Intellectual Property
Protection for the Fashion
Industry
Olivera Medenica
Medenica Law PLLC
3 Columbus Circle, 15 th Fl.
New York, NY 10019
Tel: (212) 785-0070
Email: Omedenica@Medenicalaw.com
Alozie N. Etufugh, Esq.
Law Offices of Alozie N. Etufugh, PLLC
230 Park Avenue, Suite 1000
New York, NY 10169
Tel: (212) 309-8723
Email: Ane@Etufughlaw.com
IP Protection of Fashion and
Apparel in the U.S.
IP in the fashion world is that of multiple protections. A single
garment or product may be covered by several different forms of legal
protection at the same time

Trademark
Trade Dress
Copyright
Patent

Fashion design is not currently protected under U.S. law. (design =

the way a specific garment is cut and assembled)
Exception- occasionally the cut of a garment can be protected by a design
patent or trade dress.
IP Hypothetical
Medenica Shoe Company (MSC) is launching a brand new stylized
shoe. The shoe is designed with MSCs infamous crisscross design,
that has become well known and easily identifiable to MSC (similar to
the Burberry pattern). The shoe has a separate function, in that it can
change from flats to heels (and vice versa) with the push of a button.
The heel design is uniquely shaped so that it helps to alleviate
pressure from the ball of the foot. MSC has decided to name this new
shoe FLEELS (flats and heels combined).
What IP rights are applicable to the shoe?
Copyright
Copyright Protection
Copyright is a powerful tool for protecting fabric designs and other
types of artistic expression (such as jewelry) that are eligible for
protection.
The artistic aspects of a product (not its functional elements).
Copyright protects the particular manner in which an idea is
expressed.
Ex: fabric prints; jewelry; some furniture; some product packaging;
websites; textiles; quilts; designs or images on the surface of shoes,
handbags or other accessories; software; and photographs.

Copyright protection begins when a design is reduced to fixed form.

Although a copyright notice (such as, John Jones Company; all
rights reserved) is no longer mandatory, it is an excellent reminder
to would-be imitators to stay away and is valuable in a court
proceeding to demonstrate that a copier did not act in good faith.
How Long Does It Take to Get Copyright
Protection, and How Long Does It Last?
Copyright is acquired as soon as a design is placed into concrete form
(i.e., once its been drawn on a computer or on paper)
After filing, a copyright registration is issued by the Copyright Office
in approximately three to six months.
Generally, a copyright lasts for the life of the author of the work plus
70 years, or, in the case of a work for hire, for either 120 years from
the date of creation or 95 years from the first publication of the work,
whichever expires first.
Mazer v. Stein, 347 U.S. 201 (1954)
Leading case on copyright protection for useful articles.
Plaintiff created a human dancing figure statuette,
copies of which Plaintiff used as lamp bases. Plaintiff
registered the work as a work of art. Defendant copied
the statuettes and sold them as lamp bases without
Plaintiffs authorization. Plaintiff sued for copyright
infringement.
Holding: The Court held that the lamp base qualifies as
a work of art and therefore is eligible for copyright
protection even though it serves a functional purpose
(i.e. lamp base).
The Court reviewed the 1909 Act as well as the 1949
regulation and found that an object does not lose its
status as a copyrightable art work simply because the
creator intended to embed the creation in a useful
article. According to the court, individual perception of
the beautiful is too varied a power to permit a narrow or
rigid concept of art.
Post Mazer v. Stein
To narrow broad Mazer v. Stein holding, the Copyright Office enacts Regulation
202.10(c) which states that:
If the sole intrinsic function of an article is its utility, the fact that the article is
unique and attractively shaped will not qualify it as a work of art. However, if the
shape of a utilitarian article incorporates features such as artistic sculpture,
carving, or pictorial representation, which can be identified separately and are
capable of existing independently as a work of art, such features will be eligible
for registration.
Sole intrinsic function test
Copyright Act of 1976 codifies Mazer (i.e. useful articles are if utilitarian
portion is separable)
Section 101 provides that pictorial, graphic and sculptural works: . . . shall
include works of artistic craftsmanship insofar as their form but not their
mechanical or utilitarian aspects are concerned; the design of a useful article, as
defined in this section, shall be considered a pictorial, graphic, or sculptural work
only if, and only to the extent that, such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and are capable of
existing independently of, the utilitarian aspects of the article.
Post Mazer tests used by courts what is a useful
article?
Sole intrinsic function test: copyright is denied to an article if its sole intrinsic function is its
utility. Esquire v. Ringer (decided under the 1909 Act) - 414 F. Supp. 939 (D.D.C. 1976),
rev'd, 591 F.2d 753, 795 (D.C. Cir. 1978).

Primary-subsidiary test: copyright protection can be granted if the designs primary purpose
is ornamental and its utilitarian purpose subsidiary. Kieselstein-Cord v. Accessories by Pearl
632 F.2d 989 (2d Cir. 1980).

Inextricably intertwined test: article is denied copyright protection if the "aesthetic and
artistic features ... are inseparable from [its] use as [a] utilitiarian article." Carol Barnhart,
Inc. v. Economy Cover Corp., 773 F.2d 411, 418 (2d Cir. 1985).

Denicola/Brandir artistic judgment test: article granted copyright where design elements
can be identified as reflecting the designers artistic judgment exercised independently of
functional influences. Brandir International, Inc. v. Cascade Pacific Lumber Co., 834 F.2d
1142 (2d Cir. 1987)

Nimmer test: Conceptual separability exists where there is substantial likelihood that even
if the article had no utilitarian use it would still be marketable to some significant segment
of the community simply because of its aesthetic qualities. Galiano v. Harrah's Operating
Co., 416 F.3d 411 (5th Cir. 2005)
Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d
468, 2015 U.S. App. FED App. 0194P (6th Cir.)
Issue of whether certain designs appearing on
cheerleading uniforms are copyrightable or are
instead non-copyrightable functional elements that
are an inherent part of cheerleading uniform
designs.
In a split decision, the Sixth Circuit reversed the
district court and ruled that the use of stripes,
chevrons and color blocks were copyrightable
despite the Copyright Acts prohibition against
extending copyright protection to useful articles.
Sixth Circuit ruled that because Varsitys designs
are more like fabric designs than dress design,
they are subject matter amenable to copyright.
Though the majority disagreed on whether these
design elements were copyrightable, both agreed
that the law in this area is a mess and
intervention by the Supreme Court is necessary.
Severin Montres, Ltd. v. Yidah Watch Co., 997 F.
Supp. 1262 (C.D. Cal. 1997)
Object at issue: The plaintiff created the Gucci-G
watch, a watch with its rectangular frame forming a
three-dimensional letter G, while the defendants
made a J-watch and an E-watch. The defendants
claimed the frame was functional and could not be
copyrighted.
The district court, however, relied on National v.
Black, 696 F. Supp. 1348 (SDCal 1988) (i.e. costumes
get ) and held "where design elements can be
identified as reflecting the designer's artistic
judgment exercised independently of functional
influences, conceptual separability exists.
The court held that the watches were copyrightable
because it believed that the "plaintiff's artistic
expression contained enough artistic design to be
unique and protectable under the Brandir test."
Louis Vuitton Malletier SA v. MY OTHER BAG
156 F. Supp. 3d 425 - Dist. Court, SD New York 2016
Federal appeals court that ruled tote bags painted
to look like pricey Louis Vuitton merchandise are
parodies, not knockoffs.
The tote bags are sold by a company called My
Other Bag, which Louis Vuitton claimed was
diluting its trademark and violating its copyright
protection.
The Court of Appeals for the Second Circuit
agreed with a lower court ruling that the MOB
bags are parodies and thus permissible.
A parody must convey two simultaneous and
contradictory messages: that it is the original,
but also that it is not the original and is instead a
parody. MOB bags do just that, the court said.
Trademark
What a Trademark Protects and How
You Get Protection
A trademark protects consumers and companies that use it by enabling
customers to distinguish between goods of different companies.
Can include words, slogans, logos, and designs.
Personal names (i.e. last names) may be protected as trademarks only if
the public has come to recognize the designers name as identifying the
source of the products on which it is used. Be careful when using a
personal name though. If later a designer wants to leave the company
that has acquired proprietary rights in the designers name, disputes
can arise.
Trademark protection starts as soon as a mark is placed on products and
those products are shipped to consumers (called common law
trademarksTrademarks that are in actual use but have not been
registered in the United States Patent and Trademark Office (PTO))
A common law trademark is valid only in the geographical area in which the goods
with which it is used are on sale, which is why you should file a trademark application
in the PTO. Once you obtain a trademark registration, the owner has rights
throughout the U.S.
What is trademark infringement?
Trademark infringement is the unauthorized use of a trademark or service
mark on or in connection with goods and/or services in a manner that is
likely to cause confusion, deception, or mistake about the source of the goods
and/or services.
A trademark owner who believes its mark is being infringed may file a civil
action (i.e., lawsuit) in either state court or federal court for trademark
infringement, depending on the circumstances. However, in most cases,
trademark owners choose to sue for infringement in federal court. Even when a
plaintiff chooses state court, it may be possible for the defendant to have the case
"removed" to federal court.
Available remedies: injunctive relief; destruction or forfeiture of infringing
articles; monetary relief (defendants profits, any damages sustained by plaintiff,
and the cost of the action); in some instances, attorneys fees (willful, bad faith).
To support a trademark infringement claim in court, a plaintiff must prove that
it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to
the defendant's), and that the defendant's mark is likely to cause confusion in
the minds of consumers about the source or sponsorship of the goods or services
offered under the parties' marks.
Likelihood of confusion: 2d Cir.
Our analysis is not mechanical, but rather, focuses on the ultimate
question of whether, looking at the products in their totality, consumers
are likely to be confused. The eight factors are:
(1) strength of the trademark;
(2) similarity of the marks;
(3) proximity of the products and their competitiveness with one
another;
(4) evidence that the senior user may bridge the gap by developing a
product for sale in the market of the alleged infringers product;
(5) evidence of actual consumer confusion;
(6) evidence that the imitative mark was adopted in bad faith;
(7) respective quality of the products; and
(8) sophistication of consumers in the relevant market.
Polaroid Corp. v. Polarad Electronics, Corp., 287 F.2d 492 (2d Cir.
1961); Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114,
119 (2d Cir. 2001).
Types of TM Misuses
Improper suggestion of affiliation
Dilution
Comparative advertising
Counterfeit products
Imposters
Regulatory Framework Chart
Public Relations Backlash
Licensing
Improper Suggestion of Affiliation

Definition: Use of trademark in a manner that would lead the

average consumer to believe the user has a relationship with the
trademark.

Imposters
Definition: Assumption of another party or brands identity
through the unlicensed and unauthorized use of their
trademarks.
Dilution (blurring or tarnishing)
What is it? blurring or tarnishing a famous mark in such a manner that lessens the
strength of the famous mark; trading on the goodwill and reputation of a famous mark.

Famous or Well-Known Mark: a trademark, either registered or unregistered, that has

reached a level of near universal recognition.

15 USCS 1125(c): Occurs when "another person who, at any time after the owner's mark
has become famous, commences use of a mark or trade name in commerce that is likely to
cause dilution by blurring or dilution by tarnishment of the famous mark."

Tarnishment: use of a famous trademark in association with unsavory or undesirable

goods. Diane Von Furstenberg Studio v. Snyder, 2007 U.S. Dist. LEXIS 66633 (E.D. Va.
Sept. 10, 2007).

Blurring: use of a trademark in such a manner that impairs the distinctiveness of the
famous mark. Malletier v. Hyundai Motor Am., 2012 U.S. Dist. LEXIS 42795 (S.D.N.Y.
Mar. 22, 2012)
 Diane Von Furstenberg Studio v. Snyder, 2007 U.S. Dist.
LEXIS 66633 (E.D. Va. Sept. 10, 2007)

Diane Von Furstenberg Studio (DVF) brought

various trademark claims against defendant,
who was allegedly using the DVF trademarks
on her clothing; clothes were of an inferior
quality and of shoddy workmanship. Court
granted summary judgment to plaintiff,
Diane Von Furstenberg on trademark
dilution claims.
Malletier v. Hyundai Motor Am., 2012 U.S. Dist.
LEXIS 42795 (S.D.N.Y. Mar. 22, 2012)
Hyundai used the Louis Vuitton
mark in a Luxury Car ad. LVMH
moved for summary judgment on
trademark dilution arising from
blurring. The court ruled in favor of
LVMH.
VIDEO
Comparative Advertising
What is it? use of competitors trademark in an unfavorable or
disparaging light, generally intended to elevate the status or
desirability of another brand.
15 USC 1125: Any person who, on or in connection with any goods
or services, or any container for goods, uses in commerce any word,
term, name, symbol, or device, or any combination thereof, or any
false designation of origin, false or misleading description of fact, or
false or misleading representation of fact, whichin commercial
advertising or promotion, misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or another persons goods,
services, or commercial activities . . . shall be liable in a civil action.
Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. Cal. 1968)

California company sold perfumes they

alleged were identical to Chanel No. 5.
Advertising contained disclaimer as to
ownership of Chanel. Court found no
actionable trademark claims under 15
USC 1125 or unfair competition laws,
because it did not contain
misrepresentations or create a reasonable
likelihood that purchasers will be
confused as to the source, identity, or
sponsorship of the advertiser's product
 Guidelines
1. Dont get creative: any depiction of the
competing trademark should be in its
original form; do not manipulate it.

2. Dont imply an affiliation: a clear

disclaimer (at the end of a television
commercial, at the bottom of a web/print
advertisement) can make it clear that the
competitors mark is not affiliated with
your brand.

3. Be truthful: dont make claims about the

competing trademark that you cannot
back-up. (FTC has oversight in this area)
 Counterfeit Products
What is it? the unlicensed and unauthorized
manufacturing or trafficking of goods, in an attempt
to create an indistinguishable, and commonly
inferior, product.

Cases:

Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp. 2d 463

(S.D.N.Y. 2008)

Louis Vuitton Malletier, S.A. v. Akanoc Solutions,

Inc., 658 F.3d 936 (9th Cir. Cal. 2011)
Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir.,
2010)
Tiffany brought suit against eBay, alleging direct and
contributory trademark infringement; Tiffanys claimed
that by failing to police the legitimacy of the goods for sale
on eBay, defendant had allowed and facilitated counterfeit
items to be sold on its website. The court found that, as
the trademark owner, it was plaintiffs responsibility to
police use of their marks. General knowledge by eBay not
sufficient to trigger liability, must have specific
knowledge.
 Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658
F.3d 936 (9th Cir. Cal. 2011)

Defendant hosted various domains that included links and

information that aided in the sale of counterfeit
merchandise of the plaintiffs. Plaintiff, Louis Vuitton, sent
manifold requests that defendant remove the counterfeited
content from their websites. Defendants ignored and failed
to respond to any requests. The jury found defendants
liable for trademark infringement, as the defendants
controlled the sites and had reason to know they were
trafficking counterfeit goods. Plaintiff was awarded
$10,500,000.
Trade Dress
Trade Dress Protection
Trade dress: a form of trademark protection that specifically protects
the look or form of a product where the public has come to recognize
that look as indicating that a product with that look comes from a
particular source.
Significantly harder to obtain than trademark protection.
Trade dress only protects nonfunctional elements, or the elements of
a product design that are primarily aesthetic (i.e., the blue Tiffany
box).
Time is of the Essence: Trade dress imitators should promptly be put
on notice. Prompt notice will enable imitators to change the look of
their products before they have made a sizeable investment.
Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1995 U.S.
App. (2d Cir. N.Y. 1995)

Autumn sweater designs,

comprised of leaves and
squirrels appearing on the
front of the sweaters, did not
warrant trade dress
protection since the design
served an aesthetic purpose,
as opposed to a source-
identifying purpose, and the
design did not distinguish the
owners goods from goods sold
by others in the marketplace.
 Christian Louboutin, S.A. v. Yves Saint Laurent Am.
Holding, Inc.,
2012 WL 3832285 (2d Cir. Sept. 5, 2012)
Colloquially called the "Red Sole Mark" case, the Appellate
Court struck a narrow, yet balanced ruling to preserve fair
competition in the market realm, prevent undue interfere in
commercial activity via blanket assertion of color as Trade
Dress protection, while simultaneously uphold related
intellectual property right of a party to assert color as Trade
Dress within a specific industry.
Court did note general rule that color alone cannot be Trade
Dress protected due to doctrine of "aesthetic functionality"
(feature designed for purchaser appeal and not its utilitarian
value ) and to preclude such color rights assertion from
interference with normal commercial activities.
Court established a balanced decision by which Appellant was
granted Trade Dress "Red" color protection shoe design to use
a Red lacquered outsole contrasting with a different color shoe
"upper" portion ( hence remarked "Red Sole Mark" case ).
Nevertheless, decision also granted leeway to Appellee ( Yves )
to use Red color for its "monochromatic red shoes", which
enable this party to produce Red outsole shoe matched to its
Red "upper" shoe portion.
Fashion Industry Design
Patents 101
Overview
What is a Design Patent?
Term & Coverage
Applicability to Fashion Designs
Examples
Why Bother?
Best Practices
Questions
What is a Design Patent?

Protect the look and feel or ornamental

features of a design
Application criteria 35 U.S.C. 171: Whoever
invents any new, original, and ornamental
design for an article of manufacture may
obtain a patent therefor, subject to the
conditions and requirements of this title
What is a Design Patent? (contd)
Design under MPEP 1502:
Not to the design of an article
But design for an article, inclusive of ornamental
designs of all kinds including surface ornamentation
as well as configuration of goods
Subject matter of a design patent application
may relate to:
the configuration or shape of an article
the surface ornamentation applied to an article, or
the combination of configuration and surface
ornamentation.
What is a Design Patent? (contd)

Functional aspects may be covered by utility

patent
For
hybrid designs - Ornamental features must
dominate the functional features
Term

If filed before May 13, 2015 14 years

If filed after May 13, 2015 15 years
Each time period is calculated from the grant
date
Applicability to Fashion Designs

Handbags

Shoes

Jewelry

Perfume bottles
Applicability to Fashion Designs
Examples (Handbag)
U.S. Pat. No. D751,814
Issued to Christian Louboutin March 22, 2016
Applicability to Fashion Designs
Examples (Jacket)
U.S. Pat. No. D771,906
Issued to Nike November 22, 2016
Applicability to Fashion Designs
Examples (Dress/Coat)
U.S. Pat. No. D708,424
Issued to Christian Dior July 8, 2014
Applicability to Fashion Designs
Examples (Shoe)
U.S. Pat. No. D529,264
Issued to Jimmy Choo October 3, 2006
Why Bother?
Enforcement tool
Licensing

Asset

Placeholder until secondary meaning is

established
Valuation

Marketing/PR value (patent pending)

Why Bother? (contd.)
Damages
35 U.S.C. 289: [w]hoever during the term of a patent
for a design, without license of the owner, (1) applies the
patented design, or any colorable imitation thereof, to
any article of manufacture for the purpose of sale, or (2)
sells or exposes for sale any article of manufacture to
which such design or colorable imitation has been
applied shall be liable to the owner to the extent of
his total profit, but not less than $250, recoverable
in any United States district court having jurisdiction of
the parties.
Best Practices
Develop in house system for immediate design
capture.
Once design is developed, have application filed
right away
While timeline from filing to grant may be up to
one year, patent ensures enforcement and
licensing opportunities.
File
multiple applications covering different
aspects of the design.
Best Practices (contd.)
Include multiple embodiments in the application
as long as they embody the same inventive
concept (MPEP 1504.05)
Cover functional aspects with utility patent
Seek relief from the International Trade
Commission (ITC)
Conduct patentability search before launching a
line and/or filing
Options (Reexamination, DJ)
Consult with Counsel