On July 13, 2011, US Representative Bob Goodlatte, R-VA, introduced H.R. 2511, the Innovative Design Protection and Piracy Prevention Act. Goodlatte’s bill reflects the final, amended version of a bill by the same name that Senator Charles Schumer, D-NY, introduced last year. Schumer’s bill, S. 3728, was reported out by the Senate Judiciary Committee with an amendment, but was not voted on by the Senate. 

If passed, the Innovative Design Protection and Piracy Prevention Act would extend copyright protection to fashion designs, including many types of men’s, women’s, and children’s clothing; handbags, purses, wallets, tote bags, and belts; and eyeglass frames. Currently, some designers can get limited protection for portions of their designs through trademark, trade dress, and design patent law, but the Act would mark the first time Congress explicitly protected fashion design by statute, and would open the doors of protection to younger fashion designers who have not yet developed protectable trademarks, trade dress, or design patents. 

Designers would not have to register their designs with the US Copyright Office to assert their rights, though the Act does contain heightened pleading requirements designed to eliminate frivolous lawsuits. For example, a designer must plead with particularity facts establishing that the infringer saw or had knowledge of the protected design, and that the fashion design itself is protectable.

Though many fashion designers will view the legislation as a welcome step in the right direction, there are several limits on the scope of protection under the Act. Only fashion designs that are the result of the designer’s “own creative endeavor” and that “provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs” are protectable. Furthermore, only fashion designs created after the passage of the Act will be protected, and the copyright will last for just three years. Thus, designs created before the Act passes will not be eligible for protection, and all copyrighted designs will revert to the public domain after the three-year term.  The three-year term of protection, which is far shorter than the duration of a typical copyright, is designed to reflect the seasonal trends of the fashion industry. In addition to these limits on the scope of protection, there are several ways to escape liability entirely under the Act. Only designs that are “substantially identical” to the protected design are actionable (a high standard for the plaintiff to prove), and the defendant is not liable if his or her design is the result of independent creation. The Act also contains a “Home Sewing Exception,” which exempts single copies of copyrighted designs made for personal use or for the use of an immediate family member, and that are not sold in the market.

The House Committee on the Judiciary recently held a hearing on the proposed Act, which saw testimony from prominent law professors and leading trade organizations in the fashion industry.  Proponents of the Act argued that it will provide a long-awaited avenue for fashion designers to protect their works from knock-off sellers, while opponents claimed the Act is unnecessary and will lead to an onslaught of frivolous lawsuits. 

Arent Fox will continue to monitor the progression of the Act through Congress.

For further information, please contact:

Anthony V. Lupo
lupo.anthony@arentfox.com
202.857.6353

Sarah Bruno
bruno.sarah@arentfox.com
202.775.5760

Amy E. Salomon
salomon.amy@arentfox.com
202.857.6015