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Protecting Fashion Product Designs Under the Lanham Act
New York Law Journal
Unlike in other countries, especially in Europe,1 the legal protections afforded to the design and appearance of fashion clothing and accessories in the United States are relatively limited. Under U.S. copyright law, "useful articles," such as clothing, handbags and footwear, are expressly exempted from protection.2 (Original creative elements of clothing and accessories such as hardware, ornaments and other artistic components that are physically separable from the product can be copyrighted, but the entire appearance of a useful article cannot be protected by copyright under U.S. law.)3
The physical appearance of fashion attire and accessories can be protected by design patent, but the scope of such protection is exceedingly narrow. Often, subtle differences between the patented design and the accused article are sufficient to defeat a claim of patent infringement. Also, given the rapid pace of changing fashion trends, the amount of time that it takes to obtain a design patent makes it an impracticable means of protection for most fashion items.
The dearth of protection specific to fashion design has spurred Congressional debate off and on since 2006. Bills have been introduced in the House and Senate to extend copyright protection to fashion designs, such that the owner of a design would be entitled to institute an action for infringement of the design after it is made public. The bills, one of which is dubbed the "Innovative Design Protection and Piracy Prevention Act,"4 would revise the definition of "useful article" under the U.S. copyright statute to include apparel and accessories (clothing, handbags, footwear, purses, wallets, tote bags, belts and eyeglass frames), thereby expressly allowing for protection of an original design for apparel and accessories. The term of protection under the IDPPA would be three years.5
The proposed legislation pits fashion houses and designers against a multitude of mid- and lower-tier retailers who offer the masses their versions of "haute couture" clothing and accessories at "affordable" prices. As one might expect, the fashion industry and fashion trade organizations are strong proponents of the legislation, while mass merchandisers have fiercely opposed it. The stakes are high for both sides: Designers complain that their original creations are routinely taken by low-cost competitors with relative impunity, while the competitors counter that they fulfill an important, market-driven neednamely, to make trendy clothes and accessories available to ordinary consumers.
The proposed legislation has been somewhat controversial in that it raises the specter of a dramatic increase in litigation, thereby quelling competition, and ultimately harming consumers. Over the past two years, amendments have been proposed to address this concern, but the bill has died with the end of the 112th Congress. Most commentators agree that such legislation is unlikely to be enacted, at least not any time soon.
Turning to the Lanham Act
In the absence of fashion-specific legislation, fashion companies have turned to trademark/trade dress law, especially for the protection of accessory products such as handbags and footwear. However, in contrast to the copyright and design patent laws, which are intended to reward artistic achievement and originality, the fundamental purpose of trademark law is to prevent consumer confusion. As a result, proof of a trademark violation can be far more burdensome than proving infringement of a copyright or design patent.
Under copyright law, the mere act of copying a substantial portion of a protected work constitutes infringement. Under design patent law, a plaintiff need only demonstrate that the defendant's product, from the perspective of the ordinary observer who gives such attention as a purchaser usually gives, is substantially the same in appearance to the patented article. But a party asserting trademark/trade dress infringement must demonstrate that the junior user's product is likely to cause confusion as to its source. This raises the question in the context of fashion accessories as to whether consumers are really confused by a company's similar design, or whether they understand that the junior user's product is unaffiliated with the senior user, but just has a similar look.
The Lanham Act6 has long encompassed a product's "trade dress" in addition to traditional trademarks. Historically, trade dress referred to the packaging and labeling of goods, or, the manner in which a product is "dressed up" to go to market. However, in the early- to mid-1980s, the courts began to recognize an expanded definition of trade dress, one that included the design and appearance of the product itself. Thus, "trade dress" is defined as "the total image of a product and may include features such as size, shape, color or color combinations, textures, or graphics."7
Unless one's claimed trade dress is registered in the U.S. Patent and Trademark Office (most are not), a plaintiff must establish common law rights in the design. A company asserting ownership of a product design trade dress under common law must establish that the design is not functional and that it is "distinctive."
Functionality refers to a trade dress that is essential to the use or purpose of an article, or that affects the cost or quality of the article such that exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage (i.e., an increased cost of manufacture as a result of not being able to use the feature or design). For certain goods, including fashion products, the doctrine of "aesthetic functionality" may come into play. In some jurisdictions, a trade dress could be held to be functional, and hence not a protectable exclusive property right, if the claimed feature contributes to consumer appeal and salability of the product.8
Proof of distinctiveness involves a showing that the trade dress is recognized by the consuming public as denoting the source of the good, as opposed to merely being aesthetically attractive. At one time, the burden of proof for distinctiveness was quite low: A plaintiff could assert that its design was "inherently distinctive" and if the court agreed, the plaintiff was home free; the trade dress owner was not required to demonstrate a continuous and exclusive use of the design. However, that changed in 2000 when the U.S. Supreme Court decided Wal-Mart Stores v. Samara Bros.9
'Wal-Mart' and Secondary Meaning
In Wal-Mart, the Supreme Court pointed out that product designs, as opposed to product packaging, are almost invariably intended not to identify the source of a product, but instead to render the product appealing. Thus, the court made a fundamental change to trade dress law by holding that product design trade dress cannot be "inherently distinctive." Instead, the party asserting trade dress ownership of a product design must prove that the design has acquired secondary meaning, a far more rigorous test than for inherent distinctiveness.
A trade dress has secondary meaning when, in the minds of the public, the primary significance of the product features is to identify the source of the product rather than the product itself.10 Secondary meaning can be established in a variety of ways, including, but not limited to: direct consumer testimony; survey evidence; exclusivity, manner, and length of use of the trade dress; amount and manner of advertising; amount of sales and number of customers; established place in the market; proof of intentional copying by the defendant; and unsolicited media coverage. Significantly, secondary meaning usually requires that a trade dress design has been used for at least several years, a potentially serious handicap for the protection of fashion designs.
Once a protectable trade dress is established, a plaintiff must prove that the accused product is likely to cause confusion, either among prospective purchasers or among the general public in the post-sale context. Both a determination of secondary meaning and the existence of a likelihood of confusion are usually fact-intensive inquiries. Often the determinations are made with the aid of consumer surveys submitted by the parties.
Several recent court opinions are representative of the types of claims that companies have asserted in an effort to protect product designs under trade dress law.
In Brighton Collectibles v. RK Texas Leather Mfg.,11 the plaintiff, a manufacturer of women's fashion accessories including handbags, asserted trade dress rights in a line of handbags, as follows:
Sculpted silver heart, used in conjunction with any two or more of the following: (i) leather embossed to resemble exotic materials such as crocodile, alligator, snake and lizard; (ii) filigreed, silver ornamentation; (iii) a silver heart dangling from a leather strap; (iv) cowhide or brocaded fabrics; and/or (v) additional sculpted silver hearts.
Brighton bought an action against a group of importers for trade dress infringement based on sales of similarly designed handbags. The defendants moved for summary judgment on functionality and that Brighton's trade dress lacked secondary meaning. The defendants argued that the trade dress was aesthetically functional because customers simply wish to purchase a leather purse adorned with silver hearts, regardless of who produces it. Nevertheless, because the issue of functionality has been consistently treated as a question of fact, summary judgment on this issue was denied.
In addition, the court found that Brighton had come forward with evidence that raised a material question of fact as to whether its trade dress had acquired secondary meaning. In particular, Brighton submitted examples of ads that marketed the image of its trade dress, evidence that it owns 160 stores, sells its handbags at 5,000 other stores, has sold its line for almost 20 years, and has wholesale sales exceeding $100 million. This and other evidence was sufficient to defeat the summary judgment motion.
In Givenchy S.A. v. BCBG Max Azria Group,12 Givenchy instituted a trade dress infringement action against BCBG for the sale of two handbag styles that it contended were likely to be confused with its Nightingale handbag. According to Givenchy, the Nightingale bag, which retails between $1,600 to $4,000, contains the following combination of trade dress elements: (1) a removable decorative zipper strap; (2) two double-seamed piped handles attached to the front and back panels of the handbag with a widened teardrop-shaped piece at the attachment points; (3) a larger oblong piece of additional fabric between the front and back panels and the handles; (4) decorative double horizontal and vertical stitches on the exterior that visually separate the bag into four distinctive quadrants; (5) a flat oval bottom; and (6) a silhouette consisting of a curved top and a narrower base.
On the issue of functionality, BCBG presented evidence of its own design choices on its bags and the functionality of those design choices. Although a somewhat creative argument, the court rejected it because the alleged infringer's reasons for selecting features are irrelevant to the non-functionality analysis. Rather, the inquiry focuses on the trade dress holder's product and design decisions. Givenchy presented testimony from an experienced employee who explained that the combination of trade dress elements on its handbag served no utilitarian function from a manufacturing or consumer standpoint. This was sufficient to defeat summary judgment on functionality.
With regard to proof of secondary meaning, Givenchy provided evidence of "image advertising," which feature the trade dress, and of course, a model carrying the handbag. Although this probably could be said about most any fashion advertisement, the court found Givenchy's advertising to be probative of secondary meaning. Importantly, however, Givenchy was also able to provide evidence of five years of exclusive use of its Nightingale trade dress before BCBG introduced the bags at issue. As to likelihood of confusion, the court found that the highly factual inquiry was best to be determined by a jury.
In Gucci America v. Guess?,13 Gucci claimed that the defendants, Guess and its licensees, had sold accessory products, including handbags, shoes, wallets and other goods, that were allegedly designed in an attempt to "Gucci-ize" their product line. In addition to several trademark claims, Gucci alleged a trade dress claim for its "Diamond Motif Trade Dress," consisting of a repeating pattern of a pair of inward facing, inverted "Gs" set at the corners of a repeating, diamond-shaped pattern, connected by two dots forming diagonal lines on a canvas material in a brown/beige color combination.
Gucci's claim concerned Guess and its licensees' use of a Guess pattern, known as the "Quatro G," which contained four "Gs" linked together inside a diamond-shaped pattern with single "Gs" at the corners of the diamonds. After a bench trial, the court found that Gucci's trade dress was entitled to protection in light of its non-functionality and Gucci's extensive advertising expenditures, unsolicited media coverage, successful sales and long-term exclusive use of the trade dress. With regard to likelihood of confusion, the court found that certain Guess products that featured the Quatro-G pattern in a brown/beige color combination constituted infringement of Gucci's trade dress, but that other Guess products bearing the same design in the same color combination were consistent with the Guess image, in that they were "so garish or 'bling-y'" that they are unlikely to cause confusion with Gucci. In addition, the court found that other accused products bearing the same Guess pattern in color combinations other than brown/beige created a commercial impression that is "substantially different from Gucci," and therefore did not infringe the Gucci trade dress.
Fashion companies have successfully established and enforced trade dress rights in fashion accessory products via claims brought under the Lanham Act, but due to the secondary meaning requirement, most of those claims will continue to be limited to products that have been on the market for years. Moreover, the party asserting trade dress ownership must be prepared to prove secondary meaning through substantial advertising, sales and exclusivity of use, among the other relevant factors. Notwithstanding, plaintiffs face uncertainty, as in the Gucci case where identical designs were determined to be infringing or not, based on other design elements on the products, or based solely on the color combinations used.
Further, where fashion products are concerned, there are important policy considerations applicable to the industry: satisfying consumers' desire and demand for fashionable accessory products at affordable prices and not hindering fair competition by low-price retailers. Balancing the enforcement of a plaintiff's trade dress rights with retailers' rights to compete in the mid- and lower-tier markets will continue to test consistent application of the trade dress laws to fashion goods. In between blatant counterfeiting and a product that gives consumers the trendy look that is "in" that season, there is plenty of gray area.
Darren W. Saunders is a partner and Alpa V. Patel is an associate in the litigation division at Manatt, Phelps & Phillips in New York. The authors represented one of the defendants in the 'Gucci v. Guess' case discussed herein.
1. Council Regulation (EU) No. 6/2002 of Dec. 21, 2001 on Community designs.
2. See 17 U.S.C. §§101, 1301, et seq.
3. Id.; see generally 1-2 Nimmer on Copyrights §2.08 (Bender 2012).
4. IDPPA, H.R. 2511, 112th Cong. (2011).
6. 15 U.S.C. §1051 et seq.
7. George Basch v. Blue Coral, 968 F.2d 1532, 1535 (2d Cir. 1992).
8. Forschner Grp. v. Arrow Trading, 124 F.3d 402, 409-10 (2d Cir. 1997).
9. 529 U.S. 205 (2000).
10. Inwood Labs v. Ives Labs, 456 U.S. 844 (1982).
11. No. 10-CV-419-GCP, 2013 U.S. Dist. LEXIS 19556 (S.D.Cal. Feb. 12, 2013).
12. No. 10-8394-GHK (SHX), 2012 U.S. Dist. LEXIS 117144 (C.D. Cal. April 25, 2012).
13. 868 F. Supp. 2d 207 (S.D.N.Y. 2012).