Can Fashion Designs Be Protected By IP? - Smith & Hopen

Can Fashion Designs Be Protected By IP?
We have all seen the Spring fashion shows which showcase new designs from the big fashion houses. How do designers protect those designs from possible copycats? In some cases, knock-offs appear for purchase in the U.S. quickly after the shows. How is this possible? The U.S. affords fashion designers more limited protections than in some other countries in the world. For example, the European Union affords protections to unregistered designs for up to three years from the date the design was first made available to the public and up to 25 years of protection for registered designs.
Copyright Protection for Separable Design Features
In the U.S., copyright protection extends to original works of authorship and gives the owner the exclusive right to reproduce, publish, sell, or distribute such works. These “original works of authorship” include pictorial, graphic and sculptural works. Unfortunately for fashion designers, copyright protection does not extend to utilitarian articles such as clothing. However, under the separability doctrine, if the design of a useful article incorporates pictorial, graphic, or sculptural features that can be identified separately from, and can exist independently of, the utilitarian aspects of the article, these design features can be copyrightable. 17 U.S.C. §101.
Star Athletica v. Varsity Brands
The Supreme Court further clarified how to implement §101 with regard to clothing designs in Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017). The Court promulgated a two part test to determine if a design of a useful article is capable of copyright protection. In step 1, the feature is examined to ascertain if it “can be perceived as a two- or three-dimensional work of art separate from the useful article”. In step 2, the feature must be examined to ascertain if it “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”. If the answer to both steps is yes, then the design is eligible for copyright protection. The designs in question in this case are below:
The Court ruled the surface decorations on the cheerleading uniforms were subject to copyright protections independent from the useful article. The Court made it clear however, that the shape, cut and dimensions of the actual cheerleading uniform were not copyrightable.
Design Patents
As detailed above, patterns on fabric and designs on clothing can be protected by copyright. How does a fashion designer protect the actual shape and cut of a clothing article? While used mainly to protect accessories such as handbags and shoes, some of the larger fashion houses file design patents on their more unique pieces.
Design patents protect the ornamental design of an article of manufacture. A design patent lasts for 15 years from issuance. In general a design patent is easier to obtain than establishing trade dress rights. Trade dress rights require extensive use prior to filing. They also require an acquired distinctiveness or secondary meaning in the article of clothing to show the trade dress is a source indicator. In contrast, for a design patent, the clothing item must be new and unique. The clothing item must not affect the functionality of the article of clothing. The application filing must occur within one year of public disclosure. An example of a figure from a design patent for a dress owned by Stella McCartney Limited is below:
In the image, solid lines delineate claimed elements of the clothing item. Broken lines represent features that are not part of the design claim.
One caveat with design patent applications is the application covers only a single design in the U.S. unless the variations exhibit only very minor differences. In cases where multiple design embodiments are present in the application, the Patent Office will likely restrict the application to one single design. It may be possible to obtain two or more design patents having differing coverage for a clothing design.
Conclusion
In conclusion, the U.S. offers fashion designers some IP protection for their creations. Copyright law protects fabric designs and surface decorations in certain situations. For example, copyright protection is available if the design can be perceived as a work of art separate from the utilitarian aspect of the clothing article and the design would qualify as a protectable work if imagined separately from the useful article incorporating it. Design patents protect novel and unique designs. Always consult an experienced intellectual property attorney when protecting rights in your fashion designs to determine the best way to move forward.