| At Sherman IP®, we regularly get clients complaining to us that their designs have been “ripped off”! Many clients believe there is nothing they can do about it. This belief is common in fashion industries such as clothing and textiles, footwear, handbags, jewelry, and accessories; this belief is also wrong.
While general styles and fabric designs may be common as a current “mode du jour,” and styles tend to relate to one another, they are also usually protectable in themselves or have protectable elements which can prevent the designs (and the customers purchasing those designs) from being taken.
Saving that business starts with seeking Intellectual Property protection for the designs. The first step is registering the copyright, patent or trademark for the protectable portion of the designs. Clients can then use those registrations to prevent a competitor from taking the designs and taking the customers who buy the products using those designs.
A new case before the Ninth Circuit U.S. Court of Appeals, Desire, LLC v. Manna Textiles, Inc., et al., No. 17-56641 (9th Cir. Feb. 2, 2021), should disabuse fashion brands and designers of the notion that, ‘everybody is doing this. I can’t do anything about copiers.’ That notion is simply incorrect.
In that case, Desire, LLC (“Desire”), an LA fabric supplier, registered a floral fabric design with the U.S. Copyright Office. Desire sold some of its floral fabric to Top Fashion as a sample. Top Fashion then obtained a garment order from Ashley Stewart using that sample. When Desire and Top Fashion could not agree on a price for the fabric, Top Fashion went to China and got a lower price from Manna Textiles, Inc. (“Manna”).
Manna’s knockoff design worked its way into numerous retailers for women’s clothing. Desire, using its copyright registration sued all the companies as infringers. The District Court and the Court of Appeals easily found that Desire’s copyright on the fabric was valid, was copied by all of the Defendants and was “entitled to broad copyright protection.” The Court stated that while,
(t)he flower motif/arrangement of Desire’s design is similar to numerous floral motifs found in many prior art materials in the public domain … (t)he “similarity” of one design to another has no bearing on whether Desire “independently created” the subject design.”
Desire at 11 (citing Feist Pubs., Inc. v. Rural Tel. Svc. Co., Inc., 499 U.S. 340, 345 (1991)).
The District Court further held, and the Court of Appeals agreed that,
the Subject Design was entitled to broad copyright protection as a matter of law because the flowers and the arrangement of those flowers are “stylized and not lifelike,” the Subject Design was an original creation, and “there is ‘a wide range of expression’ for selecting, coordinating, and arranging floral elements in stylized fabric designs.
Desire at 12.
The Court of Appeals especially disagreed with the Defendants’ position that the fabric should not have protection since it was just “essentially copied from pre-existing works,” “unoriginal” or that it was “similar to numerous floral motifs found in the public domain.” The Court of Appeals found that whether “the Subject Design may not be novel is immaterial to the question whether it is ‘original’” under copyright law. In Desire, the design was considered both original and entitled to broad protection. Desire at 15.
Since, Desire independently created the design, the Defendants had access to the design, and the copy was “substantially similar” to the design, copyright infringement was established, and the only real issue was how much the Defendants would have to pay in damages. Desire elected to pursue statutory damages (yielding up to $150,000 per infringement) and the Court of Appeals went on to examine how the Copyright Act, 17 U.S.C. §504(c)(1), allows statutory damages to be assessed across multiple infringing defendants in a distribution chain, some being willful infringers and some being innocent infringers.
In another case where a fabric was protected, Columbia Sportswear North America, Inc., v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019), Columbia Sportswear North America, Inc. (“Columbia”) protected its insulating fabric for jackets, boots, gloves, etc., using both utility and design patents. After extensive litigation, one of the interesting takeaways is how Columbia obtained and is enforcing a design patent on the ornamental weave of their Omni-Heat™ fabric against Seirus Innovative Accessories Inc.’s (“Seirus”) HeatWave™ fabric. Design patents are thus additional means of protection being used by fabric manufacturers to protect market share.
Fashion functions as an idea of something that people like and desire. In that sense, fashion can function as a brand, giving rise to consumer recognition and a following. Those intangibles are what provides fashion its value. Failure to protect that value and the business behind it will dissipate, either by dilution or by outright usurpation. Whether by copyrights, patents or trademarks, any fashion business ought to have a thoughtful strategy for protection.
Many businesses devolve to a strategy that they will just keep developing new designs and ideas to stay ahead of the competition. This lack of commitment stems from a “false” belief that fashions are not protectable anyway.
First, you can protect fashions. Second, you can never run fast enough to stay ahead of everyone. At some point you will slow down, pause and be swamped by the competition. Protect your ideas and you create an additional barrier to defend your business. At Sherman IP®, our attorneys are experienced in developing strategies to protect our client’s proprietary designs from knockoffs and copycats. Those strategies involve various types of patent protection, trademark protection and often copyright protection. Don’t let your designs be copied. |
