What is Intellectual Property?

Intellectual property can generally be broken down into three categories: Copyrights, Trademarks, and Patents, and Trade Secrets.

• A trademark is the protection of a name, symbol, or design, which is used to identify the source and quality of goods or services. A subpart of a trademark is a trade dress, which is “the overall appearance and image in the marketplace of a product or a commercial enterprise.  For a product, trade dress typically comprises of packaging and labeling. For an enterprise, it typically comprises of design and decor.”

• Copyright law protects works of original authorship, such as novels, poems, or musical composition.

• Patents protect ideas such as inventions or technological processes.

What Protections Are Applicable to Designers

As a designer, it is important to know what IP protections are applicable to you. Most likely, you will be trying to protect your brand or logo. This is a trademark protection. You may not think anyone would steal your logo designs, but you will be surprised. There are many people searching the Internet everyday looking for designs to steal. You are marketing your product on Amazon.com, an online platform where millions have access to your designs. Chances are, someone will try to steal your logo or copy your brand, and if that happens, you want to be protected.

Proper IP protections are essential to protect your business. While this does cost money, it is certainly worth the investment in the long run. So what IP protections apply to you? Most likely, you have not invented a new creation or technological process while creating your business as a fashion designer, so you will likely not need to register for a Patent. If you have drawn out your designs, you can get copyright protection so long as it is an original work of authorship. The second requirement for copyright protection is to have your original work made in a tangible form. This means it must actually be drawn out, either on canvas or paper; but it cannot just simply be an idea of a design. Say for example, you drew out a dress design on sketch paper, that design image is now copyrightable. However, once you turn the design into an actual dress, the dress itself is not copyrightable, only the image of the design. If you have more artwork or designs that are drawn out, you are able to copyright those images as well. However, if you only use these designs for your personal use, and you do not post or otherwise “publish” these images onto your business website, there is no real threat of people stealing your images, and therefore, it may not be worth the copyright protection.

If you are posting these images on an online platform, especially on your website, you may wish to protect the images. See Lucy A’lor Int’l v. Tappers Fine Jewelry, Inc., which was a copyright infringement case alleging the infringement of twenty-four jewelry designs. The court applied the “’inverse ratio’ rule, if a defendant had access to a copyrighted work, the plaintiff may show infringement based on a lesser degree of similarity between the copyrighted work and the allegedly infringing work.” You will need to make sure that you monitor your protections. As the plaintiff, you will need to demonstrate that there was an infringement to the court in order to be successful when litigating a copyright infringement.

Your company slogan, your company name or title can be protected, but it is not a Copyright. If you have created a slogan, you will need to register for trademark protection of the slogan. When you file for a trademark, you have the ability to enter your mark into the federal register, this way; your mark will be protected on a national scale. To help protect your clothing, add your logo on each clothing or apparel item. One may think that if they cannot obtain a trademark, they could obtain a trade dress. However, “trade dress protection, […] provides no remedy because fashion designs are functional. The functionality of fashion designs also precludes them from copyright protection, which is not applicable to ‘useful articles.’”

Your company name or title is what would be called a Business name registration. These are only protectable for your given state. However, it is possible for your business name to be both registered as a trademark, and in your state’s business registrar.

International Protections

The protections available for fashion designers vary based on what where the designer is domiciled. While the United States has very limited protection, there are different protections across the globe. Throughout most of the world, the way that trademarks are applied is that if you are the first to file in the system, you will be able to obtain protection for your mark. In Japan, their protects are expanded to include “form, pattern, or color of an object or a combination of these, which appeals visually to the viewer’s sense of aesthetics”. In Europe, their protections are based on a model that allows registered and unregistered designs to have protections. An unregistered design will have three years protection once the design has been made available to the public. These designs are protected based on their appearance. This protection typically provides the exclusive right for the use of a particular formation of lines, colors, shape or texture. However, these forms of protections are not made available to American designers. Compared to U.S. protections, international protections certainly prevail for the fashion designer.

History of IP Protection in the US

In the United States, there are more limitations towards design protection. However, this is not a result of lack of ambition by designers and politicians. There have been tremendous efforts put forth by individuals eager to have fashion designs protections enacted. These efforts have thus far been unsuccessful.

In recent years, Senator Chuck Schumer proposed the Innovative Design Protection Act in 2012. This act would provide copyright protection for fashion designers for three years. The bill was passed, but unfortunately for designers, was never enacted the next year.

Prior to this, Congress has spent many years trying to pass protection for designers. “The Design Piracy Prohibition Act (DPPA), [is] an act that seeks to protect designers’ original designs, hoping to limit and prevent counterfeits and copies.” This act would amend the Copyright act to provide protection of these designs for three years.

These bills have been unsuccessful due to a concern that customers would be robbed of their ability to purchase affordable clothing. The cycle of a trend is that top designers showcase a piece of clothing during fashion week. Their lines are released the following season. Retailers and other designers rapidly replicate these designs at an affordable rate, making the top trends available to customers at a highly discounted price. This process happens again and again and trends and popular items circulate. By having those designs protected, the lower level manufacturers and designers who replicate these designs would need to cease from selling any of those items. This would overall increase the cost of clothing, which has the potential to be detrimental toward the American economy.

However, basic Intellectual Property protections do exist. In 1946 by President Harry Truman passed the Lanham Act. This act governs trademarks, service marks, and unfair competition. According to the Amazon Law Library, there are two situations that typically arise involving Amazon and the Lanham Act: “(1) When a manufacturer sues Amazon directly, or an Amazon seller for a listing that used a trademark without the permission of the manufacturer, and (2) When a manufacturer sues Amazon, or an Amazon seller for selling items that are inauthentic or counterfeit and thus violate the Lanham Act for trademark infringement.” Typically, Amazon will not be held liable for infringements when other companies are selling the infringing items through their platform. See Milo & Gabby, LLC v. Amazon.com, where the court held that Amazon could not be held liable when a third party sold infringing goods on the Amazon platform because Amazon itself did not directly offer to sell infringing goods or engage in any other infringing acts.  

Case Law

The United States courts have litigated over protection of fashion designs. It was Abercrombie & Fitch Co. v. Hunting World, Inc. that established the distinctiveness test. This test determines the strength of a trademark and essentially will determine if a person’s mark is eligible for protection. The ruling set the precedent that generic terms are weak marks, and to strengthen a generic or descriptive mark, it must have secondary meaning. We will break down this test in the following chapter, but what you as a designer should know are that there are limitations to your protections. It was Abercrombie  & Fitch v. Hunting World, Inc. that made it easier to distinguish between what a strong mark is compared to a weak mark.

Protections have been limited for designers, but that did not stop companies from engaging in litigation over their rights. Fortunately for designers, some precedent is in their favor. In Christian Louboutin v. Yves Saint Laurent Am., the United States Court of Appeals for the Second Circuit concluded that the distinctive red sole designed by Christian Louboutin was protectable by trademark. This 2012 decision established that while a color alone cannot serve as a trademark, a color with a secondary meaning could. In this case, the red sole was considered a distinctive symbol of the Louboutin brand.

If there is an Intellectual property dispute between you and another Amazon seller, it is most likely not worth your time to go after Amazon directly. In Roe v. Amazon.com, an author had taken an image from a couple’s engagement shoot and placed the image on the cover of her book. The couple filed suit against Amazon, yet the court concluded that “the corporate defendants, including Amazon.com Inc. were not publishers, and the corporate defendants’ motion for summary judgment was granted.” In Routt v. Amazon.com, Inc. the court dismissed the copyright infringement case against Amazon. Amazon had “no supervision over third-part’s infringing activities to be vicariously liable, and did not induce or encourage the infringement to be contributory liable.” Amazon.com often finds themselves in lawsuits relating to Patent infringement. This typically occurs “when a third-party Amazon Seller is selling a patented product without the proper license.” Amazon’s strongest defense against patent infringement cases are to prove that the alleged patent is patent ineligible. See Appistry, Inc. v. Amazon.com where Amazon successfully showed the patents were invalid.