Safe protection/safe inspiration: IP law for fashion designs – Lexology

This is one of the better overviews I have read of the current state of the art with fashion IP protection.

Given how cannibalistic design can be, it is increasingly important that designers remain as au courant with forms of intellectual protection of their work and how to best protect it.

I found the section on trade dress particularly well-written, especially in light of the recent court decisions about Christian Louboutin’s ‘red-soled shoe’ marks.  Louboutin’s legal issues with his shoes to me highlights why designers should find a lawyer they feel comfortable with and ake sure their work is adequately protected.

Safe protection/safe inspiration: IP law for fashion designs – Lexology.

Back to S 3523: What Is Trivial?

I actually really wanted to write a little about Design Thinking, which seems to be making massive inroads into modern business, particularly software. But Since Senate Bill 3523, the”Innovative Design Protection Act of 2012” passed the Judiciary Committee, it’s more important to poke at this a little more.

There are several critical points in this bill that should concern you, indie or emerging designer. One of the first is this one:

“REVISIONS, ADAPTATIONS, AND REARRANGEMENTS.—Section 1303 of title 17, United States Code, is amended by adding at the end the following: ‘‘The presence or absence of a particular color or colors or of a pictorial or graphic work imprinted on fabric shall not be considered in determining the protection of a fashion design”

Translation into Fashion Speak: an actual Graphic T is not protected, but the graphics used on the T are covered under existing provisions in Title 17, so knocking off the graphic itself is still a bad idea, but under the above provision you could conceivably still mimic the graphic placements and color usage. (Note, I’m saying what you could possibly do. I am not recommending this as a good idea, even with today’s laws.)

Then we get to this:

“(11) In the case of a fashion design, the term ‘substantially identical’ means an article of apparel which is so similar in appearance as to be likely to be mistaken for the protected design, and contains only those differences in construction or design which are merely trivial.’’; and (3) by adding at the end the following:
‘‘(c) RULE OF CONSTRUCTION.—In the case of a fashion design under this chapter, those differences or variations which are considered non-trivial for the purposes of establishing that a design is subject to protection under subsection (b)(8) shall be considered non-trivial for the purposes of establishing that a defendant’s design is not substantially identical under subsection (b)(11) and section 1309(e).’’.”

This gives me serious pause because what I really want to know is what is defined as ‘trivial’, and who gets to make that decision?  Does this mean that the placement of graphics or prints are regarded as ‘trivial? Or are they nontrivial?

Are changes of materials considered to be trivial or nontrivial? What exactly is being protected here with this Bill? Is it changes of seam placement, overall look and feel, materials, graphics, prints, trims, types of sleeve, neckline, hem length? Is it trivial or nontrivial to take the same dress body you saw on the runway, slightly change the cuff and collar, change the materials and colors, and the hem length?

The thing is, as any technical design knows, designs often have to be changed (slightly to a lot) after you get them from your line designer. The reason you have to change them is to make them manufactureable by your factory facilities. Not all factories have the same abilities/machines/etc, so it’s your job, technical designer, to develop your spec pack so that your factory can manufacture the line designer’s design to your company’s first cost requirements. This may mean moving seams, straightening out a seam, removing a seam, changing cuffs, collars, changing trims, knocking out colors, changing techniques, and so on.  Are these trivial or nontrivial changes?

And I really want to know who will be the defining body that determines what is a trivial versus a nontrivial change.

For example, I had a style of mitten in my design repertoire that was wildly popular. I did that basic body in many colors, materials and with various insertions and applied trims. The mitten body style was the same (I used the same line art to start with every time) but according to our sales force, each change to that body made it a new style.  To the factory and production team, a material change was non-trivial, so that I might have 5 styles all built off the same mitten body, but run in 5 different textiles. To the untrained eye, looking at all five mittens all made up in the same shade of pink, they would largely look like the same mitten.  Or maybe I changed the lining material – this was also regarded as a nontrivial change and was a new style. It was nontrivial because every change made changed the first cost of the mitten style.  This definition of nontrivial makes sense, it’s a bottom line decision.

What is going to be trivial versus nontrivial in this Bill?

There’s no clear understanding of that, and to me that’s very scary. It means that whoever has the most money to pay for lawyers (and to perhaps contribute to select political campaigns) will end up determining what is ‘nontrivial’ and what is ‘trivial’. And you can bet that the deep pockets will determine that everything is nontrivial and hence protected.

It follows then that S3523 will either force massive innovation in Fashion, or else it’ll be a massive wet blanket on the industry. My bet would be the latter, because if this bill passes, it means more the possibility of increased law suits and the eventual reduction of the kinds of styles and numbers of styles being produced, by fewer number of fashion houses because small designers will simply not be able to afford infringement lawsuits. The bill may give insurance companies a happy little bonus, though, because odds are they will come up with some form of malpractice insurance.

Got Innovation? Senate Bill S3523 and You

Another term that gets abused a lot is some form of the word innovation. For example, Senate Bill S3523, which states right in the middle of the actual filing that it should be cited as the “Innovative Design Protection Act of 2012.”

Can I just say here having read the entire bill I’m not sure where the innovation lies, but that’s actually beside the point. More to the point, our ‘friends’ in congress have sent down something that is potentially very dangerous for the small and emerging design houses out there, should our bad boys and girls in Congress vote this bitch into law.

Why? Well, let’s do a for-example. You’re a small designer, and all you want to do is create things. You’ve come up with an epic design for Fall 2013 and you spend your life savings (or some fraction thereof) getting it produced. You aren’t worried about the expense because it’s going to be a slamdunk style that everyone is going to want. Which proves to be true but….suddenly, like a leviathan out of the deep, one of the big design houses sends you a cease-and-desist letter. You are infringing on their copyrighted T-shirt-with-one-red-sleeve-and-one-blue-sleeve that they produced first in Fall of 2010.

And suddenly all the cash you sank into your T-shirt-with-one-red-sleeve-and-one-blue-sleeve-with-a-rhinestud-motif is about to be lost without a chance of recovery because you have to address this supposed infringement right now – and that usually means removing all of your T-shirts from sale until it’s established you did or did not infringe.

There’s a clause pretty early in the bill, that says “provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.’ My emphasis, because this is the first point in the bill (on line 21 if you’re interested) where my antenna go up.

Because here’s the thing, you know who decides what’s ‘unique’, ‘non-trivial’, and ‘non-utilitarian’? It’s not going to be a fashion designer. It will be a lawyer or lawyers and one or more judges. There may be an ‘expert witness’ or two but odds are good it’s not going to be your expert witness.

But, you say, my design is completely different. The left sleeve is red and the right sleeve is blue, and the body is white, and I put this cute rhinestud motif of fireworks on the chest. Their design has a red sleeve on the right and a blue sleeve on the left, and the color palette is completely different. Their colors have brownish tones to them and uses an old color palette. Mine have blackened tones. Anyone can see they’re completely different.

Well, maybe another designer. And maybe not even all of those. Remember Louboutin v. YSL? Please bear in mind, though, your copyright infringement case will be decided not by other design practitioners but by lawyers. The odds are really good they will not be able to look at a T-shirt and see the more or less subtle difference in color variation. I’m not slamming lawyers – the ability to see color and color range is genetically determined, and your diet and lifestyle have an impact on it as well. Some of us are better then colorimetric machines at seeing very slight differences in colors (guess which of us get to do lab dip approvals?) but most people do not/can not see the difference in color.

Will your design be ‘unique’ enough by switching color on the sleeves and adding the rhinestud? The color shift and the change of placement is certainly utilitarian, but is it unique and non-trivial? I’ve personally never designed a shirt with two different color sleeves, but there’s no doubt in my mind that there are designers out there who have. It’s going to be a Solomonic task to determine what is “unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.”

In the meantime, back to you, my friend, with your container of T-shirts sailing over to your warehouse.  You are in an interesting position. You have to prove you are innocent of copyright infringement before you can sell your expensive design run. That means you have to hire a lawyer. You’re a small house and unless you are being bankrolled by a lawyer or by someone with very deep pockets, the odds are that defending a single copyright infringement lawsuit will prove so costly it will drive your company out of business.  To the bigger houses, the ones with in-house counsel, it’s one of many suits their lawyers are prosecuting.

Fashion works on a two-year cycle. There’s a wonderful monologue by Meryl Streep in the Devil Wears Prada about how fashion and style gets interpreted and commodified for the different fashion markets. Suffice it to say a 3-year protection for fashion would disrupt this cycle, to the financial betterment of the larger houses, but to the detriment of the smaller houses.

I’m not a lawyer, and I don’t play one on TV. I admire how they’ve been taught to think. But I’m also jaded and cynical on top of being educated.  Looking at this one scenario, I have to wonder who Senate Bill 3523 is really supposed to ‘protect’?

Senate Bill S3523 is sponsored by Charles Schumer, who is a NY congressman and who has a deep base in New York City, a global fashion mecca. Schumer was guided by members of the Council of Fashion Designers of America. CFDA members are well-heeled–it’s an expensive organization to join. Do you see a trend here?

Even if I didn’t know the background of the active players, this bill still reads ‘protect the rich’ to me. It’s not intended to protect the small houses, who aren’t going to be able to foot the expensive legal bills to prosecute or defend their design. If S3523 gets passed into law, it’s going to be even more challenging for a small design house to do business.

Oh yeah, and this idea that this bill is innovative? I’m not sure how, quite honestly, other than to attempt to change some specific language in Title 17 of the United States Code. There’s some other specific language in the Bill that is even more disconcerting to me as a technical designer, and showed me that this Bill was framed by non-practitioners. It’s not innovative either, and I think it actually works to stifle innovation. But we’ll look at that another day.

* PS, don’t Google Rhinestud. At least not in the office. It’s not pretty. I had no idea.