By R. Terry Parker
Various fashion designers
have made headlines lately for taking fashion pirates to court—Diane von
Furstenberg, Gwen Stefani, Anna Sui, BeBe Stores and Anthropologie, just
to name a few. The problem of knock-offs is not new to the fashion
world. However, the problem is much more of a threat to designers now
that the copied designs are moving from the cat-walk to the fashion
racks just as quickly as the originals.
The following offers a
basic introduction to the way in which designers use copyright law to
protect their designs against this problem.
What Does Copyright Law
In essence, copyright law
protects “original works of authorship that are fixed in a tangible
medium of expression."
By original work of authorship, the courts typically mean the design is
an independent creation.
This does not mean the design has to be strikingly unique or novel.
On the contrary the courts do not expect much by way of originality.
Many fashion designs meet this burden of originality even when they are
clearly derived from common shapes and patterns. As one court has
noted, "although the idea of a plaid or floral pattern may not of its
own be original, the patterns' sizes, shapes, arrangements and colors
taken together are original and copyrightable."
It is important to note
that a design that is derived from an earlier, copyrighted design does
qualify for protection as long as it contains elaborations and
modifications that render it sufficiently original.
The courts generally look to see that the derivative work is not merely
a slavish copy of the earlier design. In other words, the derivative
design must incorporate a distinguishable variation of the earlier work.
Obviously, there is a lot of room for argument between what a slavish
copy is and what is not.
A common myth about
copyright and fashion is that copyright law does not apply to useful
articles like clothing. While it is true that copyright law does not
protect the shape or silhouette of a garment, copyright law does protect
the “pictorial, graphic, or sculptural features that can be identified
separately from, and are capable of existing independently of, the
utilitarian aspects of the article."
When the courts say these features must exist independently of the
utilitarian aspects, they mean a conceptual independence.
That is the pictorial, graphic or sculptural features must add an
aesthetic element that is unrelated to the utilitarian function.
Accordingly, fashion designs that incorporate some form of graphic
image—be it a print, embroidery, or even stitching—are easily protected
under copyright law.
Currently, Congress is
considering altering copyright law so that it protects even the overall
appearance of an article of apparel, as opposed to only the pictorial,
graphic and sculptural elements.
The protection would be limited to three years.
This would bring the protection of fashion designs in this country more
in line with the protection that is afforded in other countries like
Japan, France and the United Kingdom.
The Importance of
Another point for designers
to note here is the importance of registering their designs with the
United States Copyright Office. This is important because registration
is a prerequisite for bringing an infringement suit, although the
registration may occur after the time of the infringement.
More importantly, registration is a prerequisite for obtaining statutory
Monetary damages under
copyright law are measured by “statutory damages" or the “actual damages
and any profits that resulted from the infringement."
Actual damages are monetary losses that directly result from the
infringement. Typically, courts measure actual damages by the sales the
plaintiff would have made were it not for the infringement.
Accordingly, the courts look for a causal connection between lost sales
and the infringement.
In certain situations, proving this causal connection is not easy. For
example, if the infringing designs are sold at significantly lower
prices than the originals, most courts hesitate in assuming that the
plaintiff would have made the cheaper sales were it not for the
In such situations,
plaintiffs will typically focus on recovering the infringer’s profits.
However, the copyright owner does not need to prove the infringer’s
profits, only the infringer’s gross revenue.
This is easily accomplished because a court will usually require that
the infringer produce documents showing sales of the garments at issue.
Once the copyright owner shows the gross revenue, the infringer must
prove the profits by showing the costs of the infringement which should
be deducted from the gross revenue.
Usually the plaintiff and defendant will argue over which costs should
be deducted and which should not be deducted but the courts will
interpret any uncertainties in favor of the copyright owner.
Proving actual damages and
profits may not be needed where the copyright owner has registered his
or her copyright before the design is infringed, in which case the
copyright owner may choose statutory damages.
Statutory damages are fixed in the statute and thus do not hinge upon
the plaintiff proving the harm done to its market value.
Under the Copyright Act, the court may award up to $150,000 per
infringement if the infringement is willful.
If the infringement is not willful, the court may award not less than
$750 or more than $30,000.
If the court finds the infringement to be innocent, the court may reduce
the minimum award to $200—although this happens very rarely.
In addition to the
statutory damages, the court may award attorney’s fees as well as the
full costs that the plaintiff has incurred from bringing the suit to
trial. The award of attorney’s fees and full costs does not depend upon
the copyright owner proving the infringement was willful.
The provisions for
statutory damages and attorney’s fees and full costs are helpful not
only where the value of the copyright and thus any damage to it are
difficult to measure but also where the value of the copyright might not
equal the expense of the litigation. As one court noted, the purpose of
statutory damages is to not allow infringers to “sneer in the face of
copyright owners and copyright laws."
The above offers a brief
introduction to how designers use copyright law to protect their
original creations. Understanding how copyright protects fashion
designs is important in determining whether or not litigation is a
worthwhile option for the designer that finds him or herself the victim
of fashion piracy.
The above was Written for Apparel Search by
More about Mr. Parker: R. Terry Parker
practices in the area of intellectual property. Mr. Parker is a 2008
graduate of Franklin Pierce Law Center, where he was senior editor of
the Pierce Law Review, and a graduate of the University of London
(LL.B., with honors), the University of Virginia (M.F.A.) and Millsaps
College (B.A.). New York bar admission pending.
: Evolving from a partnership of prominent lawyers in Philadelphia a
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attorneys. The firm's leadership believes this culture is truly unique
among large law firms, and that outstanding legal work is best
accomplished by skilled professionals who respect each other and work
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Article Written May 2009. Some
issues discussed may be time sensitive issues. Please consult with
a copyright attorney for most current rules and regulations.
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