Fashion IP Revisited: The Innovative Design Protection and Piracy Prevention Act

Steven Zuccarelli is a 2012 JD Candidate at Osgoode Hall Law School.

New York Senator Charles Schumer has recently unveiled the latest U.S attempt to protect innovative and novel fashion designs.  The Innovative Design Protection and Piracy Prevention Act (IDPPPA), an amendment to the U.S Copyright Act, aims to curtail knockoffs of new fashion designs.  Sen. Schumer states, “Unregulated, high-end knock offs are hurting the integrity of this industry, my legislation will level the playing field with European designers and protect an industry that employs hundreds of thousands of New Yorkers and pumps billions of dollars into the local economy.”   The bill itself can be viewed here.

The United States has yet to adopt any legislation of this kind so far, unlike some European nations who have been utilizing fashion design IP protection for some time.  The IDPPPA succeeds the highly criticized Design Piracy Prohibition Act (a previous post on IP Osgoode investigated the DPPA, found here).  Achieving a balanced IP protection scheme in fashion has been difficult in the past, due in part to the copying that commonly occurs between design houses as new trends develop.

The IDPPPA aims to protect the IP in fashion design by taking into account the unique characteristics fashion has in relation to other industries.  The IDPPPA specifically limits design protection to 3 years, reflecting the constant, fast paced and ever-changing trends typical of fashion design.  Also key to the new legislation is the establishment of a high qualifying standard for protected designs. Designs that are new, original and are a non-trivial and non-utilitarian variation over prior designs will be protected.  In addition, garments created up to the enactment of the legislation will remain in the public domain, preventing monopolies from being formed were a firm to attempt to apply for a general, existing and common design, such as a “t-shirt”. Fair dealing exemptions have also been added, allowing individuals to replicate protected designs for their own personal use.  Further, teaching and analysis exemption provisions have been added, facilitating research and education in cutting edge, protected fashion designs. 

The IDPPPA would also mandate that all new designs are immediately protected, and that registration of new designs is not mandatory.  The intent behind this change would be to save designers from small firms the relatively costly registration fees, allowing them to concentrate their limited resources on remaining competitive with larger and more established firms. This notion shares ideas with copyright, where works are protected upon creation. 

Another key component of the IDPPPA is the court requirements established for filing and pursuing a claim of infringement.  The bill places the burden of proof primarily on the plaintiff, who must prove that their design is entirely novel and original. Specifically. the plaintiff must prove it is “a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs.”  Minor variations in a fabric print would not pass that test.  In addition to establishing the uniqueness and originality of the design, a plaintiff must also prove that the defendant’s design is substantially identical, and that the defendant had the opportunity to access the design before it was released for public distribution by the plaintiff.  These provisions, as well as others, have been summarized by Kathleen Fasanella, whose blog post can be found here.

The introduction of the IDPPPA carries with it the support of two interest groups that have historically been at odds with each other, as Susan Scafidi points out in her Counterfeit Chic blog.  The Council of Fashion Designers of America and the American Apparel and Footwear Association were both consulted during the construction of the bill, along with Scafidi, a Fashion Director at Fordham Law School’s Fashion law Institute.  Scafidi believes that these two groups, who comprise a vast majority of designers and manufacturers in North America, have helped bring forward legislation that introduces “a new consensus approach to IP law that represents the interests of creators, producers, and consumers alike”, primarily through its high burden of proof resting on the plaintiff as well as the lack of mandatory registration.  This approach will not significantly impact a consumer’s choice or cost, according to Scafidi.

Others are also optimistic that the bill will positively impact the industry.  Fasanella believes that with protection of a design running from the time of initial public exposure, designers from large firms may not pour as much money into pre-release marketing.  This spending historically increases exposure of the yet to be unveiled design, providing greater buzz once it is released for sale, and consists of controlled “leaks” of upcoming designs to magazines and blogs well before a design’s official release.  However, with the new IPPPDA protection measures, there will be a greater incentive for firms to delay the release of a design until it is ready for sale, maximizing its time on the market as a protected design.  Fasanella hopes this leads to a refocus on product quality rather then brand image, as firms re-allocate funds towards other elements of the product rather than pre-runway season marketing. Further, this may benefit smaller designers who did not have the capital to market their designs heavily prior to their unveiling.

Some, however, have not been as quick to embrace this legislation.  Only an article that is a “unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles,” qualifies as a protected fashion design under the IDPPPA.  Practicing fashion lawyer Staci Riordan believes the courts will have difficulty in defining those characteristics (her blog post found here), as lawyers and judges may not be qualified in distinguishing the latest and most subtle fashion designs.  As a consequence, very few if any fashion designs may actually qualify for protection.  This may make the legislation largely irrelevant.

But the greater risk according to Riordan may be that the bill would be interpreted far more expansively by judges and lawyers.  This may lead to over protection of certain fashion designs, potentially stifling innovation and perhaps leading to fashion trend monopolies, as Kal Raustiala and Christopher Sprigman have noted in their New York Times editorial (found here).  This has led some, including Riordan, to believe that lawyers may be among the biggest beneficiaries of the bill, as the interpretation of the “new and original” provisions within the bill may promote lengthy litigation as a common solution.  This may be further aggravated by the lack of mandatory registration for design protection.  It may prove difficult for designers to know with certainty that their designs, prior to release, are new and unique if there is no accessible database of designs to search, as Riordan has pointed out.

Aside from specific provisions in the bill, the idea that fashion designs should be protected by law also faces challenges.  Kal Raustiala and Christopher Sprigman, two law professors (at UCLA and UVA Law Schools), advocate that the fashion industry has unique characteristics that are best served by copying practices (their NYT Freakonomics blog post can be found here).

“…The interesting effect of copying is to generate more demand for new designs, since the old designs—the ones that have been copied—are no longer special…The overall result is greater sales of apparel. We call this surprising effect the ‘piracy paradox.’  That fashion remains an outlier reflects the unusual incentives of the industry.”

It is clear that the debate over IP protection in fashion will continue to be fought in the coming months.  Maintaining the status quo, which, according to Schumer, is not conducive to innovation, does not seem a fair solution for those moving the industry forward in terms of design. The IDPPPA creates a high threshold for protecting fashion designs, allowing protection for only the most innovative and original designs.  The bill also allows for existing designs to serve as inspiration without any risk of infringement, while shifting the burden of proof onto plaintiffs.  This creates disincentive for spurious litigation.  However, as Riordan, Raustiala and Sprigman point out, the interpretation of the bill may prove problematic for fashion-inexperienced judges presiding over these disputes.  This can potentially have serious implications on both large design houses that may engage in expensive litigation and smaller fashion designers that cannot afford to do so.

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