Fashion IP

Fashion occupies a notoriously difficult position in IP law — clothing is functional, and function is not protectable by copyright; yet the creative expression in fashion clearly has value — leading to a patchwork of overlapping protections: THE FASHION IP PROBLEM: US copyright law traditionally provided weak fashion protection; the Copyright Act protects 'pictorial; graphic; and sculptural works' but a garment is a 'useful article' and protection extends only to elements that are separable (physically or conceptually) from utilitarian function; for decades, this meant clothing designs received virtually no copyright protection in the US: the shape of a dress; the cut of a jacket; the placement of pockets were all unprotectable because they were inseparable from the garment's function; STAR ATHLETICA v. VARSITY BRANDS (S.Ct. 2017): Supreme Court fundamentally changed fashion copyright analysis; CASE: Varsity Brands (cheerleading uniform maker) sued Star Athletica for copying chevron and stripe patterns on cheerleading uniforms; HOLDING: a feature incorporated into a useful article is protectable if: (1) it 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 on its own if separated; EFFECT: surface ornamentation (patterns; prints; embroidery; graphic elements applied to garments) is now copyrightable; this IS separable from the garment's function; WHAT STAR ATHLETICA DOESN'T PROTECT: the cut; silhouette; or shape of a garment (the A-line dress shape; trouser cut); functional features like pocket placement; seam construction; WHY FASHION DESIGNS REMAIN DIFFICULT TO PROTECT: trend copying: fashion has always involved inspiration and imitation; legal copying of a garment's silhouette and construction is generally permissible; copyright term vs. fashion cycle: copyright lasts 95 years but fashion trends last 6-18 months; by the time you sue, the trend is over; FAST FASHION: Zara; H&M; Shein; Forever 21 operate at the edge of copyright by closely copying runway designs but changing surface details enough to avoid literal copying; SEASONAL PROTECTION ISSUE: fashion needs protection now (this season) not after 3 years of litigation; DESIGN AROUND: a one-inch change in the pattern placement can defeat copyright; CONGRESSIONAL INACTION: Design Piracy Prohibition Act was proposed multiple times (most recently 2011); never passed; US fashion therefore relies primarily on trademark; trade dress; and design patents.

Luxury brands have built some of the most valuable and legally sophisticated IP portfolios in fashion — relying heavily on trademark and trade dress to protect iconic product features that define brand identity: CHRISTIAN LOUBOUTIN RED SOLE: Christian Louboutin has used a red lacquered sole as his signature design element since 1992; US TRADEMARK: Reg. No. 3,361,597: 'a lacquered red sole on footwear' — registered 2008; LOUBOUTIN v. YVES SAINT LAURENT (2d Cir. 2012): Louboutin sued YSL for selling all-red monochromatic shoes including red soles; HOLDING: Louboutin's red sole trademark is valid and enforceable but ONLY when the upper (body) of the shoe is not red — the contrast between red sole and non-red upper is what creates the brand association; a monochromatic all-red shoe (red sole + red upper) does not infringe because there is no contrast creating the brand signal; LESSON: trade dress protects non-functional features that consumers associate with a specific source; the red sole is non-functional (a sole could be any color) and has acquired secondary meaning; LOUIS VUITTON LV MONOGRAM: Louis Vuitton's interlocking LV monogram with flowers and diamonds (created 1896); registered in most countries; ENFORCEMENT: Louis Vuitton is one of the most aggressive trademark enforcers; files hundreds of counterfeit enforcement actions annually; stops counterfeit imports via CBP (US Customs and Border Protection) recordation; HERMES BIRKIN BAG: Hermès trade dress on Birkin bag silhouette; Hermès sued Rothschild/Mason Rothschild for MetaBirkins NFTs (digital images of furry Birkin-like bags); Hermès v. Rothschild (SDNY 2023): jury ruled NFT creator infringed Hermès marks; actual confusion exists when an NFT uses a famous mark; NIKE'S SWOOSH AND AIR JORDAN: iconic trademark; Jordan Brand: Air Jordan 1 design elements; Nike's distinctive shoe silhouettes (Air Force 1 shape; Dunk silhouette) are increasingly asserted as trade dress; BURBERRY TARTAN PLAID: Burberry's iconic beige/black/red/white tartan pattern; registered trademark and trade dress; GUCCI GG PATTERN; LOEWE ANAGRAM; LOUIS VUITTON DAMIER CHECKERBOARD: all registered as trademarks providing protection for the distinctive pattern separate from the product; TRADE DRESS ELEMENTS: the sum of a product's distinctive appearance can be protected trade dress even if individual elements are not; Louboutin/Hermès/LV have the advantage of extraordinarily strong secondary meaning from decades of exclusive use.

Design patents are one of the most underutilized but powerful tools in fashion — they protect the ornamental appearance of a product for 15 years (14 pre-AIA) without maintenance fees, and can be obtained in 14 months on average: DESIGN PATENTS IN FASHION — WHY THEY WORK: fashion protection requires speed (the product is relevant now) and duration matched to product lifecycle (not 20 years of utility); design patents with 14-month average pendency and 15-year term align reasonably well with fashion product cycles; unlike copyright, design patents require novelty and non-obviousness vs. prior design art (not just originality); CROCS AND DESIGN PATENT ENFORCEMENT: Crocs (foam clogs): design patents: D517,789; D632,465; D632,830; CROCS v. DAWGS (10th Cir.): Crocs sued numerous competitors for making similar foam clog designs; filed ITC Section 337 action seeking import ban on infringing clogs; RESULT: ITC exclusion orders against multiple defendants; significant financial settlements; key lesson: design patents at ITC are highly effective for import ban against foreign-manufactured knockoffs; APPLE DESIGN PATENT STRATEGY (APPLICABLE TO FASHION): Apple has demonstrated design patents produce massive damages (Apple v. Samsung $1.05B verdict including D593,087; D604,305; D618,677); Apple's approach: file design patents on product appearance from multiple angles; use them as part of mixed portfolio strategy; FASHION DESIGN PATENT EXAMPLES: shoe soles (Christian Louboutin has filed design patents on specific heel shapes); handbag hardware and silhouettes; distinctive eyewear frame shapes; watch designs (Rolex; Omega have design patents in many countries); jewelry settings; INTERNATIONAL DESIGN PROTECTION — HAGUE SYSTEM: WIPO Hague Agreement: one application covers 70+ countries; 5-year renewable terms up to 25 years; US joined Hague 2015; for a fashion brand selling globally, Hague provides efficient international coverage; FILE SIMULTANEOUSLY WITH TRADEMARK: a product launch strategy: (1) file US design patent application on day of launch; (2) file Hague international design application; (3) use in commerce to establish trademark rights; (4) file intent-to-use trademark application for product line name; DESIGN PATENT PROSECUTION FOR FASHION: functional elements shown in dashed (broken) lines = unclaimed; ornamental elements in solid lines = claimed; claim only the clearly ornamental elements; avoid claiming functional buckle positions; zipper placement; waistband construction; COUNTERFEIT GOODS: design patents + trademarks recorded with US Customs CBP; CBP can seize infringing imports at border; far cheaper than litigation; fashion brands with large trademark and design patent portfolios file with CBP to automate border enforcement.

Counterfeit goods in fashion represent a $600B+ global problem — the OECD estimates counterfeit and pirated goods account for 3.3% of global trade — and luxury brands have developed sophisticated enforcement programs combining legal tools; technology; and customs cooperation: SCALE OF THE COUNTERFEIT PROBLEM: OECD 2021 report: counterfeit goods in global trade = ~$509B (2019 data); fashion/luxury goods: largest single category of counterfeits; primary sources: China (72% of counterfeits by value); Hong Kong; Turkey; India; TOP TARGETS: Louis Vuitton; Gucci; Chanel; Rolex; Nike; Adidas; Ray-Ban; Burberry; LEGAL TOOLS FOR COUNTERFEIT ENFORCEMENT: TRADEMARK: most important — sale of goods with unauthorized mark is trademark infringement; criminal provisions under Trademark Counterfeiting Act (18 U.S.C. § 2320); up to 20 years prison + $15M fine for trafficking counterfeit goods; willful use of counterfeit mark; CBP BORDER RECORDATION: record trademarks and design patents with US Customs and Border Protection (CBP); CBP actively monitors imports for recorded IP; counterfeits can be seized at the border before entering the market; recordation fee: $190 per trademark per class; ITC SECTION 337: import ban; faster than district court; domestic industry requirement (luxury brands easily satisfy through US retail operations); ANTI-COUNTERFEITING COALITIONS: Brand Protection Alliance; Coalition to Advance the Protection of Sports Logos (CAPS); International Anti-Counterfeiting Coalition (IACC); DIGITAL ENFORCEMENT: Alibaba's IPP Platform: brand owners can file complaints to remove counterfeit listings on Alibaba/Taobao; Amazon's Brand Registry and Transparency Program (product serialization with unique codes; scanned by Amazon before fulfillment); eBay VeRO (Verified Rights Owner) program: takedown requests within 24 hours; Luxury brand anti-counterfeiting technology: RFID chips embedded in authentic products (LVMH; Richemont); blockchain authentication certificates (AURA Blockchain Consortium: LVMH + Prada + Cartier + OTB); NFC chips + authentication apps; PHYSICAL MARKET RAIDS: Gucci; Louis Vuitton work with local law enforcement in manufacturing countries (China; Turkey); factory raids and seizures; working with local IP enforcement bureaus; SOCIAL MEDIA: Instagram; TikTok; Facebook takedown programs; sellers on social selling counterfeit goods are priority targets; INVESTIGATOR NETWORKS: professional counterfeit investigators who buy samples; identify manufacturers; build cases; customs enforcement cooperation internationally (INTERPOL Operation Pangea; Operation In Our Sites).