Know Your Knock-offs: The Challenge in Protecting Apparel Designs in the U.S.

At $350 billion and growing, it's no surprise that fashion design (including fabric patterns and accessories) has engendered a solid body of intellectual property law to protect it. Historically, designers protect their designs under such U.S. intellectual property laws as the federal Copyright Act, the federal Trademark Act (a/k/a the Lanham Act), or the federal Patent Act. Now, Congress is considering a proposed Design Piracy Prohibition Act (H.R. 2196), which could strengthen those protections by extending limited copyright protection for fashion designs.

What copyrights protect
While copyright law is clear in its protection of original works of authorship which display at least a minimal level of creative expression and originality, such as paintings, books and fabric patterns (i.e. the designs on fabric), protection does not extend to utilitarian articles. This means designers can copyright a fabric pattern (e.g. an ornate floral pattern) if it exhibits a sufficient level of creativity (See Knitwaves v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995)), but designs considered utilitarian (the sweater itself) cannot be copyrighted. Only aspects of clothing designs not dictated by their functional aspects can be copyrighted. So, for example, one may copyright the ornate design of a belt buckle providing that design is not tied to the manner in which it fastens, but not the buckle itself.

What trademarks protect
Trademark law protects the identifiers of the goods' source. In apparel, for example, trademark law protects well-known fashion designer names (Calvin Klein, Georgio Armani, Versace, etc.) attached to their eponymously titled labels. The goal: Protect the public from confusion regarding the source of goods. (If they pay for a Calvin, they get a Calvin.)

Protecting trade dress
Trademark law also protects "trade dress," or the overall appearance of a product or its packaging that is distinctly identified with its source.

In 2000, the U.S. Supreme Court held that trade dress in clothing design is protected only when it possesses "secondary meaning" or "acquired distinctiveness." This means that the design itself has become so well known by consumers that it is inextricably linked to the brand and acts as a source identifier. See Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000). However, proving this can be difficult.

Once registered, copyright and trademark registrations can then be recorded with the U.S. Customs and Border Protection ("CBP"). The CBP polices imports and notifies copyright or trademark owners when infringing goods enter the United States, and seizes them. Those that slip through in error can still be seized by the CBP.

Where does patent law apply?
Typically, U.S. patent law applies to any new and useful process, machine, manufacture, product composition, or new and useful improvement to that process (e.g. a novel method for manufacturing stockings or a unique "self-snapping" snap). Unlike copyrights and trademarks, so-called "utility" patents can protect processes, methods or systems. Patenting apparel design is problematic, however, because of the:
*Strict statutory conditions to patentability; and
*Lag time between patent application filing date and patent issue date by which time the item to be protected is no longer popular or even on the market. Nonetheless, if your novel method of manufacture or specific style is "timeless," it may be worth seeking patent protection.

Recognizing fake "designer" products
How does one distinguish a fake item from one representing an emerging fashion trend?

In an industry already besieged by counterfeiting further abetted by e-commerce, the law makes that distinction. The most obvious is where the goods are sold. Apparel designers customarily maintain strict distribution channels. Goods, bearing designers' trademarks, sold on the streets are sure to be fake, as are goods sold on questionable websites - especially on sites where the deal appears too good to be true. Other websites advertise the sale of "replicas" or goods "inspired by" certain designers. A replica is not an original of the designer who inspired it.

Product quality is another counterfeit indicator. Counterfeiters rarely manufacture goods to the levels of workmanship and materials of original designers.

Areconsumers guilty of a counterfeiting crime?
Consumers, desiring the cachet of designer goods without premium prices, may consider "knockoffs" acceptable substitutes. No current U.S. law expressly subjects purchasers of fakes to criminal sanctions - unless they resell them. In which case, they are subject to criminal penalties according to statute (18 U.S.C. 2320). But in other countries - caveat emptor - as the law is not always forgiving. In France, for example, even owning a counterfeit handbag is illegal.

Certainly, consumers who knowingly buy fakes supply the demand for counterfeits that keeps such businesses thriving. They are aiding and abetting counterfeiters. And with such demand, counterfeiters are ready and able to supply them with the knockoffs they crave. Nonetheless, U.S. intellectual property law does provide some means for designers to protect their designs and enforce their rights.

Edward M. Weisz ([email protected]) is a partner in Cohen Pontani Lieberman & Pavane LLP (CPLP), 551 Fifth Avenue, New York, NY 10176; Tel: 212.687.2770. Mr. Weisz practices in all areas of intellectual property law, most recently, in U.S. patent prosecution, rendering legal opinions and advising clients on infringement and validity issues. A substantial portion of Mr. Weisz's practice also is devoted to trademark and copyright matters. He represents and assists clients in all aspects of securing trademark and copyright protection, in litigation, and in the enforcement and licensing of trademarks and copyrights. He has represented clients in pretrial proceedings and in oral and written arguments before Federal courts and before Examiners and various tribunals of the U.S. Patent and Trademark Office and other U.S. government agencies.

Atul R. Singh, ([email protected]), an associate, is a litigator with experience in all areas of intellectual property with a particular focus on copyrights, trademarks, unfair competition, the Internet, false advertising, and opposition and cancellation proceedings before the Trademark Trial and Appeal Board at the U.S. Patent and Trademark Office. Mr. Singh's litigation experience also includes handling mediations and arbitrations and appeals before the federal courts of appeal. In addition, Mr. Singh has negotiated settlement agreements, intellectual property licenses and trademark co-existence agreements. He also has coordinated and managed all aspects of discovery in litigation, including acting as liaison with clients to organize discovery strategies, drafting and responding to discovery requests, deposing witnesses and supervising large-scale document productions.

Cohen Pontani Lieberman & Pavane LLP (, is an intellectual property firm serving a worldwide roster of companies from a diverse range of industries including medical devices, biotechnology, pharmaceuticals, electronics, heavy machinery, and telecommunications

CPLP is unique in its focus on intellectual property litigation that infuses every aspect of its IP work in prosecution of patents, trademarks, and copyrights; in drafting opinions and licenses; and in due diligence and transaction work. It is CPLP's philosophy that no legal activity is so routine that it does not have the potential to become the weak link in IP protection, resulting in legal exposure or porous rights. Hence, the firm views all IP matters as potential litigations to be won or avoided and is positioned to provide world-class litigation services, as well as other highly skilled IP services to achieve wraparound IP protection at the highest level.