To qualify for protection as trade dress, a design must show acquired distinctiveness and non-functionality (either utilitarian or aesthetic). This is possible. In Miche Bag v. Marshall (2010) the handbag producer successfully won protection for removal shells that went over the bag. They were considered non-functional when combined with the other elements of the bag’s design. But clothing and particularly dresses rarely pass this test.
Design patents are “probably the most fruitful area of protection in fashion,” said speaker Louis S. Ederer of Arnold & Porter. Fellow speaker Barbara Kolsun of shoe brand Stuart Weitzman described how she files several design patents every year. The problem is they are expensive ($6,000 to $8,000), time limited and take 12 to 18 months to be registered. So Stuart Weitzman only files design patents for shoe models it thinks will still be big sellers two years from now, beyond the normal fashion cycles.
“When you do get protection it’s great,” said Kolsun. “I call it a ‘bingo’—you normally write your cease and desist letter and get your money in pretty short order.”
Copyright is difficult to get for fashion items unless you can show the design is separable from its functional role. While Kolsun gave examples of two belt buckles that succeeded in getting copyright protection, few other items of clothing have been successful.
There was great optimism at the end of last year when the Senate Judiciary Committee approved a bill to extend copyright to the fashion industry. But for the fourth time in five years (similar bills were introduced in 2006, 2007 and 2009) it has got stuck in committee. “The problem is that there is a split within the fashion industry and even within brands themselves about the benefits of being able to copy designs,” said speaker Anne Gilson LaLonde of Gilson on Trademarks. “Many of the big brands have bridge or diffusion lines and they genuinely don’t know if a law like this would hurt that side of the business.”
