Fighting the Fashion Knockoff War

From the Experts

, Corporate Counsel

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Today, the fashion industry faces the dangers of piracy more than ever. “Fast fashion” retailers offering catwalk and celebrity knockoffs are more successful than ever with the help of the Internet, which provides both an avenue for discovering new looks and immediate access to a market eager to buy them.

While the legality and morality of these copycats is debated, brands investing in creating these looks suffer, as their looks are easily copied and mass-produced at much lower costs, often well before the original look hits the market.

An Industry in Trouble

In the past, designers protected their designs through speed and secrecy. By the time others copied a look, the designer had an edge on capturing the market. But now that first-mover advantage is all but gone.

Designers changed that tradition by inviting the public into their shows, leading to the trend of fashion shows as public events. Today, minutes after designs walk the runway, detailed photos capturing each look are broadcasted. Once public, competitors are able to easily capture and quickly manufacture replicas—and immediately offer these to the mass market at far lower prices.

In the face of this onslaught, brands have had little success fending off piracy due to the limited legal protection available to fashion designs. Fashion design does not qualify as “art” protectable by copyright law, which excludes “useful articles” such as garments and accessories.

Trademark laws provide ample protection where replicas enter counterfeit territory through misuse of the brand and/or logo to pass off the replica as an original. But they aren’t much help when it comes to copies that are virtually identical to an original but sold under a different brand, as confusion is unlikely in such circumstances.

Trade dress laws may provide more protection for the look and feel of a specific design, but it is exceedingly difficult to fend off copycats, because prevailing under trade dress protection requires showing that the trade dress is nonfunctional and serves as a source identifier leading to the likelihood of consumer confusion. This is especially difficult in a trend-heavy industry where trends become yesterday’s news overnight, not allowing for the time required to build “distinctiveness.”

Design Patents to the Rescue?

But recently the industry has begun to see a glimmer of hope in a legal protection that has until now been largely limited to the tech industry. It’s the design patent, which has begun to receive some attention with the stories of tech giants that have used it against competitors. Its most recent success story has been Apple Inc.’s use of its design patents in fending off the challenges of competitors in the smartphone (and tablet) wars.

Until recently, fashion designers did not look to design patents for protection, partly because securing the patent takes a considerable amount of time and money. But with the industry under siege, and with the success of the design patent in other arenas, it’s starting to look like a potential solution.

For some brands, the cost of obtaining a patent pales in comparison to the potential millions lost to knockoffs, and in the absence of protection from other, more cost-efficient IP rights, the price of obtaining design patent rights is now viewed as less of an impediment.

Design patents provide much-needed flexibility to fend off copycats. To prevail on a claim of infringement, besides showing ornamental purpose, the designer only needs to show that an “ordinary observer” would conclude that the protected design and the allegedly infringing look are substantially the same. It requires a substantial similarity, but not necessarily an exact copy, as determined from the point of view of a purchaser of fashion—arguably a “more discerning” consumer than the average shopper.

Additionally, the design patent provides protection for the entire look, while allowing the designer to remove easily modifiable components of the product, ultimately protecting against a broader range of copycats.

And while it takes longer to obtain a design patent than other IP protections, and no actual protection is possible until the patent issues, immediately after filing, the designer can use the “patent pending” designation as a deterrent to copycats and an indication of ownership of the original design.

There are already some success stories in the fashion world that have established design patents as a valuable asset. Last year, Lululemon Athletica’s suit against Calvin Klein put design patents in the forefront of news in the fashion world. Lululemon was able to enter a settlement with Calvin Klein thanks to design patent rights secured in its “Astro Pant” waistband and design. While the details of the settlement are confidential, experts in law and fashion have hailed the outcome as a success and called the case a game-changer for patents in the fashion industry.

With knockoffs gaining more ground and popularity, design patents are becoming a vital component of a prudent global brand protection strategy. For the first time in a long time, apparel companies seem to have a fighting chance.

Shirin Tefagh is an associate at McDermott Will & Emery in Irvine, Calif. She focuses her practice on patent preparation and prosecution, intellectual property litigation, licensing and transactions, and counseling businesses in protecting their intellectual property rights. She can be reached at stefagh@mwe.com. Lynne M.J. Boisineau is a partner at McDermott Will & Emery in Irvine, Calif. She focuses her practice on trademark prosecution, enforcement and litigation support, as well as copyright, right of publicity and domain name matters that touch on trademark law. She can be reached at lboisineau@mwe.com.

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