Fashion Law: Design Protection Bill Progresses in Senate

Sen. Charles Schumer earlier this month presented a modified version of legislation that would put more teeth into copyright protection for fashion creations. To read an article on this published in Women’s Wear Daily, please click here.

On September 20, the Innovative Design Protection Act of 2012 (S. 3523) (IDPA) was reported favorably out of the Senate Judiciary Committee. IDPA is a successor to the Innovative Design Protection and Piracy Prevention Act of 2010 (S. 3728), a bill also introduced by Senator Charles Schumer (D-NY), which failed to advance. Now out of committee, the bill will be placed on the Senate’s legislative calendar.

IDPA would provide three years of protection for fashion designs that “(i) are the result of a designer’s own creative endeavor; and (ii) provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.” IDPA would protect designs for clothing, including undergarments, outerwear, gloves, footwear, and headgear; handbags, purses, wallets, tote bags, and belts; and eyeglass frames.

The owner of a protected design would be able to enforce its rights only with respect to a “substantially identical” design that is “so similar in appearance as to be likely to be mistaken for the protected design, and contains only those differences in construction or design which are merely trivial.”

Once notified, the alleged infringer can avoid liability by curing the infringement before an action is commenced. Even if a cure is not effected, the owner of the protected design would only be able to recover damages that accrue after the infringement action is commenced.

While the revised bill is designed to provide narrow protection for the creative efforts of designers who make innovative contributions to their fields, the bill has significant opposition from manufacturers and retailers. The objections of the bill’s opponents include that the bill will make it more difficult and more costly to manufacture and sell fashionable clothing to average consumers.

The companion House bill (H.R. 2511, the Innovative Design Protection and Piracy Prevention Act) was referred to the House Subcommittee on Intellectual Property, Competition, and the Internet in the summer of 2011, but the Subcommittee has taken no action to advance the legislation. Both Houses of Congress have adjourned until after the November elections, so no further action can occur on either S. 3523 or H.R. 2511. However, Congress will return for a so-called “lame duck” session following the election. While both manufacturers and retailers have opposed this legislation in the past, lame-duck sessions can be unpredictable and consequently both bills bear tracking and consideration by those in the fashion industry who are concerned about how the bills may impact their businesses.

The Law Offices of Aaron Resnick, P.A. is one of the few Florida firms that has a practice group dedicated to Fashion Law. Fashion law is a specialized area of law that deals with intellectual property (copyright and trademark law, including brand licensing), domestic and international business transactions, textiles, merchandising, employment and labor concerns, and customs (import/export issues). Traditionally, most fashion lawyers work for established fashion and luxury goods companies in major urban commercial centers such as New York City, Paris, London and Milan. Some fashion lawyers work within the company, and others work outside the company for law firms.

Fashion attorneys participate in a variety of legal activities and negotiate deals for their clients. The clients may be large retail chains, haute couture labels, high-fashion models, or an unknown designers just starting out. If and when the situation arises, a fashion attorney will litigate for his or her clients in court.

The Law Offices of Aaron Resnick, P.A.‘s group of attorneys are able to assist clients in every facet of Fashion Law.