Forms of Redress for Design Piracy: How Victims Can Use Existing Copyright Law

• Publication year: 1997
• Citation: Vol. 21 No. 04

SEATTLE UNIVERSITY LAW REVIEWVolume 21, No. 1SUMMER 1997

COMMENTS

Forms of Redress for Design Piracy: How Victims Can Use Existing Copyright Law

Peter K. Schalestock(fn*)

Sacrificial days devoted to such creative activities deserve rewards commensurate with the services rendered.(fn1)

Fashion designers have long been the victims of piracy by unscrupulous competitors. Though some designers have sought protection under copyright, patent, or trademark law, most have found themselves without legal recourse. Congress never has provided explicitly for the protection of clothing designs, and courts have been unwilling to use the tools available for even limited protection.

Clothing designs do not fit neatly into the existing scheme of intellectual property protection because they commit the cardinal sin of being useful. Copyright law protects useful articles only to the extent that they contain "physically or conceptually separable elements" that are unrelated to utility.(fn2) Trademark law does not protect that which is "functional."(fn3) Design patents are reserved for the "ornamental."(fn4) Unlike other useful articles-a hammer or an ironing board for example-clothes derive much of their appeal and value from their aesthetic properties. They exist not merely to cover and protect, but to decorate as well.

Separating the decorative, which is protectable, from the functional, which is not, is a difficult task. Unfortunately, courts and the U.S. Copyright Office have declined to undertake it. To achieve broad protection, the only recourse may be for Congress to amend the Copyright Act.(fn5) However, the judicial and administrative refusal to protect clothing designs is not justified by existing law, and courts should be willing to review clothing designs for copyrightable elements.

Part I of this Comment explores the nature and scope of design piracy in the fashion industry. It also discusses the impact of modern technology on pirates and their victims. Part II reviews the existing intellectual property legal framework, emphasizing copyright law and its application to clothing design. Part III discusses the exclusion of clothing design from copyright protection and reviews cases that have addressed that issue. Finally, Part IV suggests ways that designers might obtain greater protection. The alternatives explored are (1) the proper application of existing law to find separable protectable design elements, and (2) congressional action to include clothing designs in the works protected by the Copyright Act.

I. INTRODUCTION: PIRACY IN THE FASHION INDUSTRY

Design piracy permeates the clothing industry. Knockoffs "are as plentiful as tarts in a patisserie,"(fn6) and rampant counterfeiting in the apparel industry is widely recognized.(fn7) The tactics of pirates can be appallingly flagrant. The chairman of one American design firm visited a Hong Kong manufacturer he was considering hiring, only to find the factory churning out knockoffs of his company's sweaters.(fn8) Another especially brazen pirate purchased a suit of novel and successful design from a competitor, disassembled and copied it-then sewed the suit back together and returned it for a refund.(fn9) The victim of this audacity sued in federal court and lost.(fn10) Obviously, pirates are highly confident that they can proceed without fear of liability.

And proceed they will, for there is real money at stake. Two major design pirates have been attributed with $50 million(fn11) and $200 million,(fn12) respectively, in annual revenue from their knockoff sales. The major retailer Barneys of New York said in 1994 that its private label merchandise accounted for thirty percent of sales, an increase of fifty percent over five years; the Wall Street Journal tactfully says of Barneys' private label wear that "some of [it] closely resembles the best of the pricier designer wear."(fn13) Clearly, the ability to bring in revenue on this scale with no need for creative design work creates a powerful incentive for copiers to continue and expand their piracy.

By making the copying process both faster and easier, modern technology has increased the pirates' profit potential while decreasing the difficulty of their task. The key to a design's value is its novelty.(fn14) In the past, a designer had exclusive use of his design for a limited time simply because of the time required for a pirate to produce and market copies. This situation may not have been optimal for the designer, but at least he could profit from buyers willing to pay a premium in order to obtain the original design first. In recent years, however, the situation has changed radically: Now, in an age of instant global communications, high-quality copies often reach stores before the originals, and at a fraction of the cost. . . .

A photograph snapped at a fashion show in Milan can be faxed overnight to a Hong Kong factory, which can turn out a sample in a matter of hours. That sample can be FedExed back to a New York showroom the next day, ready for retail buyers to preview. Stores order these lower-priced "interpretations" for their own private-label collections even as they are showing the costlier designer versions in their pricier departments.(fn15)

The collapse of the time lag between creation and marketing has eliminated one of the last ways designers could recoup the cost of creating original works; if piracy continues to proliferate and undermine even the early sales efforts of designers, fashion houses may find that creating designs place them at an untenable competitive disadvantage In particular, small designers who depend primarily on their creative work rather than their marketing muscle may be driven out of the industry

II. The Present Copyright Scheme

The reason all of this piracy is possible is that the American intellectual property scheme does not protect clothing designs. Federal intellectual property law includes three separate types of protection: patent, trademark, and copyright. Patent protection can apply to utilitarian inventions or ornamental design.(fn16) While the latter category might theoretically apply to clothing, the length of time required to obtain a patent makes it an impractical source of protection. The primary function of trademark law is to protect marks or design features (which are known as trade dress) that primarily serve to identify the source of goods. Trademark generally does not protect goods themselves.(fn17) Thus, it is copyright law that offers the most likely avenue to protect clothing designs. Although fabric design (that is, the pattern on a flat piece of textile) and color arrangements-both of which are elements of clothing design-can be protected by copyright,(fn18) courts(fn19) and the Copyright Office(fn20) have consistently refused to grant protection to the overall design of apparel.

The United States Constitution authorizes Congress to "promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."(fn21) Congress has seen fit to exercise its power to protect through copyright not only writings, but musical and dramatic works, painting and sculpture, motion pictures, sound recordings and architectural works.(fn22) Holders of copyright in a protected work receive a number of exclusive rights in that work, including the right to reproduce or distribute copies of the work.(fn23)

Notwithstanding this broad scope, one of the most vibrantly creative artistic arenas has been denied protection by the courts and the Copyright Office, and repeated pleas to Congress in its behalf have been unavailing. Fashion designers, for whom creativity and originality are the lifeblood of success,(fn24) remain at the mercy of pirates who can steal their designs with impunity.

When analyzing the availability of copyright protection, the first step is to ask whether the article for which protection is sought has an intrinsic utilitarian function. If not, then the article is eligible for copyright protection. If the article has a utilitarian function, then the analysis proceeds to the search for separable copyrightable elements.

A. The Useful Article Exception

The reason clothing designs have been excluded from copyright protection is the "useful article" exception in the Copyright Act of 1976.(fn25) Among the categories of work eligible for copyright protection, the one most likely to apply to clothes is "pictorial, graphic, and sculptural works."(fn26) The definition of such works includes "works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned."(fn27) However, the Act states thatthe design of a useful article, as defined in this section,(fn28) shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.(fn29)

According to the legislative history of the 1976 Copyright Act, the purpose of excluding useful articles from copyright protection was "to draw as clear a line as possible between copyrightable works of applied art and uncopyrightable works of industrial...