Copyright, Trademark, Patent: Your Go-To Primer for Fashion Intellectual Property Law

We will level with you guys: Understanding intellectual property issues in fashion is seriously challenging. It's a field of law that is complicated for even practiced lawyers, let alone fashion journalists and designers — which means that sometimes, despite our best efforts, we can get mixed up on the details in stories about copyright and trademark infringements. 

After the landmark Apple v. Samsung lawsuit began popping up on our radars as something that could affect the fashion industry, we decided it was time to call in an expert to help us sort things out once and for all. Susan Scafidi, who founded the Fashion Law Institute, is a pioneer in the field of fashion law and a regular source for Fashionista stories. We asked her to help us break down the basics so that, whether you're a student looking to understand the latest copyright infringement case, or a designer looking to file a trademark, you'll have a good grasp on the field. 

Think of it as "Fashion intellectual property law for dummies."

All words, Susan Scafidi as told to Fashionista

What Kinds of Intellectual Property Protection Are There?

Intellectual property itself is not one category of law; it's an umbrella category for protection of, essentially, embodied ideas, or intangible property. Copyright is for, in general, literary or artistic work; patent is for inventions. Trademark is really different from both of those; it's not about things that are necessarily new. Copyright and patent are all about incentivizing innovation and protecting new things; trademark is about signs and symbols that indicate a company. Each of these things has very special implications in fashion.

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Copyright

What Is Copyright?

There is a basic rule of what's protectable [under copyright]; basically, it has to be something that is original. What can never be copyrighted is anything that is functional, or has a physical function in the real world. You might say, "But wait a minute, a book is functional!" In the sense that it's conveying information, yes, [but] when we say functional in copyright, we mean physical function, like if you use that book as a door stop or a paperweight. Conveying information or just looking good is not a function in copyright. One hundred years ago, the U.S. Copyright Office made a decision that all fashion is functional — all clothing, no matter how fanciful, how elaborate. You wouldn't clean a house in a ballgown, but nevertheless, it can't be subject to copyright.

What Fashion Items are Protectable by Copyright?

That being said, there are some exceptions within the copyright area that do apply to fashion, and are actually really important to fashion companies. One is jewelry. Jewelry is not functional; jewelry is merely decorative. It doesn't cover your body. It doesn't keep you warm. Therefore, jewelry gets copyright protection, in large part because jewelry is a lot like miniature sculptures, and sculptures are art, and therefore, art is copyright. You can stretch those categories a little bit, like when we get a decorative clasp on a handbag that is very sculptural. I could pull the clasp off the bag and it's a little sculpture.

Conceptual Separability and Prints

The other really big area of fashion that gets copyright protection is two-dimensional designs: fabric prints, jacquard weave, lace patterns. Conceptual separability is how we get protection for two-dimension designs like fabric prints; you can imagine that that print pealed off and put on something else. We've had that only since the 1950s, when the copyright office came to the realization that dye on fabric is not that much different than paint on canvas or ink on paper. It's super useful to a designer who is creating his or her own fabric prints. Now, with visual printing on demand, you can have one yard or one meter of fabric custom printed; it's actually more helpful to even small designers than it used to be in terms of getting protection.

Patents

What Are Patents and How Do You Get Them?

Again, there's not a whole lot of patents that are useful for fashion. Typically, it's in things like clasps; zippers were patented, Velcro was patented. Also, high-performance fabrics, like Kevlar or some kind of insulating fabric, or other kinds of functional fashion like hazmat suits, or astronaut suits, space suits — things like that would be subject to patent, possibly multiple patents.

Copyright just has to be original to the author; patent has to be something that is not only useful, but new or novel to all the world. The other requirement for patent is that it be not obvious to a person of ordinary skill — that is to say, maybe it's sort of new, but any trained designer would have known to do that particular thing.

The thing about copyright protection is that it's automatic. There are some advantages to registering your copyright, but you have copyright protection even if you don't do it through the registration process. Patents, however, are expensive and time-consuming. You usually need a patent attorney. The average patents typically take two years to issue, which in fashion time is quite long. It's going to cost you $6,000, $8,000, or $10,000 — minimum — to get a patent because of the filing fees, because of all the back and forth between your attorney and the patent office, and the patents office process of review. Even if the patents office were historically friendly to fashion, and even if there are elements of fashion that would qualify for patent protection, it's usually not worth it unless you have a design that you are going to repeat season to season. 

What Fashion Items Are Protectable by Patent?

Patent guys have always looked at fashion and said, "Eh? A shirt is a shirt. A bag is a bag. It all looks alike to us." It's been historically pretty tough to get patent protection, except for a few categories. One is footwear, particularly athletic shoes. If there's ways to make you run faster, jump higher, whatever it is, then the particular innovation might be subject for patent. The other category that has been subject to patent protection for a really long time — 19th-century long — is foundation garments, or lingerie, going all the way back to corsets and hoop skirts, to Wonderbras and Spanx.

Design Patents

There is, however, a subcategory of patents called design patents. When we say patents, just in general, we usually mean a utility patent. This separate category of design patent is really a very niche category, which, until Apple and Samsung, had not gotten a lot of attention. Design patents are still functional items, but they protect the ornamental or decorative aspect of functional items. If you have a shoe that has an interesting molded or sculptural heel that doesn't have any particular special function, but is part of this otherwise functional item, the shoe might have design patent possibility.

Nike is one of the top 10 holders of U.S. design patents, along with a bunch of tech companies, actually. Handbags [qualify], with hardware on a handbag that is particularly sculptural or decorative; Alexander Wang, for example, has a number of design patents. Those kinds of things are patentable. Again, we're talking about the ornamental aspect of the functional items. Design patents are a little cheaper — maybe we're talking more like $4,000 or $6,000. They're still probably going to take you at least six months to get.

Trademark

What Is It, and How Do You Get It?

[Patents] are a very strong form of protection, but they have a limited use in fashion, which is why a lot of fashion companies and designers default to trademark protection. Trademark protection typically can't protect an entire garment or accessory, but at least you can protect the logo or the label. In fact, logo mania is essentially the fault of trademark lawyers; trademark lawyers beg their clients to please put something on the outside to have something to protect. 

Trademarks will protect our little polo ponies, alligators and penguins. They use it on the outside, as well as the interior label. Trademarks are not as cheap as copyright, and not as expensive as patent. An online trademark filing is, I believe, $275 per category. They have to register separately for clothing, accessories, footwear, jewelry, perfume — all of those things. A trademark typically takes about four to six months. If you're working with an attorney, it'll cost you maybe $1,500 to $2,500, depending on how complicated it is to register your mark. Word marks tend to be easier; symbols tends to be a little bit more complicated in terms of searching and so on. 

Again, once you've got that trademark, and it has been endorsed by the trademark office, it's a relatively strong form of protection. The U.S. is very unusual in this regard: You have some trademark protection even if you don't register. It's called common-law trademark protection, but it's still highly advisable to register the mark. You're in a much better position as the trademark holder if someone knocks you off than if you hadn't registered. The weakness from a fashion perspective of trademarks is, of course, it's only the mark that is protected, not the entire garment or accessory. Trademarks are really most valuable for well-known, recognized brands. When small, emerging designers or indie designers get copied, typically the copiers will take everything but the trademark; the trademark is unknown and therefore not as valuable. 

The best thing a designer can ever do is act proactively. I'm much happier when someone has come to me and they've already registered their trademark than when they wait until they are actually infringed upon. Then they have to fight over who gets the right to it; they have to try to prove who used it first. 

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Trade Dress Protection

The last category is a special category of trademark known as trade dress protection. It was initially for product packaging — something like Tiffany's little blue boxes. There's product configuration trade dress, something like the Louboutin red soles that are part of the actual product. Even without taking off the shoe, looking at the inside and seeing whose signature is there, or looking at the blind stamp on the sole, you see the red sole, you know it's Louboutin; therefore, that red sole can serve as a trademark. Another great example of trade dress that involves the entire product is the Hermès Birkin or Kelly. They started by registering just a handbag with a flap and a belt around the flap; if you did a handbag with a flap and a belt, you would get a cease-and-desist letter from Hermès. They then went off to register the entire handbag, because when you look at a Birkin, you know it's a Birkin; you know where it comes from, especially if you're part of their target market, or aspirationally their target market. The Céline luggage is also a trademark; Bottega Veneta's woven pattern is also trademarked, actually. It's a pretty narrow registration because it's about exactly so many millimeters of square — you can't protect all weaving, of course.

Trade dress, like other forms of trademark, also really only helps out famous designs or big brands that can spend a lot of advertising dollars. The trick to convincing the trademark office that you deserve trade dress protection is that there is "secondary meaning in the mind of the consumer." The consumer doesn't look at the shoe and say, "Oh, red soles! That'll match my dress." The consumer looks at the shoes and says, "Oh red soles! I know that company." That's the key, and obviously that takes some marketing effort on behalf of the company. 

How Do Intellectual Property Laws Differ by Country?

The other thing to know about IP protection in general for fashion and everything else, is that it is country by country, jurisdiction by jurisdiction. You can have protection in the U.S., but not have protection elsewhere. There is a lot of international variability. There is actually a fourth category of IP protection called design protection, which applies to fashion; it's a mix of the aesthetic and the functional. It exists all over Europe, Japan, India, Israel and Brazil. Fashion, per our description, tends to fall through the cracks between patent and copyright, which is why we always default to trademark. In other countries, they came up with this fourth category, starting in Europe, and spreading to other places. That's the newest, most recent category of IP protection that has been very helpful to the fashion industry in those countries.

The U.S. is very much a pirate nation. The only country that extends full copyright protection to fashion is France. As you would guess, right? You protect your own industry. It's definitely self-interest in that regard. Copyright protection is the form of protection that will last the longest; the international minimum standard is life of the author, or in this case, life of the designer, plus 50 [years]; in the U.S. the rule is life plus 70. It's a really long time. By comparison, a patent lasts for 20 years; a design patent lasts for only 15. Trademarks can last forever, but in short terms; when you first register a trademark, you get it for 10 years. Then you have to pay renewal fees every 10 years in the U.S. It's a different term for different countries. The way a design patent works is that in some countries, you're required to register, but it's mostly automatic. In Europe, you get automatic protection for three years; you can register for five, renewable for up to a total of 25.

Counterfeit versus Infringement

People misuse the word counterfeit. We only use the word counterfeit when it comes to trademarks, when it's a really exact copy of a trademark. Sometimes you see, for example, the Louis Vuitton toile; you see a bag that's brown, and tan, and has little flowers on it; it doesn't have LVs or anything like that, but it looks alike from across the street. When you get close, it's just a really bad fake. That's not even a counterfeit; that's just an infringement. When we talk about copyright and patent, we don't talk about counterfeits at all. We just talk about infringement.

Fair Use

In both copyright and trademark we have, in the U.S. anyway, a provision for fair use. If you are writing an article, if you're writing criticism, you can use the brand name. That's not going to be a trademark infringement at any point. If you're in an educational context, you can use images. Fair use is not a clear set of specific rules; fair use is a defense. If you use someone's copyrighted material, trademark, patented work and they come after you, you say, "I think it's fair use because it was in a limited context." You have to be able to prove that in court if necessary. We're never absolutely sure that something is fair use until a court tells us so.

Why don't more designers sue?

A lot of the time it's because they don't have the rights. If you've been down to Canal Street, you see lots of counterfeit trademarks on bags, and sunglasses, and so on; [brands] do have the right to pursue that. Other times, it's a matter of picking your battles. You could spend a lot of money and a lot of time bringing about constant lawsuits. It's really a cost-benefit analysis. Many designers and many fashion companies do send out lots and lots of cease-and-desist letters — things that are never made public, but they send the letter and the item is just quietly taken down or taken off the market.

The same is true of companies that have trade dress protection, whether it's red soles or a handbag design. They send a lot of cease-and-desist letters. It may look like a company isn't doing much in the way of enforcement. Typically, they do have a legal team, and outside counsel. They do send a lot of letters, and then only in the cases where they decide it's really worthwhile to bring about a lawsuit do they actually go ahead and go to court.

[Sometimes, people think] it must be okay because you see lots of copies out there. Well, no; just because you see a lot of copies out there doesn't mean you won't be the one to get the letter or that companies aren't enforcing. The analogy that trademark lawyers and IP lawyers use all the time is that it's a game of whack-a-mole: You slap it down one place, it pops up another. 

That being said, companies have to keep trying, and have to do a certain amount of policing. If they don't police their marks, over time they become generic. The word "aspirin" used to be a trademark, then people just kept saying it. Ultimately, aspirin became generic and is no longer a trademark. Kleenex worried about that all the time; Xerox worries about that. Chanel is worried about that! Every so often in the trade papers you will be see an ad from Chanel saying, "Please don't call it a Chanel. Chanel is our founder. Chanel is our brand. Don't call it a Chanel jacket. Don't use Chanel style." They are worried about losing that trademark because so many people do refer to a "Chanel" jacket.

What Role Does the Internet Play?

I think [the social-media] shame game is actually helpful. The internet has been a double-edged sword for fashion and intellectual property: on the one hand, it makes life much easier for copiers. They've got a front row seat [to the latest designs coming out]. On the other hand, social media is an extremely powerful tool. It is most powerful in areas where the law is very clear, like jewelry design. A French design duo under the label Hanna Bernhard got HSN to take down a toucan head brooch from the Iris Apfel collection before it was ever even offered for sale. The designers saw it, and they started emailing everybody they knew — every blogger, everyone they could possibly reach. They even found a picture of Iris Apfel wearing their original. Almost immediately, HSN apologized and announced that they weren't going to produce the piece as part of the collection. Had there not been copyright protection for jewelry designs, HSN's lawyers might not have caved so quickly. They knew immediately that they would be liable, and so they agreed to take it down. Those kind of examples are really terrific; Pamela Love and the bracelets that Chanel copied [being another example]. 

What are the implications of the Apple v. Samsung case for the fashion industry? 

The issue in that case was that, for designs patents, there was a special rule having to do with the damages you could win if you assumed the other guys had copied your patent. Basically, the victorious patent holder could get 100 percent of the profits for the infringing item, which is why we're dealing with a $400 million case: Apple was awarded all of the profits for the infringing Samsung smartphones.

That special rule in design patent cases is tied to a pair of cases in the 19th century involving rugs. A guy did a rug with a decorative design on it that another rug company copied. The initial creator who had gotten the design patent took it all the way to the Supreme Court and ended up getting only six cents. Even back in the 19th century, six cents was not a lot. He was outraged, the patent lawyers were outraged. Congress was so outraged that they put a provision in the law. It was 100 percent of the damages for the infringing article of manufacture. For most of the next century and a half, every court that looked at this treated whatever was sold to the consumer as the article of manufacture. What the Supreme Court just said [in Apple v. Samsung] was, actually, no it's not the entire smartphone. The article of manufacture may very well be not the consumer-end product, but component parts. The Supreme Court sent it back to decide what is the relevant article of manufacture, and if it's just some of the parts — maybe the shape of the phone, or certain icons on the screen — then Apple should only get the profits attributable to those bits.

For fashion? That's very difficult. If we're dealing with a design patent that covers only part of an object — if we're thinking Alexander Wang, he has some designs patents on metal hardware, like metal corners on handbags; if we're thinking about Nike, it has different design patents on a particular heel or a particular toe box — How do you decide what the relevant article of manufacture is? Is it the metal corner? How do you determine what the profits are for that particular bit of hardware on the bag? Do we compare it to a bag with generic hardware? Do we compare it with a bag without a hardware? How do we decide? There is a possibility that design patents may not be worth very much moving forward. If you can't really win very much in damages, then copiers will just treat the potential damage awards as the cost of doing business. 

In other words, we've definitely reduced the deterrent factor when it comes to design patents vis-a-vis copiers. That's what hurts fashion. As you know, fashion doesn't have a lot of protection compared to other creative media anyway. Every time we lose something, it hurts. We were just at the moment in history when fashion was starting to really discover design patents; maybe we've been unsuccessful in getting Congress to give us some degree of copyright protection, maybe trademarks are limited, but we're now going to really try to make design patents work for us. Just at that very moment when we're trying, and design patents registrations in the fashion industry are starting to rise, and fashion companies are starting to make this part of their strategy, we lose the option. That's why Apple and Samsung was important to the fashion industry.

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Homepage photo: Pascal Le Segretain/Getty Images

This interview has been edited and condensed for clarity.