Knock-off products continue to infiltrate the market in the United States, especially in the realm of fashion.

Historically, U.S. intellectual property law has been inept at providing adequate protection to the fashion industry.  While design patents, through U.S. patent law, can protect ornamental designs the significant cost and prosecution time-frame is inconsistent with the fast-paced fashion industry, where a design would likely be out of style by the time a patent was granted. Further, copyright protection is generally unavailable to fashion designs, as clothing is considered a “useful article” and not protectable.  Finally, U.S. trademark law protects brand names and while a non-traditional product configuration can be registered, this path of protection is not often sought.  This overall lack of protection for the fashion industry has led to a large industry of knock-off products and an expensive enforcement problem for those in the fashion industry.

Legally this lack of coverage may have occurred, in part, due to concerns about stifling creative design and hindering competition.  However, recent trademark case law and proposed copyright legislation may suggest a growing acceptance of greater IP rights for fashion designers.

On September 5, 2012, the Second Circuit Court of Appeals in Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 2012 WL 3832285 (2d Cir. Sept. 5, 2012) found that particular elements of a design, in this case a red lacquered outsole on a women’s shoe, may be protected as a non-traditional trademark where the element had acquired secondary meaning as a distinctive symbol representing the source of the goods.  In this case Louboutin, the owner of a federal trademark registration for its lacquered red outsole, sued Yves Saint Laurent for use of a red sole as part of a monochrome red shoe.  The Second Circuit refused to find infringement holding that Louboutin’s trademark was limited to a red outsole visually contrasting to the rest of the shoe.  While the decision parses back Louboutin’s rights to the red outsole (requiring contrast not originally identified in the registration), the case confirms the Second Circuit’s acceptance of this non-traditional trademark in the fashion industry.  Further, it solidifies the idea that colors and product configurations in the fashion industry may be protectable under trademark law when they have acquired secondary meaning (a requirement for protection of non-traditional trademarks under U.S. law).

Five days after this decision, on September 10, 2012, New York Senator, Charles E. Schumer, introduced the Innovative Design Protection Act of 2012 (S3523) to the U.S. Senate.  This bill is the successor of multiple past attempts to gain greater intellectual property protection for the fashion industry.  The bill would extend copyright law to protect fashion designs, including articles of clothing, undergarments, outwear, gloves, footwear, headwear, handbags, purses, wallets, tote bags, belts, and eyeglass frames.  The bill has been written modestly, limiting protection of these designs to three years (in contrast to general U.S. copyright protection which extends protection for 70+ years).

This was likely done to fence protection into the timeframe when a fashion design is actually relevant in the fast-paced industry.  Designers would be protected only from “substantially identical” infringers, where the allegedly infringing design “contains only those differences in construction or design which are merely trivial.”

Further designers would be required to give 21 days’ notice to a potential infringer, if not cured, the designer could then bring suit; however, remedies would be limited to damages and profits accrued after the date on which the infringement action commenced.  While the additional protection outlined in this bill is narrowly framed it may provide fashion designer a new method to deal with knock-off products.

The multiple developments this year in the intellectual property avenues related to fashion clearly highlight the industry’s interest in improving its methods of handling design imitations.  While the Louboutin case does not particularly increase rights for fashion designers, the Second Circuit commented,

“It is arguable that, in the particular circumstances of this case, the more appropriate vehicle for the protection of the Red Sole Mark would have been copyright rather than trademark,”

clearly identifying that the court believes copyright protection is the correct path for fashion designers to protect their interests.

Interestingly, Senator Schumer’s bill states that “the presence or absence of a particular color or colors or of a pictorial or graphic work imprinted on fabric shall not be considered in determining the protection of a fashion design.”  Is this statement intended to maintain non-traditional color trademarks as the method for protecting colors in connection with fashion designs?  Or, because this language is limited to “fabric,” might this open a new avenue of protection for Louboutin’s red sole shoe? Only time will tell if the current bill will pass and how this will impact the fashion industry in the U.S.

This article was written by Susan A Perera, an Associate at Winthrop & Weinstine.  Winthrop & Weinstine is a full service law firm with offices in Minneapolis and Saint Paul.  As a part of its intellectual property group it produces the Duets Blog on topical intellectual property issues.

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