IPR Issues in Fashion Design World: A Bird Eye View

IPR Issues in Fashion Design World: A Bird Eye View

INTRODUCTION In order to be irreplaceable one must always be different. -Coco Chanel. Fashion, like art, is a reflection of life. In an image-conscious world, it is increasingly important to dress the part. Fashion is a sort of communal art, through which a culture examines its notions of beauty and goodness. Fashion, by definition, changes constantly. The changes may proceed more rapidly than in most other fields of human activity. The term "fashion" is used as a synonym for glamour and style. Fashion can apparently satisfy a desire to experience "new" and "interesting" things. Concept of fashion and theories of fashion applying to crazy youth society. For centuries peoples have used clothes and other body decoration things as a form of non verbal communication to indicate occupation, rank, gender, locality, wealth and status. Clothes are the main attributes of persons everyday life and his individuality. We do not pay any attention to what our style or our clothes mean for others. However, our clothes can show a lot to other people. There is such Russian saying We meet person by his clothes and see off by intelligence. What we wear and how and when we wear it, provides others with shorthand to subtly read the surface of a social situation. In our country people spend a lot of their time to their appearance, our mentality is so structured that people spend money on clothes as their position allow. Fashion is a language of signs, symbols and iconography that non-verbally communicate meanings about individuals and groups. The Indian fashion market is growing better than ever. The number of Fashion Weeks in a year is growing in the country. Latest designs by Indian fashion houses have done well abroad. Since fashion is not just restricted to apparel but also extends to luxury goods, better standards of living in the country have meant a greater demand for the luxury goods. But, Intellectual Property Rights (IPR) has been a burning issue in this sector. Fashion designers have frequently complained about their designs being copied without

their permission. Such so-called piracy must be stopped as it is plaguing the growth of this industry. INTLECTUAL PROPERTY RIGHTS AND FASHION INDUSTRY From Bunty and Babli1 to Tarun Tahilianis latest controversy over the copying of a lemon yellow saree, one of the designers creation, which was first seen on Urmila Matondkar and then on Mumbai-based designer Neeta Lulla as a self-creation , the buzz all over is about the infringement of copyright acquired by designers over their creations. Photo: Lulla-Tahiliani controversy2. The recent Lulla-Tahiliani controversy is only the tip of an ice berg. It could have been only due to the ignorance of Neeta Lullas embroiderer. The fashion industry invests huge amounts of money in making new designs and creations every new season, only to be misappropriated by retailers and ready-to-wear apparel makers. The fashion designers, who rightly ought to have ownership over their original creations, do not have a valid legal recourse because their original designs are not registered. The retailers and ready-to-wear apparel makers come out with inexpensive and affordable knock-offs of the original designs and the public is only too happy to buy the knock offs as the infatuation with designer clothes and accessories has led to an insatiable urge to possess the latest in fashion trends. There are a lot of misconceptions surrounding such controversies. First and foremost, any garment designed by a person does not fall under the purview of the Copyright Act and shall not be entitled to protection under the same. Copyright under the Copyright Act, 1957 and the Designs Act, 2000 have different relevance. Designs Act, 2000 is applicable to Articles of clothing, husbandry, Textile Piece Goods, Artificial and Natural Sheet Material, Furnishing ( Class 02, 05, 06 of the Third Schedule of Design Rules, 2000), unlike the Copyright Act, 1957, which is applicable to Artistic Work, Literary Work, Dramatic work, Musical Work, Photographs, Cinematograph film and Software. From the spectrum of tools for the protection of Intellectual Property, the most closely relevant to the fashion industry is that of the protection of Industrial Designs, simply referred to as Designs. Designer clothes and accessories are entitled to protection under the Designs Act 2000, provided such designs are registered under the said Act. The registration is available for a total period of fifteen years. This means that a designer shall not be, ipso facto, entitled to protection for his work until and unless the same is registered under the Designs Act, 2000. Only on such design or work, which is registered, can the creator bring an action against the

infringers. The owner of a registered design can recover from a pirate, a sum not exceeding twenty-five thousand rupees, recoverable as a contract debt, or a suit for recovery of damages and injunction against repetition. Thus, registering a design of apparel is mandatory and helps in deterring others from copying it, and also helps to fight unscrupulous competitors who do so. Registering a design helps the fashion designer to prevent others from misusing or exploiting the new or original aspects of the dress or any accessorizing article. The designers, in practice, can register their original and new designs on a case-to-case basis. The fashion and clothing industry makes huge investments to create new and imaginative designs but because of the short life span of fashion and its trends, not many owners of the original designs make use of the available law on designs, which is for all practical and legal purposes is the sole remedy .The imitation of styles and designs as a friction area is caused by the mass production of inexpensive and affordable knock-offs of the works of designers and fashion houses by retailers. Fashion trends are the assimilation of ideas, which arise, evolve through sharing, expand and increase in popularity through exposure and alter in imitations. Fashion designers can protect original designs by registering them, but the ownership over creative ideas is not practically possible. In some countries and regions, such as the United Kingdom and the European Union, the law offers protection for unregistered designs for a relatively short term, but in India for protection Registration under the Designs Act is mandatory. The registering of all new or original designs sounds like an expensive and weighty process, especially in the light of the short span of life that fashion trends have. But it is a good practice, to register designs on a case-to-case basis. Fashion trends are inspired by the ideas of the pioneering fashion designers and there is no law against wearing a design, which is similar to one worn by a fashion icon to a public place, but the least that can be done is protection of coveted Designer wear so as to restrain unscrupulous competitors from copying some of the most innovative creations. The orthodox justification for intellectual property rights is utilitarian. Advocates for strong intellectual property (IP) protections note that scientific and technological innovations, as well as music, books, films, and other literary and artistic works, are often difficult to create but easy to copy. Absent IP rights, they argue, copyists will freeride on the efforts of creators, discouraging future investments in new inventions and literary and artistic works. In a world without IP rights, the orthodox justification predicts that copying will stifle innovation. The orthodox justification for IP rights is logically straightforward, intuitively appealing, and well reflected in American law. Yet few seem to have noticed a significant empirical anomaly: the existence of a large and global industry that produces a huge variety of creative goods in markets larger than those for

movies, books, music, and most scientific innovations3, yet does so without strong IP protection. Copying in this industry is rampant, as the orthodox account would predict. Yet competition, innovation, and investment remain vibrant. That industry is fashion like the music, film, video game, and book publishing industries, the fashion industry profits by originating creative content. But unlike those other industries, the fashion industrys principal creative element its apparel designs is outside the domain of IP law. And as a brief tour through any fashion magazine or department store will demonstrate, design copying is ubiquitous. Yet the industry develops a tremendous variety of clothing and accessory designs at a rapid pace. Few legal commentators have considered the status of fashion design in IP law. Those who have done so have almost uniformly criticized the current legal regime for failing to protect apparel designs. For example, one article argues that society must protect the great talent of fashion designing. Courts need to adequately safeguard innovation and creativity in the fashion business. Another describes fashion designers as scorned by the copyright system and forced to resort to the narrower rights granted by the trademark laws to protect their innovations: an injustice that must be fixed by Congress. A third characterizes the current legal regime as ridiculous and declares that the bizarre blindness towards the inherent artistry and creativity of high fashion can no longer be ignored. Despite these exhortations, the fashion industry itself is surprisingly quiescent on the subject of copying. Fashion firms take steps to protect the value of their trademarked brands, but appear to accept appropriation of their original designs as a fact of life. Design copying is widely accepted, occasionally complained about, but more often celebrated as homage rather than attacked as piracy. This diffidence about copying stands in striking contrast to the heated condemnation of piracy and associated legislative and litigation campaigns in the film, music, software and publishing industries. Why are the norms about copying in the fashion industry seemingly so different from those in other creative industries? And why, when other major content industries have obtained (and made use of) increasingly powerful IP protections for their products, does fashion design remain mostly unprotected? That the fashion industry produces high levels of innovation, and attracts the investment necessary to continue in this vein, is a puzzle for the orthodox justification for IP rights. The inadequacy of current intellectual property protections with regard to fashion reveals the consequences of fashion design protection. Because current protections are not sufficient. The specialized nature of fashion design protection requires clear definitions of "fashion design," "design," and "apparel." The Design Piracy Bills define these terms as follows:

Fashion design"the appearance as a whole of an article of apparel, including its ornamentation4." Design"includes fashion design, except to the extent expressly limited to the design of a vessel5." Apparel"(A) an article of mens, womens, or childrens clothing, including undergarments, outerwear, gloves, footwear, and headgear; (B) handbags, purses, and tote bags; (C) belts; and (D) eyeglass frames6." The current intellectual property mechanisms of patent, trademark, trade dress, and copyright are incapable of providing protection for fashion design. Under the current scheme, protection for apparel is usually accomplished through conceptual separability. This doctrine, however, has created confusing litigation and leaves the vast majority of apparel designs unprotected. Without statutory support for protection, courts have been unable and unwilling to expand protection to clothing articles, all the while suggesting that parties petition Congress for added protections. Despite several congressional attempts at amending copyright law to protect otherwise non protectable designs, protection for fashion and other products of design has never materialized. Under current intellectual property law, fashion designers can rarely find effective protection for their apparel creations. Patent protection is largely unavailable because of the length of time required to obtain a patent and because of the stringent prerequisites of novelty and non-obviousness. Trademark is applicable to the fashion industry because most designers register their logos or signature marks; but trademark protection is unavailable for fashion designs. Similarly, trade dress protection, a subset of trademark protection, provides no remedy because fashion designs are functional.30 The functionality of fashion designs also precludes them from copyright protection, which is not applicable to "useful articles." FASHION INDUSTRY & IP RELATED ISSUES TRADEMARK ISSUES Trademarks help to maintain a prestige premium for particular brands, and can be quite valuable7. Fashion industry firms invest fairly heavily in policing unauthorized use of their marks8. Many fashion goods sold by street vendors are counterfeits that plainly infringe trademarks. Many, however, copy designs rather than trademarks. And all goods sold by retail copyists like H & M, or by copyist designers working in major fashion houses, are not counterfeits in terms of trademark. These goods are instead sold under another trademark but freely appropriate the design elements of a fashion

originator. It is this category of goods design copies that is of focus here. The utility of trademark law in protecting fashion designs, as distinct from fashion brands, is quite limited. Occasionally a fashion design will visibly integrate a trademark to an extent that the mark becomes an element of the design. Burberrys distinctive plaid is trademarked, for example, and many Burberrys garments and accessories incorporate this plaid into the design. Occasionallyand some would argue increasinglyclothing and accessory designs prominently incorporate a trademarked logo on the outside of the garment; think, for example, of a Louis Vuitton handbag covered with a repeating pattern of the brands well-known LV mark. For these goods, the logo is part of the design, and thus trademark provides significant protection against design copying. But for the vast majority of apparel goods, the trademarks are either inside the garment or subtly displayed on small portions such as buttons. Thus for most garments, trademarks do not block design copying. Figure B clarifies the distinction between design copying and trademark counterfeiting. In addition to protection of source-defining marks, trademark law also protects trade dress, a concept originally limited to a products packaging, but which, as the Supreme Court has noted, has been expanded by many courts of appeals to encompass the design of a product.9 Some courts have gone so far as to hold that trade dress involves the total image of a product such as size, shape, color or color combinations, texture, graphics or even particular sales techniques.10 Many of the attributes constitutive of trade dress are, of course, key to the appeal of clothing designs, and trade dress might therefore play an increasingly significant role in the propertization of designs. The doctrine has, however, not yet emerged as a substitute for copyright, in part because trade dress protection is, like copyright, limited to nonfunctional design elements11. Perhaps more importantly, trade dress is limited to design elements that are source designating, rather than merely ornamental12. PATENT ISSUES Designers may be able to patent new, inventive and useful devices. Artistic creations cannot be patented and therefore patents are not widely adopted by designers. However inventions by Buck Weimer and CSIRO which control odour and body temperature respectively in garments have been successfully patented. 13 There are three types of patents currently availableutility, plant, and design14. Utility patents are available to anyone who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. 15" While apparel is unable to obtain copyright protection primarily because it is "useful," apparels usefulness argues in favour of protection under a utility patent 16. There are two other requirements for securing a utility patent:

(1) The invention must be novel and (2) The invention must be non-obvious17. To be novel, an invention cannot be known or used by others in the United States, or patented in another country, prior to filing for patent protection. The standard for determining non-obviousness is whether the invention would "have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." "Because so many apparel designs are reworking and are not new in the sense that the patent law requires," it is unlikely that new fashion designs will be novel or non-obvious enough to meet the statutory qualifications for utility patent protection18. Design patents offer another potential vehicle for protection. Design patents are issued for any "new, original, and ornamental design for an article of manufacture. 19" But articles must still satisfy the novelty and non-obvious requirements in order to receive design patent protection. Even if those requirements are not the death knell for design patent protection, the article also must be ornamental and not merely functional: A design patent is not rendered invalid merely because the article of manufacture which is the subject of the design may, in addition to having a pleasing appearance, also perform a useful function. . . . However, if the resulting configuration proceeds primarily from the necessity of functional or mechanical requirements, it is not a valid design patent20. Again, courts usually treat clothing as purely functional. It thus appears there is nothing about a fashion design that is not the result of its primary function as clothing21. The patent application process is the most significant barrier to protection. The application for a patent requires a great deal of information that is too time consuming for a designer to compile for every individual fashion design 22. Furthermore, in 2006, it took an average of twenty months for a filed application to reach an examiners desk, and then it took another ten months before a decision was made by the examiner. Ultimately, about one-third of all patent applicants are denied protection 23. The time required for application review and the risk that an application will be rejected make patent protection impractical even if a fashion design could satisfy the statutory requirements of novelty and non-obviousness. COPYRIGHT ISSUES Copyright protection extends to original "works of authorship" expressed through one of various mediums from which the works can be "perceived, reproduced, or otherwise communicated24." Obtaining copyright protection is fairly easy. Like trademark

law, no filing is required to obtain a copyright, which is "secured automatically when the work is created25." Even better, unlike the hurdle of "novelty" in patent law, a copyrightable work need only be "original": "Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying26." As a result, copyright presents the most practical source of protection for fashion designs. Copyright protection, however, does not extend to "useful articles," which are defined as those "having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.27" This shortcoming has categorically excluded clothing from copyright registration and protection: "On this point the copyright law is reasonably clear. Garments are useful articles, and the designs of such garments are generally outside of the copyright law." On the other hand, just as in trade dress protection, where a design or pictorial work can be separated from the functionality of an item, this separable design is eligible for copyright protection28. "Conceptual separability" is the term used by courts to determine which components of a design are eligible for copyright protection and which are held to be indivisible from useful components29. Courts use several tests to make the complicated determinations of copyright eligibility. Though this exception to the general exclusion of clothing from copyright provides a pocket of design protection, it is truly meaningless because most designs do not satisfy the conceptual separability tests. TRADE SECRET IN COSMETICS From Cosmeticsdesign.com, a story concerning a fight between two cosmetics companies, Arch PCP and Active Concepts. In 2000, Arch acquired the personal care business of Brooks Industries, then owned in part by one Ivar Malmstrom. Malmstrom went on to become one of the founders of Active Concepts which, Arch claimed, misappropriated the trade secrets that Arch had acquired from Brooks. An earlier federal court case found that Malmstrom breached his contractual obligations and infringed on Arch's trademark. A state court case in New Jersey by Arch for trade secrets misappropriation against Active Concepts didn't fare so well. In fact, the court ruled that all of the information that Arch acquired from Brooks was unprotected by reason of earlier disclosure prior to the acquisition. Not only that, according to the court, those trade secrets had been disclosed in an earlier lawsuit in which the trade secrets were discussed in open court. The case is a not-so-subtle reminder that trade secrets have to be continually protected even while in court.30 A court decision has overturned claims by cosmetics developer Arch PCP that rival company Active Concepts had misappropriated trade secrets in a long-running battle between the two.

FAILURE OF CONCEPTUAL SEPERABILITY Conceptual separability is the one mechanism within current copyright protection through which portions of a fashion design may find minimal protection. When a "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," these portions may be eligible for copyright protection 31. For example, in Mazer v. Stein32, the Supreme Court permitted a manufacturer of lamp bases to obtain copyright protection for the statuettes that were incorporated into the lamp bases. Though useful or mechanical articles were not eligible for copyright protection, the Court reasoned that the inclusion of a work of art in a useful article did not preclude statutory protection. Regulations promulgated in response to Mazer explicitly set forth the copyrightability of artistic elements of useful articles: If the sole intrinsic function of an article is its utility, the fact that the article is unique and attractively shaped will not qualify it as a work of art. However, if the shape of a utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration33. Subsequent cases stated that the separation can either be physical or conceptual34. "The courts, however, have had difficulty framing tests by which the fine line establishing what is and what is not copyrightable can be drawn35," creating a great deal of confusion36. In an effort to clarify conceptual separability as it applied to costume designs, the Copyright Office issued a policy decision in 1991. Garment designs were classified as useful articles: "The general policy of non-registrability of garment designs will be applied not only to ordinary wearing apparel, but also to period and historical dress, and uniforms.37" Fanciful costumes, although also useful articles, would "be registered if they contain separable pictorial or sculptural authorship.38" Thus, the Copyright Office will register a costume "if any portion of a work can reasonably be construed as containing copyrightable authorship," but registration will not extend to uncopyrightable portions39. Though the policy decision purported to clarify the Copyright Offices approach to registering items of clothing, the Fifth Circuit recently complained of a lack of clarity regarding conceptual separability, citing at least six different tests that have been used by courts40. In determining whether artistic pleats and buttons on uniforms rendered garments eligible for copyright protection, the Fifth Circuit adopted the likelihood-of-marketability standard. This standard of conceptual separability bases copyright eligibility on a determination of whether a useful article "would still be marketable to some significant segment of the community simply because of its aesthetic qualities41." The Second Circuit adopted a different test in evaluating the copyrightability of Halloween costumes, stating that conceptual separability could be

shown if artistic elements "invoke in the viewer a concept separate from that of the costumes clothing function, and that their addition to the costume was not motivated by a desire to enhance the costumes functionality42." The Fifth Circuit determined that the clothing at issue was ineligible for copyright protection, while the Second Circuit remanded the determination of copyright eligibility to the district court 43. Yet, even if the conceptual separability tests had been satisfied in these instances, protection only would apply to portions of the articles and not to "the appearance as a whole of an article of apparel." THE CREATION OF FASHION DESIGN PROTECTION As illustrated by the previous discussion, congressional enactment of a new intellectual property protection is the only way to protect an entire piece of clothing 44. The Design Piracy Bills would specifically create a new type of protection only for fashion designs. Separate design protection is not an entirely new conceptJapan and the European Union already have design protection systems. An in-depth look at the protections provided by the Design Piracy Bills, Japanese law, and European Union law assists in determining whether fashion design protection is a good fit in the United States. SUGGESTIONS TO IMPROVE PROTECTION FOR FASHION DESIGN Several reasons are mentioned above as to why fashion design protection should not be enacted in the United States. There are additional reasons the Design Piracy Bills, as drafted, should not be enacted. Many elements of these Bills cannot be fixed and, thus, ultimately prevent the creation of effective design protection. Other elements of the Design Piracy Bills can and should be fixed by Congress in order to minimize the potential harm of fashion design protection. Modifications are important because the enactment of fashion design protection will surely spur other negative space industries to petition Congress for similar protection. If no alterations are made, then the Design Piracy Bills will serve as a model for future offerings of meaningless protection for automobiles or couches or cakes. First, Congress must determine the scope of the fashion design protection legislation. Unfortunately, the definition under the Design Piracy Bills is not clear as to whether fabric type and pattern should matter. The European Union definition of "design" is perhaps worth adopting to more fully describe what is protected. The Community design system states that "design" is "The outward appearance of a product or part of it resulting from the lines, contours, colours, shape, texture, materials, and/or its ornamentation." Community design law does not protect the material used to construct the design, but will protect a design that derives its

uniqueness from the material used. To avoid confusion and inconsistency in application of fashion design protection, Congress must spell out whether fabric type and pattern may be considered in assessing originality. Also, Congress must determine whether fabric type and pattern differences will result in a determination that two articles are not substantially similar. Second, once Congress has decided on a clearer definition for "fashion design," it should reconsider the use of the "substantial similarity" test for infringement45. A new enunciation of the infringement test is necessary because substantial similarity does not indicate what a jury, judge, or panel of experts should look for in determining infringement. If the denim and knit dresses mentioned above would constitute two separate original designs, the best verbalization of an infringement test would be line-for-line. A line-for-line standard does not suggest that the test concerns itself with microscopic point-by-point exactitude46. Fashion design protection is not intended to protect trends, but to protect the appearance of an article of apparel47. Particularly problematic is that every design traces back to a pre existing design or trend. Recognizing that even minute differences in apparel designs can impact the overall look of an article, a line-for-line test ensures that protection is only extended to individual designs, as opposed to trends. In taking the opposite position, fashion designer Jeffrey Banks relied on the lines of the dressthe cut, the shape, and the way the dress hung on the wearerto differentiate the dresses. The main problem with a line-for-line or a substantially similar standard appears when a court asks a jury of lay persons to determine infringement. Theoretically, this should not be a difficult evaluation for a juror to make with the help of an expert and instructions from a judge: Fashion is a visual medium like sculpture or painting. And it has its own system of recordation of elements. We have words to describe lapels. We have a color system to describe shades of colors. An expert in the field would have no difficulty making those very specific comparisons using the notion of the industry in which we are not all literate, but we all have a sense of how it works. When a fashion magazine . . . publishes an original and a knockoff next to one another, the public recognizes that is a knockoff, whether or not it is a literal line-for-line copy or whether it is something that is substantially similar 48. One important difference between copyright protection and fashion design protection is the length of protection and the life of the creation. If a designer brings an action for infringement of a registered design, it may take several months to pull together a court and jury to decide whether something is actually an infringement 49. By the time a court reaches a final infringement decision, the design may be obsolete and any preliminary injunction or intermediate action taken by the court may have hurt the party who was lawfully entitled to use and license the registered design. Instead, if a panel of fashion experts were assembled to make decisions, not only would the decisions be made faster, but the panel would be better trained in fashion designs and, therefore, better able to

identify infringements50. This would create greater consistency and may discourage frivolous infringement suits51. Additionally, sculptures and paintings have benefited from copyright protection for many years. As the production of artwork increased through industrialization and mass production, copyright law adapted to changes within the industry. With regard to fashion design, the proposed protection would exclude more from protection than it would protecteverything already in the public domain would be ineligible for protection. It would, therefore, be more beneficial to have experts, who are well versed on previous and current fashion designs, determine if an infringement of a registered design exists and determine a registrations validity. As previously mentioned, protection for fashion designs would begin on the earlier of the date of publication or the date of registration. However, the fashion designing process does not necessarily begin with cutting and sewing; many designers first sketch out designs prior to creation. Assuming the sketches of design ideas are original, these sketches are eligible for copyright protection from the date they are created52. In 1990, Congress passed the Architectural Works Copyright Protection Act expanding the definition of "architectural work" and giving architects copyright protection of the blueprints, as well as the actual construction of the structure depicted in the blueprints53. A similar allowance for fashion designers would reward the originator of a fashion design idea with the ability to obtain protection of the embodiment of the idea. Finally, fashion is a global industry, a fact virtually ignored by the Design Piracy Bills. Excluded from protection by the Design Piracy Bills are any fashion designs that have been made public more than three months prior to a registration filing either in the United States or another country. But the proposed fashion design protection does not extend to fashion designs registered under the Community design system54. Additionally, registered design protection in the United States does not translate into registered design protection in the European Union. In order to obtain registered protection in the European Union, the designer would have to file a registration application. An owner of a fashion design registered in the United States can, however, obtain unregistered design protection simply by making the design public in the European Union. It is not essential that fashion design protection in the United States interface with international design protection schemes, but because fashion designs and trends impact the world, cooperation with international design protections may be important to provide meaningful and effective protection to fashion designers. CONCLUSION There are few larger current debates in legal policy than over the proper scope of intellectual property rights. The orthodox view of IP demands strong legal protection of property rights, on the grounds that without such protections innovation will wither.

Driven out by cheap copies that destroy the incentive to innovate, and deter the investment that innovation demands, producers will fail to produce. The orthodox case has enjoyed overwhelming support in American law as well as international law, with the result that copyright, patent, and trademark have all expanded in strength and scope in recent years. In this article we have explored a very large industry in which IP law protects some attributesbrandsbut not others. We have argued that the lack of copyright protection for fashion designs has not deterred investment in the industry. Nor has it reduced innovation in designs, which are plentiful each season. Fashion plainly provides an interesting and important test of IP orthodoxy. Not only does the lack of copyright protection for fashion designs seem not have destroyed innovation in apparel, it may have actually promoted it. This claim that piracy is paradoxically beneficial for fashion designers rests on some curious attributes of fashion, in particular the statusconferring, or positional, nature of clothing. We do not claim that fashion designers chose this low IP system in any conscious or deliberate way. But we do claim that the highly unusual political equilibrium we observe is explicable once we recognize that fashions cyclical nature is furthered by a regime of open appropriation. The account we offer raises at least two larger questions about IP. One is whether the positional nature of fashion is present in other creative industries, and if so, whether similar, if perhaps more muted, effects exist. Certainly music, for example, exhibits some degree of positionality. Artists who were once the darlings of audio cognoscenti a current example is Coldplay become too popular, and hence unfashionable, for their original fanbase. On the other hand, musical choices are more private than fashion choices and hence it is easier to maintain guilty pleasures in music than in clothing. Either way, a general theory of fads and fashions and their connection to IP is beyond the agenda of this article. Here we seek only to signal that the dynamics of the fashion industry may not be singular, and to the degree they are not singular they are worth investigating much more closely. The second question raised by our account of innovation in fashion concerns the contours of copyrights negative space. To understand the domain of copyright, and of IP more generally, we must consider those cases where IP rights are not present but innovation persists. Fashion is one such case, but not the only one. Above we noted several examples that arguably fall within this negative space, but our list is not exhaustive. Cataloging this negative space, and understanding what it contains and why, is an important task for research. It may well be that the two questions were raise are linked: that copyrights negative space encompasses those creative endeavors that do not require state-sanctioned monopolies, and that all such endeavors remain creative (and consequently do not require protection) precisely because they exhibit positionality sufficiently strong that it provokes a constant stream of new innovation. Music, books, and the like remain the core interests of copyright scholars, and with good reason. But to better understand the domain of IP and its boundaries scholars need to consider much more intensively the variety of creative endeavors that seem to thrive in the IP laws absence.

1 http://i-n-d-i-a.info/indianlegalguide/News%20Letter/IPR%20NewsletterDecember%202006.pdf 2 http://i-n-d-i-a.info/indianlegalguide/News%20Letter/IPR%20NewsletterDecember%202006.pdf, last visited on 3/04/09. 3 According to the 2002 Economic Census, the U.S. book publishing industry reported revenues of $27 billion. See U.S. Bureau of the Census, 2002 Economic Census, available at : http://www.census.gov/econ/census02. 4 H.R. 2033, 110th Cong. s 2(a)(2)(B) (2007); S. 1957, 110th Cong. s 2(a)(2)(B) (2007); H.R. 5055, 109th Cong. s 1(a)(2)(B) (2006). 5 H.R. 2033 s 2(a)(2)(B); S. 1957 s 2(a)(2)(B); H.R. 5055 s 1(a)(2)(B). 6 H.R. 2033 s 2(a)(2)(B); S. 1957 s 2(a)(2)(B); H.R. 5055 s 1(a)(2)(B). 7 Fashion brands are heavily licensed, and excessive licensing can so tarnish the brand that its status is lost. But many firms put significant effort into ensuring that their trademarks are neither diluted nor counterfeited. Trademark infringement cases are common in the fashion industry, but courts carefully distinguish trademark from design piracy claims. Barnett gives the example of People v. Rosenthal, 2003 NY Slip Op 51738(U) (Criminal Ct. NY County, Mar. 4, 2003, J.Cooper), noting that while it is perfectly legal to sell merchandise that copies the design and style of a product often referred to as knockoffs, it is against the law to sell goods that bear a counterfeit trademark. 8 The lengths to which firms will go to prevent unauthorized use of their marks is illustrated by Dolce & Gabbanas anti-counterfeiting policy: Starting out from the 19971998 Autumn/Winter season [Dolce & Gabbana] introduced an anti-imitation system using made up of both visible and invisible elements. The aim of this system is to protect the articles of some of the lines which are to a greater degree the object of numerous attempts at imitations on the part of counterfeiters and, on the part of Dolce & Gabbana S.p.A., to safeguard its clientele. The by now consolidated system of anti-imitation principally consists of the use of a safety hologram (in the foreground showing an &, together with a series of micro-texts which reproduce the trademark): the graphic elements were ideated by Dolce & Gabbana whereas the hologram is produced and guaranteed by the Istituto Poligrafico e Zecca della Stato (the Italian State Printing Works and Mint). The anti-imitation elements used by the D&G Dolce & Gabbana line which make up the system consist of a certificate of authenticity bearing the hologram, a woven label placed inside every article with the trademark with the same hologram heatimpressed on it, a safety seal whose braiding contains an identification thread that is reactive to ultra-violet rays and a woven label with the Companys logo incorporating the same identification thread. Furthermore, Dolce & Gabbana S.p.A. has stipulated agreements with the Customs Authorities of the most important countries throughout the world with the intention of monitoring the articles bearing its trademark. Dolce & Gabbana has also provided these Authorities with anti-imitation kits which reproduce and elucidate the elements mentioned above, divided by way of each line forming part of the anti-imitation system, with the aim of individuating and blocking the transit of counterfeited goods bearing our trademark by the same customs personnel. 9 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000). 10 John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983).

11 The non-functionality requirement for trade dress may be somewhat lower than obtains in copyright law, because most courts have held that functional design elements may be protected as trade dress if they are part of an assemblage of trade dress elements that contains significant non-functional items. See Fuddruckers, Inc. v. Docs B.R. Others, Inc., 826 F.2d 837, 842 (9th Cir. 1987). 12 Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996 (2d Cir. 1995). Aesthetic features of girls sweaters that were not source designating not part of protectible trade dress: WalMart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 213 (2000) .Product design cannot be inherently distinctive, and almost invariably serves purposes other than source designation. 13 http://www.addisonslawyers.com.au/documents/doc-23-fashion-industry.pdf 14 It is unnecessary to discuss plant patent protection in this Note for the obvious reason that apparel will never meet the requirements for a plant patent. 15 35 U.S.C. s 101. 16 The utility requirement means that an invention must perform some function of positive benefit to society." In order to meet the requisite utility necessary for a patent, there are three tests: "First, it must be operable and capable of use. It must operate to perform the functions and secure the result intended. Second, it must operate to achieve some minimum human purpose. Third, it must achieve a human purpose that is not illegal, immoral, or contrary to public policy. 17 35 U.S.C. s 102 & 103, setting forth the patent requirement of novelty and non obviousness respectively. 18 There are, however, some examples of fashion items that have been registered for patent protection. U.S. Patent No. 7,073,204 (filed July 14, 2003) (patenting a garment with a pouch for a medical apparatus); Victorias Secret Stores Brand Mgmt., Inc., U.S. Patent No. 7,052,360 (filed Mar. 19, 2004) (patenting a molded breast cup for one of its bras); U.S. Patent No. 5,592,759 (filed Jan. 26, 1995) (patenting a vibrating shoe with the vibrating mechanism located within the sole of the shoe). 19 35 U.S.C. s 171 (2000). 20 Barofsky v. Gen. Elec. Corp., 396 F.2d 340, 342 (9th Cir. 1968). 21 Chosun Intl, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 328 (2d Cir. 2005) ("For many years, articles of clothing have been identified as useful items and, hence, excluded from copyright eligibility."). 22 http://www.uspto.gov/web/offices/pac/doc/general/index.html#spec 23 http://www.uspto.gov/web/offices/pac/doc/general/index.html#examinaion 24 17 U.S.C. s. 102 (2000) (listing categories of authorship to include literary, musical, dramatic, choreographic, sculptural, audiovisual, and architectural works). The statute states that protection is offered to "original works of authorship," but does not define "original."

25 http://www.copyright.gov/circs/circ1.html#hsc : (stating that even though registration is not required, there are benefits, which mostly surface in infringement situations) 26 Feist Publns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) 27 17 U.S.C. s. 101. 28 17 U.S.C. 101 (2000) (defining "pictorial, graphic and sculptural works" to include those useful articles "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"); see, e.g., Mazer v. Stein, 347 U.S. 201, 21718 (1954) (holding that statuettes appearing in lamp bases can be copyrighted because the artistic elements of the lamp bases were identifiable from the utilitarian aspects); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980) (finding that the design of the belt buckles at issue was separable from the function of the belt and thus the buckles were eligible for copyright protection). 29 Galiano v. Harrahs Operating Co., 416 F.3d 411, 417 (5th Cir. 2005) (stating that the "conceptual separability test" embodies the 17 U.S.C. 101 requirement as to pictorial, graphic, and sculptural works). 30 http://wombletradesecrets.blogspot.com/2006/07/trade-secrets-and-cosmetics.html 31 17 U.S.C. s. 101 (defining "pictorial, graphic, and sculptural works"). 32 Mazer v. Stein, 347 U.S. 201, 213 (1954) (finding that copyright protection was not barred merely because a work of art was also eligible for patent protection). 33 Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 992 n.3 (2d Cir. 1980) 34 The U.S. Copyright Office has defined "physically separable" as "the work of art can be physically removed from" the useful article. "Conceptually separable," on the other hand, is found when "the pictorial or sculptural work is independently recognizable and capable of existence apart from the overall utilitarian shape of the useful article. The mere fact that certain features are nonfunctional or could have been designed differently is irrelevant under the statutory definition of pictorial, graphic, and sculptural works 35 Brandir Intl, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1143 (2d Cir. 1987). 36 Whimsicality, Inc. v. Rubies Costumes Co., 721 F. Supp. 1566, 1574 (E.D.N.Y. 1989): T]he artistic, and aesthetically pleasing, aspects of [the] designs, in this courts judgment, are inseparable from the utilitarian concern with creating something that the consumer will think resembles a bee or penguin or spider for purposes of masquerading."), vacated in part on other grounds, 891 F.2d 452 (2d Cir. 1989), with Natl Theme Prods., Inc. v. Beck, Inc., 696 F. Supp. 1348, 135354 (S.D. Cal. 1988) (finding that the Halloween costumes were not "designed to optimize their function as clothing" and because of these "minimal functional considerations" they should be afforded copyright protection). Whimsicality criticized National Theme Productions, stating that the "analysis is flawed because the court failed to assess the artistic elements in light of the costumes purpose as masquerade clothing." Whimsicality, 721 F. Supp. at 1575.

37 The Copyright Office also stated that clothing for theatrical productions would be treated in the same manner as garment designs. Identifying theatre costumes as separate from fanciful costumes. 38 The policy decision did not provide specific examples of when a fanciful costume could also be eligible for copyright protection. However, case law indicates that buttons or pleats would not be sufficiently separable from the useful function of clothing to allow such items to be eligible for copyright. Galiano v. Harrahs Operating Co., 416 F.3d 411, 414 (5th Cir. 2005). 39 The policy decision went on to further clarify by stating as follows: "Costumes, by their very nature, exist at the boundary between works of imagination and works of utility. Portions of some costumes will be registerable under the separability test, and others will be unregistrable in all respects. 40 There are at least six distinct variations of the conceptual separability test and courts have twisted themselves into knots trying to create a test to effectively ascertain whether the artistic aspects of a useful article can be identified separately from and exist independently of the articles utilitarian function. Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 670 (3d Cir. 1990). For purposes of this Note, the various tests are not as important as the understanding that any protection fashion can obtain under current intellectual property law is minimal and difficult to discern. 41 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT s. 2.08[B][3] (2004) 42 Chosun Intl, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 330 (2d Cir. 2005). More importantly, the court, in dicta, appears to be overruling a line of Second Circuit cases that previously held that Halloween costumes were ineligible for copyright protection because they were useful articlesuseful for masquerading. Whimsicality, Inc. v. Rubies Costumes Co., 721 F. Supp. 1566, 1574 (E.D.N.Y. 1989) (finding Halloween costumes to be useful because they allowed the wearer to masquerade), vacated in part on other grounds, 891 F.2d 452 (2d Cir. 1989): Whimsicality, Inc. v. Battat, 27 F. Supp. 2d 456, 463 (S.D.N.Y. 1998) (stating that the purpose of Halloween costumes was for masquerading). Chosun criticized the argument that the use of costumes was for masquerading, stating that this conclusion would be inconsistent with Copyright Office policy, which found masks to be non-useful articles and their only purpose would be to masquerade. Chosun, 413 F.3d at 329 n.3 (citing Registrability of Costume Designs, Policy Decision, 56 Fed. Reg. 56,530, 56,532). According to Chosun, if design elements "could be [physically] removed from the costume without adversely impacting the wearers ability to cover his or her body" then they were eligible for copyright protection under physically separable standards. 43 Galiano v. Harrahs Operating Co., 416 F.3d 411, 422 (5th Cir. 2005) (affirming the denial of summary judgment because there was no showing that the design of casino uniforms were independently marketable). The real question is: What is the function of a fashion design? For example, if the function of a short sleeved dress is to clothe the body, decorative sleeves are part of that function. However, if the function of the dress is to make a fashion statement, are the decorative sleeves necessary to making that statement? If not, then arguably those sleeves would be eligible for copyright protection based `on physical separability. 44 One exception to this statement was found in Poe v. Missing Persons, 745 F.2d 1238, 124243 (9th Cir. 1984), where the Ninth Circuit reasoned that a swimsuit intended to be a work of art rather than a useful article of clothing could be eligible for copyright

protection. Because most clothing is designed for wearing, this example is not helpful to providing protection to everyday apparel. 45 The test is not the only aspect of infringement that Congress should revisit. Under current copyright law, statutory damages cannot exceed $150,000. 17 U.S.C. 504(c)(2) (2000). Under the Design Piracy Bills the maximum damages allowed would be the greater of $250,000 or $5 per copy. 46 fashion designs are "thin" on creativity. Under the definition of a fashion design, the appearance as a whole is considered. Thus, if a zipper is moved or a skirt hem shortened, the articles are not substantially similar because the change creates a different appearance, a different appeal, and ultimately, a different design. This is not to say that varying visual appeal should necessarily warrant protection; however, if the Design Piracy Bills were drafted to prevent a buyer from purchasing a knockoff instead of purchasing the original, the purchaser has to want the original. If Prada makes a dress with a long skirt, and the purchaser likes the dress but would rather have a short skirt, then the consumer would not buy the Prada dress, but may buy a copy of the dress with a shorter skirt. 47 A Bill to Provide Protection for Fashion Design, (statement of Rep. Bob Goodlatte, Member, Subcomm. on Courts, the Internet, and Intellectual Property) (stating that the Council of Fashion Designers of America specifically did not want the proposed fashion design protection to protect trends). 48 A Bill to Provide Protection for Fashion Design, (testimony of Susan Scafidi, Visiting Professor, Fordham Law School). 49 In 2005, the median length of time it took for a federal civil suit to come to final disposition was 9.5 months. ADMIN. OFFICE OF THE U.S. COURTS, JUDICIAL BUSINESS tbl.C-5 (2005), available at http://www.uscourts.gov/judbus2005/appendices/c5.pdf. With regard tothose civil suits that actually went to trial, the median length of time from filing to final disposition was 21.8 months. If a fashion designs life is only three to six months, any claim filed for infringement would jeopardize the value of the protection. 50 A separate agency would not be necessary to handle infringement actions for fashion designsthis could simply fall under another arm of the U.S. Copyright Office which would be designated to oversee the registration process of any enacted fashion design protection: 17 U.S.C. 1331 (2000) (stating that the U.S. Copyright Office is responsible for administering the protection offered under chapter 13 of title 17) 51 Quicker resolutions of infringement claims means a plaintiff could not hold another designer with a legitimately registered design hostage by either obtaining an injunction or by forcing the designer to settle the lawsuit. It may be necessary to have a specialized fashion expertwho, for example, knows shoes when Oscar de la Renta brings suit for infringement of a pump or who specializes in ball gowns when Prada brings suit for infringement of one of its red carpet numbers. In the interest of speed, arbitration may be the best means for settling design infringement allegations. Each party could appoint one expert for the reviewing panel and, in turn, these experts could appoint a neutral fashion design expert from the applicable fashion field. 52 17 U.S.C. s. 102 (2000). 53 1 NIMMER ON COPYRIGHT, supra note 118, 2.20 A, at 2-214 .Describing the enactment of the Architectural Works Copyright Protection Act. 17 U.S.C. S. 101 .Defining "architectural work" as "the design of a building as embodied in any tangible

medium of expression, including a building, architectural plans, or drawings" but not including individual standard features. 54 Currently the statute allows a person who has filed for design protection in a foreign countryone that also allows U.S. citizens to file for protection in that foreign country to apply for protection in the United States within six months of filing in the foreign country. 17 U.S.C. s. 1311 (2000) (describing the benefits of filing in a foreign country prior to filing in the United States). However, registration in the United States is still required, including the requirement to pay an additional registration fee

Total shows: 1605 Author: Abhishek Gautam LL.M II Year (IPR Specialisation) NALSAR University of Law, Hyderabad