On August 5, 2010, US Sen. Charles Schumer, D-NY, introduced S. 3728, the Innovative Design Protection and Piracy Prevention Act. If passed, the Act would extend copyright protection to fashion designs, including many types of men’s, women’s, and children’s clothing; handbags, purses, wallets, duffel bags, suitcases, tote bags, and belts; and eyeglass frames. Currently, 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. In a nod to European copyright law, designers would benefit from protection of the Act without having to register their designs with the US Copyright Office.

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. Given the seasonal trends of the fashion industry, however, the three-year protection period may not be worrisome to many designers. Finally, designers must meet a heightened “particularity” standard when pleading the elements of their claim. For example, a designer must plead with particularity facts establishing that the infringer saw or had knowledge of the protected design.

In addition to these limits on the scope of protection, there are several ways to escape liability entirely under the Act. Potential infringers have a defense if their design is not “substantially identical” to the protected design, or if it 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. Thus, come Halloween, parents need not fear liability under the Act for basing a child’s home-sewn costume off of a protected design.

Though no one can be certain whether the Act will become law, it is currently before the Senate Judiciary Committee, and The New York Times reports that it is expected to pass this fall. If it does, fashion designers would have a new, long-awaited avenue to protect their original creations.

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