Back to the Beginning: A Revival of a 1913 Argument for Intellectual Property Protection for Fashion Design. Kimberly Ann Barton*

Transcription

1 Back to the Beginning: A Revival of a 1913 Argument for Intellectual Property Protection for Fashion Design Kimberly Ann Barton* I. INTRODUCTION II. BACKGROUND A. Purpose Behind Intellectual Property Law B. Design Piracy C. Historical Fashion Design Protection D. Current Legal Protection for Fashion Design Trademark and Trade Dress Copyright Patent E. Protection for Other Designs Not Sufficiently Protected Under Federal Copyright Law Architectural Design Protection Semiconductor Chip Protection Vessel Hull Design Protection F. Proposed Increased Protection for Fashion Design: Past and Present The Trend in Attempted Fashion Design Protection Legislation House Bill House Bill Senate Bill House Bill III. ANALYSIS A. Comparison of the Most Recently Proposed Legislation B. Proponents of the Most Recently Proposed Legislation * J.D. Candidate, The University of Iowa College of Law, 2010; B.B.A., The University of Wisconsin Madison. I would like to thank the Journal of Corporation Law, my family and my friends especially my best friend, Kristofer Mayrand for their support, love, and fabulous sense of humor. I would also like to thank my girlfriends, particularly Ally Basak Russell and Kristie De Peña, for their impeccable fashion sense and inspiration.

2 426 The Journal of Corporation Law [Vol. 35:2 1. Fashion Industry Supporters: Council of Fashion Designers of America Academic Proponents Congressional Supporters The U.S. Copyright Office C. Opponents of the Most Recently Proposed Legislation Fashion Industry Opponents: American Apparel and Footwear Association and the California Fashion Association Academic Opponents D. Comparison with the Architectural Works Copyright Protection Act IV. RECOMMENDATION A. The Fashion Industry Must Form a True Coalition B. Drafters Should Learn from Past Legislation to Ensure a Swift Success C. International Pressure V. CONCLUSION APPENDIX A I. INTRODUCTION On May 12, 1913, the New York Times published a letter from Vivian Burnett, the editor of the Lace and Embroidery Review, calling for all parties affected by fashion design piracy to join together to achieve increased intellectual property design protection. 1 She deemed piracy the greatest deterrent to creative work in this country, especially in the field of fashion, and recognized the need to amass all interested parties to create legislation that addressed as many concerns as possible. 2 Finally, Ms. Burnett appealed to the industry through the importance of the international effect of design piracy. 3 Disappointingly, nearly a century has passed and her cause remains unsettled. Although times have changed, Ms. Burnett s simple components still weave the strongest rope for securing design piracy protection through an industry-drafted congressional statute. This Note examines the history of intellectual property protection and its application to fashion design, explains and evaluates recently proposed legislation to provide copyright protection to fashion design, and compares the recently proposed and recently defeated legislation with other pieces of legislation that have successfully brought intellectual property protection to similar industries. Ultimately, this Note argues that copyright protection is necessary for fashion design and proposes that the industry unite to support a cohesive bill, adjusted for flaws in past bills, and exploit the international pressure behind fashion design anti-piracy legislation. 1. Vivian Burnett, Pirating of Designs: Call is Issued for All Interests Affected to Get Together, N.Y. TIMES, May 12, 1913, at Id. 3. Id.

3 2009] Back to the Beginning 427 II. BACKGROUND American fashion is a $350 billion industry, and more than $12 billion worth of fashion designs are pirated and sold as counterfeits. 4 Even more pirated designs are sold under a different brand name. 5 For other artistic works, such as music, copying a product and selling it under a different brand name is considered counterfeiting, plagiarism, theft, or piracy, and has legal consequences. 6 Yet companies that engage in pirating fashion designs and turning them into tangible garments go unpunished. 7 This Part of the Note explains the purpose behind intellectual property law and further details the concept of design piracy. It sets forth the current legal protection available to companies in the fashion industry in the form of trademarks, copyrights, and patents, and explains what types of designs are subject to each kind of protection. This Part then explores the progression and inadequacy of the current law. Finally, it discusses Congress recent failed attempts at increased protection via H.R (2007) and S (2007) and Congress most current attempt via H.R (2009), all titled the Design Piracy Prohibition Act (DPPA), by examining the bills legislative histories and stated purposes. A. Purpose Behind Intellectual Property Law Intellectual property represents creations of the mind... used in commerce. 8 These creations can be categorized in intellectual property as either industrial or copyright. 9 Industrial properties include trademarks, inventions and patents, industrial designs, and geographical indications of source. 10 Literary and artistic works, however, comprise the copyright category. 11 Protecting these creations is essential to innovation, as it provides incentives and encouragement to keep inventing. 12 This protection aims to prevent free riding and imitation. 13 B. Design Piracy Since the 1930s, courts have used the terms style piracy, design piracy, and knock off interchangeably to describe the unauthorized reproduction of another s 4. Emily S. Day, Comment, Double-Edge Scissor: Legal Protection for Fashion Design, 86 N.C. L. REV. 237, 238 (2007). 5. Teri Agins, Copy Shops: Fashion Knockoffs Hit Stores Before Originals as Designers Seethe Photos, Fax, Fedex and Spies Make Imitation Pervasive and All but Instantaneous An Expensive Suit for Lauren, WALL ST. J., Aug. 8, 1994, at A1. 6. See 17 U.S.C. 506 (2006) (detailing the criminal offenses resulting from copyright infringement). 7. See, e.g., Lynsey Blackmon, Comment, The Devil Wears Prado: A Look at the Design Piracy Prohibition Act and the Extension of Copyright Protection to the World of Fashion, 35 PEPP. L. REV. 107, 152 (2007) (citing a statement by Professor Susan Scafidi). 8. World Intellectual Prop. Org., What is Intellectual Property?, (last visited Sept. 21, 2009). 9. Id. 10. Id. 11. Id. 12. Mark A. Lemley, Property, Intellectual Property, and Free Riding, 83 TEX. L. REV. 1031, 1031 (2005). 13. Id. at 1032.

4 428 The Journal of Corporation Law [Vol. 35:2 fashion design. 14 Allen B. Schwartz, owner of A.B.S., described this unauthorized reproduction when he publicly stated that he will watch fashion events such as the Academy Awards telecast, sketch the dresses that the stars parade down the red carpet, and the next day decide which of the gowns will be adapted or interpreted. 15 Some designers see piracy as an easy way to produce a profitable product without the financial risk. 16 While piracy actions in other fast-paced intellectual property industries, such as music, are quickly prosecuted, 17 similar actions in the fashion industry remain relatively unpunished 18 as a direct result of the lack of protection currently available to fashion design. 19 It is important to note that certain types of design are pirated more often than others, allowing the offending fashion companies to stay in business despite the rapidly changing industry. 20 The least likely designs to be mimicked are those in the category of haute couture 21 (couture) because haute couture is a custom-created garment made entirely by hand for a specific individual. 22 Companies mimic less expensive categories more often, such as better fashion and commodity apparel. 23 The distinction between these categories is not only price, but also the amount of design work. 24 Couture and ready-towear designs do not lend themselves to piracy for several reasons: (1) couture is customized; (2) both types are extremely expensive; and (3) both types have a short fashion lifespan. 25 The designs in the lower categories better fashion and commodity apparel tend to be simpler, less expensive, and remain fashionable longer, 26 thus rendering them more vulnerable to piracy. Further, the designs in the couture category have higher design contents, meaning more detailed and intricate designs, than do those in the latter categories, 27 which is consistent with the trend to copy designs in the better and commodity collections Leslie J. Hagin, A Comparative Analysis of Copyright Laws Applied to Fashion Works: Renewing the Proposal for Folding Fashion Works into the United States Copyright Regime, 26 TEX. INT L L.J. 341, 345 (1991) (citing White v. Leanore Frocks, Inc., 120 F.2d 113, (2d Cir. 1941) (per curiam); Wm. Filene s Sons Co. v. Fashion Originators Guild of Am., Inc., 90 F.2d 556, , 562 (1st Cir. 1937)). 15. Day, supra note 4, at Hagin, supra note 14, at Amanda M. Witt, Burned in the USA: Should the Music Industry Utilize Its American Strategy of Suing Users to Combat Online Piracy in Europe?, 11 COLUM. J. EUR. L. 375, (2005). 18. Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 VA. L. REV. 1687, 1689 (2006). 19. Id. 20. Id. at For examples of haute couture fashion, see Poshbot.com, Gaultier Couture Fashion Show F/W 09, 09/ (last visited Nov. 11, 2009) (depicting a photograph of haute couture by Jean Paul Gaultier Fall/Winter Runway 2009). For a photograph of ready-to-wear apparel by Christian Dior, see (last visited Nov. 11, 2009). 22. Raustiala & Sprigman, supra note 18, at Id. Better and commodity fashion designs are sold at malls and worn by most people in everyday situations. 24. Id. at Id. 26. Id. 27. Raustiala & Sprigman, supra note 18, at For examples of piracy of better fashion and commodity apparel, see Stop Fashion Piracy,

5 2009] Back to the Beginning 429 C. Historical Fashion Design Protection Despite the landmark decision of Bleistein v. Donaldson Lithographing Co. 29 in 1903, which allowed a person to copyright a circus poster 30 and opened the gateway for design copyright protection, and the 1909 Copyright Act, 31 which extended copyrights to three-dimensional models, the Copyright Office continued to distinguish between applied art and fine art thus excluding fashion design from its protection. 32 As a result, designers began to protect their property by regulating the industry from within. 33 In 1932, fifteen designers created the Fashion Originators Guild of America (FOGA) to stop fashion design piracy. 34 FOGA registered its members original designs and formed alliances with retailers who agreed not to sell copied designs. 35 FOGA engaged in policing the 12,000 associated retailers and 176 member fashion designers throughout the United States 36 to prevent piracy. However, the Supreme Court found that it also controlled the discounts between designers and retailers, thereby limiting competition and violating the Sherman Antitrust Act. 37 Similarly, the Federal Trade Commission (FTC) abolished the Millinery Creators Guild when the Second Circuit upheld the FTC s claim that the guild supported unfair methods of competition for the design of women s hats. 38 The court acknowledged the great loss designers suffer when their garment is copied and distributed by another firm, yet the court offered no relief. 39 The court said the original design creations are too slight a modification of a known idea to justify the grant by the government of a monopoly to the creator.... [T]he imitator may copy with impunity, and the law grants no remedy to the creator. 40 However, near the end of the 1940s, the Copyright Office amended its requirements to allow many three-dimensional works of applied art to register for protection. 41 D. Current Legal Protection for Fashion Design As time progressed, courts recognized the need for intellectual property protection for design. 42 As such, the courts slowly expanded the scopes of the three main types of intellectual property trademark, copyright, and patent to provide some protection of (last visited Nov. 11, 2009). 29. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903). 30. Id. at Copyright Act of 1909 ch. 320, 5, 35 Stat. 1075, 1077 (1909) (superseded by 17 U.S.C (1982)). 32. Orit Fischman Afori, Reconceptualizing Property in Designs, 25 CARDOZO ARTS & ENT. L.J. 1105, 1109 (2008). 33. Robert P. Merges, Contracting into Liability Rules: Intellectual Property Rights and Collective Rights Organizations, 84 CAL. L. REV. 1293, 1363 (1996). 34. Id. 35. Id. 36. Id. 37. Fashion Originators Guild of Am. v. Fed. Trade Comm n., 312 U.S. 457, (1941). 38. Millinery Creators Guild v. Fed. Trade Comm n, 109 F.2d 175, 176 (2d Cir. 1940). 39. Id. at Id. at Afori, supra note 32, at Raustiala & Sprigman, supra note 18, at 1699.

6 430 The Journal of Corporation Law [Vol. 35:2 companies fashion designs. 43 These efforts have proven insufficient as companies continue to pirate fashion design. 1. Trademark and Trade Dress A trademark is a word, phrase, logo, or other geographic symbol used by a manufacturer or seller to distinguish its product... from those of others. 44 In order to receive a federal trademark, the mark must be distinctive and attached to products actually sold on the market. 45 The Lanham Act, enacted in 1946, provides protection against infringement of trademarks. 46 Essentially, the design must be distinctive and nonfunctional. 47 Trademarks have been successful in protecting actual designer logos, such as the Chanel double C, the Louis Vuitton LV, or the Nike swoosh ; however, the trademark does not provide any protection to the product or design to which the logo is affixed. 48 Thus, trademarks provide little protection to designer corporations and no protection to the actual products. Trade dress is another facet of trademark law that provides slightly more protection. It represents the overall appearance and image of a product. 49 The appearance of a product includes features such as size, shape, color or color combinations, texture, and graphics. 50 To succeed in a trade dress claim, a designer must demonstrate that the trade dress is distinctive or possesses a secondary meaning that the design identifies the source of the product, similar to the function of a trademark 51 and that consumers will likely confuse it with another s product. 52 Therefore, even though a design lacks inherent distinctiveness, it may acquire a secondary meaning when in the minds of the public, the primary significance of a [design product] is to identify the source of the product rather than the product itself. 53 The Supreme Court recently deemed an illustration of secondary meaning necessary in trade dress litigation. 54 Although some corporations have successfully illustrated consumer confusion, the fast pace and cyclical nature of the fashion industry often prevent the establishment of a secondary meaning, 55 thereby guaranteeing failure of the trade dress test Id. 44. BLACK S LAW DICTIONARY 1530 (8th ed. 2004); Trademark Clarification Act of 1984, 98 Stat (codified in 15 U.S.C (2006)). 45. BLACK S LAW DICTIONARY 1530 (8th ed. 2004) U.S.C (2006). 47. Afori, supra note 32, at Ronald Urbach & Jennifer Soussa, Is the Design Piracy Protection Act a Step Forward For Copyright Law or is it Destined to Fall Apart at the Seams?, 16 METRO. CORPORATE COUNSEL 28 (2008). 49. BLACK S LAW DICTIONARY 1530 (8th ed. 2004). 50. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992). 51. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000). 52. Urbach & Soussa, supra note 48, at Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982). 54. Wal-Mart, 529 U.S. at The fashion industry is cyclical, meaning most new garments are evolved forms of an older garment. Raustiala & Sprigman, supra note 18, at 1692, This makes it very difficult for a designer to show that a particular garment design has a strong enough secondary meaning to reach the threshold for trade dress protection. 56. Urbach & Soussa, supra note 48, at 28.

7 2009] Back to the Beginning Copyright Since the passage of the 1909 Copyright Act, courts have played a significant role in expanding the scope of a copyright to include design. 57 Nevertheless, the applicability of copyrights to design remains unclear. 58 For example, a dancing figure, qualified as a work of art, allowed the protection of a copyright, but the Court had said nothing of the forms displayed by toasters or automobiles, or the designs of wedding gowns or belt buckles. 59 At present, corporations still seek the unclear protection supplied by the Federal Copyright Act (FCA), 60 which Congress has slowly expanded to apply to additional works of art. 61 Subsections (g) and (k) of an older version of the FCA once protected works of art and designs of works of art, and prints and pictorial illustrations including prints or labels used for articles of merchandise, respectively. 62 While these subsections protected a designer s drawing of a garment, they did not protect the actual garment once it was created. 63 The current act no longer contains such provisions; however, the language is even more ambiguous, stating simply that works of authorship include pictorial, graphic, and sculptural works. 64 It should be noted that the current Copyright Act refuses protection to any article having an intrinsic utilitarian function 65 such as clothing s purpose of covering and protecting the body. 66 This requires design companies to show that the fashion design has a purpose outside of clothing. 67 A design may receive copyright protection despite its utilitarian function, however, if such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. 68 This means that a design can be protected, but not the garment itself Patent Patents have protected designs since Currently, patents for design are governed by 35 U.S.C. 171, which describes design patent protection for new, original, and ornamental design[s] for an article of manufacture. 71 A patent is a right to 57. See, e.g., Mazer v. Stein, 347 U.S. 201 (1954) (upholding the lower court s decision to grant copyright protection to dancing figures). 58. Robert C. Denicola, Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 MINN. L. REV. 707, 712 (1983). 59. Id U.S.C (2006). 61. See H.R. REP. NO , reprinted in 1976 U.S. CODE CONG. & ADMIN. NEWS 5659, 5664 ( The history of copyright law has been one of gradual expansion in the types of works accorded protection. ). 62. Stein, 347 U.S. at Jack Adelman, Inc. v. Sonners & Gordon, Inc., 112 F. Supp. 187, (D.C.N.Y. 1934) ( [A] dress is not copyrightable. A picture of a dress is. ) U.S.C. 102(a)(5) (2006). 65. Raustiala & Sprigman, supra note 18, at Celebration Int l, Inc. v. Chosun Int l, Inc., 234 F. Supp. 2d 905, 912 (S.D. Ind. 2002). 67. Id U.S.C. 101 (2000). 69. Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 999 (1980). 70. Afori, supra note 32, at U.S.C. 171 (2006); see also 37 C.F.R (2009) (detailing the rules of design patents).

8 432 The Journal of Corporation Law [Vol. 35:2 an invention 72 that protects against unauthorized reproduction for 14 years. 73 Some commentators argue that 14 years is an unnecessarily long time period for fashion design protection, since the fashion industry changes so rapidly. 74 To receive patent protection the invention must be novel and non-obvious the first of its kind. 75 Since most fashion designs are modifications of another kind of garment, the novelty and non-obviousness requirements are very difficult to fulfill. 76 The ornamentality of the design must not be controlled by its function. 77 For example, the ornamentality of a dress may not be its unique, artistic shoulder straps, because the straps are primarily functional. This is because a design patent may only protect the ornamental design, not the function of the design. 78 This requirement is similar to the utilitarian function aspect of trademark and copyright protection. 79 With such extensive requirements, it is difficult for fashion designs to receive patent protection. 80 The Presidential Commission on Patents recognized this huge hurdle in the face of design patents in 1966 and called for a new form of protection for design as an alternative to patents. 81 Patents extreme costs and lengthy applications form another barrier to corporations fashion product protection. 82 A single patent can cost thousands of dollars, 83 not including attorney s fees, making the concept of patenting every design in a season s collection prohibitively expensive. Furthermore, design patent applications take approximately 18 months to be processed, without the guarantee of approval. 84 Since designs can be copied in one day and mass produced shortly thereafter, 85 the original designer will have suffered the harm from piracy long before the patent is approved. E. Protection for Other Designs Not Sufficiently Protected Under Federal Copyright Law Several other industrial designs, similar to fashion designs, suffered without sufficient intellectual property protection for a considerable time. Unlike fashion designs, however, these designs recently received intellectual protection in the form of copyrights. 86 These designs include: (1) architectural designs, which are protected by the Architectural Works Copyright Protection Act (AWCPA); 87 (2) semiconductor chips, 72. BLACK S LAW DICTIONARY 1156 (8th ed. 2004). 73. Hagin, supra note 14, at Urbach & Soussa, supra note 48, at BLACK S LAW DICTIONARY 1530 (8th ed. 2004). 76. Urbach & Soussa, supra note 48, at 28 (citing In re Bartlett, 300 F.2d 942, (C.C.P.A. 1962), as an example of the degree of novelty required to receive a patent). 77. Afori, supra note 32, at Id. at See supra Part II.D.2 for an explanation of utilitarian function and its effect on a design s potential to be copyrighted. 80. Afori, supra note 32, at 1123; see also Vanity Fair Mills, Inc. v. Olga Co., 510 F.2d 336, 340 (2d Cir. 1975) (illustrating the difficulty of obtaining a design patent). 81. Hagin, supra note 14, at C.F.R (2008); see also 37 C.F.R (2008). 83. See U.S. Patent & Trademark Office, FY 2009 Fee Schedule, (defining requisite fees to file). 84. Day, supra note 4, at See Part II.B, supra, for details about design piracy. 86. Merges, supra note 33, at U.S.C. 102(a) (2006).

9 2009] Back to the Beginning 433 which are protected by the Semiconductor Chip Protection Act; 88 and (3) ship vessel hulls, which are protected by the Vessel Hull Design Protection Act Architectural Design Protection Until recently, architectural works copyright protection extended only to the design or plan, not to the actual building or structure. 90 The buildings were considered utilitarian works, and were thereby excluded from protection. 91 Therefore, it was perfectly legal for one builder to construct a building from a copyrighted design that another architect owned. 92 However, in 1990, President George H. W. Bush signed into law the Architectural Works Copyright Protection Act, 93 which expanded the subject matter of copyrights to include architectural works 94 and added section 120 to the Copyright Act. 95 In effect, this law extended an architect s copyright protection from his design to the physical building Semiconductor Chip Protection In 1984, Congress enacted the Semiconductor Chip Protection Act. 97 This act gives sui generis protection to semiconductor chips articles that are arguably purely functional in an effort to protect the chips visual appearances. 98 It is important to note, however, that the visual appearance is not an aesthetic appearance, as the chip is not readily visible when in use; it is the functional typeface of the chip that is protected Vessel Hull Design Protection In 1988, the Supreme Court invalidated a state statute condemning the act of copying another s industrial design, putting it to use, and selling it as one s own. 100 In making its decision, the Court deferred to Congress explicit exclusion of industrial design in the 1976 Copyright Act. 101 As a result, Congress enacted the Vessel Hull Design Protection Act (VHDPA). 102 Similar to copyright protection, the VHDPA provides sui generis protection, requires registration, and results in a short 10 years of U.S.C (2006) U.S.C (2006). 90. Mary Jane Augustine & Christopher S. Dunn, Design Responsibility and Liability: Consequences of Ownership of Licensing of the Project Drawings If You Pay for it, Do You Own it?, CONSTRUCTION LAW., Summer 2008, at 35 (2008). 91. Id. 92. Brian W. Esler & Tyler Rogers, Expensive Inspiration, ADVOCATE (Idaho), August 2008, at U.S.C. 102(a) (2006). 94. Id. 95. Copyright Act, Pub. L. No , 17 U.S.C. 120 (2006). 96. See Augustine & Dunn, supra note 90, at 36 (describing the act s expansion of legal protections) U.S.C (2006). 98. Afori, supra note 32, at 1127, Id. at Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, (1989) Id. at U.S.C. 1301(a)(1) (2006).

10 434 The Journal of Corporation Law [Vol. 35:2 protection. 103 The law protects an original design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public. 104 The law defines an original design as the result of the designer s creative endeavor that provides a distinguishable variation over prior work pertaining to similar articles which is more than merely trivial and has not been copied from another source. 105 Congress limited the scope of the VHDPA to useful articles defined as a vessel hull or deck, including a plug or mold. 106 F. Proposed Increased Protection for Fashion Design: Past and Present As the current forms of fashion design protection are extremely difficult to obtain and therefore provide inadequate protection for fashion companies products, advocates and legislators have unsuccessfully drafted and introduced several different forms of protection for fashion designs. 107 The two attempts in the 110th Congress were in the form of Senate Bill 1957 (S. 1957) and House Bill 2033 (H.R. 2033). S. 1957, with a few modifications, has recently been revived in the 111th Congress as House Bill 2196 (H.R. 2196). All three bills proposed sui generis protection for fashion design. This Part will detail the trend of attempted legislation to increase intellectual property protection for fashion design and examine the recent bills forms and purposes. 1. The Trend in Attempted Fashion Design Protection Legislation Between 1910 and 1983, an estimated 74 attempts to change the Copyright Act to include fashion design have failed. 108 While various fashion guilds and organizations have repeatedly called for the protection of industrial designs including fashion designs and have gained the support of members of Congress and other influential public servants, 109 Congress has repeatedly refused to grant protection. 110 Since 1983, members of Congress have introduced at least four other bills in an effort to expand the Copyright Act to include fashion garments in the definition of useful articles House Bill 5055 One of the most recent bills to fail in its efforts to secure copyright protection for fashion design is H.R Introduced to the 109th Congress in the House of Representatives in 2006, the proposed legislation, titled the Design Piracy Protection Act, 103. Afori, supra note 32, at Id Id Id Samantha L. Hetherington, Fashion Runways Are No Longer the Public Domain: Applying the Common Law Right of Publicity to Haute Couture Fashion Design, 24 HASTINGS COMM. & ENT. L.J. 43, 44 (2001) Id See, e.g., Burnett, supra note 1, at 8 (stating the express support of the Commissioner of Patents, the Register of Copyrights, and recognized patent attorneys) Hetherington, supra note 107, at H.R. 902, 101st Cong. (1989); H.R. 1790, 102d Cong. (1991) H.R. 5055, 109th Cong. (2006).

11 2009] Back to the Beginning 435 altered the VHDPA to include fashion designs and garments as useful articles. 113 Unfortunately, the bill was not reported on or voted upon, and was cleared from the books when Congress changed sessions in House Bill 2033 A virtual copy of its predecessor, H.R. 5055, H.R was introduced to the 110th Congress in the House of Representatives on April 25, Bill Delahunt (D-MA), Bob Goodlatte (R-VA), Carolyn Maloney (D-NY), and Mary Bono Mack (R-CA) presented the legislation to the House. 116 It was read and promptly referred to the Subcommittee on Courts, the Internet, and Intellectual Property, where it remained until Congress changed sessions in December The proposed legislation altered section 1301 of the VHDPA to include fashion design as a useful article by inserting or an article of apparel after plug or mold. 118 The legislation went on to define an article of apparel as: (a) an article of men s, women s, or children s clothing, including undergarments, outerwear, gloves, footwear, and headgear; (b) handbags, purses, and tote bags; (c) belts; and (d) eyeglass frames. 119 The proposed legislation continued to incorporate fashion design in every aspect of the VHDPA. 120 There was a significant deviation from the VHDPA in section 1305(a), which stated that fashion designs protection shall last for three years, unlike the vessel hulls ten years of protection. 121 Finally, the proposed legislation altered the grounds for infringement, and added a secondary liability clause to section It relaxed the standard for infringement from knowing that the design was protected to knowing or having reasonable grounds to know that protection for the design is claimed Senate Bill 1957 Soon after H.R was resurrected in the House via H.R. 2033, several Senators introduced a companion bill S Charles Schumer (D-NY), Kay Bailey Hutchison (R-TX), Diane Feinstein (D-CA), Orrin Hatch (R-UT), Sheldon Whitehouse (D-RI), Lindsey Graham (R-SC), Herb Kohl (D-WI), Hillary Clinton (D-NY), and Olympia Snowe (R-ME) presented the bill to the Senate on August 2, Like its counterpart in the House, the bill was read to the Senate and referred to the Committee on 113. Id Id H.R. 2033, 110th Cong. (2007) Id Id Id. 2(a) Id See generally H.R. 2033, 110th Cong. (2007) Id. 2(c) Id. 2(a) Id S. 1957, 110th Cong. (2007) Id.

12 436 The Journal of Corporation Law [Vol. 35:2 the Judiciary, where it stayed until Congress changed sessions. 126 The bill s bipartisan drafters altered the VHDPA to apply to fashion designs and included many of the proposals from H.R The proposed legislation expanded the definition of useful article to include articles of apparel, provided a specific term of protection for fashion designs and set forth the consequences for infringement. 128 The Senate bill added a significant clause to subsection (e) of section 1309 of the VHDPA, which explains infringement. 129 The proposed clause stated [i]n the case of a fashion design, a design shall not be deemed to have been copied from a protected design if it is original and not closely and substantially similar in overall visual appearance to a protected design. 130 The VHDPA, in its original and current form, states that a design shall not be deemed to have been copied from a protected design if it is original and not substantially similar in appearance to a protected design. 131 The proposed legislation allowed the current statement to remain in effect with respect to vessel hulls, but applied the modified standard for infringement exemption for fashion designs House Bill 2196 As happened with H.R in the 110th Congress, the Design Piracy Protection Act has recently been modified and resubmitted to the House of Representatives. On April 30, 2009 a bill substantially similar to S was introduced to Congress and referred to the House Committee on the Judiciary. 133 Aside from gaining support by means of co-sponsors, the bill differs from its predecessors in several important manners. There are two primary alterations of the previous drafts of the Design Piracy Protection Act (DPPA). First, H.R adds a provision to section 1303 of the VHDPA. 134 This section limits what may be considered a pirated design under the drafted sections 1301 and 1302 by stating that the presence or absence of colors or a graphic on the fabric is not to be considered when ascertaining the originality of a design in question. 135 The bill also adds section 1333, which creates a free, publicly searchable database of protected fashion designs Id Id See notes and accompanying text for a more detailed explanation of the adaptations of the VHDPA to accommodate fashion designs S. 1957, 110th Cong. 2(d) (2007) Id U.S.C (2006) See S. 1957, 110th Cong. 2(d)(2) (2007) H.R. 2196, 111th Cong. (2009). The bill was introduced by William Delahunt (D-MA), Bob Goodlatte (R-MA), Jerrold Nadler (D-NY), Darrell Issa (R-CA), Sheila Jackson-Lee (D-TX), Mary Bono Mack (R-CA), Jim Sensenbrenner (R-WI), Debbie Wasserman Schultz (D-FL), Howard Coble (R-NC), Dan Maffei (D-NY), Anthony Weiner (D-NY), Irma Rangel (D-TX), Robert Wexler (D-FL), Maxine Waters (D-CA), Steve Cohen (D-TN), Carolyn Maloney (D-NY), George Miller (D-CA), and Rosa DeLauro (D-CT) Id. 2(c) Id Id

13 2009] Back to the Beginning 437 III. ANALYSIS This Part examines the differences between the defeated companion bills H.R and S. 1957, the effect of these differences on the industry, and the bills lack of success in Congress. The Note contrasts the proposed legislation with similar dead legislation. It also examines possible reasons why the recently defeated bills did not progress beyond initial committee hearings, including the beneficial or detrimental role of the legislation as companion bills. This Part then analyzes the need for the legislation as put forth by various advocates and compares their positions with other parties underlying reasons for opposing increased intellectual property protection for fashion design. Finally, this Part compares the need for increased protection of fashion design with the legally recognized need for protection of architectural design. A. Comparison of the Most Recently Proposed Legislation H.R and S. 1957, depicted above in Parts II.F.3 and II.F.4, were virtually identical bills, both textually and structurally. Their only significant difference was H.R s amendment of section 1309 of the VHDPA. 137 This provision exempts an accused vessel hull design that is original and not substantially similar in appearance to a protected design from infringement and related penalties. 138 The legislation proposed in the House left this provision relatively intact. 139 By refraining from altering this provision, the drafters intended the exception to apply to both vessel hull designs and to fashion designs. 140 The version of the DPPA proposed in the Senate, however, altered section S kept the provision as it related to vessel hulls, but changed the wording as it applied to fashion design. 142 As applied to fashion design, the statute exempted accused designs from infringements that are original and not closely and substantially similar in overall visual appearance to a protected design. 143 The more detailed, altered version of the provision provided a stronger shield for protected designs against infringement. Designs that are closely, but not substantially, similar may still have been subject to prosecution. 144 The added verbosity of the provision did, however, leave more room for subjective interpretation, since closely and substantially are not definitive words. Finally, the slightly different bills in both the House and Senate only emphasize the lack of unanimity in the fashion industry. H.R. 2196, described in Part II.F.5, is similar to the bills of the 110th Congress in text and substance as well, with the addition of limiting criteria and the requirement that the Administrator create a database of protected designs. The bill keeps the arguably 137. See H.R. 2033, 110th Cong. (2007); supra note 116 and accompanying text; see also S. 1957, 110th Cong. (2007); supra note 129 and accompanying text. For full provisions of relevant parts of the VHDPA see Appendix A U.S.C (2006) See H.R. 2033, 110th Cong. 2(d) JOHN R. THOMAS, CONG. RESEARCH SERV.: INTELLECTUAL PROPERTY IN INDUSTRIAL DESIGNS: ISSUES ON INNOVATION AND COMPETITION (2008) See S. 1957, 110th Cong. 2(d) Id THOMAS, supra note 140, at 11 (citing S. 1957, 110th Cong. 2(d)(2)(C)) See S. 1957, 110th Cong.

14 438 The Journal of Corporation Law [Vol. 35:2 vague language and accompanying debatable problems of S The limiting criteria regarding the presence of color and graphics 146 will likely reduce the complications in determining whether a design infringes on a protected design. It will also encompass designs that are structurally the same as a protected design, but differ only in fabric color or print, thereby providing better protection to the industry. The database will address concerns voiced by opponents to the legislation. 147 More specifically, the database will allow designers to verify the originality of a design before expending funds to bring the design to form. B. Proponents of the Most Recently Proposed Legislation Since the bills are quite similar, advocates of design piracy protection supported the increased protection proposed by both S and H.R. 2033, as well as the current bill, H.R Supporters outside Congress include fashion design organizations, academics, and the Copyright Office. 149 Their reasons for supporting the DPPA range from closing the loophole in the anti-counterfeiting regime, to protecting entrepreneurs from being restrained by pirates, to recognition of fashion design as an art form Fashion Industry Supporters: Council of Fashion Designers of America Among the more prominent fashion design coalitions in support of the DPPA bills is the Council of Fashion Designers of America (CFDA). 151 Over 300 American clothing and accessory designers belong to the CFDA. The CDFA is a collaborative effort to advance fashion design as an art and culture, while strengthening professional standards, defining a code of ethics, and fostering the development of new fashion designers. 152 In accordance with these efforts, the CFDA actively supports the Senate DPPA bill. 153 The CDFA sent its President, Diane Von Furstenberg, and several other high profile designers, to the Senate to express their position on the issue. 154 Among the companies 145. See supra notes (providing a discussion of the vague language proposed in section 1309 of the VHDPA) See supra note 130 and accompanying text See, e.g., Letter from Kevin M. Burke, President and CEO, Am. Apparel & Footwear Ass n, to members of Congress, available at Final_April2009.pdf (arguing that designers will have no way of knowing whether their work infringes on a protected design) See supra Part III.A (explaining the similarities and differences of H.R and S. 1957) See, e.g., Council of Fashion Designers of America, Design Piracy, A Bill to Provide Protection for Fashion Design: Hearing on H.R Before the House Subcomm. on Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 109th Cong. 8 (2006) [hereinafter Banks] (extending the statement of Jeffrey Banks, designer, member of the Executive Board of the CFDA, Vice Chair of the Board of the Hetrick-Martin Institute to the new version of the DPPA) See, e.g., Council of Fashion Designers of America, supra note 149; Banks, supra note Council of Fashion Designers of America, Design Piracy, option=com_ctda_content&task=about_the_cfda_display&category_id=58 (last visited Sept. 21, 2009) Council of Fashion Designers of America, About the CDFA, option=com_cfda_content&task=about_the_cfda_display&category_id=7 (last visited Sept. 21, 2009) Council of Fashion Designers of America, Design Piracy, supra note Id.

15 2009] Back to the Beginning 439 represented by designers at the Senate meeting were JA Apparel Corporation, Nicole Miller Inc., Zac Posen, and Juicy Couture. These companies are working with senators to eliminate design piracy and its harmful effects, namely the devaluation of the original design through the copy s ubiquity, poor quality, or speed at which [it] reach[es] the consumer. 155 The CFDA claims piracy is a severe hindrance to the growth of the $350 billion U.S. fashion industry. 156 The invitation-only group feels the DPPA is a particularly critical tool for the protection and growth of young designers. 157 Designer Jeffrey Banks main goal, expressed on behalf of the CDFA through his testimony in support of the DPPA to the House of Representatives, was the need to protect young designers and the need to allow the American fashion industry to continue to develop. 158 Mr. Banks applied the CFDA s arguments to the entire supporting industry, including the printing, trucking, and distribution, advertising, publicity, merchandising, retail... [and] the industries which support the production and dissemination of men s and women s fashion magazines. 159 When the fashion design companies products are stolen and reproduced, those companies have less need for the supporting industries, thereby starting a ripple effect through all supporting areas. 160 Due to the advances in technology and distribution channels, infringers are taking designs from the runways, creating virtual models, and reproducing them before the originals reach the market. 161 The infringers are thereby taking another company s product and selling it as their own. Laws prohibit and punish this kind of theft in other areas of intellectual property including vessel hulls, 162 yet it goes largely unpunished in the realm of fashion design. 163 The United States is also one of the only developed countries without legal sanctions for design piracy. 164 For example, most European Union member states provide a 25- year term of fashion design protection. 165 Japan protects fashion design for a 15-year period. 166 India has anti-piracy laws for fashion design as well. 167 According to Mr. Banks, these laws chilling effect on design piracy would be mirrored in the United States if Congress would enact the DPPA: [R]etailers have told us that if [the practice of] fashion design piracy was illegal, they wouldn t engage in it About the CFDA, Design Piracy, supra note Id Id Banks, supra note 149, at Id. at Id Id. at U.S.C (2006) Blackmon, supra note 7, at Banks, supra note 149, at Id. at 11. See also Council Directive 98/71, art. 10, 1998 O.J. (L 289) 28 (EC) Banks, supra note 149, at A Bill to Provide Protection for Fashion Design: Hearing on H.R Before the House Subcomm. on Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 109th Cong. 77, 84 (2006), available at f:28908.pdf [hereinafter Scafidi] (extending the written statement of Professor Scafidi on the new version of the DPPA) Banks, supra note 149, at 11.

16 440 The Journal of Corporation Law [Vol. 35:2 Mr. Banks and the CFDA fear that design piracy can eliminate young design entrepreneurs in a single season, since their designs are without the protection of a recognized label. 169 Established designers were recently given some protection in the form of the Anti-Counterfeiting Consumer Protection Act of This law makes trafficking counterfeit fashion designs into and out of the United States illegal, 171 but it does not protect new designers because their labels are not yet widely recognized. 172 In order for the law to work, the pirated design must be sold with a counterfeit designer label affixed to the garment. Thus, pirated copies of new designs are able to pass through customs free of consequences. Since all counterfeit garments begin with a pirated design, proponents argue that it should be illegal to copy the design in the first place, regardless of the label Academic Proponents Various academics have put their support behind the DPPA bills, including Susan Scafidi, Associate Professor of Law and Adjunct Professor of History at Southern Methodist University and visiting professor at Fordham Law School. Professor Scafidi studied the Office of the United States Trade Representative s 174 global campaign against counterfeited goods 175 and pointed out the hypocrisy regarding the legality of fashion design piracy, which led to counterfeits within the United States. 176 Professor Scafidi stressed the importance of fashion design as a form of creative expression, which deserves copyright protection, as opposed to a mere way to cover the body. 177 She stated that the most efficient way to end piracy and protect the fashion industry s products is for Congress to enact the DPPA. 178 Additionally, Professor Scafidi found the DPPA to be necessary to protect emerging designers even future major design corporations from being eradicated by design pirates before they have the chance to develop. 179 In the end, Professor Scafidi expressed the necessity of the DPPA to Congress, stating that the fate of the American fashion industry would be directly influenced by the absence or presence of intellectual property protection. 180 In an extreme example of this direct effect, only the well-established fashion companies will survive piracy, because the small, upcoming companies designs will be stolen and sold under another, less 169. Id U.S.C (2006) Id Banks, supra note 149, at Id Office of the United States Trade Representative Home Page, (last visited Sept. 21, 2009) See generally Press Release, U.S. Expands Outreach in Campaign to STOP! Trade in Fakes (June 6, 2005), available at (detailing the U.S. government s plans to launch another leg of its Strategy Targeting Organized Piracy (STOP!) initiative, which aims to strengthen the global intellectual property rights of artists, scientists, inventors, and entrepreneurs) Scafidi, supra note 167, at Id Id. at Id. at Id. at 80.

17 2009] Back to the Beginning 441 expensive label. This will virtually eliminate small companies ability to sell their original product at a price high enough to allow them to break even and stay in business. These small, innovative fashion companies will thus be eliminated, leaving only the most exclusive designers to shape the multi-billion dollar fashion industry. 181 On the other hand, if Congress grants fashion designs intellectual property protection, then young, new, innovative fashion companies will be encouraged to create and invent, thereby evolving the fashion industry. 3. Congressional Supporters In Congress, Representatives William Delahunt and Maxine Waters expressed support of the DPPA legislation. They underscored the double standard in U.S. law prohibiting counterfeiting apparel and footwear but allowing fashion design piracy. 182 Representative Delahunt referred to pirating as counterfeiting without the label. 183 In his speech to Congress, he explained that retailers who are experiencing their lowest sales since 1969 as a result of the financial crisis are counting on fashion corporations creation of new and innovative designs to increase sales. 184 He recognized the DPPA as an opportunity for jobs, industry, and export growth in the United States that may be squandered by the piracy of the new and innovative designs. 185 According to Representative Delahunt, the U.S. government needs to close the loophole in its anticounterfeiting initiative to prevent others from stealing and growing the fashion industry that American businesses create. 186 Congresswoman Waters reminded Congress of California s large stake in the fashion industry. 187 Representative Waters cited Los Angeles $7 billion fashion industry as a pillar of support for the city treasury. 188 She stated that the city s designers deserve 181. The example in the text depicts what has happened to many designers already. One of the more famous stories is that of a dress that Narciso Rodriguez designed for Carolyn Bessette Kennedy in One pirate debuted the dress almost immediately after Ms. Kennedy wore it and sold roughly 800,000 inexpensive copies. Rodriguez sold only forty-five. He could do nothing to protect his design. Had he not had been working for a well-known Italian label, his career may have been over. See generally Robin Givhan, The End of Gown in 60 Seconds?, WASH. POST, Aug. 10, 1997, at C02 (explaining that the Piracy Prohibition Act would protect Rodriguez); Felix Salmon, Susan Scafidi on Copyrighting Fashion, Portfolio.com, Sept. 19, 2007, (discussing how copyright protection is needed in the fashion design world) Design Law Are Special Provisions Needed to Protect Industries? Hearing Before the Subcomm. on Courts, the Internet and Intellectual Property of the House Comm. on the Judiciary, 110th Cong. 19, 20 (2008), available at [hereinafter Delahunt] (statement of Congressman William Delahunt); A Bill to Provide Protection for Fashion Design: Hearing on H.R Before the House Subcomm. on Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 109th Cong. 196 (2006), available at [hereinafter Waters] (extracting the testimony of Congresswoman Maxine Waters from the older version of the DPPA and applying it to the current versions of the bill in the House and Senate) Delahunt, supra note 182, at Id Id Id Waters, supra note 182, at Id.