Fashion and Intellectual Property – An Overview

Between the Seams, A Fertile Commons:

An Overview of the Relationship
Between Fashion and Intellectual
Property

By Christine Cox
and Jennifer Jenkins

A Norman Lear Center Conference
Annenberg Auditorium
USC Annenberg School for Communication
January 29, 2005

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2 THE NORMAN LEAR CENTER Christine Cox & Jennifer Jenkins Between the Seams, A Fertile Commons
The Norman Lear Center
Ready to Share: Fashion & the

Ownership of Creativity
Founded in January 2000, the

Norman Lear Center is a
On January 29, 2005, the Norman Lear
multidisciplinary research and public
Center held a landmark event on
policy center exploring implications of
fashion and the ownership of creativity.
the convergence of entertainment,
"Ready to Share: Fashion & the
commerce and society. On campus,
Ownership of Creativity" explored the
from its base in the USC Annenberg
fashion industry's enthusiastic embrace
School for Communication, the Lear
of sampling, appropriation and
Center builds bridges between

borrowed inspiration, core components
schools and disciplines whose faculty
of every creative process. Presented by

study aspects of entertainment, media
the Lear Center's HCreativity,

and culture. Beyond campus, it
Commerce & CultureH project, and

bridges the gap between the
sponsored by HThe Fashion Institute of
entertainment industry and academia,

Design & Merchandising/FIDMH, this
and between them and the public.
groundbreaking conference featured

Through scholarship and research;
provocative trend forecasts, sleek

through its fellows, conferences,
fashion shows and an eclectic mix of
public events and publications; and in

experts from fashion, music, TV and
its attempts to illuminate and repair
film. Discussion sessions covered fashion

the world, the Lear Center works to
and creativity, intellectual property law,

be at the forefront of discussion and
fashion and entertainment and the
practice in the field.

future of sharing.



Creativity, Commerce & Culture



When art is created for commercial
purposes, who owns it? Once it's in the

hands of consumers, what rights do they

have to change it? Headed by Lear Center

senior fellows David Bollier and Laurie
Racine, Creativity, Commerce & Culture

explores the new digital environment and

the impact of intellectual property rights on

innovation and creativity.









The Fashion Institute of Design & Merchandising/FIDM

The Fashion Institute of Design & Merchandising/FIDM is an internationally recognized college that prepares
students for leadership in the global industries of Fashion, Visual Arts, Interior Design and Entertainment. As
an accredited institution granting Associate of Arts degrees and providing Advanced Study programs in 14
industry-specific majors, FIDM has equipped more than 30,000 students over the last 30 years to become
skilled professionals. FIDM is headquartered in a state-of-the-art campus in downtown Los Angeles, with
additional campuses in Orange County, San Diego and San Francisco. The FIDM Museum houses one of the
nation's finest costume collections dating from the 18th century, as well as ethnic costumes and selections
from top fashion designers.

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3 THE NORMAN LEAR CENTER Christine Cox & Jennifer Jenkins Between the Seams, A Fertile Commons
Author Biographies















Christine Cox
Jennifer Jenkins



Christine Soares Cox is an attorney with Parker, Hudson,

Jennifer Jenkins is a Lecturing Fellow teaching
Rainer & Dobbs LLP in Atlanta. She practices in the areas

intellectual property at Duke Law School and serves as
of intellectual property, franchising and general

Director of Duke's Center for the Study of the Public
commercial litigation. Cox is a graduate of Duke
Domain, where she heads its Arts Project, analyzing the

University School of Law, where she was Editor in Chief
effects of intellectual property on cultural production
of the Duke Law & Technology Review. She is the

(Hwww.law.duke.edu/cspd/artsprojectH). As a lawyer,
author of several articles on intellectual property and

she was a member of the team that defended the
communications law issues, ranging from the ownership

copyright infringement suit against the publisher of the
of copyrights in digital reproductions of freelance
novel The Wind Done Gone, a parodic rejoinder to

articles to privacy concerns regarding enhanced 911
Gone With the Wind. As an artist, Jenkins cowrote
technology.

Nuestra Hernandez, a fictional documentary addressing


copyright and appropriation, and she has authored

several short stories.

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4 THE NORMAN LEAR CENTER Christine Cox & Jennifer Jenkins Between the Seams, A Fertile Commons
Between the Seams, A Fertile Commons:
An Overview of the Relationship Between
Fashion and Intellectual Property

"Imagine for a moment that some upstart
revolutionary proposed that we eliminate all intellectual
property protection for fashion design. No longer could a
designer secure federal copyright protection for the cut of a
dress or the sleeve of a blouse. Unscrupulous mass-marketers
could run off thousands of knock-off copies of any designer's
evening ensemble, and flood the marketplace with cheap
imitations of haute couture. In the short run, perhaps, clothing
prices would come down as legitimate designers tried to meet
the prices of their free-riding competitors. In the long run,
though, as we know all too well, the diminution in the
incentives for designing new fashions would take its toll.
Designers would still wish to design, at least initially, but
clothing manufacturers with no exclusive rights to rely on
would be reluctant to make the investment involved in
manufacturing those designs and distributing them to the
public. The dynamic America fashion industry would wither,
and its most talented designers would forsake clothing design
for some more remunerative calling like litigation. All of us
would be forced either to wear last year's garments year in
and year out, or to import our clothing from abroad.


Of course, we don't give copyright protection to
fashions … We never have."

– Jessica Litman, Digital Copyright1


Introduction

Each month, Marie Claire magazine presents a feature devoted to
fashion knockoffs called "Splurge vs. Steal." A $195 Lilly Pulitzer halter
top is compared with a $15.00 version by Newport News.2 $175 Theory
shorts are juxtaposed with a $39.50 look-alike from the Gap.3 Though
the designer version usually looks more tasteful or well-made, many
shoppers are quite happy to obtain "the look" while saving several

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5 THE NORMAN LEAR CENTER Christine Cox & Jennifer Jenkins Between the Seams, A Fertile Commons
hundred dollars. Newport News and the Gap can adapt the more expensive designs, and
consumers can "dress for less," because clothing designs generally are not protectable under
current United States intellectual property regimes.

We often are told that intellectual property protection is necessary to stimulate creativity and
innovation. It provides incentives by allowing creators to control access to their works and
demand payment for them. Without these incentives – the argument goes – people will be unable
to profit from their works and will stop creating. Yet, despite the lack of intellectual property
protection for fashion, style houses continue to make money, and designers continue to develop
new looks every season. Creativity thrives in the absence of intellectual property protection.

What can we learn from this seeming paradox? This paper will examine the reasons why fashion
design generally is not protectable under existing intellectual property regimes, and consider how
the fashion experience might inform ongoing debates about desirable levels of intellectual
property protection in other creative industries.

Why Not Fashion?

In recent years, the scope of U.S. intellectual property protection has expanded greatly in a variety
of fields. Patents now are granted over plant varieties and common business methods, areas for
which the U.S. Patent and Trademark Office previously had been hesitant to issue protection.
Copyright terms have been extended to a staggering length of time – life plus 70 years – far
longer than the 14-year term originally contemplated by the drafters of the Constitution. Powerful
industry lobbies continue to push for ever stronger intellectual property protections.

Despite these recent expansions that have benefited, among others, the biotech, pharmaceutical,
movie and recording industries, the fashion industry receives little protection under current U.S.
intellectual property laws. This is not to say that certain fashion houses have not tried to obtain
intellectual property protections for their designs, for valiant efforts have been made in this
regard. While these efforts have succeeded in protecting limited design elements, however,

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6 THE NORMAN LEAR CENTER Christine Cox & Jennifer Jenkins Between the Seams, A Fertile Commons
fashion design as a whole receives little to no protection. Knockoff
goods are a huge part of the fashion industry and are accepted as
common practice. With a system that tries its best to forbid sampling
and remixing at every turn, how can such an extensive and fertile
commons be allowed to exist?

Fashion designs, particularly for clothing, fall between the seams of
traditional intellectual property protections.4 Copyrights generally are
not granted to apparel because articles of clothing, which are both
creative and functional, are considered "useful articles" as opposed to
works of art. Design patents are intended to protect ornamental
designs, but clothing rarely meets the demanding criteria of


patentability, namely novelty and nonobviousness. Trademarks only
protect brand names and logos, not the clothing itself, and the Supreme
Fashion designs, particularly
Court has refused to extend trade dress protection to apparel designs.
for clothing, fall between the
seams of traditional
Congress repeatedly has declined to enact legislation that would provide
intellectual property
sui generis design protection.
protections.

Fashion designs are not unprotected merely because they fall into a
legal limbo between intellectual property schemes, however. Both

policymakers and courts have been guided by compelling policy reasons
to limit design protection.5 They have expressed concerns that, while
such protection might benefit certain designers, it could create
monopolies in the fashion industry that would stifle the creativity of
future designers, hinder competition and drive up prices for consumer
goods. Designers could demand payment for design elements that
currently are free, and this cost would be borne by others in the industry
and by the public. The less affluent would not be able to afford the
range of fashions they currently enjoy.6 Therefore, policy advisors have
been unconvinced that "new protection will provide substantial benefits

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7 THE NORMAN LEAR CENTER Christine Cox & Jennifer Jenkins Between the Seams, A Fertile Commons
to the general public which outweigh removing such designs from free public use."7 As one judge
put it, "Congress and the Supreme Court have answered in favor of commerce and the masses
rather than the artists, designers and the well-to-do."8

Copyright

Copyright law is used to protect artistic creations, including music, films, paintings, photographs,
sculptures and books.9 While U.S. copyright law protects "applied art," such as artistic jewelry,
patterns on dinnerware or tapestries, it does not protect "useful articles," such as automobiles or
television sets that, while attractively shaped, are primarily functional.10 Apparel designers have
tried to obtain copyright protection for their designs by suggesting that clothing is a type of
sculptural work. However, copyright law generally has not provided protection for wearable
designs because clothing is considered a useful article that (among other things) protects its
wearer from the elements, provides modesty and decorates the body.

While copyright law normally does not protect useful articles, it does protect aesthetic elements of
a useful article if those features amount to works of art "that can be identified separately from,
and are capable of existing independently of, the utilitarian aspects of the article."11 This
"separability" rule was developed in the landmark 1954 case of Mazer v. Stein,12 in which the
Supreme Court held that Balinese statuettes that formed the bases of lamps were copyrightable
because the aesthetic work in question (a statuette) was separable from the useful article (a lamp).
The statuettes could be copyrighted as independent works of art even though they also could be
used as lamp bases.13

While lamps with statuette bases offer a relatively easy example of separability, it is much more
difficult to separate aesthetic elements of most fashion designs, particularly clothing designs, from
their function. An unusual neckline, flared sleeve or cinched waist – while attractive and creative –
serve the utilitarian function of dressing the human form, and are not likely to be considered
separable and independent works of art.

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8 THE NORMAN LEAR CENTER Christine Cox & Jennifer Jenkins Between the Seams, A Fertile Commons
Accordingly, both Congress and the courts have said that clothing design is not subject to
copyright protection. The legislative history to the Copyright Act explicitly stated that copyright
protection would not be extended to "ladies' dress" unless it had some element that was
physically or conceptually distinguishable from its form.14 And courts have "long held that clothes,
as useful articles, are not copyrightable."15


There have been a few unusual cases involving fashion designs in which courts have found
aesthetic form separable from function. One such case, Kieselstein-Cord v. Accessories by Pearl,
involved the design of high-end belt buckles.16 Registered with the Copyright Office as "original
sculpture and design," the Kieselstein-Cord belt buckles widely were recognized as innovative
jewelry designs and even made their way into the Metropolitan Museum of Art's permanent
collection.17 Knockoffs of the belt buckle designs subsequently were created in common metals by
Accessories by Pearl, and Kieselstein-Cord sued for copyright infringement.18

The district court found that the belt buckles did not meet the separability standard required for
protection because the artistic features were not separable readily from the utilitarian buckle.19
The Second Circuit reversed the decision, noting that the separability standard does not require
"physical" separability but also may include "conceptual" separability.20 The notion of conceptual
separability (which was introduced in the legislative history to the current Copyright Act), allowed
the Kieselstein-Cord court to discern between the aesthetic design of the belt buckles and their
utilitarian function. The court concluded that the separable aesthetic elements should be
copyrighted:

We see in appellant's belt buckles conceptually separable sculptural elements,
as apparently have the buckles' wearers who have used them as ornamentation
for parts of the body other than the waist … Pieces of applied art, these
buckles may be considered jewelry, the form of which is subject to copyright
protection.21

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9 THE NORMAN LEAR CENTER Christine Cox & Jennifer Jenkins Between the Seams, A Fertile Commons
However, the Second Circuit retreated from its expansive reading of conceptual separability a few
years later in Carol Barnhart v. Economy Cover Corp., in which the court held that mannequins
used to display clothing were merely useful articles and did not have aesthetic elements that were
conceptually separable from their utilitarian functions.22

In rare cases, an apparel design may be copyrightable as a separable work of art when it hardly
functions as clothing at all. For example, one court found that a clear plastic swimsuit filled with
crushed rock and displayed as part of a modern art exhibit could be copyrightable as soft
sculpture:

Nothing in our legal training qualifies us to determine as a matter of law whether [the
swimsuit] can be worn as an article of clothing for swimming or any other utilitarian
purpose. We are also unable to determine merely by looking at [the swimsuit] whether a
person wearing this object can move, walk, swim, sit, stand, or lie down without
unwelcome or unintended exposure.23

As one commentator observed, "given that the object was filled with crushed rock, one wonders
if it might have been more 'useful' as an anchor than a swimsuit."24 Another court upheld
copyrights in certain costumes that were unsuitable as clothing – these included a "Rabbit In Hat"
costume that "does not readily permit the wearer to sit, recline, or maneuver easily" and a
"Tigress" costume that "cannot be worn without a separate body covering underneath as it is too
narrow to cover a woman's chest and contains no sides or bottom."25 But in almost all other
cases, clothing falls outside of the bounds of copyright protection.


Although clothing designs themselves are not copyrightable, designs on the surface of clothing,
which are capable of being independent works of art (such as paintings or drawings), have been
extended copyright protection.26 Fabric designs, patterns for knit sweaters, designs printed on
dresses and lace designs on wedding gowns have been held to constitute copyrightable subject
matter.27 When granted, copyrights for these works are often "thin," offering protection only
from designs that are confusingly similar to the original.28

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1 0 THE NORMAN LEAR CENTER Christine Cox & Jennifer Jenkins Between the Seams, A Fertile Commons

On the whole, then, copyright law affords little protection for clothing
designs. Aside from protection for surface designs and a few exceptions
that have been recognized by the case law, the design of clothing itself
generally is considered ineligible for copyright protection because it is
extremely difficult to separate the artistic from the functional
elements.29 As a result, some fashion designers have turned to other
intellectual property regimes, such as design patents, to try to secure
protection for their designs.
Design Patents

Patent law provides protection for new and useful processes, machines,


products and compositions of matter through utility patents.30 Design
patents are an extension of patent law that protects the ornamental
Design patents are an
features of an invention. In the most current version of the patent
extension of patent law
statute, design patents are governed by §171, which states: "[W]hoever
that protects the
ornamental features of
invents any new, original and ornamental design for an article of
an invention.
manufacture may obtain a patent therefor[sic], subject to the conditions
and requirements of this title."31 The "conditions and requirements"
referred to in §171 are those of patentability. All patentable inventions

and designs must be (1) novel32 and (2) nonobvious,33 or not readily
apparent to someone skilled in the art. Inventions subject to a utility
patent have an additional requirement of "utility," meaning that the
invention must serve some useful purpose.34 In contrast, design patents
are intended to protect the "ornamental" portion of an item, which
must be separable from its function.35 While the scope of a utility patent
is defined by the patent's claims, comprised of written text and figures,
a design patent is defined only by its drawings;36 as a result, the scope
of design patent protection is limited more than that of utility patents.

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