Page 14 - Fashion Law

S14 | MONDAY, SEPTEMBER 12, 2016 | Fashion Law
| NYLJ.COM
Re-Fashioning the Law
three different amicus briefs submitted to the Supreme Court by designers and fashion companies ranging from Tiffany to Nike to Alexander Wang attest to the growing signi - cance of design patents not only to consumer electronics companies but also to the fashion industry, which has little desire to see exist- ing protections on the ornamental aspects of otherwise functional items weakened via changes in the calculation of damages. While even design patents are too expensive and insuf ciently timely to provide realistic pro- tection for many items of apparel and acces- sories, the briefs make clear that the industry nds them an important legal tool.
The fashion industry’s interest is perhaps not surprising given its collective investment in design patents. Until the lawsuit led by Lululemon against Calvin Klein in 2012, fashion industry awareness and discussion of design patent law was generally focused within a few product categories, notably foot- wear, but U.S. Patent and Trademark Of ce statistics still list apparel and haberdashery among the top 10 categories of design pat- ent issued to U.S. entities for the 25-year period between 1991 and 2015—and that is before including jewelry and textiles, which are assigned to separate classes. Nike alone received the second-largest number of design patents of any company worldwide during that span, and the numbers overall are con- tinuing to increase.
Fashion’s fondness for trademark is readily apparent from the prominent logos on mer- chandise ranging from luxury handbags to polo shirts to athletic shoes, but its in uence on the development of law is particularly evi- dent in the context of trade dress. From the landmark Supreme Court decision in Wal-Mart v. Samara Brothers on secondary meaning to widespread fascination with the previously obscure doctrine of aesthetic functionality in the footsteps of the struggle between Chris- tian Louboutin and Yves Saint Laurent over red soles, the doctrinal evolution of trade dress protection is dominated by fashion cases. Converse’s current efforts to protect its iconic Chuck Taylors and Aquazzura’s election-year action against Ivanka Trump and Mark Fischer over a sandal design are indications that the fashion industry will con- tinue to make strides in this area.
New trademark enforcement strategies and anti-counterfeiting programs, too, have been in uenced by forward-thinking fashion companies. Tiffany’s lead in taking action against eBay and other companies’ subse- quent behind-the-scenes cooperation with that online marketplace and others set the standard for shared responsibility in policing online sales at a time when e-commerce was just becoming central to consumer spending. In addition, both Louis Vuitton and Converse have highlighted the ITC as an alternative venue to the federal courts for high-pro le actions against allegedly infringing importers. As knockoff artists nd new ways to lure fash- ion consumers with copies and counterfeits, fashion houses will continue to exercise their creativity in law as well as design.
The fashion industry spends little on lob- bying compared to other economic sectors and is no more litigious—indeed, both its sen- sitivity to consumers’ fascination with fash- ion and sophisticated marketing » Page S19
BY SUSAN SCAFIDI
S avvy fashion executives realize that law plays a major role in the business of fashion—but some attorneys may not
be quite as attuned to the fact that the fashion industry is simultaneously exerting signi cant in uence on law.
Starting with the founding of fashion law as a distinct eld a little over a decade ago, we’ve de ned it as including the issues that may arise at any point throughout the life of a garment, starting with the designer’s dream and continuing all the way to the consumer’s closet. Intellectual property ownership, licens- ing deals, employment, sales and nancing, real estate leases, taxes and customs duties, advertising regulations, consumer safety, and dress codes are just a few of the issues that prompt designers to call their lawyers.
At the same time, fashion-driven regulation and litigation have effected changes in the law that go far beyond the industry itself. From the tragic Triangle Shirtwaist Factory re that led to sweeping labor reforms a century ago to vloggers and social media in uencers who have caught the eye of both fashion compa- nies and the Federal Trade Commission, fash- ion—and sometimes its transgressions—is a catalyst for legal change.
SUSAN SCAFIDI is a professor and the founder and academic director of the Fashion Law Institute, head- quartered at Fordham Law School.
Nowhere has fashion’s legal influence been more evident recently than in the area of intellectual property law, an ironic twist given that so many fashion designs notori- ously fall through the cracks of the intellectual property system, at least in the United States. Back in 2005, the Council of Fashion Design- ers of America set in motion fashion’s most recent attempt to join other creative media protected under the Copyright Act, but three- dimensional fashion designs continue to have signi cantly less protection under U.S. law than they do in many other countries. That legislation in its various iterations, however, was the most cutting-edge attempt to cre- ate a sui generis form of narrowly tailored, minimalist IP protection ever proposed, and it attracted attention even among many unfamiliar with the fashion industry. Both imported procedures like heightened plead- ings and concepts cut from whole cloth like the bill’s home sewing exception are likely to play a role in future conversations.
While legislation regarding fashion design protection may not be in style in the cur- rent Congress, across town the U.S. Supreme Court is preparing to take up one of the most abstract concepts in copyright law, concep- tual separability, prompted by the original defendant’s appeal in Star Athletica v. Varsity. This case involving the color-blocked designs on tops and skirts marketed to cheerleaders may harmonize what the Sixth Circuit iden- ti ed as some nine different academic and judicial formulations of the test for conceptual
separability, to which the majority added its own hybrid version.
The result will be particularly important to fashion designers who, in the absence of more comprehensive protection for their work, rely on copyright in two-dimensional fabric prints and surface designs and other “features that can be identi ed separately from, and are capable of existing independently of, the utili- tarian aspects of the article,” in the words of the statute. Conceptual separability as a concept, however, may apply to any “useful article,” including many consumer goods far beyond the realm of fashion.
Patent principles, too, are being in uenced by voices from throughout the fashion indus- try. Last year’s U.S. Supreme Court decision that patent royalties may not extend beyond the term of the patent, for example, was courtesy of Kimble v. Marvel. The wearable technology that was at issue allows Spider- Man cosplayers and fans of all ages to shoot arti cial webs from their wrists, like the comic hero, but the court’s self-described exercise of “great power” and “great responsibility” also has great impact across the spectrum of innovation. As the wearable tech sector grows to a projected $25 billion by 2019, it is likely that fashion industry stakeholders will weigh in on patent developments more often.
Design patents, once an esoteric subspe- cialty but now the site of a billion-dollar battle between Apple and Samsung, are already the target of deliberate fashion industry efforts to influence the evolution of law. At least
iSTOCK