BY ANDREW NICOTRA REILLY, SUMMER ASSOCIATE
Fashion as an ‘artform’ and fashion as an ‘industry subject to legal protections’ exist as two somewhat inconsistent concepts. In the artistic context, the garment as worn can be considered secondary to the creative vision of the designer. Pyer Moss’ recent collection comes to mind. Kerby Jean-Raymond, the tour de force designer of the Pyer Moss label, designed the garments in his recent collection to serve as statement art pieces rather than items of clothing to be worn. The collection was a celebration of inventions created by black inventors throughout history and included garments with outlandish embellishments such as a chair sticking out of the front and back of a dress. This show was a prime example of the fashion designer serving both as artist and social critic. Nevertheless, the law often considers fashion as primarily utilitarian—not as an art—and affords limited protection to pieces that are deemed to be “useful articles.” Therefore, the protections and IP considerations for any aspiring or established designer are often centered around notions of utility and not aesthetic design or expression. Despite this, there are avenues burgeoning designers can pursue to protect the intellectual property rights in their creations, both in the U.S. and abroad.
The most common form of protection for designers is copyright protection. A garment (and any other expression) is a potential candidate for Copyright protection if it is simultaneously sufficiently creative, original and permanent. Although designs and garments are potentially subject to Copyright protection to the extent that they contain creative elements that are separable from their utilitarian aspects, it is important for designers to go through the process of getting those designs protected by a copyright registration as soon as possible to ensure that designers can enforce those rights against infringers. While common law copyright protections exist upon creation of the protectible expression, the owner of a copyright cannot sue a third party for infringement until the copyright is properly registered with the U.S Copyright Office per Fourth Estate Public Benefit Corp v. WallStreet.com, LLC.
This is the space where the business of fashion meets the art. Every day that an infringing design is allowed to exist and be sold potentially impacts a brand’s value and the value of the artistic work put into producing the garment. There are also practical realities which pit the realities of fashion as art against fashion as business. Getting intellectual property protections takes time, and the seasonality of collections can make it difficult or even fruitless to protect every garment. Designers, therefore, should focus their attention on protecting designs and processes which are core to their business. Logos, signature patterns and phrases are all potentially non-seasonal, evergreen parts of a designer’s portfolio that are things worth protecting early.
Another important form of protection for designers and fashion entrepreneurs can be found in trademarks. Trademarks allow brands to protect what makes them recognizable to the general public. Logos, mottos and brand imagery are prime candidates for trademark protection. Take a moment to think about the Chanel interlocking C’s or the Polo Rider adorning Ralph Lauren garments. Those are classic examples of fashion logos which benefit from trademark protection and immediately connects image to brand. In the age of logomania, these kinds of protections do more than protect the value of a brand; they open doorways to leverage logos as design elements without fear that it has been done before.
Images are not the only kinds of marks that can be afforded trademark protection. Sayings that serve as source indicators for a brand can also be trademarked. One of the most famous and well-known slogans and trademarks is Nike’s “Just Do It.” Designers should think carefully about how to protect and maintain their trademarks and whether to seek registered protection for their logos and designs to ensure that they have the future creative freedom to utilize those marks. Trade dress is a subset of trademark law, which in essence is meant to protect the form of an object that is so unique and identifiable. Some examples include the Chanel No. 5 bottle, Coca-Cola bottles and the Hermès Birkin Bag. Those shapes and designs on their own are so iconic that they are able to be protected through trade dress such that other designs which approximate them are subject to enforcement.
Patents and Trade Secrets
Patents and trade secret law are less commonly utilized, but still beneficial avenues for protection for designers. Obtaining patent protection for designs generally requires more novel, non-obvious innovations and technical disclosures to be approved by the United States Patent and Trademark Office (USPTO), as well as public disclosure. Sportswear companies like Nike and Adidas often attempt to gain patent protections for their innovative shoe designs to get a leg up for performance. However, patent protections are not only beneficial to athleticwear. Issey Miyake’s famous pleated clothing comes from a patented process developed for the Pleats Please line which launched in 1993. Process-driven designers especially may want to consider connecting with an attorney about possible patent protections if they believe there is something sufficiently novel, innovative and non-obvious about the design or manufacturing of garments. Going one step further, trade secret rights can protect confidential and proprietary information regarding a particular business process, design, or client relationship. These trade secret rights are complimentary to patent protection because public disclosures are not a requirement in order to benefit from these protections.
The Madrid Protocol and Paris Convention: Two Methods for International Trademark Protection
There are two methods designers can pursue to protect their works abroad. As a prefatory note, even if there is no current (or even future intentions) of selling or marketing works abroad, it may be worth thinking about those protections.
Consider Supreme’s recent nightmarish fight to protect its brand abroad because there was no registered protection in Italy or Spain for its mark. The company was forced to combat entities in those countries which adopted and branded themselves with the Supreme trademark. However, it was extremely difficult and arduous for Supreme to assert its mark because it did not have the proper IP protections abroad. For a large, international brand like Supreme, trademark protection can assist in simultaneously breaking into new markets while protecting the exclusivity of its brand. A win for both the marketing and C-suite teams.
The first—and easiest—method for securing international trademark protection is through the Madrid Protocol. The Madrid Protocol is an organization of member countries with whom one can quickly apply for trademark protection abroad using their home country’s application. In practice, it means that if a mark is approved in the U.S, that same application can be used in other countries, but it does not ensure approval. The other downside is that if the mark is no longer enforceable in the home country, then it is no longer able to be used abroad. The tradeoff therefore, with the Madrid Protocol, is between ease and stability.
While the Paris Convention requires a more involved process, it affords a more stable protection. It also covers more than just trademarks including patents, copyright, marks and unfair competition. The Paris Convention is an agreement between nations to not withhold similar protections afforded in one country within their country. It also requires that the holder of the protection apply in the new country, but is a promise that protections will not be withheld without a contradicting law in the new country. There are currently 17 7 participating countries signed onto the Paris Convention, which means that applying for protection globally in each country—though time consuming—can also provide the fullest protection under each of those member countries’ laws. It provides designers with a cause of action in each jurisdiction and, in essence, is a multinational agreement among the member countries to facilitate the easy registration of IP protections once they are registered in their home country.
IP protections are a critical part of any business and can be especially key in futureproofing brands within the fashion industry; allowing designers and teams to dream up new uses and products for their proprietary logos, patterns, shapes, and more. Understanding these rights throughout the governance of a fashion brand will afford any creative director and design team the freedom to do what they do best: create garments and collections that inspire (and sell!) without fear of infringement.