This document summarizes Margaret Hallet's paper on fashion design and intellectual property protections. It discusses the prevalence of copying in the fashion industry and how technology has impacted copying. It examines where fashion fits within existing intellectual property frameworks like copyright, trademark, and patent law. It also reviews the current intellectual property protections available in different countries and proposed protections in the US. Finally, it discusses the impact of low intellectual property protections on the fashion industry and economy.

1. Fashion Design:
Thinking Across Boundaries
Margaret Hallet
University of Connecticut
School of Law
May 2008

2. 2
Overview
 Prevalence of Copying in Fashion Industry
 Impact of Technology on Copying
 Where Does Fashion Fit Within Various IP
Protections?
 Current Status of IP Protections Available to
Fashion Designers
 Impact of Low-IP Equilibrium in Fashion Industry
 Where Do We Go From Here?

3. 3
Prevalence of Copying in the
Fashion Industry
 Widespread and largely accepted
 Large retailers like H & M and Zara actually
specialize in copying
 Trends are created by copying and remixing
designs

4. 4
Impact of Technology on
Copying
 Digital photography
 Digital design platforms
 Internet
 Global outsourcing of manufacture
 More flexible manufacturing technologies
 H & M Designer Allen Schwartz declares that he
has “collections that emulated runway trends,
which would be delivered to stores so quickly,
they beat other major designers to the racks.”

5. 5
Zara
 Spanish retail chain that uses a proprietary IT system
to shorten their production cycle.
 Company receives daily email streams from store
managers signaling new trends, fabrics, and cuts from
which its designers quickly prepare new styles.
 Fabric is cut in an automated facility and sent to
workshops.
 High-tech distribution system ensures the finished
items are shipped and arrive in stores within 48 hours.
 Entire process takes 30 days (most competitors take
from 4-12 months).

6. 6
Independent Designers
 Favianna
 Clothing company manufactured copies of designer
dresses worn by celebrities at the 2006 Emmy Awards
three days after the event.
 Narcisco Rodriguez
 Rodriguez designed Carolyn Bessette
Kennedy’s wedding gown.
 One copyist sold 80,000 copies.
 Rodriguez was only able to sell 45.

7. 7
Application of IP to Fashion
 Copyright
 Trademark
 Trade dress
 Patent

8. 8
Copyright
 EU:
 IP Protection based on © law
 US:
 Most promising form of protections
 needs only to be “original” – much lower bar than “novelty”
 No filing requirement; protection is secured automatically
when the work is created
 Lack of protection stems from rule largely denying ©
protection to the class of “useful articles”
 Sketch may be protected, but not actual garment
 © law does not apply since the article’s expressive
component is not separable from its useful function

9. 9
Trademark
 Useful when a fashion design visibly
integrates a trademark to an extent
that it becomes and element of the
design
 Ex: Burberry’s distinctive plaid
 Ex: Louis Vuitton handbags covered with “LV” mark
 For a majority of garments, the trademarks are not
visible or only subtly displayed (on buttons, tabs on
side or back of item) and, therefore, do not prevent
design copying.

10. 10
Trade Dress
 Limited to non-functional design elements that are “source-
designating” rather than merely ornamental.
 U.S. law: Wal-Mart Stores, Inc. v. Samara Bros., Inc. held
that product design “almost invariably serves purposes
other than source identification.” Someone seeking TD
protection for any product design is required to show that
the design has acquired “secondary meaning.” To meet
this requirement, a designer must show that “in the minds
of the public, the primary significance of a product feature
or term is to identify the source of the product rather than
the product itself.” 529 U.S. 205 (2000)
 Standard is hard to meet in fashion industry, especially by
new designers due to costs, time, and uncertainty.

11. 11
Patent
 Substantive Issues:
 Design patents are limited to designs that are truly “new” &
must be novel and non-obvious
 Does not extend to designs that are merely re-workings
 Design patents sometimes encounter problems with
functionality
 Procedural Issues:
 Process of preparing a patent application is expensive and
lengthy
 Design patents are too slow given the short shelf-life of
most fashion designs (often more than 2 years)
 Uncertainty (approx 1/3 applications denied)

12. 12
Current Status of IP Protections
Available to Fashion Designers
France
 “unity of art” approach
 Protection is provided under sui generis design laws and ©
laws
 1994 – Yves Saint Lauren successfully
sued American designer Ralph Lauren
from copying a popular design for a
tuxedo dress in French court under
© law in Societe Yves Saint Laurent
Couture S.A. v. Societe Louis Dreyfus
Retail Mgmt. S.A., [1994] E.C.C. 512
(Trib. Comm. (Paris)).

13. 13
Japan
 Protects the form, pattern, or color of an object
 Requirements include: visual appeal to aesthetic
sense, industrial usability, novelty, ease of creation,
and uniqueness
 Length of protection: 20 years
 Registration takes an average of 6-7 months
 No fashion designs listed as registered on the
Design Gazette (where registered designs are
published)

14. 14
EU Protections
 Created uniform design protection for fashion designs
 Design must be new and give an overall impression different from
known designs
 Design = “the appearance of the whole or a part of a product
resulting from the features of, in particular, the lines, contours,
colors, shapes, texture, and/or materials of the product itself and/or
its ornamentation”
 Unregistered
 Protects against deliberate copying
 Term- 3 years starting from date on which the design is first made
available to the public in any of the 25 countries of the EU
 Registered
 Protect against both deliberate copying and the independent
development of a similar design
 Term – 5 years, renewable for 4 additional 5 year renewable terms

15. 15
US Proposed Protections
 Design Piracy Prohibition Act (H.R. 5055/H.R. 2033) –
currently pending
 Expansion of vessel hull protection provided in Ch 13
of the Digital Millennium Copyright Act
 Would provide limited © protection to fashion designs
 Fashion design = “the appearance as a whole of an
article of apparel, including its ornamentation”
 Must be attractive or distinct in appearance to the
purchasing or using public
 Term of protection – 3 years
 Registration – creator must register the design within
3 months of the design’s publication

16. 16
International Agreements
 Berne Convention for the Protection of Literary &
Artistic Works
 Preable provides that signatories are “equally animated by
the desire to protect, in as effective and uniform a manner
as possible, the rights of authors in their literary and artistic
works.”
 Does not include fashion design in its list of what falls
under “literary or artistic works,” but some have suggested
that it is implied
 Interpretation has not yet been addressed by WIPO, which
acts as the administrative arm of Berne
 Only applies to the extent such protection is afforded to
nationals under a country’s own domestic regime.

17. 17
International Agreements (cont)
 Trade-Related Aspects of IP Rights (TRIPs)
 Seeks to harmonize international IP rights by setting a minimum
level of protection each signatory government must provide
 Article 25(2) states: “Each Member shall ensure that
requirements for securing protection for textile designs, in
particular in regard to any cost, examination or publication, do
not unreasonably impair the opportunity to seek and obtain such
protections. Members shall be free to meet this obligation
through industrial design law or through copyright law.”
 Under narrow reading, US is in compliance due to limited TM and
© protections available
 Under broad reading, it may be construed that signatories must
provide IP rights equivalent to those given to other artists; in this
case, US would be in breach

18. 18
Impact of Low-IP Equilibrium
in Fashion Industry
 Impact on economy
 Benefits to industry as a whole
 “The Piracy Paradox”
 Induced obsolescence
 Anchoring
 Negative impact on SMEs

19. 19
Impact on Economy
 Knock-offs provide less expensive copies and
have economic utility
 IP protections will slow the fashion cycle leading
to higher prices to offset lack of demand for new
trends
 Licensing costs resulting from IP protection
increase prices
 IP protections did not negatively affect other
industries such as music and film

20. 20
“The Piracy Paradox”
 Introduced by Kal Raustiala & Christopher
Sprigman
 Copying fails to deter innovation in the fashion
industry because copying is not very harmful to
originators, and may actually promote innovation
and benefit originators.
 Reasons
 Induced obsolescence
 Anchoring

21. 21
Induced Obsolescence
 Fashion is a status-conferring or “positional” good
 As a design begins to spread, its status-conferring
value grows.
 Once the design is so wide-spread, though, it
reaches exhaustion, and people look to the
fashion industry for new designs.
 Copying and re-working designs speeds up this
process.
 Some argue that the industry’s goal is to quickly
exhaust the status-conferring value of clothes to
induce us to chase the new thing.

22. 22
Anchoring
 The process by which the fashion industry is able
to put consumers on notice of changes in fashion
trends.
 The industry communicates the latest trend by
flooding the market with a large number of copies
and derivative re-workings of a limited number of
designs each season.
 Copying helps to anchor the new fashion season
to a limited number of design themes, which are
freely workable by all firms in the industry within
the low IP equilibrium.

23. 23
Christian Louboutin:
Original Designer of
the Platform Pump
The Platform Pump
Brian Atwood
Gucci
Michael Kors Diba

24. 24
Effect on Fashion Industry as a
Whole & Large Retailers
 This cycle promotes innovation by creating a
large demand for new designs and trends.
 Large retailers like H & M and Zara base their
central business model on the copying of design
elements that appear on runway shows.

25. 25
Effect on SMEs
 SMEs take many forms: designers, manufacturers
 Pros of IP Protections:
 Often SMEs do not have the money or technology to
mass produce copies.
 Little incentive for SMEs to innovate if their design can
be stolen by large retailers who have the ability to take
the designs to the marketplace faster.
 IP protections and licensing is important to protect the
SMEs
 Cons of IP Protections:
 SMEs can also be copycats

26. 26
B. Shaps, a.k.a. the “Golden Boy”
 Rivalry between the Golden Boy and Donny Maharelli.
 By age of 27 each had begun his own fashion company
 The Golden boy in France reinventing European classics
 Maharelli in U.S. reinventing American classics
 In 2008, Maharelli’s business suffered as new designers
sprung up and European styles grew in popularity.
 He sent assistants to the Golden Boy’s fashion shows
throughout Europe, had them take digital photos and email
them back.
 Maharelli’s knock-offs reached the public before the Golden
Boy’s original designs, resulting in significantly decreased
sales for the Golden Boy.

27. 27
Brimful Designs
 A small textile design studio in Lahore, Pakistan
making high quality printed cotton designer clothing.
 Faced large scale copying in 2003 that almost put
them out of business.
 Salesmen used the designer’s product
catalogue, confusing Brimful’s loyal
customers

28. 28
Underutilization of IP
Protections in Fashion
 Review of EU fashion design registration database for all
apparel registered from Jan 1, 2004 – Nov 1, 2005 showed
only 1631 fashion designs had been registered (approx
800 “designs” were plain t-shirts or other tops with TM or
pictorial works, pocket stitching for jeans, and athletic wear
bearing TMs)
 Small number of companies registered their designs
 Street One GmbH, a mid-tier German fashion firm was
solely responsible for 409 registrations.
 Those seeking protection appear to be largely SMEs

29. 29
Possible Explanations for
Apparent Underutilization
 Costs
 Time
 Threshold for originality may be too low
 Figures may be misrepresentative
 Designers may be opting for unregistered free 3-
year protection
 3 ways to register
 With individual member state
 With WIO through the Hague Agreement
 With the Union-wide Community design system

30. 30
Moving Towards Utilization:
Brimful Designs
 Large scale copying in 2003 that almost put them out of
business.
 Consulted experts at an IP training seminar sponsored by
Pakistan’s Small and Medium Enterprise Development
Authority (SMEDA) who recommended seeking protection
under Pakistan’s Industrial Design Ordinance 2000.
 Registered all designs for the Yahsir Waheed Designer
Lawn Collection.
 Infringers are no longer making exact replicas, but copies
are still close enough to confuse buyers.
 Brimful owners complain about high costs of legal counsel,
and lengthy process of obtaining & implementing a court
injunction.

31. 31
Finding the Right Balance
 No indication that existence of IP protection has harmed
the fashion industry
 There is evidence that a lack of protection has harmed
SMEs
 Important to provide the appropriate form of IP protection:
 Time
 Must be available immediately to protect designers
 Must not last too long to protect the fashion industry and the public
 Coverage
 Protection for parts of a design is important
 Need appropriate threshold of originality requirement
 Effective Policing