Introduction
In a world where trends and designs are constantly changing, designers and fashion houses must navigate the complex web of copyrights, trademark rights, trade secrets, and trade dresses to safeguard their intellectual property in fashion.
Therefore, these case studies will illuminate the challenges and triumphs experienced by renowned fashion brands and individuals in their quest to assert ownership over their unique designs. From iconic logos and signature patterns to innovative garment designs, this exploration of intellectual property in the fashion industry promises to unveil the intricate tapestry of legal and creative works considerations that shape one of the most dynamic and expressive realms of art and commerce.
What is the role of intellectual property in the fashion business?
- Intellectual property helps brands create awareness of their products to the general public as few products can be seen in the store. For example, using a well-protected product brand on a runway displays the designer’s creative works and talent, attracting more attention and creating awareness of the products.
- In addition, having a recognized brand attracts more sales, particularly where a luxury brand name is prominently displayed in perfumes, cosmetic products, and clothes because most customers are attracted to luxury brands due to their loyalty.
- Through valid Intellectual Property rights, the public can be attracted to place offers such as partnerships through agreements such as fashion licenses and franchises. Electronic signatures plays a crucial role in allowing parties to sign and safeguard such agreements. So much of the fashion industry thrives on strategic partnerships as Intellectual Property is the core traded asset.
As you delve into intellectual property rights in fashion, ensure your rights are fully safeguarded with a comprehensive fashion licensing agreement. Explore our detailed guide here to fortify your legal standing and optimize your brand’s growth and visibility.
What are the relevant intellectual property rights apply to the fashion business?
Fashion designers have used Intellectual Property in many forms to protect their designs, making Intellectual Property rights pivotal in the fashion industry for their economic advantage. Some of the Intellectual Property rights that are utilized in the fashion industry are; –
Trademark: A trademark is a sign or symbol capable of distinguishing the goods or services of one enterprise from the other. Most fashion designers use their name as their brand names, such as Calvin Klein and Donna Karan, where their name becomes their brand and gives them an exclusive right to use it as a protected trademark. Equally, the tick mark of Nike and the jaguar of Puma are all luxury brands protected as trademarks. Protecting luxury brands by registering a trademark distinguishes the brand and puts potential imitators away, creating a huge impact on the fashion industry.
Trade dress: As discussed, trademark protection becomes relevant when an item attains secondary significance. In such cases, consumers can deduce a product’s manufacturer based on its visual features or packaging.
This differentiation hinges on identifying the origin of a product through its visual and physical attributes. One facet of trademark law that addresses this is known as trade dress. It is important to discuss this separately because it encompasses various elements of a product, including its external design, internal arrangement, packaging, or interior. For instance, it might encompass the unique style and colour scheme of an Adidas shoe or the iconic Burberry’ check pattern.’
Patent law (utility and design patents): Every innovative aspect can be patented in the fashion industry. The products can be functional or ornamental, protected by Utility patents and a Design Patent law, respectively. Many products in the fashion industry are protected by Design patents, for example, handbags, product packaging and footwear.
Copyrights and design: Generally, copyright is used to protect literacy and artistic works, in the fashion industry, it is used to protect fabric designs, which are composed of the aesthetic and design part of any work, including the shapes, configuration, patterns, ornaments, lines and colours as well as all creatives that are separate from the functional elements.
Geographical indications (GIs) are intellectual property rights used to identify products from a particular region with qualities, reputations, or other qualities that may be directly linked to their place of origin. It safeguards fashionable garments with distinctive textures and fabrics originating from a particular region that have artistic value when made into clothing and accessories.
Intellectual property in fashion: Case no. 1: Puma v. Forever 21
In March 2017, Puma initiated legal proceedings against Forever 21 in a California District Court, alleging infringement of Puma’s design patent and copyright. Puma’s claims were rooted in Forever 21’s alleged replication of Puma’s Fenty shoe collection, which includes the Creeper Sneaker, Fur Slide, and Bow Slide, famously associated with Barbadian singer Rihanna Fenty. Puma claims that certain design elements are subject to copyright infringement. These include the “ridged vertical tooling and grainy texture on the thick rubber outer sole” for the Creeper shoe, the “broad plush fur strap that goes down to the sandal base” for the Fur Slide, and the “informally tied fabric bow with pointed ends on a lined side strap that extends to the sandal base” for the Bow Slide.
The court ruled in favour of Puma regarding the infringement of its design patent in the Creeper Sneakers, finding the differences between the contested footwear insufficient for a casual observer to distinguish between the designs.
However, Forever 21 successfully contested Puma’s claim of trade dress infringement, arguing that the elements constituting it, lacked unique source-identifying characteristics. The court dismissed Puma’s claim as it failed to demonstrate non-functionality.
Puma also alleged copyright infringement on the Fenty shoes subject to three copyright applications. Still, Forever 21 questioned the validity of Puma’s copyright ownership and argued that the shoe designs were not eligible for copyright protection due to their lack of originality.
In addition, Puma’s claims included false designation of origin under the Lanham Act and unfair competition under the California Business and Professions Code. The court granted some of these claims, allowing Puma the opportunity to amend and reassert certain aspects of its case.
Ultimately, after two years of litigation, it was reported in November 2018 that both parties reached a settlement to resolve the dispute. This case, therefore, explains legal issues surrounding intellectual property rights, design infringement, and the challenges faced by fashion industry giants in protecting their creations from imitation.
Intellectual property in fashion: Case no. 2: Louis Vuitton Malletier v. Haute Diggity Dog
This case involves various intellectual property infringement between Luis Vuitton Malletier S.A. (LVM), a luxury consumer goods manufacturer known for its Monogram Canvas Pattern Design mark, and Haute Diggity Dog, LLC (HDD), a company that creates parody pet products. Louis Vuitton filed a lawsuit alleging trademark violation and copyright infringement against HDD for marketing pet toys with names like “Chewy Vuiton” that parodied LVM’s luxury products.
To prove that trademark infringement occurred, Louis Vuitton needed to demonstrate that it possessed a protectable mark and that HDD’s use of similar marks in commerce would likely confuse customers. The court applied factors like the strength of the mark, the similarity between the marks, and the degree of recognition to assess the likelihood of confusion. Ultimately, the court concluded that confusion was unlikely, denying Louis Vuitton’s motion for summary judgment and granting HDD’s cross-motion regarding trademark violation.
Louis Vuitton also sought injunctive relief under the Federal Trademark Dilution Act, asserting that HDD’s actions diluted the distinctive quality of its mark. The court considered dilution by blurring, where a junior mark impairs the distinctiveness of a famous mark, and dilution by trademark tarnishment, where a mark is portrayed negatively. It found that HDD’s parody products did not cause dilution by blurring or trademark tarnishment, and therefore, summary judgment was granted in favor of HDD on the dilution claim.
The case raised important questions on intellectual property infringement regarding the balance between trademark protection and parody rights. While Louis Vuitton’s mark was strong and famous, the court determined that these exclusive rights on parody products did not diminish its distinctiveness and were not likely to cause confusion or tarnishment. This ruling favored HDD and its parody of pet products.
In conclusion, the court denied Louis Vuitton’s motion for summary judgment and granted HDD’s cross-motion, finding no trademark infringement or dilution in HDD’s parody of pet products. This case underscores the complexities of trademark law and the considerations involved in balancing parody and trademark protection.
Intellectual property in fashion: Case no. 3: Adidas America Inc. v. Payless Shoesource Inc.
In this case, Adidas-America, Inc. and Adidas-Solomon AG (collectively “Adidas”) filed a lawsuit against Payless ShoeSource, Inc. (“Payless”) in 2001, alleging trademark infringement on using three straps design. The lawsuit stemmed from Payless selling shoes and sportswear that resembled Adidas products. This issue was rejected but revived by the Ninth Circuit in 2006. And this time, Adidas received $305 million in damages, including a fair royalty and punitive penalties, after a jury trial.
Payless then moved for judgment as a matter of law, seeking a reduction in the damages awarded, but the court upheld the decision.
Is anything being done to harmonize US and European fashion laws?
Fashion is a significant part of the creative economy and may substantially impact federal law in countries such as Europe. The European Commission strives to address several issues that affect these industries simultaneously, including the rise in counterfeit goods and the need to protect IP laws and rights.
In the US, the Design Piracy Prohibition Act (introduced in 2009), the Innovative Design Protection and Piracy Prevention Act (introduced in 2010), and the Innovative Design Protection Act (introduced in 2012) are three copyright legislation that have been put forth to Congress over the previous ten years. Each bill changed the US Copyright Act to grant fashion designs special protection. Sadly, none of the proposals were passed since they did not receive enough support in Congress.
Challenges in intellectual property protection in the fashion industry
Intellectual Property law faces many challenges in the fashion industry regarding the level of protection offered and enforcement aspect to stimulate innovation; this is because the fashion industry thrives on the concept of new ideas and trends which revolve around the human mind and are best capitalized through Intellectual Property protection. There is still insufficiency in Intellectual Property laws specifically available to the fashion industry, hence the lack of a sufficient mechanism to safeguard designers, trade secrets, and their creativity, leading to widespread crimes of counterfeiting such as imitation of designs and selling them at very low prices as a consequence. It is worth noting these most significant difficulties in protecting Intellectual Property in the fashion industry, and some of their examples include; –
Copyright in the fashion industry is designed to protect the creative aspect of fashion design only and not the functioning physical aspect; this leaves the design of the products, such as the print pattern, vulnerable to imitation. This issue of copyrightability of design was widely explored in the US case of Varsity Brands, Inc. v. Star Athletica, LLC, which involved a dispute between two clothing manufacturers, Star Athletica, Llc. and Varsity Brands Inc. Varsity Brands sold cheerleading uniforms with varying combinations of chevrons, stripes, and colour-blocking and obtained copyrights for several of its uniform designs. Star Athletica, on the other hand, began creating similar uniforms with stripes, zigzag, and chevron insignia at a lower price and was consequently sued by Varsity Brands for copyright infringement. In its defence, Star Athletica stated that the clothing designs were uncopyrightable because their aesthetic designs were tied closely to their utilitarian purpose as uniforms. The primary issue that was not conclusively addressed was the issue of whether Varsity’s designs were original enough to be copyrightable.
Another challenge is the ever-changing trends in the fashion industry, which may make it difficult for patent applications to keep up with and the rapid technological advancements that might position a fashion company ahead of the competition. On the other hand, being a patent owner can be expensive, and its long application process can expose the design to duplication over the years.
How intellectual property law can help boost fashion brands?
A powerful and well-known fashion brand is known for its effective marketing and strategic assets. The image of a brand is important in attracting new consumers and increasing the company’s growth. Allocation and wise use of intellectual property rights are required to develop a sustainable and reputed fashion brand.
There are several methods for a brand to distribute and monetize its intellectual property rights to maximize productivity and development.
Safeguarding Intellectual Property through Registration
It is critical nowadays to recognize, create, and register a fashion brand’s creativity with the help of Intellectual Property laws. In this world of counterfeit goods, everyone wants to obtain a competitive advantage by using inexpensive methods such as duplication, imitation, and counterfeiting, which is why it is critical to register one’s IP. Luxury Brands can also go with the online registration of the Intellectual Property. They should invest capital to understand the various methods by which they can secure their brand’s uniqueness and quality.
Enhancing Growth, Revenue, and Brand Reputation
To create better outcomes and more income, a fashion brand should be proactive in deploying trade secrets and intellectual property rights solutions. Intellectual property rights may be successfully employed in marketing communications. With its name, such a trademark might aid in the promotion of a brand. Geographical identifiers may also enhance a brand’s image by increasing perceived quality and pinpointing its origin.
Gaining Global and Online Recognition
Lastly, as the market competition becomes fierce in the fashion industry, these Companies must now compete with inherently distinctive in a much larger marketplace than in the past. As a result, businesses must broaden their worldwide and online presence. International registration of intellectual property rights is critical for companies looking to extend their worldwide presence. An excellent internet marketing plan is required to establish their presence on the online platform. Protection of internet assets, such as domain name registration, is also critical. Fashion firms may promote their wares on a variety of e-commerce platforms. This will gradually enlarge their target audience while also recognizing their authors.
Building and maintaining a brand image is critical for all businesses. Intellectual property assets must be assigned and monetized to spur further growth in the fashion sector.
Measures to protect your fashion brands
First and foremost, consumers must be educated and made aware of the fact that the sale of counterfeit goods not only hurts the reputation of the brand but also puts them at risk, such as when it comes to the calibre and safety of the products they purchase or the lack of warranties. It can be challenging, demoralizing, and risky for a brand to compete with counterfeiters. However, most online players are creating tools to assist brand owners in successfully fending off imitations online.
To use Amazon as an example, the company just revealed “Project Zero.” Automated protections will continuously monitor the website and proactively remove suspected counterfeit content after receiving from the brand the logo, trademark, and other essential information from Amazon.
Unregistered form of protection: To keep costs in check or test a new product on the market, a fashion company may use unregistered protection on its designs. In the European Union and the United Kingdom, there’s an option, which grants temporary design protection on a product before going through the trademark registration process, is available. Because it covers the design for up to three years within the EU and the UK, using an unregistered type of protection for short-term or “fast fashion” goods can be more cost-effective for a company. However, more iconic fashion items in a collection typically require long-term protection.
Conclusion
Intellectual property is at the core of the fashion industry. This industry is required to be protected tactfully for a positive and sustainable existence, but while it’s just recently that the industry has boosted its growth, the laws have yet to take shape.
Consequently, finding a specific answer could be challenging in the fashion industry. Therefore, speaking with an experienced fashion law or intellectual property expert is always advisable.
Frequently asked questions
Whether a series of sizes and shapes on an article is protectable?
In Star Athletica v. Varsity Brands, an employee of this company, which created the majority of the cheerleading uniforms in the nation, traveled to another nation and plagiarized parts of his former employer’s designs. His new business was accused of violating copyright. The designs were examined by the court from two separate angles. Compared to the designs and graphics on the uniforms, their design is more utilitarian, such as the uniform’s cut. The court ruled that the copyright would only protect the design and not the cut of the clothing.
Can a colour be trademarked?
Yes, colour can also be trademarked if it distinguishes the goods of one enterprise from those of another.
Example: Ferrari has red, Tiffinay & co. colour has blue
Can a design be re-registered whose copyright has already expired?
No, a design whose copyright has expired cannot be re-registered.
Why is it important to file for the registration of a design at the earliest?
Due to the first-to-file rule’s applicability, it is crucial to submit a design registration application as soon as possible. Accordingly, only the first application will be considered for the design’s registration if two or more applications for the registration of identical or comparable designs are submitted on different dates.
I would like to patent my creation. How can I be sure someone else hasn’t applied for a similar patent?
You must do a patent search utilizing various approaches, such as constructing a key string using Indian patent search, WIPO patent search, US patent search, EPO patent search, and Google patents search, to learn about the prior art relating to your innovation. There are also various databases for professionals, including Derwent by Clarivate Analytics.
