European Design Rights: A Model for the Protection of All Designers from Piracy

• DOI: http://doi.org/10.1111/j.1744-1714.2010.01111.x
• Published date: 01 March 2011
• Date: 01 March 2011
• Author: Susanna Monseau

European Design Rights: A Model

for the Protection of All Designers

from Piracy

Susanna Monseau

n

INTRODUCTION

Fashion designers have attempted many times in recent years to lobby

Congress for copyright protection for fashion designs, so far unsuccess-

fully.

1

In this article I consider the fashion lobby’s various proposals for the

protection of fashion design under U.S. law. I argue that the operating

conditions of the fashion industryFan industry that has survived many

years without strong legal protectionFhave changed signif‌icantly in re-

cent decades due to evolutions in the technology available to those who

pirate designs, due to the types of designers, and even due to the shopping

habits of customers. In my view, designers may now require some limited

legal protection from direct copying of their designs. However,I also argue

that both the recently introduced Senate bill, the Innovative Design Pro-

tection and Piracy Prevention Act,

2

and the House bill that preceded it, the

Design Piracy Prohibition Act,

3

(hereafter the Design Bills) are misnamed.

r2011 The Author

American Business Law Journal r2011 Academy of Legal Studies in Business

27

American Business Law Journal

Volume 48, Issue 1, 27–76, Spring 2011

n

Associate Professor, School of Business, The College of New Jersey, Ewing, New Jersey.

I would like to thank Michael Pudlowski for his assistance with the research for this article.

1

Susan Scaf‌idi, March on Washington 3: All-American Appeal, Counterfeit Chic (May 13, 2009),

http://counterfeitchic.com/2009/05/march-on-washington-3-all-american-appeal.html.

2

A Bill to Amend Title 17, United States Code, to Extend Protection to Fashion Design, and

for Other Purposes, S. 3728, 111th Cong. 2 (2010).

3

A Bill to Amend Title 17, United States Code, to Extend Protection to Fashion Design, and

for Other Purposes, H.R. 2196, 111th Cong. (2009). There has been no action on this bill

since it was referred to the House Committee on the Judiciary on April 30, 2009. Bill Sum-

mary and Status, 111th Congress (2009–2010) H.R. 2196 Congressional Research Service,

http://thomas.loc.gov/cgi-bin/bdquery/z?d111:HR02196:@@@D&summ2=m& (last visited

Oct. 15, 2010).

The Design Bills provide protections for fashion designers that go far be-

yond prohibiting fakes and knockoff designs, and they will not benef‌it ei-

ther the fashion industry or its customers. Instead, both bills overprotect

high-end and well-known designers, while being underinclusive in only

protecting the designers in one (admittedly important) design industry,

fashion.

In this article, I compare the fashion industry’s legislative proposals

to the law of the European Union, which provides a two-tier system of legal

protection for all industrial designers. I further suggest that Congress

consider incorporating aspects of the European system. In particular,

Congress should consider expanding legal protection to all design, while

limiting any legislation to prohibition of only the most egregious examples

of piracy, in order to prevent any new design law from being used to inhibit

legitimate competition among designers.

The issue of whether fashion design merits extended legal protection

has generated much debate among legal scholars in recent years.

4

On the

one hand are Professors Raustiala and Sprigman, the leading proponents

of the view that additional legal protection is unnecessary for the fashion

industry. They have argued that the industry shows little sign of ‘‘blight’’

5

and that it has thrived, at least in part, because of the lack of legal pro-

tection (or ‘‘low-IP [intellectual property] equilibrium’’)

6

in the fashion in-

dustry. Further, Raustiala and Sprigman have recently defended their

stance that all copying, whether line by line or derivative, is benef‌icial to

the fashion industry because of the way it speeds the fashion cycle.

7

On the other hand, a number of scholars have rejected Raustiala

and Sprigman’s view, raising a variety of reasons the fashion industry now

4

See generally Lynsey Blackmon, The Devil WearsPrada: A look at the Design Piracy Prohibition Act

and the Extension of Copyright Protection to the World of Fashion,35P

EPP.L.REV.107(2007); C. Scott

Hemphill & Jeannie Suk, The Law, Culture and Economics of Fashion,61S

TAN.L.REV. 1147 (2009);

Lisa J. Hendrick, TearingFashion Design Protection Apart at the Seams,65WASH.&LEE L. REV. 215

(2008); Matthew S. Miller, Piracy in Our Backyard: A Comparative Analysis of the Implications of

Fashion Copying in the United States for the International Copyright Community, 2 J. INT’LMEDIA &

ENT. L. 133 (2008); Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and

Intellectual Property in Fashion Design,92VA.L.REV. 1687 (2006).

5

Raustiala & Sprigman, supra note 4, at 1734.

6

Id. at 1698–99.

7

Kal Raustiala & Christopher Sprigman, The Piracy Paradox Revisited,61STA N.L.REV.1201,

1217 (2009).

28 Vol. 48 / American Business Law Journal

requires increased IP protection.

8

The most common criticisms are

that Raustiala and Sprigman underestimate the new technologies of copy-

ing,

9

and they misunderstand the effect of various other changes in the

fashion business, especially the motivations and buying habits of consum-

ers.

10

The speed of global communication with factories in China, which

are ready and able to execute commissions from fashion design pirates,

has signif‌icantly affected the dynamics of the business. In some cases,

knockoffs can reach the stores before the originals.

11

When this happens,

the original designers are being denied the economic fruits of their cre-

ative labors, which could in turn provide a disincentive to innovate.

12

Raustiala and Sprigman’s critics also argue that the democratization

of the fashion business, with many different types of designers creating

clothing and selling to an increasingly diverse set of consumers, has

affected the ability of high-end designers to make a prof‌it from innova-

tive design.

13

Although almost all recent scholarly work has concentrated on fash-

ion designers, there is another strand of scholarship concerning the

proper protection of industrial design or applied art generally under

American IP law. Professor Afori has suggested that industrial design,

which might include fashion design, enhances market eff‌iciency

14

and is

underprotected by U.S. law.

15

Design has certainly been the Cinderella of

8

See, e.g., Lauren Howard, An Uningenious Paradox: Intellectual Property Protections for Fashion

Designs,32C

OLUM. J.L. & ARTS 101 (2009); see also Hemphill & Suk, supra note 4.

9

See, e.g., Erika Myers, Justice in Fashion:Cheap Chic and the IP Equilibrium in the United Kingdom

and the United States, 37 AIPLA Q.J. 47, 55–57 (2009) (detailing the changes in the dynamics of the

industry, including the change in business model of high-end designers and overlap in customer

base between high-end designers and cheap chic).

10

See, e.g., Howard, supra note 8, at 113–17 (discussing the sociology of the modern fashion

customer).

11

Eric Wilson, Before Models Turn Around, Knockoffs Fly, N.Y. TIMES, Sept. 4, 2007, at A1, A15.

12

Pamela Samuelson, Should Economics Play a Role in Copyright Law and Policy?, 1 U. OTTAWAL.

&T

ECH.J.3, 3 (2004) (‘‘The principle justif‌ication for intellectual property (IP) laws in the Anglo-

American tradition is economic.’’).

13

See Myers, supra note 9, at 57.

14

Orit Fischman Afori, Reconceptualizing Property in Designs,25CARDOZOARTS &ENT. L.J. 1105,

1111 (2008).

15

Id. at 1118.

2011 / European Design Rights 29