Sep 2019

At the heart of the business of fashion is much more than garments and apparel. It is a company’s ability to build – and monetize – a distinctive brand with proprietary design staples. With that in mind, intellectual property represents an important body of law in nearly every industry due to its ability to protect “creations of the mind,” such as novel inventions, literary and artistic works, elements of fashion designs, and symbols, names and images used in commerce. Despite the sheer importance of IP, it is commonly misunderstood and its elements used interchangeably when they are, in fact, distinct. Here is a brief look at the different forms of IP and how they apply in fashion ...

The U.S. legal system (as distinguished from the national protections provided in the countries of its international fashion counterparts, such as, Italy, France, and the United Kingdom) provides certain rights and protections for owners of various types of property, including intellectual property. Rights and protections for owners of IP are based on federal patent, trademark and copyright laws, and state law alternatives, and in some cases, may be used to secure rights outside of the U.S. based on IP treaties, such as the Madrid Protocol or the Paris Convention.

In general, these rights consist of patents, which protect inventions of products or processes; copyrights, which extend to the various forms of artistic expression; and trademarks, the names and/or symbols that serve to identify the source of a product or service in the market. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish. The most common forms of IP are as follows …

Copyright protection extends to “original works of authorship fixed in any tangible medium of expression” from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. This means that everything from original poetry, movies, video games, videos, stage productions, paintings, sheet music, recorded music performances, novels, software code, sculptures, photographs, architectural designs, and elements of fashion designs are afforded protection as long as they meet the requisite levels of creativity and originality (and are, of course, “fixed in a tangible medium”)

The owner of a copyright, which is formed as soon as the work is created (but must, thanks to a recent Supreme Court decision, be the subject to a copyright registration with the U.S.Copyright Office before an infringement suit may be filed), has the exclusive right to reproduce, distribute, perform, display, license, and to prepare derivative works based on the copyrighted work, with such rights typically enduring for his entire life and then for 70 years after his death.

The exclusive rights of the copyright owner are subject to limitation by the doctrine of "fair use,” which allows for the use of a copyrighted work for purposes such as criticism, comment, news reporting, teaching, scholarship, or research is not copyright infringement. To determine whether or not a particular use qualifies as fair use, courts apply a multi-factor balancing test. Find a more in-depth look at copyright law here.

A trademark is any word, name, symbol, design, or color (as we saw in Louboutin v. Yves Saint Laurent and other cases) or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods. For example, the trademark "Nike," along with the Nike "swoosh," identify the shoes made by Nike and distinguish them from shoes made by other companies (such as those made by Reebok or Adidas).

Trademarks make it easier for consumers to quickly identify the source of a given product or service. Instead of reading the fine print on a can of cola, consumers can garner the marker and likely, the quality they can expect from the product, thanks to the Coca-Cola trademark. Instead of asking a store clerk who made a certain athletic shoe, and what they can expect in terms of reputation from that shoe-maker, consumers can look for particular identifying symbols, such as a swoosh or a pattern of 3-stripes. By making goods easier to identify and enabling a product to also carry with it elements of goodwill, trademarks also give manufacturers an incentive to invest in the quality of their goods.

After all, if a consumer tries a can of Coca-Cola and finds the quality lacking, it will be easy for the consumer to avoid Coca-Cola in the future and instead buy another brand. Trademark law furthers these goals by regulating the proper use of trademarks.

In the U.S., trademark rights are governed by a first to use system, meaning that in accordance with U.S. law, a party gains rights in a trademark by actually using it in commerce. As such, before a party may be granted a trademark registration (which is not necessary in order to amass rights in a mark, but brings benefits), they must be able to show the U.S Patent and Trademark Office that they are actually using the trademark. This is distinct from the first-to-file system maintained in an array of international jurisdictions, such as China.

Unlike copyright and patent rights, trademark rights do not last for a fixed duration. Trademark rights can potentially last indefinitely as long as the owner continues to use the mark to identify its goods or services, and polices unauthorized uses of its mark so that it continues to identify a single source in the market and not become generic.
The term of a federal trademark is 10 years, with 10-year renewal terms. However, the USPTO requires that between the fifth and sixth year after the date of registration, the registrant must file an affidavit stating that the mark is still in use. If no affidavit is filed, the registration is cancelled. Find a more in-depth look at trademark law here.

A subset of trademark law, trade dress, is a particularly relevant type of trademark law in fashion, as it extends to the configuration (design and shape) of a product itself and/or its packaging. The definition of trade dress is broad, extending to “the total image of a product,” and it “may include features such as size, shape, color or color combinations, texture, graphics or even particular sales techniques.”

Trade dress creates a visual impression which functions like a word or design mark, as an indicator of source. For example, the Chanel No. 5 bottle is instantly recognizable as the Chanel No. 5 bottle, even without the “Chanel” name on it. The same holds true for the appearance/design of the Hermès Birkin bag. Find a more in-depth look at trade dress law here.

A patent is an exclusive right granted in connection with an invention, which, per the WIPO, “is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.”
Patents fall into one of a few categories: design patents (those based on a product’s decorative, non-functional features, i.e., elements of its appearance), utility patents (inventions of new and useful processes, machine, manufacture, or composition of matter, or new and useful improvements thereof), or plant patents (new and distinct, invented or discovered asexually reproduced plants including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state).
Patents (and thus, the rights associated with them) are issued by the U.S. Patent and Trademark Office, and confer upon the patent holder the right to exclude others from making, using or selling the invention throughout the United States, as well as the right to prevent others from importing the invention into the United States

As a result of such rights, a patent owner may give permission to (or license) other parties to use the invention. He may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires (usually 15 years for a design patent and 20 years from the filing date for utility patents), the protection ends, and an invention enters the public domain and anyone can commercially exploit the invention without infringing the patent. Find a more in-depth look at patent law here.

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