--- Revisions to the Design Piracy Protection Act for the 111th Congress ---
Over the past two years the Council of Fashion Designers of America (CFDA) reached out to apparel manufacturers in order to address some concerns they had raised about the bill and make the bill even more narrowly tailored. In addition, CFDA members also support tightening the bill language. CFDA suggests the following changes to the bill introduced last Congress.
§ 1301. Designs protected
An additional sentence as been added to the definition of “fashion design” in section (b)(7) to make clear that “Protection applies to original elements or the original arrangement or placement of original or non-original elements as incorporated in the overall appearance of an article of apparel.”
The categories of “wallets, duffel bags, suitcases” have been added to the definition of “apparel” in (b)(9).
It has been clarified that copying a trend does not infringe the protection granted under the bill. The term has been defined in a new (b)(10). “ In the case of a fashion design, the term “trend” means a newly popular concept, idea and/or principle expressed in, or as part of, a wide variety of designs of articles of apparel that create an immediate amplified demand for articles of apparel embodying that concept, idea and/or principle. In no way shall this definition permit the copying of a discrete design protected by this chapter.”
§ 1302. Designs not subject to protection
The number of months that the designer or owner of a design must file for protection once the design has been made public has been lengthened from 3 to 6 months to provide adequate time for registration.
§ 1303. Revisions, adaptations, and rearrangements
A sentence has been added to make clear that “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 originality of a fashion design under sections 1301, 1302 or 1303 or the similarity or absence of similarity in determining infringement under section 1309.”
§ 1309. Infringement
In (e) the standard of infringement has been changed. In order to infringe a copy must be “closely” and substantially similar. The copying of trends and the doctrine of independent creation has been included as defenses to infringement.
“In 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, if it merely reflects a trend or if it is the result of independent creation.”
§ 1310. Application for registration
In (a) it is reiterated that protection will be lost if the application for registration is not made within 6 months after the date the design is first made public.
In (d)(6) a requirement that a description of the design be included with the registration application.
“In the case of a fashion design, the Administrator shall require a brief description of the design for purposes of matching the search criteria of a searchable database; however, such brief descriptions shall in no way limit the protection granted to the design or the subject matter of the registration.”
§ 1327. Penalty for false representation
New language Increases the penalty for false representation for fashion designs to $5,000 and not more than $10,000 from $500.00 and not more than $1,000.
(b) “Whoever knowingly makes a false representation materially affecting the rights obtainable under this chapter for the purpose of obtaining registration of a fashion design under this chapter shall pay a penalty of not less than $ 5,000 and not more than $ 10,000, and any rights or privileges that individual may have in the design under this chapter shall be forfeited.”
§ 1333. Searchable electronic database for fashion design
This section directs the creation of a computerized database of designs submitted for registration, searchable by the public and authorization of appropriations for that purpose.
(a) “DATABASE: The Administrator shall establish and maintain a computerized database that is searchable electronically by the public without fee or other access charge, using general apparel and accessory categories and that shall include the information required by section 1310(d)(1)-(4) and (6) of this chapter. The database shall contain a substantially complete visual representation of all fashion designs that have been submitted for registration. Such database shall include information as to the status of those designs, such as whether such designs are
(1) registered, pursuant to § 1313(a);
(2) denied registration, pursuant to § 1313 (b);
(3) cancelled, pursuant to § 1313(c), or
(4) expired, pursuant to § 1305.
(b)Authorization of Appropriations- There are authorized to be appropriated such sums as may be necessary to carry out this section
--- The Summary ---
In spite of the general rule excluding copyright of "useful articles", in 1998 Congress passed an amendment to the Copyright Act to provide limited statutory protection for useful articles. The first design enumerated for this protection was the design of a vessel hull. Our proposed bill, introduced as the Design Piracy Prohibition Act (HR 2033) in the 110th Congress by Congressman Bill Delahunt, amends the underlying vessel-hull language to extend the protection it provides to unique and original articles of apparel.
The Design Piracy Prohibition Act:
The bill proposes exactly what Congress provided in the Vessel-Hull law EXCEPT THAT it only seeks three (3) years protection instead of the ten (10) years current law grants vessel hull designers. By way of comparison, Europe protects registered fashion designs for 25 years.
The bill supporters are committed to the fact that inspiration has been a part of the industry's creative process from the beginning. Under the statute "a design cannot be granted protection if it is staple or commonplace, standard, prevalent or ordinary, or different only in insignificant details or elements." The bill is intended to capture ONLY those original designs that are truly unique.
The Design Piracy Prohibition Act would bar third parties from manufacturing or importing for sale or use in trade protected designs. The protection is qualified by exclusions for sellers and distributors who act without knowledge and for reproduction for teaching or analysis. In addition there are other broad general exclusions for acts without general knowledge.
The goal is to further perfect the drafting of the bill and ensure that it completely allows for inspiration and trends, while keeping the language tight enough that it protects against a pirate taking a design and making an actual copy. The concept is that a design should 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".
--- The Specter of a Proliferation of Law Suits ---
Naturally no area of intellectual property has a bright line rule or an encyclopedic resource that distinguishes between what is a copy and what is not. In the case of fashion design, it depends on the overall appearance of the article as well as on distinctive details. It is no different from a song or a book.
That being said, there are several features of the bill which will avoid frivolous law suits, such as the exclusion from any protection of design staples (e.g. a white, button-down shirt, or bell-bottom pants) which are commonplace, lacking in originality, and essentially part of the public domain.
The best answer to those afraid of a proliferation of law suits is to refer to what happens in Europe. The level of litigation there is very low because the highly protective legislation acts as a deterrent and very few cases are brought to Court. Statistics concerning fashion design infringement litigations in the Courts of Appeal of France show that these litigations are rare. Out of some 308 appeal cases concerning infringements of protected designs in 2005, only 10 concerned registered designs in the fashion category
We fully expect that the legislation will act as a powerful deterrent in this country as well. Our conversations with leading retailers indicate that as soon as design piracy will be illegal, they will actively enforce its ban in their stores.
--- The Bill ---
To amend title 17, United States Code, to provide protection for fashion design.
Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the `Design Piracy Prohibition Act'.
SEC. 2. PROTECTION FOR FASHION DESIGN.
(a) Designs Protected- Section 1301 of title 17, United States Code, is amended--
(b) Designs Not Subject to Protection- Section 1302 of title 17, United States Code, is amended in paragraph (5)--
(1) by striking `(5)' and inserting `(5)(A) in the case of a design of a vessel hull,';
(2) by striking the period and inserting `; or'; and
(3) by adding at the end the following:
(B) in the case of a fashion design, embodied in a useful article that was made public by the designer or owner in the United States or a foreign country more than 3 months before the date of the application for registration under this chapter.'.
(c) Term of Protection- Section 1305(a) of title 17, United States Code, is amended to read as follows:
(d) Infringement- Section 1309 of title 17, United States Code, is amended--
(1) in subsection (c), by striking `that a design was protected' and inserting `or reasonable grounds to know that protection for the design is claimed';
(2) in subsection (e), by inserting `or from an image thereof,' after `copied from a design protected under this chapter,'; and
(3) by adding at the end the following new subsection:
(h) Secondary Liability- The doctrines of secondary infringement and secondary liability that are applied in actions under chapter 5 of this title apply to the same extent to actions under this chapter. Any person who is liable under either such doctrine under this chapter is subject to all the remedies provided under this chapter, including those attributable to any underlying or resulting infringement.'.
(e) Application for Registration- Section 1310 of title 17, United States Code, is amended--
(f) Examination of Application and Issue or Refusal of Registration- Section 1313(a) of title 17, United States Code, is amended by striking `subject to protection under this chapter' and inserting `within the subject matter protected under this chapter'.
(g) Recovery for Infringement- Section 1323(a) of title 17, United States Code, is amended by striking `$50,000 or $1 per copy' and inserting `$250,000 or $5 per copy'.
(h) Other Rights Not Affected- Section 1330 of title 17, United States Code, is amended--
(1) in paragraph (1), by striking `or' after the semicolon;
(2) in paragraph (2), by striking the period and inserting `; or'; and
(3) by adding at the end the following:
(3) any rights that may exist under provisions of this title other than this chapter.'.
--- The Testimony of Jeffrey Banks ---
Testimony of Fashion Designer Jeffrey Banks
Before the Subcommittee on Courts, the Internet and Intellectual Property Committee on the Judiciary
U.S. House of Representatives
Hearing On H.R. 5055, "The Design Piracy Prohibition Act"
July 27, 2006
Good morning Chairman Smith, Ranking Member Berman, Representatives Goodlatte and Delahunt and other Members of the Subcommittee. I am pleased to be here today on behalf of the Council of Fashion Designers of America. The CFDA is a not-for-profit trade association of America's fashion and accessory designers. The CFDA works to advance the status of fashion design as a branch of American art and culture and to help elevate this important American industry.
I got started in the fashion business at the age of 15, working right here in Washington, where I was born and raised, as a salesman at the menswear store Britches of Georgetown. Sadly, Britches is no longer in business, but for those of you who have been here for a time, you'll remember that it was once a Washington icon. Back then, I was probably one of the only high school students in Washington with subscriptions to Daily News Record and Womens Wear Daily but even as a young teen, fashion was my passion. I left DC three weeks after graduating high school, began working as Ralph Lauren's assistant, and started college that fall. I graduated from the Parsons School of Design and after working with Calvin Klein for one year, I opened my own menswear label at the age of 22. I come to speak to you today with over 30 years experience in the United States fashion industry.
Much in fashion has changed during those 30 some years. For one, fashion has grown into a very significant and important US industry, generating approximately $350 billion in the United States each year and supporting the printing, trucking, and distribution, advertising, publicity, merchandising and retail industries as well. And of course, all the industries which support the production and dissemination of men's and women's fashion magazines. Although New York is often thought of as the U.S. fashion capital because fashion is the 2nd largest money-making business in the city, after the stock market, with the exponential growth of America's fashion and design industries other fashion centers have come into existence across the country --- Los Angeles, Dallas, and Atlanta come to mind. That wasn't the case 30 years ago, when most of the fashion in the United States was copied from the European fashion centers of Paris and Milan. Back then there weren't multitudes of talented young American designers generating their own original designs as there are today. The fashion industry in the last few years in America has become a very significant influence in trends and the way the fashion industry is perceived by consumers. American style. American design. It has meaning. And it has value.
This wonderful home-grown industry is really made up of thousands of American small businesses. We're all entrepreneurs who pursue our fashion with the hope of designing something that will catch on and capture the imagination of U.S. consumers. Success that starts in all of our individual design studios, grows opportunities all across the countryä there are fabric manufacturers, printers, the people who produce paper for making patterns, the shippers who ship the merchandise, the truckers who truck, design teams, fabric cutters, tailors, models, seamstresses, sales people, merchandising people, advertising people, publicists, those who work for retailers. In short, this is a big employment business today.
The other most significant change in the industry in the past decade is technological. Just as the internet has transformed our sister creative industries like music, books and motion pictures, creating opportunities as well as problems, it has transformed fashion and not always for the better. In the blink of an eye, perfect 360 degree images of the latest runway fashions can be sent around the world. And of course, they can be copied. And that copying, coupled with the importance of the fashion industry to America, is the main reason that I sit before you today.
Fashion design piracy has become a blight that affects all who depend on the U.S. fashion industry. It robs American workers of their livelihood, which is why the CFDA is working in an alliance with industry partners such as Harper's Bazaar and eBay, among others, to raise the profile of this massive problem. Other countries have recognized the problem and provided protection for fashion design to help counter design piracy. The United States is the only developed country that does not protect fashion in its laws. We want to thank Representatives Goodlatte and Delahunt for recognizing this inequity and introducing H.R. 5055, the Design Piracy Prohibition Act, to remedy it. We also want to thank Chairman Sensenbrenner and Representatives Coble and Wexler, among others, for cosponsoring the measure.
H.R. 5055 would provide three years of protection to those designers who register their ORIGINAL designs with the Copyright Office. That is far less than the life of the author plus 70 granted to other copyrighted works. However, because of the unique seasonality of the fashion industry, we agree with Congressmen Goodlatte and Delahunt that a shorter term of protection is reasonable. That allows the designer time to recoup the work that went into designing the article and develop additional lines of ready-to-wear, etc. I will note, however, that in Europe most member states protect fashion for a term of 25 years, with registration. In Japan, it is 15.
We believe that passage of design protection would be a powerful deterrent to the pirates. In fact, I question how many lawsuits for infringement would actually ever be filed. Since registration of designs is mandatory in order for design protection to be granted, and only original, noncommonplace designs can be protected, I believe that designers will register very selectively. And retailers have told us that if the practice of fashion design piracy was illegal, they wouldn't engage in it. A law would have a powerful and much-needed effect on the market.
The Adverse Impact of Piracy on American Designers
I have heard some question whether fashion piracy actually harms the industry. A few have even suggested that it may help designers to have their works knocked off. I would like to respond to those questions with an emphatic "yes it does hurt the designer and the industry!" And no, far from helping the designer, design piracy can wipe out young careers in a single season. The young designers are the ones who are creating the new designs, which they have to have some way of protecting. Copying is stealing. As a movie and music aficionado, I would never dream of buying an illegal DVD or CD on the street. I respect the film and music industries much too much, and all of the people that work in them. Piracy is taking somebody's design, replicating it quickly, doing it so that nobody would know the difference between yours and theirs unless you are an expert at it, and sending it out as your own. That's clearly wrong and American law must address it.
The Congress has passed laws to protect against counterfeits. One in three items seized by U.S. Customs is a fashion counterfeit. Just this year, you made it illegal to traffic in the labels that are used in counterfeit goods. But a copy of a design is really a counterfeit without the label. If no design piracy existed, there would be no counterfeiting. Both must be addressed or else the small designer with no brand recognition is left defenseless to the problem of piracy, leaving only famous brands protected, and then only if the label is taken.
The fashion business is a tough business. With each new season, designers put their imagination to work, and they put their resources at risk. When I started my business, I started with a five thousand dollar loan from my family. You never would do that today. It takes tens of thousands of dollars to start a business. And every season when you go out to create, if you're creating original prints, original patterns, original samples that you have to go through trial and error, you are talking about thousands and thousands of dollars. Then if you go to put on a show, you can spend anywhere from fifty thousand dollars to a million dollars just to put on a show to show buyers and press what you're creating for that season. So, before you have even received your first order, you've spent thousands and thousands and thousands of dollars. Whether you are an accessory designer or a star designer creating men's, women's, children's lines, you spend many thousands of dollars before you see your first order.
Some designers make their names in haute couture, where they sell a very small number of rather expensive designs. While the designs are high priced, the designer frequently doesn't even recoup investment costs for the designs because he or she sells so few garments. Designers are able to recoup their investments when they offer their own ready-to-wear lines. They can lower the prices at which their designs are sold because they sell more of them. It's all based on volume. Design piracy makes it difficult for a designer to move from haute couture into ready to wear.
The Council of Fashion Designers of America is all about mentoring. We partner with Vogue to run a mentoring program for young designers --- offering on-going technical advice and business grants. A documentary, Seamless, was even made about it. (We are reaching out to you as much for the young designers as anyone else). The CFDA received tons of e-mails after the bill was introduced, saying, "thank you, I've been pirated."
Piracy Fueled by Technology
Copying, years ago, would take anywhere from three to four months to a year or more. But as I said, all that changed with new technology. So once a designer spends the thousands and thousands and gets to that runway show and then reveals a new and original design ≠ it can be stolen before the applause has faded thanks to digital imagery and the internet. Today, there are even software programs that develop patterns from 360 degree photographs taken at the runway shows. From those patterns, automated machines cut and then stitch perfect copies of a designer's work. Within days of the runway shows, the pirates at the factories in China and other countries where labor is cheap are shipping into this country those perfect copies, before the designer can even get his or her line into the retail stores. Since there is no protection in America, innovation launched on the runway ≠ or the red carpet ≠ is stolen in plain sight.
The famous designer with an established and substantial business might be able to withstand that assault, but it can absolutely derail the career of a young designer. Let me show you a few examples of the type of copying that I've been describing ≠ these photos are included in my testimony. At this year's Golden Globes, Desperate Housewives star Marcia Cross wore a stunning coral gown designed by young designer Marc Bouwer. Within days a famous manufacturer renowned for its copying of dresses of the stars had shipped an exact copy to stores across the nation. This dress became that particular manufacturers' most popular selling prom dress of the year.
At the Academy Awards Felicity Huffman wore a black gown created by designer Zac Posen, a 25 year old designer from Manhattan who manufactures all of his designs there in the city. This time, a different manufacturer sold exact copies of the design and was bold enough to use the fact that Huffman wore the gown in his advertising. That's completely legal in the United States. And it prevents Marc Bouwer or Zac Posen from being able to develop the affordable ready-to-wear line of their own designs. They can't gain the volume to allow them to compete against the company that pirated their creations. And it dilutes their haute couture brands because nobody will spend thousands for a gown when it is available for hundreds in a department store. Without a law that makes it clear that design piracy is illegal, these pirates base their marketing strategy on all the free advertising they receive --- based on how good they are at copying! This is an example of the growth of one type of American fashion on the back of small business. That's just wrong, but it's all perfectly legal under U.S. law.
The Impact of Fashion Piracy on Consumers
Some have argued that protecting fashion will drive up costs, accessibility and ultimately harm consumers. I am deeply offended by this argument. In fact the same could be said for the protection of music, movies, software and books. If these works weren't protected by copyright, if new technologies weren't protected by patents, wouldn't prices come down for consumers? In fact, some of the very proponents of eviscerating protection for copyrighted works and limiting the copyright laws are now arguing against protecting fashion design.
If the fashion business is going to grow and provide more choices for consumers, we must understand that design innovation is the real leverage point for American companies ≠ both big and small. More competition and growth won't occur simply by everybody distributing the identical product around the world because copying isn't illegal. Growth won't occur because somebody can steal designer's creation and then go sell it for a third of the price. In the long term, lack of protection will shrink American businesses and mean the loss of American jobs.
Designers want to make their designs available at a variety of prices in a variety of stores. In the past few years we have seen a proliferation of partnerships between American designers and large American retailers ≠ even discount retailers. American designers are collaborating with retailers who realize the enormous benefit of an Isaac Mizrahi at Target, a Mark Eisen at Wal-Mart, or a Nicole Miller at JC Penny. Kohls is reported to be negotiating to sign Vera Wang. These stores have all seen the value of making the works of American designers available in their stores through licensing deals so that these designers get paid for their innovation and creativity. This proves that the real growth of American fashion is in the lower to mid price range.
Other retailers have gone a different path, not licensing, not even hiring in-house designers. They are skipping the use of their own designers in order to copy the work of others and make it available more cheaply ≠ this is done on the backs of the original designers. But design innovation -- in fact brands as we know them -- is an absolutely critical part of a free American economy. With extra labor expenses in the West, designers can't compete if low cost labor countries copy our designs. We have an investment in those designs ≠ they don't. We can't compete against piracy so the creativity and innovation that has put American fashion in a leadership position will dry up. Innovation is an investment but we can't innovate without protection against copying.
If we don't protect American fashion design creativity, we're going to lose all the advantages we've gained in the last ten years by now becoming a global industry, by now working side by side with Milan and Paris. There won't be any more L.A. Style which has become so hot around the globe. No Texas style. The wealthy will still be able to buy the designs originating out of Europe and Japan where protection exists. The rest of America will be left buying the cheap knockoffs of those European designs made in China and other places in Asia where labor is cheap. That will be bad for consumers who have enjoyed the growth of fashion choices in the U.S. And it will be sad for the workers employed by U.S. fashion industry when they no longer have jobs.
I ask that you not let that situation take place. Please pass a law to protect the creativity and innovation of American fashion design just as this subcommittee has done for America's other creative industries. Europe grants designs 25 years of protection. Boat hulls in this country receive 10. We only ask for three. Please pass the Design Piracy Prohibition Act this year. I thank you for your time and look forward to your questions.
Executive Summary of Testimony of Fashion Designer Jeffrey Banks on H.R. 5055, "The Design Piracy Prohibition Act" July 27, 2006
I am pleased to testify on behalf of the Council of Fashion Designers of America. The CFDA is a not-for-profit trade association of America's fashion and accessory designers.
The Growth of the U.S. Fashion Industry to a Big Employment Business In the last decade fashion has grown into a very important US industry, generating approximately $350 billion annually and supporting the printing, trucking, and distribution, advertising, publicity, merchandising, retail and magazine publishing industries as well. Thousands of young American designers, small businesses all across America, are generating their own original designs and creating jobs in all the industries that support fashion.
Technological Changes have Encouraged the Growth of Piracy
Because of the internet, perfect 360 degree images of the latest runway fashions can be sent around the world in the blink of an eye and then copied. Software programs develop patterns from photographs and automated machines cut and then stitch almost perfect copies of a designer's work. Within days of the runway shows, the pirates at the factories in China and other countries where labor is cheap are shipping into this country those copies, before the designer can even get his or her line into the retail stores. Since there is no protection in America, innovation launched on the runway ≠ or the red carpet ≠ is stolen in plain sight. Other countries have recognized the problem and provided protection for fashion design to help counter design piracy. The United States is the only developed country that does not protect fashion in its laws.
Fashion Piracy is Harming American Designers, Workers and Consumers Piracy can absolutely derail the career of a young designer and examples are abundant. Manufacturers selling copies of gowns worn at the Academy Awards are even bold enough to use the stars who wore the originals in their advertising. This piracy robs the designers of the opportunity to launch affordable ready-to-wear line of their own designs. They can't gain the volume to allow them to compete against the company that pirated their creations
In the past few years we have seen a proliferation of partnerships between American designers and large American retailers ≠ even discount retailers. Stores see the value of licensing deals so that these designers get paid for their innovation and creativity. The real growth of American fashion is in the lower to mid price range, but with extra labor expenses in the West, designers can't compete if low cost labor countries copy our designs. Without design protection there won't be any more L.A. Style which has become so hot around the globe. No Texas style. The wealthy will still be able to buy the designs originating out of Europe and Japan where protection exists. The rest of America will be left buying the cheap knockoffs of those European designs made in China.
H.R. 5055 Would Serve as a Powerful Deterrent to Piracy
The Design Piracy Prohibition Act would provide 3 years of protection to those designers who register their ORIGINAL designs with the Copyright Office. That is far less than the life of the author plus 70 granted to other copyrighted works but is reasonable given the unique seasonality of the fashion industry. Registration of designs is mandatory in order for design protection to be granted, and only original, noncommonplace designs can be protected. Designers will register very selectively. Retailers have told us that if the practice of fashion design piracy was illegal, they wouldn't engage in it. A law would have a powerful and much-needed effect on the market.
--- The Testimony of Susan Scafidi ---
Susan Scafidi Associate Professor of Law & Adjunct Professor of History, SMU Visiting Professor, Fordham Law School
Written Statement on H.R. 5055, "The Design Piracy Prohibition Act" presented to the Subcommittee on Courts, the Internet, and Intellectual Property U.S. House of Representatives
July 27, 2006
Chairman Smith, Representative Berman, and members of the Subcommittee, thank you for this opportunity to address the issue of intellectual property (IP) protection and fashion design.
Introduction and Executive Summary Historically, American law has ignored the fashion industry. While trademark law protects designer logos and patent law occasionally applies to innovative design elements, the Copyright Office has held that clothing design in general is not subject to protection. As a result of this legal and cultural choice, the United States has been a safe haven for design piracy.
Creative fashion designers over the past century have been forced to rely instead on social norms and makeshift means of defending themselves against copyists.
Today, global changes in both the speed of information transfer and the locus of clothing and textile production have resulted in increased pressure on creative designers at all levels, from haute cout ure to mass market. Digital photographs from a runway show in New York or a red carpet in Los Angeles can be uploaded to the internet within minutes, the images viewed at a factory in China, and copies offered for sale online within days - months before the designer is able to deliver the original garments to stores. Similarly, e-commerce is both an opportunity and a danger for designers, who must battle knockoff artists with ready access to detailed photographs and descriptions of their works. Young designers who have not yet achieved significant trademark recognition, and must instead rely on the unique quality of their designs to generate sales, are particularly vulnerable to such theft.
Despite America's role in promoting the international harmonization of intellectual property protection, the U.S. has not joined other nations in addressing the issue of design piracy and its effects on the fashion industry. The U.S.T.R. has repeatedly targeted the rising global trade in counterfeit trademarked goods, including apparel, but copies of a garment rather than its label remain beyond the reach of American law. H.R. 5055 is a measured response to the modern problem of fashion design piracy, narrowly tailored to address the industry's need for short-term protection of unique designs while preserving the development of seasonal trends and styles.
I. Historical Lack of Protection and Changed Circumstances The lack of protection for fashion design under U.S. law is an anomaly among mature industries that involve creative expression. This exclusion of fashion from the realm of copyright was not inevitable, but was instead the result of deliberate policy choices. Examining the historical and cultural reasons for the differential treatment of fashion design is thus important to understanding the changed circumstances that indicate a greater need for some form of protection today.
A. Theory and Reality: The Historical IP/Fashion Divide
1. Fashion design is part of the logical subject matter of copyright. While in the early days of U.S. copyright only books and maps were eligible for registration, the scope of protection has since increased to include painting, sculpture, textile patterns, and even jewelry design - but not clothing. Why has clothing been excluded from protection? The problem lies in a reductionistic view of fashion as solely utilitarian. Current U.S. law understands clothing only in terms of its usefulness as a means of covering the body, regardless of how original it might be. Surface decoration aside, the plainest T-shirt and the most fanciful item of apparel receive exactly the same treatment under copyright law. In fact, a T-shirt with a simple drawing on the front would receive more protection than an elaborate ball gown that is the product of dozens of preliminary sketches, hours of fittings, and days of detailed stitching and adjustment before it is finally complete. The legal fiction that even the most conceptual clothing design is merely functional prevents the protection of original designs.
Fashion, however, is not just about covering the body - it is about creative expression, which is exactly what copyright is supposed to protect. Historians and other scholars make an important distinction between clothing and fashion. "Clothing" is a general term for "articles of dress that cover the body," while "fashion" is a form of creative expression. 1 In other words, a garment may be just another item of clothing - like that plain T-shirt - or it may be the tangible expression of a new idea, the core subject matter of copyright.
Copyright law, of course, has a mechanism for dealing with creations that are both functional and expressive, although it has not been consistently applied to fashion designs. It is conceivable - and perhaps inevitable in the absence of specifically tailored legislation - that a court could invoke the doctrine of "conceptual separability" to distinguish between the artistic elements of a new fashion design and its basic function of covering the human body. Recent judicial treatment of a Halloween costume design follows essentially this course, noting that elements of a costume like a head or tail are at least in theory separable from the main body of the garment and thus potentially subject to copyright protection. 2 It would require only a small step to find that the uniquely sculptural shape of Charles James' famous 1953 "four- leaf clover gown" or Zac Posen's 2006 umbrella-sleeve blouse are conceptually independent of the human forms beneath them and thus copyrightable. Visual artists, too, have blurred the distinction between art and fashion by designing unique works of art in the shape of clothing.3
In short, fashion design is a creative medium that is not driven solely by utility or function. If it were, we could all simply wear our clothes until they fell apart or no longer fit. Instead, the range of new clothing designs available each season to cover the relatively unchanging human body - and the production of specific, recognizable copies - demonstrates that designers are engaged in the creation of original works.
From the perspective of theoretical consistency, then, the relationship between copyright law and fashion design is ripe for change. However, relying on the courts to take this step would be a lengthy and uncertain process, one that might ultimately require a Supreme Court decision to sort through conflicting precedents. The judiciary, moreover, does not have the authority to tailor intellectual property law to the specific needs of the fashion industry and the public, as would H.R. 5055 (discussed further in Section IV infra), but can only apply existing law. The most efficient and reflective way to secure copyright protection for the creators of fashion designs would be an act of Congress.
2. U.S. law does not support the economic development of the fashion industry. Despite the importance of creative fashion design to the global economy, and to many local economies within the United States, it still operates without the benefits of modern intellectual property protection.
In historical terms, the pattern of industrial development in the U.S. and more recent emerging economies often commences with a period of initial piracy, during which a new industry takes root by means of copying. This results in the rapid accumulation of both capital and expertise. Eventually the country develops its own creative sector in the industry, which in turn leads to enactment of intellectual property protection to further promote its growth. This was the pattern followed in the music and publishing industries, in which the U.S. was once a notorious pirate nation but is now a promoter of IP enforcement.
In the case of the American fashion industry, however, the usual pattern of unrestrained copying followed by steadily increasing legal protection is not present. This situation has led to multiple inefficiencies in the development of the U.S. fashion industry. In the legal realm alone, creative designers have borne the costs of a decades- long effort to craft protection equivalent to copyright from other areas of IP law, particularly by pressing the boundaries of trademark, trade dress and patent law. While each of these areas of intellectual property law offers protection to some aspects of fashion design, most notably logos used as design elements and famous designs that have developed sufficient secondary meaning to qualify for trade dress protection, the majority of original clothing designs remain unprotected. Even design patents, which can in theory protect the ornamental features of an otherwise functional object, are seldom useful in a seasonal medium like fashion. The result is a legal pastiche that is confusing, expensive to apply, and ultimately unable to protect the core creativity of fashion design.
Current U.S. IP law thus supports copyists at the expense of original designers, a choice inconsistent with America's position in fields of industry like software, publishing, music, and film. The most severe damage from this legal vacuum falls upon emerging designers, who every day lose orders - and potentially their businesses - because copyists exploit the loophole in American law. While established designers and large corporations with widely recognized trademarks can better afford to absorb the losses caused by rampant plagiarism in the U.S. market, very few small businesses can compete with those who steal their intellectual capital. In fashion, America is still a pirate nation; the future direction of the industry will be directly influenced by the absence or presence of intellectual property protection.
B. Cultural Explanations and Changed Circumstances
The differential treatment of fashion relative to other creative industries with extensive legal protection is the result of specific cultural perceptions and historical circumstances, many of which have now changed. While it is beyond the scope of this testimony to address the entire cultural history of the fashion industry, several recent developments are particularly important to understanding why a change in the law is appropriate at this time.
1. Fashion design is now recognized as a form of creative expression.
The origins of copyright law date back to the Enlightenment era, a period that also articulated the Western distinction between art and craft. As copyright developed and extended to include various forms of literary and artistic works, it continued to maintain the division between legally protected, high status "fine art" and mere "decorative arts" or handicrafts. The design and manufacture of clothing, which for most families was a household task, did not rise to the level of creative expression in the eyes of the law.
Even after fashion design became increasingly professionalized during the nineteenth century, with the development of both haute couture and ready-to-wear sectors, the U.S. failed to recognize its creative status. Contributing to this low valuation was fashion's association with women rather than men, a shift influenced by the Industrial Revolution. By the end of the nineteenth century, American sociologist Thorstein Veblen famously linked fashion with "conspicuous consumption," concluding that the role of the female was "to consume for the [male] head of the household; and her apparel is contrived with this object in view."4 Both the feminizing of fashion and the intellectual attention to consumption rather than production prevented the legal recognition of fashion as a serious creative industry.
Modern attitudes toward fashion design as a creative medium, however, have changed dramatically. Institutions from the Smithsonian to Sotheby's take fashion seriously, and organizations like the National Arts Club and the Cooper-Hewitt National Design Museum have recently added fashion designers to their annual categories of honorees. Even a Pulitzer Prize for criticism was awarded for the first time this year to a fashion writer, Robin Givhan of the Washington Post. It is inconsistent with this cultural shift for copyright law to deny fashion's role as an artistic form.
2. Creative design now exists at all price levels.
For most of the history of the fashion industry, a small group of elite, Parisian fashion designers dictated seasonal trends, and the rest of the world followed as best they could.
The privileged few were measured for couture originals, the relatively affluent bought licensed copies, and the majority settled for inexpensive knockoffs or sewed their own garments at home.
With the recent democratization of style, creative design originates from many sources and at all price levels. Fashion is now as likely to flow up from the streets as down from the haute couture, and reasonable prices are no guarantee against copyists. Some of the most aggressively copied designs are popularly priced; consider this summer's popular Crocs "Beach" style shoe at $29.99 and its battle with copies sold for as little as $10.00.
In addition, within the past few years high-end designers have shown an increasing desire to reach a wider audience and to collaborate with mass-market producers. Fashion houses are seeking to experiment with new ideas in their runway collections, then to provide customers with affordable versions in their diffusion lines, and finally to adapt the looks for a broad range of consumer needs and budgets. This trickle promises to become a flood, as Isaac Mizrahi's designs for Target are joined by Chanel designer Karl Lagerfeld's line for H&M, Mark Eisen's sportswear for Wal-Mart, and many others.
As a result of these changes, it is no longer necessary for the general public to turn to knockoffs in order to purchase fashionable apparel, as it might have been in past decades. Some creative work is simply affordable; in addition, creators of more expensive designs are now finding ways to enter the mass market as well. A change in copyright law to incorporate fashion would facilitate designers' ability to disseminate their own new ideas throughout the market, much the way copyright law allows book publishers to first release hardcover copies and then, if the book is successful, to print paperbacks.
3. The internet era calls for new strategies to protect creativity.
Creative fashion designers in earlier periods fought copyists by relying on strategic measures like speed and secrecy, the social norms of the industry, and perhaps patterns of consumer behavior. In the absence of copyright protection under U.S. law, these extralegal mechanisms were an important part of the fashion business.
Today, however, the same speed and accuracy of information transfer that affects the music and film industries is also having an impact on fashion. Would-be copyists no longer have to smuggle sketch artists into fashion shows and send the results to clients along with descriptions of color and fabrication. Instead, high-quality digital photos of a runway look can be uploaded to the internet and sent to copyists anywhere in the world even before the show is finished, and knockoffs can be offered for sale within days - long before the original garments are scheduled to appear in stores. Fifty years ago, design houses may have been able to impose somewhat successful embargoes on the press; now, such efforts are futile.
Similarly, the claim that knockoffs enhance demand for ever-newer luxury goods among status-seeking consumers, an economic argument dating back to at least 1928,5 fails to take into account the modern speed of production. Once upon a time it may have been that the adoption of a new luxury item by affluent trendsetters was imitated first by wealthy consumers, then by the middle class, and then in form of knockoffs by everyone else, at which point the fashion-forward would abandon the item and demand the next new thing - which producers were happy to provide. Today, however, this "fashion cycle" scenario is rendered obsolete by the fact that poor quality knockoffs can be manufactured and distributed even more quickly than the originals, leaving creative designers little opportunity to recover their investment before the item is already out of style. Even if the fashion cycle were ever sufficient to support the design industry, that is no longer the case.
As in other areas of creative production, the digital age should provoke a reexamination of the legal protection available to fashion design.
4. The future of American fashion is in creativity, not low-cost copying.
Textile and clothing manufacturing have historically played an important role in the American economy, driving the Industrial Revolution and supporting thousands of jobs.
With the increased harmonization of global markets and the January 1, 2005, dismantling of import quotas in this sector, however, it has become apparent that the U.S. can no longer compete with China and other centers of low-cost production on price alone. No matter how inexpensively the U.S. can produce knockoffs, other countries can manufacture much cheaper versions.
Instead, the future of the U.S. economy will rest on the ability to develop and protect creative industries, including fashion design. America leads the world in industries like music, film, and computer software, but our history as a pirate nation in the field of fashion has limited our influence in this area. Creative fashion design is a relatively young ind ustry in the U.S., albeit one in which there is growing interest among students choosing their careers. If this industry is to reach its full potential, now is the time to consider the impact of government policies, including intellectual property law.
II. Effects of Design Piracy
The lack of copyright protection for fashion design negatively affects both individual designers whose expressions are copied and the intellectual property system as a whole. As a law professor with a website dedicated to IP and fashion, I frequently receive messages from young designers whose work has been stolen or who hope to prevent the copying of their designs. It is with regret that I must repeatedly explain that while that law can protect designers' trademarks against counterfeiters, in the U.S. the actual designs are fair game for copyists.
A. Impact on Designers
Creativity is an intrinsic part of human nature, not a byproduct of the intellectual property system. Poets would continue to write, musicians to sing, and fashion designers to sew even if all copyright protection were eliminated tomorrow. While the concept of intellectual property is only a few hundred years old, archaeologists have recently discovered 100,000-year-old shell necklaces, which they interpret as the first evidence of human symbolic thinking.
The goal of the IP system, however, is not merely to ensure that authors put pen to paper or needle and thread to fabric, but to encourage and reward individuals so that they can continue to deve lop their ideas and skills in a productive manner. In other words, intellectual property law ideally serves as a tool for harnessing and directing creativity. For this reason, the Constitution empowers Congress "[t]o promote the progress of science and useful arts." It is this "progress" over time that is hindered by the lack of legal protection for fashion design.
Young designers attempting to establish themselves are particularly vulnerable to the lack of copyright protection for fashion design, since their names and logos are not yet recognizable to a broad range of consumers. These aspiring creators cannot simply rely on reputation or trademark protection to make up for the absence of copyright. Instead, they struggle each season to promote their work and attract customers before their designs are copied by established competitors.
Over the past century successive waves of American designers have entered the industry, but few fashion houses have endured long enough to leave a lasting impression comparable to the influence of French fashion. While it is difficult to quantify or even identify designers who give up their businesses, particularly for reasons of piracy, there is strong anecdotal evidence that design piracy is harmful to the U.S. fashion industry. Consider just two representative examples, one a historical snapshot from an early attempt to develop American fashion and the other from this year.
In 1938 Elizabeth Hawes wrote a best-selling critique of the fashion industry entitled Fashion is Spinach.6 In it, she chronicled her start working for a French copy house, the only job in the fashion industry available to a young expatriate American in the 1920s; her return to New York to design her own line; and her ultimate disillusionment with the tyranny of mass production and the ubiquity of poor quality knockoffs that undercut her own designs. She ultimately closed her business in 1940, but not before leaving a record of the perils of the industry for a creative designer.
From a legal perspective, little has changed in almost seventy years. Handbag designer Jennifer Baum Lagdameo co- founded the label Ananas approximately three years ago. A young wife and mother working from home, Jennifer has been successful in promoting her handbags, which retail between $200 and $400. Earlier this year, however, she received a telephone call canceling a wholesale order. When she inquired as to the reason for the cancellation, she learned that the buyer had found virtually identical copies of her bags at a lower price.
Shortly thereafter, Jennifer discovered a post on an internet message board by a potential customer who had admired one of her bags at a major department store. Before buying the customer looked online and found a cheap, line- for- line copy of the Ananas bag in lower quality materials, which she not only bought but recommended to others, further affecting sales of the original. While Ananas continues to produce handbags at present, this loss of both wholesale and retail sales is a significant blow to a small business.
Copying is rampant in the fashion industry, as knockoff artists remain free to skip the time-consuming and expensive process of developing and marketing new products and simply target creative designers' most successful models. The race to the bottom in terms of price and quality is one that experimental designers cannot win. Nearly every designer or even design student seems to have a story about the prevalence of copying, a situation that makes the difficult odds of success in the fashion industry even longer.
B. Design Piracy and Counterfeiting
Not only does the legal copying of fashion designs harm their creators, it also provides manufacturers with a mechanism for circumventing the current campaign against counterfeit trademarks. If U.S. Customs stops a shipping container with fake trademarked apparel or accessories at the boarder, it can impound and destroy those items. If, however, the same items are shipped without labels, they are generally free to enter the country - at which point the distributor can attach counterfeit labels or decorative logos with less chance of detection by law enforcement. I have personally witnessed the application of such counterfeit logos to otherwise legal knockoffs at the point of sale; after the consumer chooses a knockoff item, the seller simply glues on a label corresponding to the copied design. The continued exclusion of fashion designs from copyright protection thus undermines federal policy with respect to trademarks by perpetuating a loophole in the intellectual property law system.
III. Comparative IP Regimes and Fashion Design
While the U.S. has deliberately denied copyright protection to the fashion industry over the past century, other nations have incorporated fashion into their intellectual property systems - and have consequently developed more mature and influential design industries.
France in particular has treated fashion design as the equivalent of other works of the mind for purposes of intellectual property protection. French laws protecting textiles and fashion design date back in their earliest form to the ancien r�gime; these laws were subsequently updated and clarified in the early twentieth century. As a result, Parisian fashion designers have been able over the course of their careers to develop and protect signature design repertoires, which even after the departure of the founding designers can serve as a form of brand DNA for their design houses. The formal recognition of fashion design as an art form has thus helped maintain the preeminence of the French fashion industry and augmented the lasting creative influence of both native designers and those who have chosen to work in France.
The association between strong intellectual property protection and a successful creative industry has not been lost on other countries that sought to support their domestic design industries. As long ago as 1840 a British textile manufacturer wrote, "France has reaped the advantage of her system; and the soundness of her view, and the correctness of her means, are fully proved by the results, which have placed her, as regards industrial art, at the head of all the nations of Europe, in taste, elegance, and refinement."7 While modern French law still offers the most extensive protection to fashion design, Japan, India, and many other countries have incorporated both registered and unregistered design protection into their domestic laws. In addition, E.U. law has since 2002 provided for both three years of unregistered design protection and up to 25 years of registered design protection, measured in five-year terms.
The global legal trend toward fashion design protection has rendered the U.S. an outlier among nations that actively support intellectual property protection, a position that is both politically inconsistent and contrary to the economic health of the domestic fashion industry.
Congress should take these factors into account when considering a reasonable level of legal protection for fashion design.
IV. The Role of H.R. 5055
When analyzed in light of the goals of the intellectual property law system, current challenges to the U.S. fashion industry, and international legal developments, H.R. 5055 is a carefully crafted legal remedy to the inequities resulting from the exclusion of fashion design from copyright law. The bill is narrowly tailored to achieve a balance between protection of innovative designs and the preservation of the extensive public domain of fashion as an inspiration for future creativity. Perhaps most importantly, it is a forward-looking measure that lays the groundwork for the future development of a robust, creative American fashion industry.
The fashion industry's decision not to seek full copyright protection, but instead to request only a limited three-year term, is particularly appropriate to the seasonal nature of the industry. This period will allow designers time to develop their ideas in consultation with influential editors and buyers prior to displaying the work to the general public, followed by a year of exclusive sales as part of the designer's experimental signature line, and another year to develop diffusion lines or other mass- market sales. While many legal scholars have aptly criticized the full term of copyright protection as excessive when viewed solely in light of an incentive-based rationale, a three-year term chosen after careful analysis of the relevant industry is exactly the sort of scheme that "low protectionist" activists have endorsed for copyright as a whole. Such a short term of protection will simultaneously encourage designers to facilitate affordable access to cutting-edge design and contribute to the ongoing enrichment of the public domain.
The choice to amend the Copyright Act, rather than to modify the design patent system or devise a sui generis scheme involving prior review, is also well suited to the needs of the fashion industry. The bill appropriately recognizes that the short lifespan of new fashions is inconsistent with burdensome legal formalities. Indeed, I would suggest that unregistered protection would be even more consistent with the U.S. copyright system, existing European design protection, and the needs of the industry, particularly inexperienced designers. Nevertheless, the establishment of registered design protection is an improvement over the current state of the law.
The language of H.R. 5055, particularly if amended to clarify that only "closely and substantially similar" copies will be considered to infringe upon registered designs, is likewise well crafted to both promote innovation and preserve the development of trends. As with other forms of literary and artistic work, copyright law is clearly capable of protecting specific expressions while allowing trends and styles to form. From a legal perspective, a fashion trend is much like a genre of literature. Granting copyright to a John Grisham novel does not halt the publication of many similar legal thrillers, nor does the protection of Dan Brown's DaVinci Code prevent a spate of novels involving Mary Magdalene or the Knights Templar from appearing in bookstores. When an author writes a bestseller, imitators of his or her style tend to follow - but they are not permitted to plagiarize the original. Copyright in this sense is merely a legal framework that supports an existing social norm; neither reputable authors nor creative fashion designers engage in literal copying of one another.
The level of generality at which fashion trends exist, moreover, is far too broad to be affected by the proposed bill. To paraphrase next month's Vogue magazine, currently on the newsstand, red will still be the new black following the passage of H.R. 5055. In the same way, common trends such as wide neckties in the 1970s or casual Fridays in the late 1990s were not dependent on the presence or absence of design protection, nor would such nonspecific ideas ever be subject to intellectual property protection.
In addition to the protective benefits of H.R. 5055, the legislation may have a beneficial effect on creativity in the industry as a whole. Former copy houses, no longer able to legally replicate other designers' work, will be forced to innovate or at least transform their work so that it no longer substantially resembles the original products. This in turn can be expected to lead to more jobs for design professionals and more reasonably priced choices for consumers.
At present, the bulk of design-related litigation tends to invoke federal trademark and trade dress as well as state unfair competition claims in order to mimic the protections that would be offered by H.R. 5055, with limited success. To the extent that fact-based disputes regarding copying continue to arise, the new legislation will permit parties to engage in more straightforward, simpler litigation. Not only will this avoid the unnecessary distortion of trademark and trade dress law, but it will also clarify the parameters of what constitutes protected design. As in other creative industries governed by intellectual property law, an equilibrium will arise and manufacturers will find it in their best interests to offer retailers innovative rather than infringing work.
H.R. 5055 promise
Title 17 - Copyrights
--- Comments from the Arts of Fashion Foundation President ---
July 16, 2009
Nathalie Doucet, President - Former fashion designer and internationally recognized educator who has taught literally hundred of young designers in the US.
The Arts of Fashion Foundation has long been an advocate in the development of copyright laws to protect designers. You may not know it, but piracy is an incredibly huge issue that is causing disastrous effects on fashion industry. Large corporations blatantly steal the original ideas of designers and often sell them in stores even before the designer does.
These large corporations are using two strategies:
First, they pay regular visits to members of Congress to convince them that the bill would cause to the industry.
Second, they have succeeded in amassing a constituency on line through a true “viral” campaign through blogs and websites.
The main character behind this online campaign is a pattern-maker - not a creative fashion designer - through her website and a notorious anti-copyright blog, they are luring people to join in on their bandwagon through misinformation. Dozens of letters have gone to Congressmen from supposedly aspiring independent designers, many of whom are working for “majors.” The “majors” are the Seventh Avenue Companies whose design investment consists only of sending these young “designers” on Madison Avenue with a credit card to buy the clothes that they are going to plagiarize.
The Design Piracy Prohibition Act will encourage large corporations to invest and work WITH true designers rather than to steal their ideas and creations. This will not affect the affordability of clothing; rather, it will put an end to the piracy industry and replace that with good, honest, hardworking and qualitative professional designers. As you can imagine, fashion students and their parents have invested so many resources in the development of their education. This Act will allow young professionals to have access to the creative positions that they deserve, and be recognized for their work. It will stimulate them to develop their own designs and be independent. This will secure their future, because they know their business will be protected. The Arts of Fashion Foundation is affiliated with numerous fashion universities in the United States and many truly authentic aspiring designers who desperately need this bill to pass.
The passing of this Act will push corporations to rethink and regulate their current standards of copyright, in order to avoid any legislative action or negative publicity. It will only help to end the productions of copycats, rather than to generate numerous pointless lawsuits. This is what has happened in every other industrialized country upon the passing of their copyright laws. Japan, after the end of the war, spent years copying the designs of others; but at the end of 1970s, their designers were able to finally develop their own creative styles, taking European fashion by storm, and thus adopting the copyright laws. China today is headed in the same directions, with great creative designers such as Ma Ke. Why, has the United States, who had created a huge fashion industry throughout the century, still have not developed copyright laws that protect their own fashion designers/ thinkers/ researchers?
With the Design Piracy Prohibition Act, the United States will stand with revolutionary fashion in the coming years through the creative potential of their young designers. This will give to the US fashion industry a true future.
How to help—
Please sign this petition
Then if you feel comfortable, please write to members of Congress, blog on Stop Fashion Piracy, and also defend the Design Piracy Prohibition Act on the two anti-copyright blogs cited above to.
The expert: Professor Susan Scafidi blog
Thank you for taking the time to read this.
Nathalie Doucet - San Francisco July 16, 2009