On July 3, 2008, fashion designer Diane von Furstenberg filed suit against Mango On-Line Inc., Mango MNG Holdings, S.L., and Punto-Fa S.L. (collectively, “Mango”) in the US District Court for the Southern District of New York, alleging that Mango’s retail and online stores sold dresses and tops that infringe von Furstenberg’s copyrighted print patterns. Diane von Furstenberg Studio, L.P. v. Mango On-line Inc. et al., No. 08-cv-06154 (SDNY 2008).

According to the complaint, Mango has sold various garments under its “MNG Suit” label that bear print designs identical or nearly identical to von Furstenberg’s copyrighted “Macaroon Stripe” and “Tahitian Maze” prints. Von Furstenberg’s prints registered in the US Copyright Office in May 2007 and were first sold at retail and online stores in the United States in November 2007 and March 2008, respectively. The suit alleges that Mango willfully infringed von Furstenberg’s print patterns in violation of US copyright law and US and New York unfair competition laws, as well as the copyright laws of various signatories to the Berne Convention. Mango was allegedly selling these garments as of the date of the complaint, despite having assured von Furstenberg in a June 2008 letter that it had ceased all sale of the infringing items. Von Furstenberg seeks injunctive relief, recall and destruction of the infringing garments and related advertising, and an unspecified amount of damages.

Fashion designers such as von Furstenberg have been vocal in pushing for increased intellectual property protection in the fashion industry. Currently, US copyright law protects original print patterns used on clothing, but it does not protect original clothing designs themselves, such as the shape and cut of a dress or sleeve. Trademark law provides some relief to fashion designers, as it allows designers to bring a claim for counterfeiting when the infringing goods display the designer’s label or mark. However, most knockoff designs do not duplicate the infringing trademark, but merely the design of the clothing, as seen in the designer knockoffs commonly sold in stores like H&M and Forever 21. Thus, unlike the laws in Europe, India, and Japan, US law does not currently protect against the copying of a fashion designer’s clothing designs under a different label.

The Design Piracy Prohibition Act, S. 1957, a bill introduced in the US Senate in August 2007, would grant copyright protection to original fashion designs for a period of three years and would provide a maximum penalty of $250,000 for infringement. Under such legislation, designers would be able to obtain copyright protection not just for original print patterns used in making clothes, as they can do now, but also for original clothing designs themselves, including designs for apparel, handbags, belts, and eyeglass frames. Many designers support such legislation, since it would provide recourse against the copying of their designs in the form of inexpensive, lower-quality knockoffs, which sometimes reach stores even before the originals themselves. Although copyright protection for original works such as art or movies can last up to ninety-five years from the date of publication, proponents of the Design Piracy Prohibition Act consider a three-year term of protection for clothing designs adequate, since fashion trends often change substantially from season to season. High-end, trend-setting fashion designers in particular have been vocal advocates for the bill, since it would grant them a three-year period of exclusivity in which to sell their clothing designs at premium prices before inexpensive knockoffs flood the market.

Nevertheless, critics of the bill contend that such copyright protection would be detrimental to the fashion industry as a whole. Because fashion designs often draw from or resemble the looks and styles of the past, opponents of the Design Piracy Prohibition Act argue that the bill would impede designers’ creativity and innovation, and, consequently, would narrow consumers’ choices. Moreover, such legislation would place courts in the difficult (and perhaps ill-suited) role of having to determine which fashion designs are truly “original” and thus worthy of copyright protection.

Arent Fox is currently monitoring the status of the von Furstenberg case and the Design Piracy Prohibition Act. For more information, please contact:

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

Sarah L. Bruno
bruno.sarah@arentfox.com
202.775.5760

Loni J. Sherwin
sherwin.loni@arentfox.com
202.715.8581