Back to the beginning: a revival of a 1913 argument for intellectual property protection for fashion design.

• Author: Barton, Kimberly Ann

1. INTRODUCTION II. BACKGROUND A. Purpose Behind Intellectual Property Law B. Design Piracy C. Historical Fashion Design Protection D. Current Legal Protection for Fashion Design 1. Trademark and Trade Dress 2. Copyright 3. Patent E. Protection for Other Designs Not Sufficiently Protected Under Federal Copyright Law 1. Architectural Design Protection 2. Semiconductor Chip Protection 3. Vessel Hull Design Protection F. Proposed Increased Protection for Fashion Design: Past and Present 1. The Trend in Attempted Fashion Design Protection Legislation 2. House Bill 5055 3. House Bill 2033 4. Senate Bill 1957 5. House Bill 2196 III. ANALYSIS A. Comparison of the Most Recently Proposed Legislation B. Proponents of the Most Recently Proposed Legislation 1. Fashion Industry Supporters: Council of Fashion Designers of America 2. Academic Proponents 3. Congressional Supporters 4. The U.S. Copyright Office C. Opponents of the Most Recently Proposed Legislation 1. Fashion Industry Opponents: American Apparel and Footwear Association and the California Fashion Association 2. Academic Opponents D. Comparison with the Architectural Works Copyright Protection Act IV. RECOMMENDATION A. The Fashion Industry Must Form a True Coalition B. Drafters Should Learn from Past Legislation to Ensure a Swift Success C. International Pressure V. CONCLUSION I. INTRODUCTION

   On May 12, 1913, the New York Times published a letter from Vivian Burnett, the editor of the Lace and Embroidery Review, calling for all parties affected by fashion design piracy to join together to achieve increased intellectual property design protection. (1) She deemed piracy "the greatest deterrent to creative work in this country, especially in the field of fashion," and recognized the need to amass all interested parties to create legislation that addressed as many concerns as possible. (2) Finally, Ms. Burnett appealed to the industry through the importance of the international effect of design piracy. (3) Disappointingly, nearly a century has passed and her cause remains unsettled.

   Although times have changed, Ms. Burnett's simple components still weave the strongest rope for securing design piracy protection through an industry-drafted congressional statute. This Note examines the history of intellectual property protection and its application to fashion design, explains and evaluates recently proposed legislation to provide copyright protection to fashion design, and compares the recently proposed and recently defeated legislation with other pieces of legislation that have successfully brought intellectual property protection to similar industries. Ultimately, this Note argues that copyright protection is necessary for fashion design and proposes that the industry unite to support a cohesive bill, adjusted for flaws in past bills, and exploit the international pressure behind fashion design anti-piracy legislation.

2. BACKGROUND

   American fashion is a $350 billion industry, and more than $12 billion worth of fashion designs are pirated and sold as counterfeits. (4) Even more pirated designs are sold under a different brand name. (5) For other artistic works, such as music, copying a product and selling it under a different brand name is considered counterfeiting, plagiarism, theft, or piracy, and has legal consequences. (6) Yet companies that engage in pirating fashion designs and turning them into tangible garments go unpunished. (7)

   This Part of the Note explains the purpose behind intellectual property law and further details the concept of design piracy. It sets forth the current legal protection available to companies in the fashion industry in the form of trademarks, copyrights, and patents, and explains what types of designs are subject to each kind of protection. This Part then explores the progression and inadequacy of the current law. Finally, it discusses Congress' recent failed attempts at increased protection via H.R 2033 (2007) and S. 1957 (2007) and Congress' most current attempt via H.R. 2196 (2009), all titled the Design Piracy Prohibition Act (DPPA), by examining the bills' legislative histories and stated purposes.

   1. Purpose Behind Intellectual Property Law

      Intellectual property represents "creations of the mind ... used in commerce." (8) These creations can be categorized in intellectual property as either industrial or copyright. (9) Industrial properties include trademarks, inventions and patents, industrial designs, and geographical indications of source. (10) Literary and artistic works, however, comprise the copyright category. (11) Protecting these creations is essential to innovation, as it provides incentives and encouragement to keep inventing. (12) This protection aims to prevent "free riding" and imitation. (13)

   2. Design Piracy

      Since the 1930s, courts have used the terms "style piracy," "design piracy," and "knock off' interchangeably to describe the unauthorized reproduction of another's fashion design. (14) Allen B. Schwartz, owner of A.B.S., described this unauthorized reproduction when he publicly stated that "he will watch fashion events such as the Academy Awards telecast, sketch the dresses that the stars parade down the red carpet, and 'the next day decide which of the gowns will be adapted or interpreted."' (15) Some designers see piracy as an easy way to produce a profitable product without the financial risk. (16) While piracy actions in other fast-paced intellectual property industries, such as music, are quickly prosecuted, (17) similar actions in the fashion industry remain relatively unpunished" as a direct result of the lack of protection currently available to fashion design. (19)

      It is important to note that certain types of design are pirated more often than others, allowing the offending fashion companies to stay in business despite the rapidly changing industry. (20) The least likely designs to be mimicked are those in the category of haute couture (21) (couture) because haute couture is a custom-created garment made entirely by hand for a specific individual. (22) Companies mimic less expensive categories more often, such as "better" fashion and commodity apparel. (23) The distinction between these categories is not only price, but also the amount of design work. (24) Couture and ready-to-wear designs do not lend themselves to piracy for several reasons: (1) couture is customized; (2) both types are extremely expensive; and (3) both types have a short fashion lifespan. (25) The designs in the lower categories--better fashion and commodity apparel--tend to be simpler, less expensive, and remain fashionable longer, (26) thus rendering them more vulnerable to piracy. Further, the designs in the couture category have higher design contents, meaning more detailed and intricate designs, than do those in the latter categories, (27) which is consistent with the trend to copy designs in the better and commodity collections. (28)

   3. Historical Fashion Design Protection

      Despite the landmark decision of Bleistein v. Donaldson Lithographing C0, (29) in 1903, which allowed a person to copyright a circus poster (30) and opened the gateway for design copyright protection, and the 1909 Copyright Act, (31) which extended copyrights to three-dimensional models, the Copyright Office continued to distinguish between applied art and fine art thus excluding fashion design from its protection. (32) As a result, designers began to protect their property by regulating the industry from within. (33) In 1932, fifteen designers created the Fashion Originators' Guild of America (FOGA) to stop fashion design piracy. (34) FOGA registered its members' original designs and formed alliances with retailers who agreed not to sell copied designs. (35) FOGA engaged in policing the 12,000 associated retailers and 176 member fashion designers throughout the United States (36) to prevent piracy. However, the Supreme Court found that it also controlled the discounts between designers and retailers, thereby limiting competition and violating the Sherman Antitrust Act. (37)

      Similarly, the Federal Trade Commission (FTC) abolished the Millinery Creators' Guild when the Second Circuit upheld the FTC's claim that the guild supported unfair methods of competition for the design of women's hats. (38) The court acknowledged the great loss designers suffer when their garment is copied and distributed by another firm, yet the court offered no relief. (39) The court said the original design creations are "too slight a modification of a known idea to justify the grant by the government of a monopoly to the creator.... [T]he imitator may copy with impunity, and the law grants no remedy to the creator." (40) However, near the end of the 1940s, the Copyright Office amended its requirements to allow many three-dimensional works of applied art to register for protection. (41)

   4. Current Legal Protection for Fashion Design

      As time progressed, courts recognized the need for intellectual property protection for design. (42) As such, the courts slowly expanded the scopes of the three main types of intellectual property--trademark, copyright, and patent--to provide some protection of companies' fashion designs. (43) These efforts have proven insufficient as companies continue to pirate fashion design.

      1. Trademark and Trade Dress

      A trademark is a "word, phrase, logo, or other geographic symbol used by a manufacturer or seller to distinguish its product ... from those of others." (44) In order to receive a federal trademark, the mark must be distinctive and attached to products actually sold on the market. (45) The Lanham Act, enacted in 1946, provides protection against infringement of trademarks. (46) Essentially, the design must be distinctive and nonfunctional. (47) Trademarks have been successful in protecting actual designer logos, such as the Chanel "double C," the Louis Vuitton "LV," or the Nike "swoosh"; however, the trademark does not provide any...