1. 1
Protection of Intellectual Property in
Fashion Industry
Paper written by:
Christian Lattanzi 1693101
Course on Intellectual Property Law
Tongji University, 2016

2. 2
Table of contents
Title Page
1. General overview 3
2. The protection of Fashion 3
3. Fields of IP Protection 5
3.1 Copyright 5
3.2 Design Patents 6
3.2.1 Utility Patents 8
3.3 Trademark 9
3.3.1 Trade Dress 10
4. Conclusion 11
5. References 13

3. 3
1. General overview
Innovation and creativity are two abstract concepts that apply in concrete objects and everyday life.
Therefore, common sense affirms that they must be protected in order to ensure their development. It
incentivises creators to work, without the threat of being unable to profit. Yet, despite the lack of intellectual
property protection for fashion, the business is more and more profitable every year, and designers
continuously present new looks.
The aim of this paper is to present the extent of protection of intellectual property regimes in fashion industry,
to explain and examine the aforementioned apparent paradox and contradiction. Finally, a discussion
concerning whether or not IP should apply in this field will be analysed, presenting arguments of both sides
in the debate.
2. The protection of Fashion
U.S. has been enlarging the protection of intellectual property by applying it to more and more fields,
especially in recent years. Plant designs, business methods, distinctive organizational models are now areas
have been now covered by IP, while the former trend by U.S. Patent and Trademark Office was to deny

4. 4
coverage. Copyright expiration terms now can extend up to a lifetime plus 70 years after, far longer than the
14 years initially stated in the Constitution.
In all this tendency to grant protection, though, the fashion industry receives little consideration under
current U.S. intellectual property laws. Some fashion houses already tried to obtain recognition of IP rights
for their design. Most of these efforts were vain; in fact, just a few of them have succeeded in protecting
limited design elements. Counterfeiting looks like a common practice nowadays, and knockoff goods can
easily be found. If these phenomena are so widespread, then how can style houses be so successful even
today?
This is a short overview of categories of IP protection in the Fashion industry:
 Designs, particularly for clothing, fall between the seams of traditional intellectual property
protections.
 Copyrights generally does not cover apparel because articles of clothing, which are both creative and
functional, are considered "useful articles" as opposed to works of art.
 Design patents are not applicable, since clothing usually do not meet the requirements of:
o Patentability
o Novelty
o Nonobviousness
 Trademarks only protect brand names and logos, and the Supreme Court has refused to grant trade
dress protection to apparel designs.
Moreover, Congress has declined multiple times the willingness to enact legislation that would provide
general protection over apparel industry.

5. 5
Non-applicability of laws and doubts about how fashion designs should be considered is one of the main
points. The other big issue is that policymakers and courts expressed concerns that, while such protection
might benefit certain designers, it could create monopolies in the fashion industry.
That would curb future designers with creative ideas, limit the free competition market and penalize the end
consumer. As one judge put it, "Congress and the Supreme Court have answered in favour of commerce and
the masses rather than the artists, designers and the well-to-do." There are some designs, and shapes,
commonly used by many firms, and an appropriability regime would definitely put a big constraint on the
whole production.
3. Fields of IP Protection
3.1 Copyright
Copyright law is used to protect artistic creations and "applied art”. It does not protect "useful articles"
though, and clothing is primarily created with a functional intent, and then for aesthetics. Apparel designers
have tried to obtain copyright protection for their designs by suggesting that clothing is a type of sculptural
work, but their arguments typically failed due to the priority in the intent of the object.
Copyright law does protect aesthetic elements of a useful article if those features amount to works of art
"that can be identified separately from, and are capable of existing independently of, the utilitarian aspects
of the article." This "separability" rule was developed in the landmark 1954 case of Mazer v. Stein, in which
the Supreme Court held that Balinese statuettes that formed the bases of lamps were copyrightable because
the aesthetic work in question (a statuette) was separable from the useful article (a lamp).
The separability concept does not applies in case of garments though, therefore both Congress and the courts
have said that clothing design is not subject to copyright protection. Copyright Act explicitly stated that the
extension could not apply to "ladies' dress" unless it contains elements that distinguish from its original form.

6. 6
The application of this special case can be found in Kieselstein-Cord v. Accessories by Pearl, for the design of
high-end belt buckles. Kieselstein-Cord belt buckles were registered at the Copyright Office as "original
sculpture and design”, having even made their way into the Metropolitan Museum of Art's permanent
collection. Accessories by Pearl created knockoffs of the original by using common metal, and Kieselstein-
Cord sued for copyright infringement.
The district court found that the belt buckles did not meet the separability standard. The Second Circuit
reversed the decision since separability may include "conceptual" one, discerning between the aesthetic
design and the function of belts. The court concluded that the separable aesthetic elements should be
copyrighted.
In Carol Barnhart v. Economy Cover Corp., mannequins used to display clothing were merely useful articles
and did not have aesthetic elements that were conceptually separable from their utilitarian functions, and
thus they could not be copyrighted.
Clothing designs themselves are not copyrightable in general, but paintings and drawings on the surface are,
as independent and separable works of art. Fabric designs, patterns for knit sweaters, designs printed on
dresses and lace designs on wedding gowns have been held to constitute copyrightable subject matter.
Problem is that their protection usually is not strong enough, since it can be easily bypassed by using similar
visual contents, due to the fact that the copyright only applies when exact copies are made.
On the whole, then, copyright law affords little protection for clothing designs. Only when the principle of
separability applies, this looks as the best option. As a result, some fashion designers have turned to other
intellectual property regimes, such as design patents, to try to secure protection for their designs.
3.2 Design Patents

7. 7
At the current state, design patents are governed by §171, which states: "[W]hoever invents any new, original
and ornamental design for an article of manufacture may obtain a patent therefor[sic], subject to the
conditions and requirements of this title." The "conditions and requirements" referred to in §171 are those
of patentability.
Hence, the mandatory criteria are:
 Novelty
 Nonobviousness
 Not readily apparent to someone skilled in the art.
Design patents are intended to protect the "ornamental" portion of an item, which must be separable from
its function. Not only it is difficult to obtain the validation of a patent, but also whenever granted, design
patents provide 14 years of protection for the invention, compared to 20 years of protection for utility
patents.
There are two main obstacles in the patent examination process. First, it must be proved that the subject of
the design patent is novel and nonobvious enough to be distinguishable from previous types of clothing.
Second, design patent protection issues only when the design is not dictated by the function of the product
and is primarily ornamental. As in the copyright section, the concept of separability is hard to be found
applicable, mostly because the garments have a main functional purpose in their creation.
Design patents on athletic shoes is the category that saw most of the applications approved, and thus takes
a huge role in the percentage of the fashion IP litigation around the world. This is because some new elements,
or applied technology, have been fused with features in the design also served a useful purpose. And
although design patents have been granted to shoes on numerous occasions, courts have not upheld these
patents consistently.
Even if fashion designers were to develop a design that met the standards of novelty and non-obviousness,
the process of obtaining a patent (which tends to take around two years) would in most cases be too long

8. 8
and expensive to make patent protection a practical alternative. By the time the designer secured the patent,
it would be useless because the commercial lifespan of the design would have lapsed.
We must underline that the arguments for registering a new design have to be considered on a case-by-case
basis. Registering a design should help to deter others from copying it, and to fight unscrupulous competitors
who do so. Moreover, design protection is not always a major financial burden, at least to begin with. Some
countries and regions, such as the United Kingdom and the European Union (EU), offer an unregistered form
of protection for industrial designs for a relatively short period of time. Unregistered design protection,
wherever available, is extremely useful for fashion designers or businesses with limited budgets, and for all
those that wish to test market new designs before deciding which to register. The unregistered community
design right of the EU offers protection for a maximum period of three years, starting from the date on which
the design is first made available to the public in any of the 25 countries of the EU.
3.2.1 Utility Patents
Design patents are not the only category that is suitable for products in the fashion industry. Sometimes,
high level of technology is involved in the production of a garment or accessory, and therefore should be
protected due to the easier procedure in the validation. Yet technical innovation can equally put a fashion
business ahead of the competition. A portfolio of patents may, for example, reflect technical superiority in
inventing new fabrics that do not crease, or are softer, or more weather-resistant, et. Such a patent portfolio
could attract business partners or investors.
Novozymes, a Danish, biotech company specializing in enzymes and microorganisms, pioneered the use of
enzymes in the treatment of fabrics. Though not previously involved in the fashion industry, in 1987 the
company developed and patented a technology for the treatment of “stone washed” denim jeans. This
technology is based on an enzyme called cellulase, which removes some of the indigo dye from denim so as

9. 9
to give the fabric a worn look. Within three years, most of the denim finishing industry was using cellulase
under license from Novozymes. Today, Novozymes’ technology for improving production methods and fabric
finishing has been licensed worldwide. The company holds more than 4,200 active patents and patent
applications, and pursues a pro-active licensing strategy to maximize royalty revenue from these IP assets.
The Italian company Grindi Srl. invented Suberis, an innovative fabric made of cork, said to be as smooth as
velvet, light as silk, washable, unscratchable, stain-resistant, waterproof and fireproof. After testing and
codifying the treatment, Grindi filed an international patent application under the PCT in 1998 to protect its
unique product in a large number of countries. The Suberis fabric is used in the manufacture of clothing,
footwear and sportswear, as well as in many other applications.
3.3 Trademark
The importance of Trademarks is crucial for consumer protection function, because they help the buyer to
identify the source of the product. Trademarks protect only the link between the product and its source, not
the product itself. If the makers of knockoff goods affix their own trademarks to their products, then
trademarks actually can serve to distinguish knockoffs goods from originals and minimize consumer
confusion. Therefore, this kind of protection has two different characteristics from the IP forms
aforementioned:
 It is more general, it tends to be independent from the product itself, but more linked to the whole
company and brand;
 Usually is complementary to others, since it cannot protect the replicability of features of the good.
To be a registrable trademark, a name or symbol must be able to identify and distinguish a product from
other goods in commerce. Marks that are arbitrary or fanciful qualify for trademark registration almost
immediately, while marks that are descriptive, including surnames, must acquire "secondary meaning"

10. 10
before they may be registered. The term “secondary meaning” indicates a distinctiveness ex-post, acquired
using the trademark in the marketplace at a level that established a link between the brand and the name.
Protection against trademark infringement has been a key objective for many fashion houses. Consumers
may believe that the company actually produced the knockoff goods. This may be misleading; hence, it may
ruin brand reputation due to a product with a lower quality.
One famous case involves Calvin Klein, that sued a Hong Kong manufacturer for sale and distribution of goods
that the company had rejected for quality reasons, but were sold overseas with the trademark still attached.
Trademark infringement may also concern two big fashion houses, like Coach and Ann Taylor. The first one
sued the other for, among other things, an imitation of Coach's trademarked hanging tag. The Coach court
held that Ann Taylor's hanging tag was confusingly similar to, and infringed, the one used by Coach.
To understand the importance of trademarks though, we may also refer to the case of Pickwick. The Italian
clothes company now sells a range of casual fashion wear to adolescents across Europe. However, not that
back in time, all that the company had was the trademark itself, which depicted a young, faceless boy with a
spiky hairstyle. The trademark owner started his business by selecting items he judged would have particular
style appeal to teenagers, adding his distinctive trademark and distributing them through the local shops in
Rome. Initially, the business costs were kept low by operating from a garage.
3.3.1 Trade Dress
Trade dress protection is a relatively recent extension of trademark law. "Trade dress" refers to the unique
design or packaging of a product, such as the distinctive curve of a Coca-Cola bottle, but now "involves the
total image of a product and may include features such as size, shape, color or color combinations, texture,
graphics, or even particular sales techniques". There are some cases of registration of Trade dresses with the
Trademark Office, but most remain unregistered and must be protected by § 1125(a) of the Lanham Act. The

11. 11
principle applied is always the same, so that any infringement takes place when the design is misleading
enough to create confusion in the customer, not permitting him to distinguish the original and the other one.
Often courts deny trade dress protection, when it comes to fashion. Garment designs rarely will have a
secondary meaning because they are not intended to identify the source of the product, but instead aim to
make the product more useful or appealing. In addition, most fashion designs would be too short-lived to
achieve secondary meaning. The Court maintained this high threshold for trade dress protection in order to
benefit both competition and consumers, stating that "[c]onsumers should not be deprived of the benefits
of competition with regard to the utilitarian and aesthetic purposes that product design ordinarily serves."
In a recent dispute, design house Louis Vuitton alleged that Dooney & Bourke's "It Bag" with multicolored
"DB" monograms on white or black backgrounds infringed Vuitton's trade dress in its similar looking bags.
The court held that the trademark rights applied on LV marks, but not on the shape and the overall aesthetics
of the product. This decision is fostered by the fact the in fashion business, the concept of starting trends
that are followed by other firms is not only a common practice, but also an achievement. Therefore if this
was considered as an infringement, excessive trade dress protection would hinder competition.
Indeed, trademark laws seek to safeguard competition, and as the Supreme Court has observed, "copying is
not always discouraged or disfavoured by the laws which preserve our competitive economy."
4. Conclusion
"In order to be irreplaceable one must always be different." - Coco Chanel
With this sentence we can sum up the whole debate brought for the different aspects of IP protection I
fashion industry. On one hand the interpretation of the quote supports the theory of protecting unique
designs, patterns, shapes and product to prevent counterfeiting, brand misleading and to give them the
inestimable value they deserve. On the other hand, though, the sentence may state that the only way to be

12. 12
protected is to be constantly creative and innovative, and this could not be achieved by a too strict policy
over infringements, since after a while any kind of inspiration may be a trigger for a dispute, limiting the
capabilities of artists and designers. According to the traditional argument, without intellectual property
protection, artists will lack incentives to create and creative industries will wither. It is a powerful argument,
and one that has been extremely successful in justifying new rights – the music and film industries have used
it to secure a 20-year extension to the copyright term and a new right to control access to digital works.
We must notice though the status in the field nowadays. Despite the lack of intellectual property protection
designers continue to create and the industry continues to grow.
In the fashion industry, the absence of rights actually may feed the creative process. Fashion designers are
free to redesign elements without infringing intellectual property rights or being forced to enter into
contracts with, for instance, a design patent owner. Therefore, the general idea that "more rights"
automatically ensure "more creativity" does not apply to this case, also because profitability results show the
exact contrary.
With fashion, the constant frenzy of creation and imitation may actually drive rather than destroy the market
for original goods. The ubiquity of both original and knockoff good on the market makes the first one more
prestigious. By a premium price and an attention on the brand management, top-shelf goods become a sign
of social status quo.
Design houses recoup costs by focusing on a target of customers that represents a niche on the overall
framework, but that to be part of it is willing to pay a higher price since they can afford it. Instead, people
who could not afford it anyways will pay a lower price for a mere imitation.
As this paper has described, intellectual property has been expanding rapidly in recent years, driven by the
common thought that from more protection greater creativity and profits will follow. But looking at the
Fashion case, maybe we should question even other industries by analysing their result from a stricter policy.

13. 13
5. References
Strategy, organization & Management by Prof. Neirotti, Politecnico di Torino
Calvin Klein Industries, Inc. v. BFK Hong Kong, Ltd., 714 F. Supp. 78 (S.D.N.Y. 1989)
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 340 F. Supp. 2d 415 (S.D.N.Y. 2004)
http://www.timesofmalta.com/articles/view/20140716/business-news/Intellectual-property-rights-in-
fashion-industry.527886
http://www.wipo.int/sme/en/case_studies/suberis.htm
http://www.novozymes.com/en/Pages/default.aspx
http://www.wipo.int/wipo_magazine/en/2005/03/article_0009.html
http://www.yahsirwaheed.com/enter.htm
http://www.wipo.int/wipo_magazine/en/2014/03/article_0007.html