Choosing the Right IP to Protect Fashion Goods
Attribution to: Published in Landslide, Vol. 14, No. 3, March/April 2022, by the American Bar Association. Reproduced with permission. All rights reserved.
It’s hard to be a fashion innovator. It’s far easier to be an imitator. Success requires enormous investment in creating and marketing new designs, with no certainty that the designs will succeed. The imitator merely needs to watch the market, pick a successful product, ship a sample to an overseas manufacturer, and sell the knockoffs once they arrive in port.
Although there are legal tools to protect the designs, there is no single tool that protects every type of fashion product. Choosing the right intellectual property (IP) tool—or combination of tools—requires careful consideration of the product’s nature, its features that drive consumer demand, its originality, its history in the marketplace, and its potential for the future. With that in mind, we’ve set forth typical client scenarios and their potential analysis.
In this scenario, your client advises, “We just came up with a great new design that we expect to sell for years!”
A design patent is ordinarily the best candidate for a new design that is expected to be sold for more than just a single year or season. A designer may obtain a design patent for “any new, original and ornamental design for an article of manufacture.” The design must be relatively new—the application must be filed no later than one year after the designer (1) disclosed the design in a printed publication, (2) publicly used or placed the design on sale, or (3) otherwise made the design available to the public.
Applying for a design patent is straightforward. The application requires little more than drawings or black and white photographs of the design. In the fashion realm, design patents can protect everything from clothing to watches, jewelry, and handbags. As with utility patents, the design must be novel; it cannot be identical to a prior art design or an obvious improvement to a prior art design. Unlike a utility patent, the design patent will protect the design’s ornamental features and not its functional features. The U.S. Patent and Trademark Office (USPTO) typically takes only nine to 12 months to review and issue a design patent. The patents remain in force for 15 years from the date of issuance (or 14 years, for applications filed before May 13, 2015).
Once the USPTO issues the patent, enforcement is also relatively straightforward. The test for infringement is the “ordinary observer” test. Under this test, articulated by the Federal Circuit in Egyptian Goddess, Inc. v. Swisa, Inc., a plaintiff can establish infringement if “an ordinary observer, familiar with the prior art . . . , would be deceived into believing the [accused design] is the same as the patented [design].” The designs need not be identical. As the Federal Circuit stated in Crocs, Inc. v. International Trade Commission, “minor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement.”
Damages may include lost profits or a reasonable royalty, the potential for the trebling of damages if the infringement was willful, and attorney fees in “exceptional” cases. Alternatively, the plaintiff can elect to receive disgorgement of the profits earned by the infringer for its sale of an “article of manufacture” that includes the patented design.
In sum, design patents are well-suited for protecting the ornamental designs of fashion products that have been on sale for less than one year and are expected to be fashion staples for more than just one year or season.
Sometimes clients are wrong, and the design that the client thought would be a perennial doesn’t last more than a season. Even then, the design patent may still have value. More than once, years after a creator abandoned a design commercially, a competitor came out with an infringing product. The creator can still enforce the design patent—and can still obtain disgorgement of profits as a remedy.
In this scenario, your client proclaims, “This product is our signature!”
If a product has been sold long enough and successfully enough that consumers associate the nonfunctional aspects of the design with a particular manufacturer, trade dress is usually the best form of protection. Trade dress generally protects the “total image and overall appearance” of a product. Features such as the “size, shape, color or color combinations, texture, [or] graphics” can all qualify for trade dress protection. A product’s trade dress may be a collection of elements that are not separately protectable, but together, the elements are protectable because they identify the source of a product. The features must also be “nonfunctional”—not essential to the product or providing a competitive advantage to the product.
For a product design to qualify for trade dress protection, the owner of the trade dress must prove that the mark has acquired “secondary meaning”—that the product’s design is associated with a particular source in the minds of consumers. The Federal Circuit adopted a six-factor test to determine if a trade dress has acquired secondary meaning: “(1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.” Examples of issued trade dress protection include Christian Louboutin’s red lacquered sole, Adidas’s stripe design, Hermès’s Birkin handbag design, Levi’s pocket stich design, Converse’s athletic shoe design, and Tiffany’s “robin’s egg” blue. Unlike design patents, trade dress protection has no term. For as long as secondary meaning exists, the trade dress is enforceable.
To prevail in a trade dress infringement action, a designer must show three elements: (1) distinctiveness, (2) nonfunctionality, and (3) a likelihood of confusion among consumers between the owner’s trade dress and the infringer’s trade dress. The remedies for trade dress infringement are the same as those for trademark infringement: injunctions, recovery of damages in the form of the defendant’s profits or the plaintiff’s actual damages, and/or attorney fees in “exceptional” cases.
Trade dress protection may be best to protect the design of fashion products where sales, marketing, and publicity relating to the product are sufficient to establish that the design has acquired secondary meaning among relevant consumers; the design is in continuous use; and the owner of the mark is willing and able to continuously police the marketplace and enforce its rights against infringers.
At the same time, enough can’t be said about the importance of continuous use. A client might consider one of its classic designs to be its most iconic product, utterly inseparable from the client’s history, heritage, and identity. The client might consider the use of that design by a competitor to be akin to counterfeiting. But the design’s value as enforceable trade dress is questionable at best if the client has not actually sold the product for years. Periodic re-release of such classic designs is critical if the client wants to maintain the design as enforceable trade dress.
Artwork on Clothing and Accessories
In this scenario, your client asks, “How do we protect the artwork on our clothing and accessories or on our jewelry designs?”
Artwork on clothing and accessories is typically protected by copyright. The design of jewelry, which can be characterized as three-dimensional sculpture, is also often protected by copyright. Copyright protects “original works of authorship” in “pictorial, graphic, and sculptural works.” The copyright right exists upon the creation of the work. Copyright registration is neither complicated nor expensive. It involves little more than filling out a form and paying a fee ranging between $35 and $85. The term of a copyright varies depending on when and where the work was first published. For works published in the U.S., the term is 70 years from the author’s death. For works of corporate authorship, the term is 95 years from the date of publication or 120 years from the date of creation, whichever expires first.
To prove infringement, a plaintiff must show that the defendant copied the plaintiff’s copyrighted work. Because direct evidence of copying is often difficult to obtain, a designer can satisfy its burden of proving copying by providing evidence showing that (1) the defendant “had access to” the plaintiff’s work and (2) the two works are “substantially similar.”
Copyright for fashion products is usually straightforward. For example, copyright protects the artwork screen printed on a T-shirt, the pattern of design on fabric, an embroidery pattern, or a jewelry design.
Fashion designers may face issues in enforcing their copyrights because fashion products ordinarily (1) are “useful articles” (clothing and accessories are usually useful) and (2) contain elements that are not original. Each of these issues is addressed below.
Copyright protects the design of a useful article only to the extent that its artistic features can be separated from its utilitarian features. In Star Athletica, L.L.C. v. Varsity Brands, Inc., the U.S. Supreme Court ruled that the simple geometric blocks of colors and stripes on a cheerleading uniform were separable from the functional aspects of the uniform. The Court held that the design constituted copyrightable subject matter, even though the uniforms were indisputably “useful articles.”
The Court established a two-part “separability test” test for determining whether a design that is part of a useful article is eligible for copyright protection, stating:
a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.
The Court found that the designs of the uniforms met both prongs of its test. First, the geometric designs were “perceivable” separate from the uniforms themselves. Second, when removed from the context of the uniforms, the designs could qualify as pictorial, graphic, or sculptural works in their own right. That is, the designs could be separated from the uniforms as their own two-dimensional copyrightable works of art that “would not replicate the uniform itself.”
Copyright protects a particular original artistic expression; it does not protect an idea or a concept. For example, consider fashion products bearing a floral design. Copyright can protect a particular image of a flower on a T-shirt, a particular floral pattern on fabric, a particular flower-shaped embroidery on jeans, or a particular jewelry design in the shape of a flower. Copyright, however, does not protect the concepts of T-shirts, fabric, embroidery, or jewelry featuring floral designs. Copyright can also protect an original arrangement of unprotectable elements. Thus, an artist can take images of flowers that individually would not be protectable and arrange them in an original way to be protectable.
If a particular idea (for example, fabric bearing a floral pattern) can be expressed in a large number of ways, then the particular design may enjoy protection. As stated by the Ninth Circuit, there is a wide range of expression for selecting, coordinating, and arranging floral elements in stylized fabric designs. Thus, for floral patterns, “copyright protection is ‘broad’ and a work will infringe if it’s ‘substantially similar’ to the copyrighted work.”
For some ideas, there are fewer possible means of expression, and thus, copyright protection is narrower. The Ninth Circuit has illustrated this distinction by contrasting floral patterns with images of balls and jellyfish: “‘[T]here are gazillions of ways’ to combine petals, buds, stems, leaves, and colors in floral designs on fabric, in contrast to the limited number of ways to, for example, ‘paint a red bouncy ball on a black canvas’ or make a lifelike glass-in-glass jellyfish sculpture.”
Courts have applied a similar analysis in the context of jewelry. In Van Cleef & Arpels Logistics, S.A. v. Landau Jewelry, a district court considered an alleged copyright for a necklace that included clover-shaped features. The court found that, although the clover’s shape is common, there was sufficient originality in the plaintiff’s particular arrangement of the elements into its jewelry design. In contrast, in Todd v. Montana Silversmiths, Inc., a district court held that barbed wire jewelry was not copyrightable because the jewelry was neither minimally creative nor original enough to distinguish the barbed wire jewelry from actual barbed wire.
Two general forms of damages are available for copyright infringement. The copyright owner can obtain its actual damages (such as lost profits) and any additional profits made by the infringer. In the alternative, the copyright owner may obtain statutory damages. A court may award statutory damages in a sum that is not less than $750 or more than $30,000, for each infringed work. If the copyright owner proves that the defendant willfully infringed, the court may increase the award of statutory damages to an amount up to $150,000. If the defendant proves that it was not aware and had no reason to believe its acts constituted infringement, the court may reduce the award of statutory damages to an amount not less than $200.
Copyright is an effective option for protection of fashion product designs where the product design incorporates a pictorial, graphic, or sculptural work that is separable from the useful article and the pictorial, graphic, or sculptural features of the design are sufficiently original to qualify for copyright protection.
Sometimes, the copyright status of a product that appears straightforward at first glance can become complicated. Take, for example, a T-shirt featuring an image of a model. The fashion house should know that it needs to obtain a license to, or ownership of, the copyright from the photographer. But what about the background in the photograph? If the background includes a painting, sculpture, or even graffiti, the fashion house may find itself sued by the painter, sculptor, or graffiti artist for copyright infringement—even though the fashion house obtained a copyright to the photograph.
Although U.S. law provides tools for protection of fashion designs, no single tool provides the complete answer. Some tools are only available for certain types of products. A design patent cannot be obtained for a product that has been on sale for more than one year. Trade dress protection is unavailable for a product design that has not yet acquired secondary meaning. Copyright will not protect a product design where the original design features are not separable from the useful article into which the features have been incorporated.
At the same time, some product designs can be protected using more than one of these tools. A product’s design can initially be protected with a design patent. If secondary meaning later develops, the manufacturer can rely on trade dress. Many fashion products can be protected by either design patents or copyrights. In addition, many fashion products contain features that can be protected by all of the IP rights discussed. A single product could incorporate a new feature that can be protected by a design patent; older, established design features that can be protected as trade dress; and pictorial, graphic, or sculptural features that can be protected by copyright.
Although U.S. law does not provide a one-size-fits-all tool for protecting fashion designs, it does provide a toolbox with enough tools that are versatile enough that a manufacturer can protect almost any original design.
 35 U.S.C. § 171(a).
 Id. § 102(a).
 Id. § 173. The term of a design patent for which the application was filed before May 13, 2015, is 14 years from the date of issuance. U.S. Pat. & Trademark Off., Manual of Patent Examining Procedure (MPEP) § 1505 (9th ed. Rev. 10.2019, June 2020).
 543 F.3d 665, 681 (Fed. Cir. 2008).
 598 F.3d 1294, 1300 (Fed. Cir. 2010) (quoting Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 991 (Fed. Cir. 1993)).
 35 U.S.C. § 289. In Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016), the Supreme Court held that the first step in determining disgorgement damages is to determine what constitutes the “article of manufacture.” Id. at 436. Apple argued, and the Federal Circuit agreed, that the entire product in the form sold to the consumer is the article of manufacture. The Supreme Court rejected that approach and held that the component that embodies the asserted design patent in a multicomponent product may be the article of manufacture, but the Court declined to make a finding in the case or articulate a test for identifying the article of manufacture in a multicomponent product. Id. at 435–36. Thus, ambiguity remains regarding what constitutes an “article of manufacture” for purposes of determining damages for the infringement of a design in a multicomponent product.
 See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992).
 Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982) (“[A] product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”); see 15 U.S.C. § 1052(e)(5) (prohibiting the registration of any mark that “comprises any matter that, as a whole, is functional”).
 Inwood Labs., 456 U.S. at 851 n.11 (“[S]econdary meaning [is acquired when], in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.”).
 Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 1120 (Fed. Cir. 2018).
 Two Pesos, 505 U.S. at 764.
 15 U.S.C. §§ 1114–1119.
 17 U.S.C. § 102(a)(5).
 Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996) (emphasis added).
 137 S. Ct. 1002 (2017).
 Id. at 1007.
 Id. at 1012.
 17 U.S.C. § 102(b).
 Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 913–14 (9th Cir. 2010).
 L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 850–51 (9th Cir. 2012) (quoting Mattel, 616 F.3d at 913–14) (citing Satava v. Lowry, 323 F.3d 805, 812 (9th Cir. 2003)).
 547 F. Supp. 2d 356 (S.D.N.Y. 2008).
 379 F. Supp. 2d 1110 (D. Colo. 2005).
 17 U.S.C. § 504(a).
 Id. § 504(c)(1).
 Id. § 504(c)(2).
1. 35 U.S.C. § 171(a).
2. Id. § 102(a).
3. Id. § 173. The term of a design patent for which the application was filed before May 13, 2015, is 14 years from the date of issuance. U.S. Pat. & Trademark Off., Manual of Patent Examining Procedure (MPEP) § 1505 (9th ed. Rev. 10.2019, June 2020).
4. 543 F.3d 665, 681 (Fed. Cir. 2008).
5. 598 F.3d 1294, 1300 (Fed. Cir. 2010) (quoting Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 991 (Fed. Cir. 1993)).
6. 35 U.S.C. § 289. In Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016), the Supreme Court held that the first step in determining disgorgement damages is to determine what constitutes the “article of manufacture.” Id. at 436. Apple argued, and the Federal Circuit agreed, that the entire product in the form sold to the consumer is the article of manufacture. The Supreme Court rejected that approach and held that the component that embodies the asserted design patent in a multicomponent product may be the article of manufacture, but the Court declined to make a finding in the case or articulate a test for identifying the article of manufacture in a multicomponent product. Id. at 435–36. Thus, ambiguity remains regarding what constitutes an “article of manufacture” for purposes of determining damages for the infringement of a design in a multicomponent product.
7. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992).
8. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982) (“[A] product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”); see 15 U.S.C. § 1052(e)(5) (prohibiting the registration of any mark that “comprises any matter that, as a whole, is functional”).
9. Inwood Labs., 456 U.S. at 851 n.11 (“[S]econdary meaning [is acquired when], in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.”).
10. Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 1120 (Fed. Cir. 2018).
11. Two Pesos, 505 U.S. at 764.
12. 15 U.S.C. §§ 1114–1119.
13. 17 U.S.C. § 102(a)(5).
14. Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996) (emphasis added).
15. 137 S. Ct. 1002 (2017).
16. Id. at 1007.
17. Id. at 1012.
18. 17 U.S.C. § 102(b).
19. Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 913–14 (9th Cir. 2010).
20. L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 850–51 (9th Cir. 2012) (quoting Mattel, 616 F.3d at 913–14) (citing Satava v. Lowry, 323 F.3d 805, 812 (9th Cir. 2003)).
21. 547 F. Supp. 2d 356 (S.D.N.Y. 2008).
22. 379 F. Supp. 2d 1110 (D. Colo. 2005).
23. 17 U.S.C. § 504(a).
24. Id. § 504(c)(1).
25. Id. § 504(c)(2).