Protection from Unwanted Flattery

The most basic intellectual property that a design company can protect is its 'brand.' Trademark law protects brand names such as 'Polo,' symbols such as the Brooks Brothers 'Golden Fleece,' and designs such as the Adidas 'three stripes.' Trademark law serves the dual purpose of protecting the goodwill that a company has built up in its name from being usurped by a competitor, as well as protecting the public from being confused as to the source of products or services. A design company's most valuable asset is often its brand, and designers should be aware of a few common issues when choosing and protecting their trademarks.

Designers love to use their names; Donna Karan, Versace, and Ralph Lauren
all come easily to mind. However, there are a few concerns to be aware of
when choosing a personal name as a mark. For example, a mark that is 'primarily merely a surname' is likely to be refused registration unless the applicant proves the mark has already acquired 'secondary meaning,' i.e., significant brand awareness in the market. See T.M.E.P. '1211 (noting that the intent is to refuse names such as 'Johnson' or 'Jones,' but not 'King' or 'Cotton,' which have a primary significance other than as a surname). A way to get around this restriction is to make the mark more than 'merely a surname,' such as by adding a first name.

When a designer uses her name as a trademark, she should be aware that she is creating a transferable property in the name, which can be lost through bankruptcy or an acquisition. For example, in Nipon v. Leslie Fay Cos. (In re Leslie Fay Cos.), 216 B.R. 117 (S.D.N.Y. 1997), the court held that after a bankruptcy proceeding in which Albert Nipon lost his trademark rights to variations on his name, he was precluded from using the phrase 'designed by Albert Nipon' in conjunction with a new line of clothing.

Only a few months ago, JA Apparel filed a trademark infringement lawsuit against Joseph Abboud, alleging, as summarized in the first paragraph of the complaint, 'simply put, Mr. Abboud chose to trademark his name and chose to sell his trademarks' to JA Apparel. Accordingly, JA Apparel contended that Abboud's intention to create a new clothing line and advertise it with the tagline 'a new composition by designer Joseph Abboud' violated JA Apparel's trademark rights. JA Apparel Corp. v. Joseph Abboud, Case No. 1:07-CV-07787 (S.D.N.Y. 2007).

Given the risk of losing control of one's name, some designers choose to make up a name for their brand. For example, most of the American public probably recognizes the name 'Sergio Valente' as a clothing designer, even though the name was made up, and no person with that name was involved in the creation of the clothing.

Aside from the brand name, many designers often give 'style' names to their clothing lines. Some style names simply describe the product, such as 'slim fit'; others less so, such as 'executive.' Some may be arbitrary, such as the use of initials, given names, or place names.

When choosing style names, a designer should consider whether she cares if others use the same name. If she does not care, descriptive style names, such as 'slim fit,' should be fine, because names that are descriptive of the product are generally not protected. See T.M.E.P. '1209. If she wants to use a protectable style name, she should make sure that no one has chosen the mark before her, especially as someone else's primary mark.

Designers should be especially wary of using hot new words prior to registering them, because words that enter our lexicon rapidly, e.g., 'bling,' or more ominously, 'subprime,' may cause multiple people to begin using these words simultaneously. In these situations, the designer might want to file an intent-to-use application, so that she can secure the name before promoting it. With an intent-to-use application, the designer only needs a bona fide intent to use the mark in commerce. See T.M.E.P. '1101. If use is made thereafter and the application is eventually approved, the protection dates back to the time of filing the application. See 15 U.S.C. '1057(c).

A designer should also consider where to protect the mark. Registering the mark in the United States is the obvious first step. But what if the goods are sold or manufactured overseas? Even if the designer does not plan on expanding her sales overseas, she might want to avoid someone else registering her mark where she manufactures. That situation could allow the local registrant to bring an infringement claim or even seize her goods in a manufacturing country, such as China, which has the authority to police exports.

The implication of updating 'the look' of the product or logo is another issue that designers should consider. A designer's desire to update the brand's appearance should be balanced against maintaining a well-known (and possibly protectable) identity. For example, in Clinique Lab. v. Dep Corp., 945 F. Supp. 547 (S.D.N.Y. 1996), Clinique was able to force Dep Corporation to recall its line of 'Basique' products because the Basique design and layout were too close to the well-recognized Clinique look, including its green stylized lettering. This could also be important with the look of the product itself. For example, in LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71 (2d Cir. 1985), the LeSportsac bags were held to have such a recognizable combination of stylized elements that the overall look of the product itself was protectable against knock-offs.

Designers should also maintain a 'brand strength' file, containing materials indicating that the designer's mark is highly promoted, widely sold, and well-known. This information could be very important in litigation. For example, in Gianni Versace, S.p.A. v. Versace, 2003 U.S. Dist. LEXIS 14858 (S.D.N.Y. 2003), the court broadly protected the brand 'Versace,' because of its significant sales, paid advertising, and press coverage. When granting the protection, the court stated that had Versace been unable to provide that evidence, it would have held the mark to be merely a weak surname.

In practice, if a designer waits until litigation begins, accumulating the necessary evidence can be difficult and time consuming. Accordingly, the best practice is to set up a file well ahead of time and continually update it with current press coverage, as well as advertising and sales figures. Should the designer need this information for a seizure order, a cease and desist letter, or litigation, having this file already prepared could significantly reduce the cost and stress involved.

Design Patents

In limited circumstances, a designer might also want to consider applying for a design patent. A design patent is granted to a 'new, original and ornamental design for an article of manufacture.' 35 U.S.C. ”171-173. In order to qualify for a design patent, a design must not be the product of 'purely functional requirements,' and it must be 'novel' and 'non-obvious' to someone of ordinary skill in the relevant field of design. Though clothing often fails to fulfill these qualifications, shoe and handbag designers have had more success obtaining design patent protection. In L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993), the court held that a tennis shoe design could be properly granted a design patent, and in Rockport Co., Inc., v. Deer Stags, Inc., 65 F. Supp. 2d 189 (S.D.N.Y. 1999), the court similarly approved of a design patent for an ornamental portion of a shoe.

Aside from the legal hurdles to qualify for a design patent, the process of obtaining a patent could take a year or more and cost thousands of dollars. Accordingly, for trendy items that have a shelf life of a year or so, design patent protection may not be practical. However, for a design that might have a valuable lifetime of several years or more, design patent protection may be worth pursuing.

Current Copyright Protections

Copyright protection for clothing has a distinct practical advantage over trademark or patent protection because it is quick, easy and cheap. Copyright protection is available for 'original works of authorship fixed in any tangible medium of expression,' 17 U.S.C. '102(a), but not for a work considered a 'useful article,' 17 U.S.C. '101.

While an article of fashion is often considered 'useful,' the Second Circuit recently reiterated that 'individual design elements' of clothing are protectable as long as they are 'physically or conceptually separable from the underlying product.' Chosun Int'l v. Chrisha Creations, Ltd., 413 F.3d 324, 328 (2d Cir. 2005). Accordingly, items often granted protection are fabric designs, images on clothing, costumes, lace designs, stylized buckles, and other ornamentation.

Notwithstanding that copyright can often protect these elements, most designers do not register the copyrights to these aspects of their designs. There are significant benefits to registering copyrights with the Copyright Office. For example, a designer cannot file a lawsuit until she has registered the copyright registration for the infringed work. And only if the copyright was registered at the time of the infringement, or within 90 days after the design was first published, would she have the potential to recover her attorneys' fees or statutory damages. The possible benefit of this additional recovery cannot be overstated. When threatened with a lawsuit where actual damages could be very speculative, many defendants make the decision to fold because of the possibility of having to pay the copyright holder's attorneys' fees and statutory damages, which could be substantial.

Proposed Fashion Bill

As a general matter, because clothing is considered by the courts to be a 'useful' item, copyright protection for the dimensions, style, cut, or shape of a fashion design is often rejected. The Design Piracy Prohibition Act would change the Copyright Act to protect 'the appearance as a whole of an article of apparel, including its ornamentation.'

Under the bill, copyright protection for fashion would be for only three years, and would require that the item had been registered with the Copyright Office within three months of being made public. While this protection would likely be a 'thin' copyright, it would presumably protect against very similar knock-offs and possibly the types of items that often appear in 'splurge and steal' columns in magazines.

The bill will not have any effect on out-and-out counterfeiting. The type of piracy that one sees on street corners in New York City, such as fake Gucci or Prada bags, is illegal under current laws. It exists because of an enforcement problem (and, apparently, a never-ending demand), not because of a lack of legislation.

The bill has some strong backers, such as the Council of Fashion Designers of America, though presumably many lower-price-point retailers will do their best to oppose this legislation. The issue that may be the point of contention is the level of similarity between the works required for the imitation to be an infringement. Before passage, it is likely that the bill will be changed to require that the items be strikingly similar, or possibly virtually identical, for there to be an infringement.

Conclusion

Imitative designs fuel a major industry in the United States. Whether one considers these designs to be 'inspired' by the original or outright 'design piracy' usually depends upon one's vantage point. Designers and their counsel should be certain to make full use of the protections available to designers under trademark, patent, and copyright laws. By taking proactive steps to protect their brands and designs, designers can reap significant benefits should disputes later arise.

Jason D. Sanders is an attorney at Cowan, Liebowitz & Latman, P.C. and represents artists, designers, media organizations, and others in protection of their intellectual property and other rights. He can be contacted at 212-790-9225 or by e-mail at: [email protected].

Imitative clothing designs have become increasingly problematic for designers in recent years, as cell phone cameras, instant data transfers, and fast and cheap overseas manufacturing have compressed the timeline between when a new design hits the up-market catwalk and when the copycat version hits the down-market retailers. Designers often complain that nearly identical though often cheaply produced knock-offs appear in stores almost immediately after the original version is released or previewed at fashion shows.

For the last several sessions, Congress has considered the Design Piracy Prohibition Act, which would expand copyright protection to include the cut and look of fashion designs. This proposed legislation could make many imitative designs illegal and add to the current, although somewhat limited, protections for fashion available under existing U.S. trademark, patent, and copyright laws. This article discusses these currently available protections, provides suggestions for designers for utilizing them, and examines changes to the Copyright Act proposed by the Design Piracy Prohibition Act.

Trademark Law

The most basic intellectual property that a design company can protect is its 'brand.' Trademark law protects brand names such as 'Polo,' symbols such as the Brooks Brothers 'Golden Fleece,' and designs such as the Adidas 'three stripes.' Trademark law serves the dual purpose of protecting the goodwill that a company has built up in its name from being usurped by a competitor, as well as protecting the public from being confused as to the source of products or services. A design company's most valuable asset is often its brand, and designers should be aware of a few common issues when choosing and protecting their trademarks.

Designers love to use their names; Donna Karan, Versace, and Ralph Lauren
all come easily to mind. However, there are a few concerns to be aware of
when choosing a personal name as a mark. For example, a mark that is 'primarily merely a surname' is likely to be refused registration unless the applicant proves the mark has already acquired 'secondary meaning,' i.e., significant brand awareness in the market. See T.M.E.P. '1211 (noting that the intent is to refuse names such as 'Johnson' or 'Jones,' but not 'King' or 'Cotton,' which have a primary significance other than as a surname). A way to get around this restriction is to make the mark more than 'merely a surname,' such as by adding a first name.

When a designer uses her name as a trademark, she should be aware that she is creating a transferable property in the name, which can be lost through bankruptcy or an acquisition. For example, in Nipon v. Leslie Fay Cos. (In re Leslie Fay Cos.), 216 B.R. 117 (S.D.N.Y. 1997), the court held that after a bankruptcy proceeding in which Albert Nipon lost his trademark rights to variations on his name, he was precluded from using the phrase 'designed by Albert Nipon' in conjunction with a new line of clothing.

Only a few months ago, JA Apparel filed a trademark infringement lawsuit against Joseph Abboud, alleging, as summarized in the first paragraph of the complaint, 'simply put, Mr. Abboud chose to trademark his name and chose to sell his trademarks' to JA Apparel. Accordingly, JA Apparel contended that Abboud's intention to create a new clothing line and advertise it with the tagline 'a new composition by designer Joseph Abboud' violated JA Apparel's trademark rights. JA Apparel Corp. v. Joseph Abboud, Case No. 1:07-CV-07787 (S.D.N.Y. 2007).

Given the risk of losing control of one's name, some designers choose to make up a name for their brand. For example, most of the American public probably recognizes the name 'Sergio Valente' as a clothing designer, even though the name was made up, and no person with that name was involved in the creation of the clothing.

Aside from the brand name, many designers often give 'style' names to their clothing lines. Some style names simply describe the product, such as 'slim fit'; others less so, such as 'executive.' Some may be arbitrary, such as the use of initials, given names, or place names.

When choosing style names, a designer should consider whether she cares if others use the same name. If she does not care, descriptive style names, such as 'slim fit,' should be fine, because names that are descriptive of the product are generally not protected. See T.M.E.P. '1209. If she wants to use a protectable style name, she should make sure that no one has chosen the mark before her, especially as someone else's primary mark.

Designers should be especially wary of using hot new words prior to registering them, because words that enter our lexicon rapidly, e.g., 'bling,' or more ominously, 'subprime,' may cause multiple people to begin using these words simultaneously. In these situations, the designer might want to file an intent-to-use application, so that she can secure the name before promoting it. With an intent-to-use application, the designer only needs a bona fide intent to use the mark in commerce. See T.M.E.P. '1101. If use is made thereafter and the application is eventually approved, the protection dates back to the time of filing the application. See 15 U.S.C. '1057(c).

A designer should also consider where to protect the mark. Registering the mark in the United States is the obvious first step. But what if the goods are sold or manufactured overseas? Even if the designer does not plan on expanding her sales overseas, she might want to avoid someone else registering her mark where she manufactures. That situation could allow the local registrant to bring an infringement claim or even seize her goods in a manufacturing country, such as China, which has the authority to police exports.

The implication of updating 'the look' of the product or logo is another issue that designers should consider. A designer's desire to update the brand's appearance should be balanced against maintaining a well-known (and possibly protectable) identity. For example, in Clinique Lab. v. Dep Corp. , 945 F. Supp. 547 (S.D.N.Y. 1996), Clinique was able to force Dep Corporation to recall its line of 'Basique' products because the Basique design and layout were too close to the well-recognized Clinique look, including its green stylized lettering. This could also be important with the look of the product itself. For example, in LeSportsac, Inc. v. K Mart Corp. , 754 F.2d 71 (2d Cir. 1985), the LeSportsac bags were held to have such a recognizable combination of stylized elements that the overall look of the product itself was protectable against knock-offs.

Designers should also maintain a 'brand strength' file, containing materials indicating that the designer's mark is highly promoted, widely sold, and well-known. This information could be very important in litigation. For example, in Gianni Versace, S.p.A. v. Versace, 2003 U.S. Dist. LEXIS 14858 (S.D.N.Y. 2003), the court broadly protected the brand 'Versace,' because of its significant sales, paid advertising, and press coverage. When granting the protection, the court stated that had Versace been unable to provide that evidence, it would have held the mark to be merely a weak surname.

In practice, if a designer waits until litigation begins, accumulating the necessary evidence can be difficult and time consuming. Accordingly, the best practice is to set up a file well ahead of time and continually update it with current press coverage, as well as advertising and sales figures. Should the designer need this information for a seizure order, a cease and desist letter, or litigation, having this file already prepared could significantly reduce the cost and stress involved.

Design Patents

In limited circumstances, a designer might also want to consider applying for a design patent. A design patent is granted to a 'new, original and ornamental design for an article of manufacture.' 35 U.S.C. ”171-173. In order to qualify for a design patent, a design must not be the product of 'purely functional requirements,' and it must be 'novel' and 'non-obvious' to someone of ordinary skill in the relevant field of design. Though clothing often fails to fulfill these qualifications, shoe and handbag designers have had more success obtaining design patent protection. In L.A. Gear, Inc. v. Thom McAn Shoe Co. , 988 F.2d 1117 (Fed. Cir. 1993), the court held that a tennis shoe design could be properly granted a design patent, and in Rockport Co., Inc., v. Deer Stags, Inc. , 65 F. Supp. 2d 189 (S.D.N.Y. 1999), the court similarly approved of a design patent for an ornamental portion of a shoe.

Aside from the legal hurdles to qualify for a design patent, the process of obtaining a patent could take a year or more and cost thousands of dollars. Accordingly, for trendy items that have a shelf life of a year or so, design patent protection may not be practical. However, for a design that might have a valuable lifetime of several years or more, design patent protection may be worth pursuing.

Current Copyright Protections

Copyright protection for clothing has a distinct practical advantage over trademark or patent protection because it is quick, easy and cheap. Copyright protection is available for 'original works of authorship fixed in any tangible medium of expression,' 17 U.S.C. '102(a), but not for a work considered a 'useful article,' 17 U.S.C. '101.

While an article of fashion is often considered 'useful,' the Second Circuit recently reiterated that 'individual design elements' of clothing are protectable as long as they are 'physically or conceptually separable from the underlying product.' Chosun Int'l v. Chrisha Creations, Ltd. , 413 F.3d 324, 328 (2d Cir. 2005). Accordingly, items often granted protection are fabric designs, images on clothing, costumes, lace designs, stylized buckles, and other ornamentation.

Notwithstanding that copyright can often protect these elements, most designers do not register the copyrights to these aspects of their designs. There are significant benefits to registering copyrights with the Copyright Office. For example, a designer cannot file a lawsuit until she has registered the copyright registration for the infringed work. And only if the copyright was registered at the time of the infringement, or within 90 days after the design was first published, would she have the potential to recover her attorneys' fees or statutory damages. The possible benefit of this additional recovery cannot be overstated. When threatened with a lawsuit where actual damages could be very speculative, many defendants make the decision to fold because of the possibility of having to pay the copyright holder's attorneys' fees and statutory damages, which could be substantial.

Proposed Fashion Bill

As a general matter, because clothing is considered by the courts to be a 'useful' item, copyright protection for the dimensions, style, cut, or shape of a fashion design is often rejected. The Design Piracy Prohibition Act would change the Copyright Act to protect 'the appearance as a whole of an article of apparel, including its ornamentation.'

Under the bill, copyright protection for fashion would be for only three years, and would require that the item had been registered with the Copyright Office within three months of being made public. While this protection would likely be a 'thin' copyright, it would presumably protect against very similar knock-offs and possibly the types of items that often appear in 'splurge and steal' columns in magazines.

The bill will not have any effect on out-and-out counterfeiting. The type of piracy that one sees on street corners in New York City, such as fake Gucci or Prada bags, is illegal under current laws. It exists because of an enforcement problem (and, apparently, a never-ending demand), not because of a lack of legislation.

The bill has some strong backers, such as the Council of Fashion Designers of America, though presumably many lower-price-point retailers will do their best to oppose this legislation. The issue that may be the point of contention is the level of similarity between the works required for the imitation to be an infringement. Before passage, it is likely that the bill will be changed to require that the items be strikingly similar, or possibly virtually identical, for there to be an infringement.

Conclusion

Imitative designs fuel a major industry in the United States. Whether one considers these designs to be 'inspired' by the original or outright 'design piracy' usually depends upon one's vantage point. Designers and their counsel should be certain to make full use of the protections available to designers under trademark, patent, and copyright laws. By taking proactive steps to protect their brands and designs, designers can reap significant benefits should disputes later arise.

Jason D. Sanders is an attorney at Cowan, Liebowitz & Latman, P.C. and represents artists, designers, media organizations, and others in protection of their intellectual property and other rights. He can be contacted at 212-790-9225 or by e-mail at: [email protected].