glam. Just like car shows that reveal the newest, latest and greatest aerodynamic design for a sports car or a SUV created by an engineering team, a runway show is a fashion designers opportunity to first display their new creative idea. Copyright protection is already available for jewelry. The protection is available to the extent of utilitarian purposes. Thus, in Kieselstein-Cord the Southern District Court of New York held that protection was available to the artistic design of a belt buckle to the extent that no utilitarian purpose exists in the copyrighted material.21 The court found that jewelry qualified as a type of structural design. The court went on to state: The belt buckles in this case seem to belong more to the world of fashion design than to the world of literature and art, which is the traditional domain of copyright law. The status of designs for clothing is instructive. The design superimposed on a fabric is copyrightable, whereas the style of the dress (even an expensive Parisian couturier's design) in which the fabric is used is not no matter 19 Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903). 20 Id. 21 Kieselstein-Cord v. Accessories by Pearl, Inc., 489 F. Supp. 732 (S.D.N.Y. 1980). 9
    • how original, ornamental, or nonessential for function that design may be. The fabric design can be seen as a separable artistic element, whereas the overall dress design like the overall shape of the belt buckle cannot.22 It would then appear that a major concern in copyrighting fashion design lies in the overall creativity imposed in the designs. It is alarming for the court to note that the design imposed on a fabric is copyrightable but the style of the dress is not. The design imposed on a fabric could be more than just the textile design on a fabric and rather be the design cut of the dress. It is then a question of whether or not the design cut is original enough to be afforded copyright protect. For an expression to be original, creativity is required. Creativity is an important aspect of copyright. Copyright protection is available for original works of art. Original works of art are inherently creative. When dealing with fashion design it becomes a question of how much creativity must be present to create an original work of copyrightable expression. This would make sense in regard to simple, everyday designs of clothing, such as t-shirts or blue jeans. It is a slippery slope as to where protection starts and stops. That is a question of fact, rather than of law. Justice Holmes, in the 1903 Bleistein case, recognized that it is not for the court to decide what is art. Justice Holmes remarked: It would be a dangerous undertaking for persons trained only to the law to constitute themselves the final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge. (Emphasis added.)23 22 Id. 23 Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903). 10
    • Justice Holmes, in recognizing that judges should not determine the value of a creative work, has influenced courts to let the legislature determine what is and what is not protected by copyright law. The point Justice Holmes was making, however, was that no legal personnel should be allowed to dictate what constitutes artistic expression. It should, therefore, be acceptable to allow fashion design copyright protection if the minimum threshold of copyright standards are met. It is a difficult task to determine what is and is not protectable copyright subject matter and protecting fashion design has plagued the court and the legislature for the greater half of the century. An early case addressing a parallel issue to fashion design protection is Cheney Brothers v. Doris Silk Corporation where a court was evaluating whether or not protection was available for design prints on silk fabrics. These designs by the Cheney Brothers were new and unique each year. Doris Silk Corporation copied one of the most popular designs and undercut Cheney Brothers in the sale to the public. The Cheney Brothers requested protection for a single season but the 1929 court ultimately denied such protection.24 Nearly thirty years later the court again addressed the question of textile design copyright protection. In Peter Pan Fabrics v. Martin Weiner Corporation the question as to whether or not copyright protection extended to textile designs printed on fabric was infringed. The Second Circuit, in evaluating infringement of a copyright noted that “in the case of verbal 'works' it is well settled that although the 'proprietor's' monopoly extends beyond an exact reproduction of the words, there can be no copyright in the 'ideas' disclosed but only in 24 Cheney Bros. v. Doris Silk Corp., 35 F.2d 279 (1929). 11
    • their 'expression.'”25 The Second Circuit went on to state that the idea itself cannot be copyrighted – only the actual expression.26 When addressing potential infringement of screen prints on fabric the court stated: In the case of designs, which are addressed to the aesthetic sensibilities of an observer, the test is, if possible, even more intangible. No one disputes that the copyright extends beyond a photographic reproduction of the design, but one cannot say how far an imitator must depart from an undeviating reproduction to escape infringement. In deciding that question one should consider the uses for which the design is intended, especially the scrutiny that observers will give to it as used. In the case at bar we must try to estimate how far its overall appearance will determine its aesthetic appeal when the cloth is made into a garment. Both designs have the same general color, and the arches, scrolls, rows of symbols, etc. on one resemble those on the other though they are not identical. Moreover, the patterns in which these figures are distributed to make up the design as a whole are not identical. However, the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same. That is enough; and indeed, it is all that can be said, unless protection against infringement is to be denied because of variants irrelevant to the purpose for which the design is intended.27 The principles the court set out to determine if there is infringement of a textile design on fabric can also serve the general analysis to determine if copyright protection is available for a garment design. Extending the Peter Pan Fabrics analysis to determine if there is infringement of a fabric textile design could weigh in against fashion design by evaluating principles such as the cut of the design, the previous known designs, the cost of producing the garment, the number of garment reproductions, and the overall originality of the garment expression. The slippery slope argument would cease at the point where there is functionality to the design and where the protection extends into common, ordinary design. The question of common design would, unless obvious, become a question of fact. 25 Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (1960). 26 Id. 27 Id. 12
    • Another example of when the courts were determining if copyright protection extended to lace designs used in fashion. In Thomas Wilson and Company v. Irving J. Dorfman Company the Second Circuit, in 1970, reviewed the validity of copyright in the designs of lace used in lingerie. In Thomas Wilson the defendant was given a sample of the plaintiff’s lace by a customer of the plaintiffs with a request to produce a similar product at a reduced price. 28 The willful infringement of the defense was claimed as acceptable because there was a lack of “creativity” found in the pansy lace design. In its ruling the court acknowledged that the plaintiff’s staff was the original creators of the design and “the configuration of the design, including such details as petals and leaves, required an appreciable amount of creative skill and judgment.”29 Ultimately, the Second Circuit Court affirmed the district court’s ruling that there was sufficient creativity displayed in the lace design to constitute a valid copyright and the defendant did infringe such copyright. Likewise, in Eve of Milady v. Impression Bridal the Southern District of New York court was determining if copyright protection should be extended to bridal gown dress designs. In Eve of Milady the plaintiff requested a preliminary injunction to prevent the defendant from infringing the copyright or trademark of the plaintiff and entering into unfair competition by producing and selling replica bridal dresses at reduced cost.30 The copyrightable material on the dresses was the lace designs rather than the bridal gowns because these designs are considered a form of “writings” under copyright law.31 Ultimately, the court granted the preliminary injunction because potential irreparable harm was shown along with the likelihood of infringement of the copyright. 28 Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409 (1970). 29 Id. 30 Eve of Milady v. Impression Bridal, 957 F. Supp. 484 (S.D.N.Y. 1997). 31 Id. 13
    • As indicated in Eve of Milady, the issues of protecting fashion design spread beyond just copyright law because designers face multi-levels of legal issues, such as unfair competition, trademark infringement or patent infringement. Although copyright appears as the most sensible form of intellectual property protection available for fashion design, a brief analysis of previous attempts of protection under trademark and patent law should be explored. b. Trademark A trademark is a word, name, symbol, device, or other designation, or a combination of such designations, that is distinctive of a person’s goods or services that is used in a manner that identifies and distinguishes such goods or services from competitors. Trademarks are not required registration with the United States Patent and Trademark Office. However, registration provides constructive notice and is a strong form of intrinsic evidence to prove effective date of use of a trademark. There are five levels of trademark distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful. Generic distinction is not afforded any copyright protection. Descriptive trademark protection is allowed if the owner of the mark can prove secondary meaning. Suggestive, arbitrary, and fanciful are known as technical trademarks and no secondary meaning is necessary for full protection. Trademarks are source identifies and serve an important role in the fashion industry. Most designers have a trademark to represent their brand and line of clothing. Sometimes the trademark is displayed in an emblem, such as Russell Simmons’ Babyphat cat, ADDIDAS’ three stripes or Tommy Hilfiger’s classic white and red block symbol or is displayed in a signature of the designer, such as Sean Jean or Michael Kors. Source identifiers carry into fashion design frequently. It is the emblem itself that creates the look of some fashions. 14
    • For example, the ADDIDAS three stripe trademark is well-known but livid sports players and young hipsters alike and the stripes are not only accents to the clothes and shoes but truly the design that sell the clothing. It is protection of such emblems that is allowed by trademark. It then becomes a question as to what extent the trademark makes the clothing where protection should also extend into the actual fashion design. A well known case of unfair competition through creating “knock-off” creations of a designer is Walmart v. Samara Brothers. In Samara Brothers, Samara Brothers brought suit against Walmart for trade dress infringement under Section 43(a) of the Lanham Act.32 Essentially, Walmart went to a third party manufacturer with pictures of the Samara Brothers children’s clothing, complete with trademarked designs, in hopes of a reproduction.33 The manufacturer agreed to produce look-a-like designs, which were sold in the Walmart stores at a reduced price. The designs were not registered with the PTO and thus a common-law action was brought by Samara Brothers for trade dress infringement. The court held that the trade dress is afforded protection if the design is inherently distinctive or if secondary meaning is established.34 Ultimately, the district court ruled with a jury, and the court of appeals affirmed, the injunctive relief sought along with a violation of copyright, unfair competition and trademark law with damages totaling 32 Lanham Act §43(a) False Designation of Origin, occurs when: (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which – a. Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. 33 Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000). 34 Id. 15
    • $1.6M. The Supreme Court, in reviewing the trademark violation through illegal copying trade dress, stated that trade dress was “a category that originally included only the packaging, or "dressing," of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product.”35 Thus, trade dress is based on a product’s total image and overall appearance to customers. It determined that design is not inherently distinctive because it would not allow for competition in the marketplace. The Supreme Court, ultimately, reversed and remanded the case to the Second Circuit because it was found that trade dress is not inherently distinctive and can only gain legal protection if secondary meaning is shown.36 As the Court noted, trade dress is becoming more prevalent to protect design. Similarly to Samara Brothers, in the case of Knitwaves v. Lollytogs the court was evaluating an unfair competition suit after the defendant created a substantially similar design on children’s sweaters to that of the plaintiff.37 Knitwaves, a children’s clothing designer and manufacturer, produced a line of sweaters that were eco-themed. Lollytogs, a competing manufacturer, introduced a sweater line that was similar to Knitwaves. Knitwaves brought suit for copyright infringement and unfair competition under the Lanham Act and New York law. Knitwave claimed their sweater design with matching skirts and pants utilized innovation color schemes unique to their line.38 Lollytog admitted that their sweater set designs had the “same feel” as Knitwaves but claimed that their design was different enough to avoid infringement. Lollytog, while working with their manufacturer, gave instructions to reproduce a background stripe that was identical to 35 Id. 36 Id. 37 Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (1995). 38 Id. 16
    • Knitwaves and provided picture examples of the sweater stripe. The district court rejected the testimony of Lollytog that the designs were meant to be different and instead concluded that Lollytog’s intent and actual manufactured goods were knock-off reproductions.39 The district court granted an injunction against a continued sale of the goods and that because Lollytog’s violation was willful Knitwave was entitled to an order requiring an immediate recall of all Lollytogs’ infringing sweaters. The Second Circuit, ultimately, held that the district court properly found that Lollytogs illegally copied Knitwaves designs in two sweaters, in violation of the Copyright Act, but there was no violation of unfair competition. The problem with the district court’s analysis of unfair competition rested in the notion that Knitwaves’ sweaters were inherently distinctive and there was a likelihood of consumer confusion between the products. The Second Circuit found that the Knitwave designs were primarily aesthetic and were not used as source identifiers. When the marks under question are not considered source identifiers, then an action for trade dress infringement cannot prevail. The Circuit, therefore concluded, that the copyright of the sweater designs was infringed but no infringement of trade dress existed. As it is apparent that a cross-over of law exists in defining how to protect fashion design, it is clear that there must be a unique and creative aspect in the design. If the design is not considered original, copyright protection is not available. If the design is not distinguishable enough to serve as a source identifier, then trademark or trade dress protection is not available. In either of these types of protection, the basis of protection is for artistic expression. Patent protection, on the other hand, is based on the utility of the 39 Id. 17
    • good. Some designers, in an alternate method of searching for protection of their fashion design have attempted protection through patent law. c. Patent Patent law was established at the founding of the U.S. government. The U.S. Constitution authorizes Congress “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”40 The founding commissioner of the United States Patent and Trademark Office (USPTO) was Thomas Jefferson. Patent protection is extended to protect new ideas of utility. A patent provides a property right—mainly the right to exclude. This is unique to copyright law, which only affords protection to actual expressions and leaves full opportunity for one to create an alternative expression as long as it is not substantially similar to the original. In the protection of ideas, a wider array of potential legal protection is available. To protect an idea, a person must file and receive approval from the USPTO. Protection is available to the claims disclosed in a patent and the patent claims are read in light of the specifications. The specification provides a written description of the invention along with the method of creating the invention and a best mode in carrying out the invention. Alternative uses or bi-products are also disclosed in the specification. Legal protection is only extended to what is actually claimed, although patents of economic worth are litigated over to determine the actual meaning and intent of the language claimed in a patent. Fashion design, while usually based on creative elements and not utility, does occasionally spring up as a patentable idea rather than a copyright expression. 40 U.S. Constitution. Article I Section 8 clause 8. 18
    • A primary foundation case outlining protectable patent design is Gorham Company v. White. In Gorham, the 1871 Supreme Court was evaluating whether or not the designs of silverware was infringed by a competitor.41 Design patents are afforded for creations of manufactured decorative arts. An infringement of a patent design occurs if substantial similarity is found through the differences in the lines, configuration or the modes by which the aspects they exhibit are considered. The Court realized, however, that the controlling consideration of infringement is the resultant effect—the actual design appearance—of the products in question.42 The Court, in reference to the Patent Act of 1842, stated that design infringement exists if an ordinary observer cannot differentiate between the two designs. After the Court heard testimony by multiple influential people in the cutlery and jewelry industry, the Court concluded that a patent design infringement existed if the designs appeared similar enough to deceive a person to interchangeable believe one pattern is that of the other. On remand, the Second Circuit found infringement because the designs were similar enough to deceive the ordinary observer. Attempts of design piracy have also spread into varied clothing designs with patent design protection. For example, in Avia Group International v. L.A. Gear California, the court was reviewing the potential infringement of two Avia ornamental design patents by two of L.A. Gear’s design patents.43 The patent designs under question relate to the sole of sneakers. The district court found, on summary judgment, L.A. Gear willfully infringed the Avia patents because there was no material fact in question. The Federal Circuit, in review of the district court noted that “under 35 U.S.C. § 171, a patent may be obtained on the design 41 Gorham Co. v. White, 81 U.S. 511 (1872). 42 Id. 43 Avia Group International, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557 (1988). 19
    • of an article of manufacture which is ‘new, original and ornamental’ and ‘nonobvious’ within the meaning of section 103.”44 The court, in recognizing that functional patents are not allowed, stated that ornamental design patents are allowed when the primary purpose of the design is not functional. The court noted that infringement of a patent can be found even when an infringer does not produce a product, which is a key difference between copyright and trademark verses patent law.45 Ultimately, the Federal Circuit affirmed the district court’s ruling in full. The holding of Avia Group demonstrates that even patent protection is available to a degree for fashion design as long as the statutory requirements of patent law are met by the applicant. With findings of intellectual property protection spanning across copyright, trademark, and patent law to certain degrees, there is a genuine issue as to where fashion design should ultimately be afforded protection. Designers, in not being afforded a genuine statutory provision to protect their artistic fashion, continually attempt to carve common law protection. If there was genuine statutory language protecting fashion design the current state of protection would not be in a current piece part meal spanning across the different corners of intellectual property. Limitations on Protection One of the likely issues with providing intellectual property protection extend to fashion design is determining where the limitation exists in extending protection. If there was copyright protection for fashion design, other industries of design may raise brows and desire protection for their creative expressions. For example, if protection existed for 44 Id. 45 Id. 20
    • fashion design, cosmetologists may also begin to demand protection for unique and popular hair styles; the Jennifer Aniston “Rachael” cut was extremely popular in the mid 1990’s and polls indicate that over 50% of the American female population have tried the haircut.46 The original hair stylist, despite the fame for creating a famous cut, would likely prefer to have copyright protection and associated royalties for their creative expression. Likewise, another type of design that may desire copyright protection is make-up. For example, make-up design continues to grow more extensive as movies, television and theatre continue to grow in production and economic investment. It would be obvious that a make-up artist that does common make-up such as foundation, gloss and mascara should not receive protection. However, make-up artists, such as Jean Ann Black who worked on Curious Case of Benjamin Buttons or Ron Perlman who created the looks of Hellboy or Rick Baker who led the make-up team for the X-Men Movie characters, deserve copyright protection for their original creations as well. It should become an irrelevant concern as to whether or not the creations are likely to be replicated. The question should be whether or not protection is allowed for these creative expressions. The limitation of protection for creative expressions is difficult to reconcile. The Court has long held that it is not for those who practice law, in any form, to dictate where creativity begins and ends in intellectual property. Yet, it is the responsibility of the legislature to create the arbitrary lines of what is and is not protected. This imaginary line is drawn at the point where new, creative expression is demonstrated in copyright and where new useful invention is found in patent law. The primary problem with fashion 46 See Jennifer Aniston in Famous Friends Hairstyle called “The Rachael,” Beautiful Hairstyles. http://www.beautifulhairstyles.com/jenniferaniston/rachel.html, (last visited April 26, 2009). 21
    • design is determining where the creative expression is considered “new” and where it is not considered an element of “utility.” The secondary issue with fashion design is regulating competitors from engaging in unfair competition or in modifying designs just enough to allow for fair use or a derivative work. Conclusion As fashion design continues to grow through the wide-spread hype of the media and the investments made by consumers, the heightened need to statutorily protect fashion continues. It was nearly seventy years ago when designers first attempted to organize and protect their marvel ideas. Although the Supreme Court dictated that antitrust laws were violated by the Fashion Originators’ Guild and Millinery Creator’s Guild, the idea of organized protection of fashion design has continued to exist. Many designers have found alternate routes to protect their intellectual property through common law trademark, copyright law and patent design. Even with the lack of effort made by the legislature thus far to protect fashion design, “the Federal Trade Commission itself has specifically condemned the piracy of patterns, styles and designs.”47 The Court has continued to view that “the conduct of the copyist is "wrongful," that is to say, it is condemned by both the courts and society.”48 However, acts of unfair competition through design piracy continue to persist in retail fashion. Until statutory protection is properly provided, design piracy will continue to plague the fashion industry, and “while no plagiarist can excuse the wrong by showing how much of his work he did not pirate, a defendant may legitimately avoid infringement by 47 Fashion Originators' Guild, Inc. v. FTC, 312 U.S. 457 (1941). 48 Id. 22
    • intentionally making sufficient changes in a work which would otherwise be regarded as substantially similar to that of the plaintiff's."49 Patent law is currently under a necessary revival in the statutory provisions protecting utility ideas; it is also time for copyright law to afford fashion design adequate protection. 49 Warner Bros, Inc. v. American Broadcasting Cos., 654 F. 2d 204, 211 (1981). 23