Issues of Industrial Property Law in Fashion Law:
An Examination of Constructing a Legal System for the Fashion Business *Overseas Researcher: Takashi IEDA **This report examines the problem of industrial property rights related to fashion law, mainly in theUnited States. First, we examine the discussion of intellectual property rights on fashion in the UnitedStates and confirm the situation where trademarks are emphasized. Next, we examine cases on
trademarks and fashion in the United States, and point out that cases related to fashion influenced
the formation of the legal theory related to trade dress. After that, we introduce views that
infringement of intellectual property such as piracy would benefit the fashion industry, and to utilize
trademarks in fashion business, being especially critical of the latter opinion. A study will beconducted. Finally, we present problems in Japanese Law and summarize this report by giving
suggestions from examination of American law.

I. Introduction
In the United States, the intellectual property rights most closely related to fashion are
trademark rights. The negative reason is that copyrights and design patents are difficult to apply inthe fashion area. The positive reason is that a trademark is a perpetual right. Compared with a design
patent of 15 years in duration and a copyright of 70 years in duration, it has been pointed out that
trademarks are regarded as a brand's financial strategy due to the superiority of the validity period.
This report will consider industrial property rights in the area of fashion, focusing on issues
related to trademark. The legal system of trademarks in the United States is centered on a federal law
called the Lanham Act enacted in 1946. A new framework has been created to protect trademarks andto prevent unfair competition by the Lanham Act. In addition to traditional trademark infringement,
the Federal Trademark Dilution Act enacted in the Congress in 1995 adds dilution of a trademark to
the causes of complaint. Thereafter, in the revised Federal Trademark Dilution Act enacted in 2006,
a trial could be initiated if proof of the possibility of dilution only proves the dilution of prominentmarks.
* This is a summary of the report published under the 2018 Collaborative Research Project on Harmonization of Industrial Property

Right Systems under a commission from the Japan Patent Office.

** Professor, Nanzan University Faculty of Law.

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In the American fashion area, trade dress is protected by the Lanham Act. Originally, tradedress was accepted for the package of a product, but it has come to be accepted for the configurationand design of a product. In the fashion industry, trade dress is approved for handbags, tennis shoes,
jewelry, children's clothing and watch products.

II. Cases of trademark and trade dress in fashion area
1. Preface
This report will examine cases in the US related to fashion. There is a case that is not related
directly to fashion, such as the design of shops, but this case is a representative precedent trade dress.
2. Abercrombie & Fitch Co. v. Hunting World, Inc.
In the judgment of Abercrombie & Fitch Co. v. Hunting World, Inc., 1 the term “safari” wasregarded as a problem. In this judgment, a decision was made from the lowest degree of protection
concerning the term, from (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful 2.
In generic terms, it is stated that eligibility for protection as a trademark is not recognized, while fordescriptive terms, it is said that eligibility for protection as a trademark is recognized by showing asecondary meaning 3. The court concluded that the term “safari” is generic, therefore a trademark isallowed to use the term “safari.”
3. Two Pesos, Inc. v. Taco Cabana, Inc.
In Two Pesos, Inc. v. Taco Cabana, Inc. 4 in 1992, the interior and exterior of a shop became aproblem as trade dress 5. The Supreme Court showed that the classification set forth by Abercrombie& Fitch also applies to trade dress 6 and that the standard related to the distinctiveness of trademarks
also applies to trade dress. In this case, the Supreme Court stated that the trade dress at issue has
inherent distinctiveness so that eligibility for legal protection would be recognized without proof ofa secondary meaning. At the same time, the Supreme Court insists that it is only when the trade dress

Abercrombie & Fitch Co. v. Hunting World, Inc. 537 F. 2d 4 (2nd Cir 1976).
Id. at 9.
3 Id. at 10.
4 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
5 Darius C. Gambino and William L Bartow, Trade Dress: Evolution, Strategy & Practice (2015), 170.
6 Two Pesos, 505 U.S. at 768.
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does not have sufficient distinctiveness to require proof of the secondary meaning 7.
4. Wal-Mart v. Samara Brothers, Inc.
In 2000, Wal-Mart v. Samara Brothers, Inc. 8, fashion design and color were examined by theSupreme Court, from the viewpoint of eligibility for protection under the Lanham Act. The Supreme
Court confirmed that the concept of trade dress applied to product packages also includes productdesign 9. The case indicates two ways that eligibility for legal protection in unregistered trade dresses
is obtained. The first, trade dress with inherent distinctiveness, is eligible. The second, trade dress
with a secondary meaning, has come to be protected. Regarding the trade dress of color, referring to
the position indicated in the Supreme Court decision on Qualitex, the position is shown that theeligibility for protection of a trademark would be accepted only when showing a secondary meaning 10.
The Supreme Court also presented an opinion that designs of products as well as color do not haveinherent distinctiveness, so then, they would be protected as trade dress when showing a secondary
meaning 11.
5. Louis Vuitton Malletier v. Dooney & Bourke
In the case of Louis Vuitton Malletier v. Dooney & Bourke 12 in the New York Southern District
Court 2008, the design of handbags printed in multicolored marks registered as a trademark wascontested. In this case, the eligibility for protection under the Lanham Act, the possibility of confusion,and dilution of the trademark were at issue. This judgment considers the factors in the so-called
Polaroid test about the possibility of confusion, and most of the factors work favorably for D&B, thedefendant, regarding the consumer handbags in question 13 . It was also judged that there was noconfusion among consumers as to whether there was a transmission source, partnership relationship,or support relationship between the plaintiff and the defendant. Also, when considering whether
dilution by blurring has actually occurred, the court showed on the one hand that LV's multicolor
monogram was recognized as famous mark 14, and on the other hand that the psychological connection
was insufficient as a requirement for dilution 15.
Id. at 769.
Wal-Mart v. Samara Brothers, Inc., 529 U.S. 205, (2000).
9 Id. at 209.
10 Id. at 212 (quoting Qualitex, 514 U.S. at 162-163).
11 Id. at 213.
12 Luis Vuitton Malletier v. Dooney & Bourke, 561 F. Supp. 2d 368 (2008).
13 Id. at 389-390.
14 Id. at 391.
15 Id. at 392.
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6. Christian Louboutin v. Yves Sant Laurent America
In Christian Louboutin v. Yves Sant Laurent America 16 in 2002, the Second Circuit consideredwhether a single color would be recognized as a mark of a special style in high fashion in women'sshoes. Christian Louboutin is known as a high fashion designer of women's shoes and the shoes madeby Louboutin have been characterized by their feature: a bright, lacquered red outsole. In 2011, YSL
prepared to market a line of monochrome shoes in purple, green, yellow and red. The style of themonochrome shoes uses the same color on the entire shoe so that the red version includes a red insole,heel, upper, and outsole. Louboutin filed an action asserting claims under the Lanham Act fortrademark infringement, false designation of origin and unfair competition, and trademark dilution.
The court stated that there is a possibility that even a single color for apparel products may haveeligibility for protection as a trademark 17 . In this judgment, as a result of the single color being
frequently and remarkably used by a specific designer, the main significance of the color is regarded
as functioning as a symbol indicating the origin of the product, not the product itself 18. The court
judged that Louboutin's Red Sole had obtained a limited secondary meaning 19. Though, because of
the fact that the shoe design by YSL applies the red color to the entire shoe, the court concluded that
there is no possibility of confusion 20.
7. Verification of cases in the United States
As a result of examining US cases, this report points out that the following points should bediscussed. First of all, this report points out that cases related to fashion have influenced the formationof trade dress principles. There are two standards by which trade dresses are legally protected. The
first standard stated by the court is to distinguish between a product package and a productconfiguration or design for trade dress. The second standard is that the product's package has its own
discriminating power, but with regard to trade dress of a product configuration or design, in order toobtain eligibility for protection under the Lanham method, it is necessary to indicate a secondary
meaning.
Secondly, what this report states is that it is needed to show a secondary meaning in order toprotect a product design and color as trade dress. For these reasons, for protection as a trademark oftrade dress in the fashion area in the United States, the design of the product must have acquired a
Christian Louboutin v. Yves Sant Laurent America, 696 F.3d 206 (2012).
Christian Louboutin, 696 F.3d at 224.
18 Id. at 226.
19 Id. at 225.
20 Id. at 228.
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secondary meaning. Secondary meaning referred to here indicates that the mark and trade dress arerelated to a specific origin. So then, designs that can receive protection as a trademark or trade dress
will be limited to those that show their origins.

III. Discussion on the relationship between fashion and trademark
1. The Piracy Paradox
In the United States, the theory of the so-called Piracy Paradox is advocated in connection withthe application of intellectual property rights to fashion 21. In the theory of the Piracy Paradox, copyingof a fashion design like piracy promotes innovation so then, it is desirable that there is no protection
by intellectual property rights. This opinion is supported by two theoretical explanation models. The
first is that copying encourage obsolescence of former designs and the second is that copying anchorsa particular design as a trend.
This theory positions it as a descriptive model that tries to explain the law situation of theUnited States, that legal protection by intellectual property rights is not sufficient. This theory
presents why the US situation is reasonable in the fashion area.
2. The Devil Wears Trademark
A view to criticize the application of trademarks in the fashion area has been proposed in an article
titled "The Devil Wears Trademark." 22 First of all, this article states that protection of quasi-designs
by trademark gives motivation to logo/fashion design 23. As an objection to this assertion, this reportpresents the opinion that it is not reasonable to take a position to criticize a specific design from theviewpoint of law such as that a design related to a logo is not innovative. Second, according to theargument of this article, protecting a designed logo with a trademark is convenient for existing
designers and it is disadvantageous for emerging designers 24. From this descriptive explanation, thisreport would like to point out that caution is necessary as to whether we can directly lead a normativeargument that the protection of a fashion design by trademark should be restricted. Third, this article
points out that in the protection of quasi-designs by the court, it is impossible to introduce

Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 VA. L.
REV. 1687 (2006).
22 Note, The Devil Wears Trademark: How the Fashion Industry Has Expanded Trademark Doctrine to its Detriment, HARV. L. REV.
vol. 127, 995 (2014).
23
Note, supra note (22), at 1011.
24
Note, supra note (22), at 1013.
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comprehensive long-term protection that is sufficient for designers' trust 25. Such a view is based onan evaluation that the criteria indicated by the US cases are insufficient. On the contrary, this reportinsists that judicial precedents on American trade dresses show a certain degree of clear standards forprotection of fashion designs.

IV. Review of Japanese law
This report examined the trademark issue related to the American fashion area. The center of thisconsideration was problems related to trade dress.
If it is supposed to introduce the trade dress protection system in Japan as a whole, it will be seenthat in the United States, even for trade dresses which have not acquired a secondary meaning, they
are subject to preliminary registration 26.
Regarding trademarks in the United States, attention must be paid to the fact that the pre-use
principle is the basis of the trademark system. Trade dress in the United States also reflects theprinciple of pre-use. Finally, this report points out that the adjustment between the pre-registration
principle and the pre-use principle is a fundamental problem in the trademark system.

2526

Note, supra note (22), at 1013.
Gambino & Bartow, supra note (5), at 431.

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