Home -> Law Blog Directory -> Legal Journals Blogs -> The Journal of the Business Law Society

Legal Journals

: The Journal of the Business Law Society

A Novel Solution to an Ancient Problem: Could the Design Piracy Prohibition Act Offer Fashion Designs Complete Protection from Imitation?

By Naureen Amjad

Fashion is not simply a fad. It is here to stay. Clothing is not only a necessity, but a way to make a statement. The global fashion industry sells more than $750 billion of apparel annually.[1] Major fashion design firms, such as Gucci, Prada, Armani, Ralph Lauren, and Chanel, produce new apparel designs continually, but market their design output via collections introduced seasonally in a series of runway shows.[2] While it is true that trends are constantly in flux, there is always a specific trend each season which dominates the runway and retail stores. The fashion industry?s products are typically segmented into broad categories forming what has been described as a fashion pyramid, consisting of a designer category at the top with three different segmentations of products.[3] First is a very small trade in haute couture, or extremely expensive custom designed clothing entirely for women.[4] Directly below is a much larger business in designer ready-to-wear clothing for women and men.[5] This tier is further segmented into prestige collections and lower-priced bridge collections offered by many famous designers.[6] Another level down is ?better? fashion, an even larger category that consists of moderately priced apparel and the basic commodity category.[7]

While the average consumer may perceive fashion as simply a new eye-capturing hue or a brightly blended silk scarf; whereas, designers construe fashion to be an expression of art. It is these sorts of fashion designs that require the same protection afforded to any other art form. Designers have been advocating for decades in hopes of gaining copyright protection for their designs, but to no avail. However, the recent introduction of Design Piracy Prohibition Act [8] [hereinafter ?DPPA?] may be the answer to all fashion designers? prayers.

DPPA was initially introduced in the House of Representatives on March 30, 2006 and would amend title 17, section 2 of the United States Code, by expanding the term, ?design,? to include ?fashion design? and affording protection to fashion designs.[9] An identical bill was also introduced in the Senate on August 2, 2007.[10] DPPA would essentially extend protection to the appearance as a whole of an article of apparel, including its ornamentation, with apparel defined to include men?s, women?s, and children?s clothing, including undergarments, outerwear, gloves, footwear, headgear, handbags, purses, tote bags, belts and eyeglass frames.[11] Such Act would allow designers to sue those who copied their creations for up to $250,000 or $5 per copy for violations and would additionally allow designers to appeal for the destruction of the pirated goods.[12] The passage of such Act could entirely transform the market in which unauthorized imitations are sold alongside original fashion designs. Smaller, newer designers would be more likely to bring suits against design pirates because their rights in their designs would be clearly established, thus reducing the litigation costs relative to the likelihood of obtaining effective relief.[13] If a fashion design was truly pirated, the designer would have a higher likelihood of success, and would therefore be more inclined to defend her rights, despite the fact that she lacked the financial advantage of the larger designers.[14]

Fashion is a field in which only the most innovative thrive. In order to grant designers the incentive to continue creating the newest trends, they must be equipped with the satisfaction of knowing that legal remedies exist in order to counteract design piracy.[15] In the past, designers took pride in their works being imitated as product ideas trickled down from the high-end runways to the mass markets.[16] However, now that knockoffs, specifically counterfeits, have become a multi-billion dollar industry, designers and manufacturers recognize imitation as a ?moral threat.?[17] While imitation is often considered the most sincere form of flattery, it is doubtful that designers will continue to introduce the same number of creations at exponentially high rates knowing that their unique designs will be transformed into cheap imitations within a short period of time. While current laws do provide some protection against imitation goods, such protection is only for trademarked goods and does not provide any protection when the good  is copied under a slightly different logo or label. Duplicating original designs is not a new phenomenon. Copy-cat designs have been prevalent in the fashion industry since the emergence of mass production of ready to wear designs.[18] In any other artistic field, this shameless wholesale copying would be unthinkable because forgers of the visual arts and pirates of sound recordings and motion pictures receive criminal as well as civil penalties for such actions.[19]

From the 1930?s through the 1960?s, buyers from American department stores would attend haute-couture shows in Paris and purchase original patterns, taking them home to be mass produced. In the interwar and early postwar periods, the major French couture houses tacitly sanctioned some design copying, permitting a few American producers to attend their Paris runway shows in exchange for ?caution fees? or advance orders to couture gowns.[20] Wholesalers and retailers were barred from Parisian shows unless explicitly invited and had to follow certain rules: no photos or sketches could be published until after a set date, and deliveries to customers and stores were staggered.[21] One writer described the practices of copying Parisian designs in the 1950?s as follows: ?The manufacturers flew in from New York, laid the (couture) clothes out on a table, and measured each seam. They went back to New York to copy the dresses and then [the Chicago-based department store Marshall] Field?s brought the copies.?[22]

For years, fashion designers have attempted to combat design piracy through copyright law.[23] Although copyright law has successfully protected those designers whose works possess certain elements that can be identified separately from the utilitarian aspect of the clothing, copyright law generally fails to protect a design?s overall concept.[24] Useful articles, like clothing, have not been traditionally copyrightable and the definition of design has not expansively covered fashion design. Copyright law is not the only area that has failed to protect fashion design. Trademark, trade dress and patent law have also failed to adequately protect designs from being pirated. While certain aspects of clothing, like logos or non-useful decorations, are capable of being protected, the entire garment can be copied and distributed without penalty.[25]

Copying of designs can, and often does, occur very blatantly.[26] Design pirates will send designers to fashion shows to sketch designs as they are coming down the runways and will have designs ready to be sold before the original ever reaches the stores.[27] In the late 1930?s, the Fashion Originators? Guild of America [hereinafter ?FOGA?] decided to take matters into its own hands when the designs of its members were being copied and sold to the same stores at lower prices.[28] In order to destroyed competition resulting from design pirates, FOGA boycotted and declined to sell its products to retailers who sold clothing copied by other manufacturers from designs by FOGA members.[29] Violators of FOGA requirements, who sold to boycotted stores or sold copied designs, were subject to heavy fines.[30] As to be expected, the Federal Trade Commission swiftly ended this practice because it created unfair competition, resulting in a monopoly.[31] One fashion design firm, A.B.S. Clothing Collection, Inc. (ABS), has built its entire business around copying the creations of other designers.[32] Allen B. Schwartz, the President of ABS, has admitted to watching the Academy Awards telecast, sketching the dresses of the stars on the red carpet and then deciding which gowns he is going to ?interpret.?[33] ABS even goes so far as to name its designs after the celebrity wearing it.[34]

Current legal remedies to protect fashion designs from piracy include trademark and trade dress, design patent, and copyright law. These remedies, however, fail to adequately protect most fashion designs in their entirety. DPPA may prove to be just the solution that all fashion designers have been waiting for.

SOURCES

[1] Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 VA. L. REV. 1687, 1693 (2006).

[2] Id. (illustrating that fall shows are held during consecutive weeks in February and March, first in New York, then in London, then Milan, and finally, in Paris; whereas, Spring shows are held during consecutive weeks in September and October, in the same cities and order).

[3] Id.

[4] Id.

[5] See id.

[6] Id.

[7] See id.

[8] Design Piracy Prohibition Act, S. 1957, 110th Cong. (1st Sess. 2007) (introduced by Mr. Schumer, Mrs. Hutchison, Mrs. Feinstein, Mr. Hatch, Mr. Whitehouse, Mr. Graham, Mr. Kohl, Mrs. Clinton, and Ms. Snowe, read twice and referred to the Committee on the Judiciary).

[9] Design Piracy Prohibition Act, H.R. 2033, 110th Cong. (1st Sess. 2007) (introduced by Representative Wiliam D. Delahunt, for himself and Representative Goodlatte, Maloney, and Bono).

[10] Design Piracy Prohibition Act, S. 1957, 110th Cong. (1st Sess. 2007).

[11] See Design Piracy Prohibition Act, S. 1957, 110th Cong. (1st Sess. 2007) at § 2(a) (demonstrating the amendments to include the addition of the terms, ?fashion design,? and ?article of apparel,? and defining a ?fashion design? as the appearance as a whole of an article of apparel, including its ornamentation, and clarifying the term, ?design? to include fashion design, except to the extent expressly limited to the design of a vessel).

[12] Kathryn Rexrode, Goodlatte Introduces Legislation to Combat Design Piracy (Mar. 30, 2006), http://www.house.gov/goodlatte/dppress109.htm.

[13] Julie P. Tsai, Note, Fashioning Protection: A Note on the Protection of Fashion Designs in The United States, 9 LEWIS & CLARK L. REV. 447, 448 (2005) (illustrating that new designers are often hesitant to bring a suit against pirators due to the uncertainty of a positive outcome through legal procedural vehicles, in addition to high litigation costs).

[14] Id. (stating that new designers, normally small business owners, are the most vulnerable to piracy of their designs and larger business realize this advantage they hold over small businesses, often copying the designs of new designers without the fear of any repercussions).

[15] Id. at 449.

[16] See Sarah J. Kaufman, Note, Trend Forecast: Imitation Is a Legal Form of Flattery ? Louis Vuitton Malletier v. Dooney & Bourke, Inc., 23 CARDOZO ARTS & ENT. L.J. 531, 532 (2005) (inferring that while copying designs did take place in the past, it was not as widespread and did not pose as much of a threat to the designer?s sales of original goods as now when high-quality pirated goods look almost identical to the original goods, often causing consumers to choose the cheaper version while being able to remain fashionable).

[17] See Tsai, supra note 13, at 533.

[18] Id. at 451.

[19] See Samantha L. Hetherington, Note, Fashion Runways Are No Longer the Public Domain:  Applying the Common Law Right of Publicity to Haute Couture Fashion Design, 24 HASTINGS COMM. & ENT. L.J. 43, 45 (2001).

[20] Raustiala & Sprigman, supra note 1, at 1696.

[21] Id.

[22] Id.

[23] S. Priya Bharathi, Note, There Is More Than One Way to Skin a Copycat: The Emergence of Trade Dress to Combat Design Piracy of Fashion Works, 27 TEX. TECH. L. REV. 1667 (1996).

[24] Id.

[25] Hetherington, supra note 19, at 43.

[26] Tsai, supra note 13, at 450.

[27] Id.

[28] Id. at 452.

[29] Id.

[30] Id.

[31] Id.; But see FOGA, Inc., et al., v. FTC, 312 U.S. 457 (1941) (affirming a FTC decree ordering petitioners to cease and desist from certain practices found to have been done in combination and to constitute ?unfair methods of competition? tending to monopoly).

[32] Hetherington, supra note 19, at 45.

[33] Id.

[34] Id. at 56.

Full post as published by The Journal of the Business Law Society on November 20, 2007 (boomark / email).