A Long Voyage from the Runway to the Beltway

The Innovative Design Protection and Piracy Protection Act (“IDPPA” or S. 3728) was introduced in the Senate on Aug. 5, 2010 by Sen. Charles Schumer. The bill proposes to extend copyright protection to unique fashion designs by amending Chapter 13 of U.S. Code Title 17 (the Vessel Hull Design Protection Act of 1998).

Although clothing has generally been denied copyright protection as such items are considered “useful articles” and therefore not copyrightable per Section 101 of the Copyright Act, Chapter 13 extends copyright protection to certain “original design[s] of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public” (emphasis added). However, Chapter 13 currently limits the useful articles subject to protection under its terms to a “vessel hull, deck, or combination of a hull and deck, including a plug or mold.” Under the IDPPA, copyright protections afforded under Chapter 13 to “useful articles” would be extended to apparel, and more specifically, to unique fashion designs.

Preceding Bills

Meant to address the issue of “design piracy,” S. 3728 is an updated version of previous bills (H.R. 2196, H.R. 5055, H.R. 2033, and S. 1957), all of which stalled in Congress with the exception of H.R. 2196, which still sits in committee. The previous bills were hotly debated in the fashion industry, with a divide existing between the two main stakeholders: the fashion designers represented by the Council of Fashion Designers of America (“CFDA”) and the apparel and footwear manufacturers, retailers and suppliers represented by the American Apparel & Footwear Association (“AAFA”).

The CFDA defines “design piracy” as the “[p]ractice of [quickly and cheaply] producing copies of original designs under a different label. These duplicate versions then flood the market and devalue the original by their ubiquity, poor quality, or speed at which they reach the consumer” (www.cfda.com/design-piracy/). According to Steven Kolb, executive director of the CFDA, “Pirates steal American fashion designs, make low-quality copies in Asian factories with cheap labor and import them back into the US to compete with the original designs” (Kristi Ellis, House Reintroduces Modified Design Piracy Bill, WOMEN'S WEAR DAILY, May 1, 2009).

In his testimony before the Judiciary Committee on the predecessor bills of S. 3728, fashion designer Narciso Rodriguez discussed several situations where his designs were copied and sold at significantly lower price points. Indeed, the wedding dress that he designed for Carolyn Bessette Kennedy became one of the “most copied silhouettes of the past decade ' the pirates sold seven or eight million copies and [he] sold 40″ (H.R. Subcomm. on Cts., Internet, & Intell. Prop., Hearing on Design Law ' Are Special Provisions Needed to Protect Unique Industries H.R. 2033, 110th Cong., Test. of Narciso Rodriguez (Feb. 14, 2008) [hereinafter Rodriguez]).

Rodriguez and his fellow fashion designers see their original fashion designs as being comparable to works of art and therefore, eligible for some form of copyright protection. Without this protection, it is argued that American fashion designers are at a global disadvantage.

However, in opposition to the previous bills, the AAFA asserted on its Web site that “The [earlier] legislation attempts to provide three years of copyright protection for designs subjectively deemed original. While well-intended, the bill would place apparel and footwear companies and their designers into a new burdensome legal landscape based on vague definitions that will not realistically offer the protection it seeks to provide. Ultimately, the legislation will produce an environment of ubiquitous lawsuits between legitimate companies that will raise the prices of clothing and footwear, stifle creation and limit consumer choice” www.apparelandfootwear.org/LegislativeTradeNews/details.asp?PUBLICATIONS_ID=339 (emphasis added).

A 'True Compromise'

The new bill represents a “true compromise” and is a “product of an intensive year of negotiations” between the AAFA and CFDA. 156 Cong. Rec. S6893 -S6894 (daily ed. Aug. 5, 2010).

Like its predecessors, the IDPPA proposes to give qualifying fashion designs copyright protection for a period of three years. However, the new bill drills down further on the question of what makes a particular fashion design worthy of protection, and conversely, what should be excluded from the realm of protection.

Past bills tried to resolve this issue in part by carving out the mere expression of a trend from the definition of infringing articles. S. 3728 does away with the idea of trends, but provides more detailed language describing what is protectable. Under the new bill, protectable fashion design must include original elements or arrangement of elements that result from a “designer's own creative endeavor” and “provides a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.” Further, under S. 3728, an infringing article is one that is “substantially identical in overall visual appearance to and as to the original elements of a protected design,” and is not the result of independent creation (emphasis added). The “substantially identical” standard is a revision from language in previous bills that required close and substantial similarity to be infringing.

The changes expressed in S. 3728 seem to have addressed the concerns of the AAFA, which had previously argued that the “closely and substantially similar” standard for infringement in prior bills was “[v]ague and inherently subjective and would throw the fashion industry into chaos” and that the “originality” standard in prior bills was impossible to define. (Letter from Kevin M. Burke, president and CEO, Am. Apparel & Footwear Ass'n, to members of Cong., available at www.apparelandfootwear.org/letters/DesignPiracyLettertoCongressFinal_April2009.pdf)

No Registration Requirement

Another notable difference from the preceding bills is that there is no registration requirement with the Copyright Office. In addition, the claimant in an infringement action bears the burden of establishing that: 1) the claimant's design is copyrightable, 2) the defendant's design infringes the claimant's protected design, and 3) the facts and circumstances of the design's availability reasonably infer that the defendant “saw or otherwise had knowledge of the protected design.” Moreover, there is a design piracy answer to fair use, namely, the “home sewing exception,” which excludes single copies of protected designs made for non-commercial use.

Consistent with prior bills, S. 3728 would also increase the allowable damage awards under Chapter 13 for infringement of protected designs and false representation, and make the doctrines of secondary infringement and secondary liability applicable to infringement actions under Chapter 13.

According to a joint press release by the AAFA and the CFDA, “[t]his legislation will for the first time allow creative American designers to benefit from legal protections and at the same time continue to ensure the competitiveness of the U.S. apparel and footwear industry as it delivers fashionable and affordable clothing to consumers” www.apparelandfootwear.org/UserFiles/File/PressReleases/2010/080610idppparelease.pdf. S. 3728 is noteworthy, not only because the two sides were able to find common ground after several years of debate, but perhaps more importantly, the fashion industry has gained significant momentum in paving the way to possibly creating a new intellectual property right.

Erin S. Hennessy is a partner in the Intellectual Property Corporate practice and Nancy Kim is an associate in the Licensing and E-merging Commerce group, both in the Seattle office of K&L Gates LLP. Hennessy can be reached at [email protected].

The Innovative Design Protection and Piracy Protection Act (“IDPPA” or S. 3728) was introduced in the Senate on Aug. 5, 2010 by Sen. Charles Schumer. The bill proposes to extend copyright protection to unique fashion designs by amending Chapter 13 of U.S. Code Title 17 (the Vessel Hull Design Protection Act of 1998).

Although clothing has generally been denied copyright protection as such items are considered “useful articles” and therefore not copyrightable per Section 101 of the Copyright Act, Chapter 13 extends copyright protection to certain “original design[s] of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public” (emphasis added). However, Chapter 13 currently limits the useful articles subject to protection under its terms to a “vessel hull, deck, or combination of a hull and deck, including a plug or mold.” Under the IDPPA, copyright protections afforded under Chapter 13 to “useful articles” would be extended to apparel, and more specifically, to unique fashion designs.

Preceding Bills

Meant to address the issue of “design piracy,” S. 3728 is an updated version of previous bills (H.R. 2196, H.R. 5055, H.R. 2033, and S. 1957), all of which stalled in Congress with the exception of H.R. 2196, which still sits in committee. The previous bills were hotly debated in the fashion industry, with a divide existing between the two main stakeholders: the fashion designers represented by the Council of Fashion Designers of America (“CFDA”) and the apparel and footwear manufacturers, retailers and suppliers represented by the American Apparel & Footwear Association (“AAFA”).

The CFDA defines “design piracy” as the “[p]ractice of [quickly and cheaply] producing copies of original designs under a different label. These duplicate versions then flood the market and devalue the original by their ubiquity, poor quality, or speed at which they reach the consumer” (www.cfda.com/design-piracy/). According to Steven Kolb, executive director of the CFDA, “Pirates steal American fashion designs, make low-quality copies in Asian factories with cheap labor and import them back into the US to compete with the original designs” (Kristi Ellis, House Reintroduces Modified Design Piracy Bill, WOMEN'S WEAR DAILY, May 1, 2009).

In his testimony before the Judiciary Committee on the predecessor bills of S. 3728, fashion designer Narciso Rodriguez discussed several situations where his designs were copied and sold at significantly lower price points. Indeed, the wedding dress that he designed for Carolyn Bessette Kennedy became one of the “most copied silhouettes of the past decade ' the pirates sold seven or eight million copies and [he] sold 40″ (H.R. Subcomm. on Cts., Internet, & Intell. Prop., Hearing on Design Law ' Are Special Provisions Needed to Protect Unique Industries H.R. 2033, 110th Cong., Test. of Narciso Rodriguez (Feb. 14, 2008) [hereinafter Rodriguez]).

Rodriguez and his fellow fashion designers see their original fashion designs as being comparable to works of art and therefore, eligible for some form of copyright protection. Without this protection, it is argued that American fashion designers are at a global disadvantage.

However, in opposition to the previous bills, the AAFA asserted on its Web site that “The [earlier] legislation attempts to provide three years of copyright protection for designs subjectively deemed original. While well-intended, the bill would place apparel and footwear companies and their designers into a new burdensome legal landscape based on vague definitions that will not realistically offer the protection it seeks to provide. Ultimately, the legislation will produce an environment of ubiquitous lawsuits between legitimate companies that will raise the prices of clothing and footwear, stifle creation and limit consumer choice” www.apparelandfootwear.org/LegislativeTradeNews/details.asp?PUBLICATIONS_ID=339 (emphasis added).

A 'True Compromise'

The new bill represents a “true compromise” and is a “product of an intensive year of negotiations” between the AAFA and CFDA. 156 Cong. Rec. S6893 -S6894 (daily ed. Aug. 5, 2010).

Like its predecessors, the IDPPA proposes to give qualifying fashion designs copyright protection for a period of three years. However, the new bill drills down further on the question of what makes a particular fashion design worthy of protection, and conversely, what should be excluded from the realm of protection.

Past bills tried to resolve this issue in part by carving out the mere expression of a trend from the definition of infringing articles. S. 3728 does away with the idea of trends, but provides more detailed language describing what is protectable. Under the new bill, protectable fashion design must include original elements or arrangement of elements that result from a “designer's own creative endeavor” and “provides a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.” Further, under S. 3728, an infringing article is one that is “substantially identical in overall visual appearance to and as to the original elements of a protected design,” and is not the result of independent creation (emphasis added). The “substantially identical” standard is a revision from language in previous bills that required close and substantial similarity to be infringing.

The changes expressed in S. 3728 seem to have addressed the concerns of the AAFA, which had previously argued that the “closely and substantially similar” standard for infringement in prior bills was “[v]ague and inherently subjective and would throw the fashion industry into chaos” and that the “originality” standard in prior bills was impossible to define. (Letter from Kevin M. Burke, president and CEO, Am. Apparel & Footwear Ass'n, to members of Cong., available at www.apparelandfootwear.org/letters/DesignPiracyLettertoCongressFinal_April2009.pdf)

No Registration Requirement

Another notable difference from the preceding bills is that there is no registration requirement with the Copyright Office. In addition, the claimant in an infringement action bears the burden of establishing that: 1) the claimant's design is copyrightable, 2) the defendant's design infringes the claimant's protected design, and 3) the facts and circumstances of the design's availability reasonably infer that the defendant “saw or otherwise had knowledge of the protected design.” Moreover, there is a design piracy answer to fair use, namely, the “home sewing exception,” which excludes single copies of protected designs made for non-commercial use.

Consistent with prior bills, S. 3728 would also increase the allowable damage awards under Chapter 13 for infringement of protected designs and false representation, and make the doctrines of secondary infringement and secondary liability applicable to infringement actions under Chapter 13.

According to a joint press release by the AAFA and the CFDA, “[t]his legislation will for the first time allow creative American designers to benefit from legal protections and at the same time continue to ensure the competitiveness of the U.S. apparel and footwear industry as it delivers fashionable and affordable clothing to consumers” www.apparelandfootwear.org/UserFiles/File/PressReleases/2010/080610idppparelease.pdf. S. 3728 is noteworthy, not only because the two sides were able to find common ground after several years of debate, but perhaps more importantly, the fashion industry has gained significant momentum in paving the way to possibly creating a new intellectual property right.

Erin S. Hennessy is a partner in the Intellectual Property Corporate practice and Nancy Kim is an associate in the Licensing and E-merging Commerce group, both in the Seattle office of K&L Gates LLP. Hennessy can be reached at [email protected].