SlideShare una empresa de Scribd logo
1 de 23
Descargar para leer sin conexión
Overview of Proposed U.S.
       Fashion Design Legislation


                   Darrell G. Mottley, Banner & Witcoff, LTD
                         dmottley@bannerwitcoff.com




December 6, 2010
“INNOVATIVE DESIGNS PROTECTION AND
          PIRACY PREVENTION ACT”

      1. BILL INTRODUCED IN U.S. SENATE AUGUST 5, 2010
              S.3728 111TH CONGRESS 2ND SESSION


    2. BILL AMENDED IN U.S. SENATE DECEMBER 6, 2010
            S.3728 111TH CONGRESS 2ND SESSION


2   December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
                PIRACY PREVENTION ACT
               WHAT IS PROTECTABLE?
• § 1301. Designs protected
•   “   A “fashion design”—
        (A) is the appearance as a whole of an article of apparel, including
          its ornamentation; and
        (B) includes original elements of the article of apparel or the
          original arrangement or placement of original or non-original
          elements as incorporated in the overall appearance of the article
          of apparel 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.

         US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
            PIRACY PREVENTION ACT
       WHAT IS FASHION DESIGN?
•    (9) The term ‘apparel’ means—
     (A) an article of men’s, women’s, or children’s clothing,
    including undergarments, outerwear, gloves, footwear, and
    headgear;
     (B) handbags, purses, wallets, tote bags, and belts; and
     (C) eyeglass frames.
• (Proposed 17 U.SC §1301(b)(9))



     US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
            PIRACY PREVENTION ACT

                   STATUTORY BARS TO
                      PROTECTION
• § 1302. Designs not subject to protection
• (B) in the case of a fashion design, embodied in a useful
  article that was made public by the designer or owner in
• the United States or a foreign country before the date of
  enactment of this chapter or
• more than 3 years before the date upon which protection of
  the design is asserted under this chapter.
•   (Proposed 17 USC § 1302(B))

     US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
            PIRACY PREVENTION ACT
                  STATUTORY BARS TO
                     PROTECTION
• § 1302. Designs not subject to protection
• in General
•   (1) not original;
•   (2) staple or commonplace, such as a standard geometric figure, a familiar
    symbol, an emblem, or a motif, or another shape, pattern, or configuration
    which has become standard, common, prevalent, or ordinary;
•   (3) different from a design excluded by paragraph (2) only in insignificant
    details or in elements which are variants commonly used in the relevant
    trades;
•   (4) dictated solely by a utilitarian function of the article that embodies it
•   (Proposed 17 USC §1302)

     US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
           PIRACY PREVENTION ACT
        When Does Protection Start?
• § 1304. Commencement of protection
• the date the design is first made public - when an existing
  useful article embodying the design is anywhere publicly
  exhibited, publicly distributed, or offered for sale or sold to the
  public by the owner of the design or with the owner's consent.

• § 1305. Term of protection
• for a fashion design, shall continue for a term of 3 years
  beginning on the date first made public
• (Proposed 17 U.S.C. §1305(a)(2))

    US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
           PIRACY PREVENTION ACT
      WHAT IS FASHION DESIGN?
•  § 1306. Design notice
   – Once the design is made public
• (A) the words “Protected Design”, the abbreviation “Prot'd
  Des.”, or the letter “D” with a circle, or the symbol “*D*”;
• (B) the year of the date on which protection for the design
  commenced; and
• (C) the name of the owner, an abbreviation by which the
  name can be recognized, or a generally accepted alternative
  designation of the owner.


    US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
           PIRACY PREVENTION ACT

  Rights Protected for Fashion Designs
• § 1308. Exclusive rights
• The owner of a design protected under this chapter [17
  U.S.C.A. § 1301 et seq.] has the exclusive right to--
• (1) make, have made, or import, for sale or for use in trade,
  any useful article embodying that design; and
• (2) sell or distribute for sale or for use in trade any useful
  article embodying that design.




    US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
            PIRACY PREVENTION ACT
          WHAT IS INFRINGEMENT?
• § 1309. Infringement

•   1) IN GENERAL.—As used in this section, an “infringing article” is
    any article the design of which has been
•   copied from a design protected under this chapter, or from an image
    thereof,
•   without the consent of the owner of the protected design.
•   An infringing article is not an illustration or picture of a protected
    design in an advertisement, book, periodical, newspaper,
    photograph, broadcast, motion picture, or similar medium.
• (Proposed 17 U.S.C. §1309(1))

     US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
           PIRACY PREVENTION ACT
 SELLER AND DISTRIBUTORS LIABILITY?
• (b) A seller or distributor of an infringing article who did not make
  or import the article shall be deemed to have infringed on a
  design protected under this chapter only if that person—
• (1) induced or acted in collusion with a manufacturer to make, or
  an importer to import such article; or
• (2) refused or failed, upon the request of the owner of the
  design, to make a prompt and full disclosure of that person's
  source of such article, and that person orders or reorders such
  article after receiving notice by registered or certified mail of the
  protection subsisting in the design.
• (Proposed 17 U.S.C. §1309(b))

    US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
         PIRACY PREVENTION ACT
             NOT AN INFRIGEMENT
• (c) Acts without knowledge.--It shall not be infringement
  under this section to make, have made, import, sell, offer for
  sale, advertise, or distribute, any article embodying a design
  which was created without knowledge either actual or
  reasonably inferred from the totality of the circumstances,
  that a design was protected under this chapter [17 U.S.C.A. §
  1301 et seq.] and was copied from such protected design.

• (Proposed 17 U.S.C. §1309(c))



  US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
            PIRACY PREVENTION ACT
          INFRINGEMENT DEFENSE
•   (3) FASHION DESIGN. In the case of a fashion design, a
    design shall not be deemed to have been copied from a
    protected design if that design

•    (A) is not substantially identical in overall visual appearance
    to and as to the original elements of a protected design; or

•   (B) is the result of independent creation.

•   (Proposed 17 USC §1309(e)(3))
     US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
         PIRACY PREVENTION ACT

          WHAT IS SUBSTANTIALLY
                IDENTICAL?
• (10) In the case of a fashion design, the term
  “substantially identical” means an article of
  apparel which 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.
                             trivial
• (Proposed 17 USC §1301(b)(10))
  US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
             PIRACY PREVENTION ACT
     EXCEPTION TO INFRINGMENT
• § 1309. Infringement
• (i) HOME SEWING EXCEPTION.
•     (1) IN GENERAL.—It is not an infringement of the
  exclusive rights of a design owner for a person to produce a
  single copy of a protected design for personal use or for the
  use of an immediate family member, if that copy is not offered
  for sale or use in trade during the period of protection.
•     (2) RULE OF CONSTRUCTION.—Nothing in this
  subsection shall be construed to permit the publication or
  distribution of instructions or patterns for the copying of a
  protected design.
•   (Proposed 17 USC §1309(i))
      US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
           PIRACY PREVENTION ACT
                          ENFORCEMENT
• § 1321. Remedy for infringement
• (a) IN GENERAL.
•     (2) FASHION DESIGN. In the case of a fashion design,
  the owner of a design is entitled to institute an action for any
  infringement of the design after the design is made public
  under the terms of section 1310(b) of this chapter.

• (Proposed 17 USC §1321(a)(2))



    US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
            PIRACY PREVENTION ACT
                           ENFORCEMENT
• § 1321. Remedy for infringement
•   (e) PLEADING REQUIREMENT FOR FASHION DESIGNS.
•       (1) IN GENERAL. In the case of a fashion design, a claimant in
    an action for infringement shall plead with particularity facts
    establishing that
•           (A) the design of the claimant is protected under this chapter;
•           (B) the design of the defendant infringes upon the protected
    design as described under section 1309(e); and
•          (C) the protected design or an image thereof was available in
    such location or locations, in such a manner, and for such duration
    that it can be reasonably inferred from the totality of the surrounding
    facts and circumstances that the defendant saw or otherwise had
    knowledge of the protected design.
     US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
         PIRACY PREVENTION ACT
                                 REMEDIES
• § 1322. Injunctions
  – TEMPORARY RESTRAINING ORDER
  – PERMANENT INJUNCTION

• § 1323. Recovery for infringement
  – ENHANCED DAMAGES
  – INFRINGER’S PROFIT - the infringer's sales are
    reasonably related to the use of the claimant's design
  – Destruction of Infringing Articles, molds, etc.


  US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
           PIRACY PREVENTION ACT
   WHAT ABOUT DESIGN PATENTS?
• § 1329. Relation to design patent law
• The issuance of a design patent under title 35, United States
  Code, for an original design for an article of manufacture shall
  terminate any protection of the original design under this
  chapter.




    US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
INNOVATIVE DESIGNS PROTECTION AND
          PIRACY PREVENTION ACT
     REGISTRATION REQUIRED?
• NO REGISTRATION FOR A FASHION DESIGN
• NO COPYRIGHT OFFICE REVIEW
• § 1310. Application for registration
• (a) Time limit for application for registration **
       Registration shall not apply to fashion designs.




   US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
Disclaimer – For Illustrative Purposes Only
 This presentation has been prepared for discussion purposes
 only in connection with this educational presentation.
 Illustrative scenarios were prepared to encourage group
 participation and discussion. None of the material contained
 in this presentation represents the views or opinions of
 Banner Witcoff, LTD or sponsoring organization.
 This presentation is not intended to be used in litigation. As
 stated above, the context of this presentation is educational
 and not specific to any particular litigation. Because each
 intellectual property litigation is specific to its own fact
 situation; it would be unwise and even misleading to take a
 passage of static words or slides from this presentation and
 assume that it can be applied to a particular circumstance
 without applying reasoned judgment to the specific facts and
 circumstances of the situation.

  US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
QUESTIONS
THANK YOU




22   US PROPOSED DESIGN FASHION LAW|COMMENTS| December 2010
ABOUT THE PRESENTER
               •   Darrell G. Mottley is President-Elect of the District of Columbia
                   Bar of Washington, D.C. for the 2010-2011 term. He is an
                   intellectual property lawyer focusing on patent and trademark
                   cases, including design law, opinions, licensing and litigation.
                   Darrell is a contributing author of the Annual Review of
                   Intellectual Property Law Developments: 2006-2008; 2008-2009
                   and the Public Contract Law Journal, both publications of the
                   American Bar Association. He is a Fellow of the American Bar
                   Foundation.
               •   Darrell earned his law degree, with honors, from The George
                   Washington University in 2000; his Masters of Business
                   Administration in 1994, and his B.S. Engineering in 1987 from
                   Virginia Tech, where he was Phi Kappa Phi. He is admitted to
                   practice before the U.S. Patent and Trademark Office and
                   courts in the District of Columbia, Virginia, New Jersey, and the
                   Federal and Fourth Circuits.

 dmottley@bannerwitcoff.com
 202-824-3000

  US PROPOSED DESIGN FASHION LAW|COMMENTS| December 2010

Más contenido relacionado

Destacado

Server-Sent Events (real-time HTTP push for HTML5 browsers)
Server-Sent Events (real-time HTTP push for HTML5 browsers)Server-Sent Events (real-time HTTP push for HTML5 browsers)
Server-Sent Events (real-time HTTP push for HTML5 browsers)yay w00t
 
Inaugurazione corso serale 2010 2011 pb
Inaugurazione corso serale 2010 2011 pbInaugurazione corso serale 2010 2011 pb
Inaugurazione corso serale 2010 2011 pbbarbelkarlsruhe
 
Thesis A. Rinaldi (PDF Slides)
Thesis A. Rinaldi (PDF Slides)Thesis A. Rinaldi (PDF Slides)
Thesis A. Rinaldi (PDF Slides)Arturo Rinaldi
 
5 Social Media Strategies for Success
5 Social Media Strategies for Success5 Social Media Strategies for Success
5 Social Media Strategies for SuccessKatherine Driscoll
 

Destacado (8)

Server-Sent Events (real-time HTTP push for HTML5 browsers)
Server-Sent Events (real-time HTTP push for HTML5 browsers)Server-Sent Events (real-time HTTP push for HTML5 browsers)
Server-Sent Events (real-time HTTP push for HTML5 browsers)
 
Corazon
CorazonCorazon
Corazon
 
Inaugurazione corso serale 2010 2011 pb
Inaugurazione corso serale 2010 2011 pbInaugurazione corso serale 2010 2011 pb
Inaugurazione corso serale 2010 2011 pb
 
Thesis A. Rinaldi (PDF Slides)
Thesis A. Rinaldi (PDF Slides)Thesis A. Rinaldi (PDF Slides)
Thesis A. Rinaldi (PDF Slides)
 
BEST gr-bertool
BEST gr-bertoolBEST gr-bertool
BEST gr-bertool
 
5 Social Media Strategies for Success
5 Social Media Strategies for Success5 Social Media Strategies for Success
5 Social Media Strategies for Success
 
CPR South4 981207
CPR South4 981207CPR South4 981207
CPR South4 981207
 
Power schoolinstructions
Power schoolinstructionsPower schoolinstructions
Power schoolinstructions
 

Similar a Proposed New US fashion design law 2010

Fashioning the Law of Design
Fashioning the Law of DesignFashioning the Law of Design
Fashioning the Law of DesignKenan L. Farrell
 
Fashion Design Protection
Fashion Design ProtectionFashion Design Protection
Fashion Design Protectionjanetkimlin
 
Three Ways to Skin a Copycat: Design Patents, Trade Dress and Copyright
Three Ways to Skin a Copycat: Design Patents, Trade Dress and CopyrightThree Ways to Skin a Copycat: Design Patents, Trade Dress and Copyright
Three Ways to Skin a Copycat: Design Patents, Trade Dress and Copyrightscottsicle
 
Industrial design [compatibility mode]
Industrial design [compatibility mode]Industrial design [compatibility mode]
Industrial design [compatibility mode]Delwin Arikatt
 
Design piracy ppt
Design piracy pptDesign piracy ppt
Design piracy pptjanetkimlin
 
FROM APPLE TO GOOGLE TO BATMAN: DESIGN PATENTS FOR AESTHETIC DESIGNS
FROM APPLE TO GOOGLE TO BATMAN: DESIGN PATENTS FOR AESTHETIC DESIGNSFROM APPLE TO GOOGLE TO BATMAN: DESIGN PATENTS FOR AESTHETIC DESIGNS
FROM APPLE TO GOOGLE TO BATMAN: DESIGN PATENTS FOR AESTHETIC DESIGNSscottsicle
 
Wipo Smes Ge 08 Topic05
Wipo Smes Ge 08 Topic05Wipo Smes Ge 08 Topic05
Wipo Smes Ge 08 Topic05FNian
 
Wipo Smes Ge 08 Topic05
Wipo Smes Ge 08 Topic05Wipo Smes Ge 08 Topic05
Wipo Smes Ge 08 Topic05FNian
 
design laws in india.pptx Presentation on Design laws
design laws in india.pptx Presentation on Design lawsdesign laws in india.pptx Presentation on Design laws
design laws in india.pptx Presentation on Design lawsannubuddy333
 
Fashion Design Protection
Fashion Design ProtectionFashion Design Protection
Fashion Design Protectionjanetkimlin
 
How the Intellectual Property Act 2014 will affect British Design Right Law
How the Intellectual Property Act 2014 will affect British Design Right LawHow the Intellectual Property Act 2014 will affect British Design Right Law
How the Intellectual Property Act 2014 will affect British Design Right LawJane Lambert
 

Similar a Proposed New US fashion design law 2010 (12)

Fashioning the Law of Design
Fashioning the Law of DesignFashioning the Law of Design
Fashioning the Law of Design
 
Ethics in fASHION
Ethics in fASHIONEthics in fASHION
Ethics in fASHION
 
Fashion Design Protection
Fashion Design ProtectionFashion Design Protection
Fashion Design Protection
 
Three Ways to Skin a Copycat: Design Patents, Trade Dress and Copyright
Three Ways to Skin a Copycat: Design Patents, Trade Dress and CopyrightThree Ways to Skin a Copycat: Design Patents, Trade Dress and Copyright
Three Ways to Skin a Copycat: Design Patents, Trade Dress and Copyright
 
Industrial design [compatibility mode]
Industrial design [compatibility mode]Industrial design [compatibility mode]
Industrial design [compatibility mode]
 
Design piracy ppt
Design piracy pptDesign piracy ppt
Design piracy ppt
 
FROM APPLE TO GOOGLE TO BATMAN: DESIGN PATENTS FOR AESTHETIC DESIGNS
FROM APPLE TO GOOGLE TO BATMAN: DESIGN PATENTS FOR AESTHETIC DESIGNSFROM APPLE TO GOOGLE TO BATMAN: DESIGN PATENTS FOR AESTHETIC DESIGNS
FROM APPLE TO GOOGLE TO BATMAN: DESIGN PATENTS FOR AESTHETIC DESIGNS
 
Wipo Smes Ge 08 Topic05
Wipo Smes Ge 08 Topic05Wipo Smes Ge 08 Topic05
Wipo Smes Ge 08 Topic05
 
Wipo Smes Ge 08 Topic05
Wipo Smes Ge 08 Topic05Wipo Smes Ge 08 Topic05
Wipo Smes Ge 08 Topic05
 
design laws in india.pptx Presentation on Design laws
design laws in india.pptx Presentation on Design lawsdesign laws in india.pptx Presentation on Design laws
design laws in india.pptx Presentation on Design laws
 
Fashion Design Protection
Fashion Design ProtectionFashion Design Protection
Fashion Design Protection
 
How the Intellectual Property Act 2014 will affect British Design Right Law
How the Intellectual Property Act 2014 will affect British Design Right LawHow the Intellectual Property Act 2014 will affect British Design Right Law
How the Intellectual Property Act 2014 will affect British Design Right Law
 

Último

Boys Wholesale Clothing Online | Port 213
Boys Wholesale Clothing Online | Port 213Boys Wholesale Clothing Online | Port 213
Boys Wholesale Clothing Online | Port 213Port 213
 
Oι πιο ευτυχισμένες και οι πιο δυστυχισμένες χώρες: Πρωτιά για τη Φινλανδία -...
Oι πιο ευτυχισμένες και οι πιο δυστυχισμένες χώρες: Πρωτιά για τη Φινλανδία -...Oι πιο ευτυχισμένες και οι πιο δυστυχισμένες χώρες: Πρωτιά για τη Φινλανδία -...
Oι πιο ευτυχισμένες και οι πιο δυστυχισμένες χώρες: Πρωτιά για τη Φινλανδία -...Newsroom8
 
The Heirloom Gown: A Tale of Love and Legacy
The Heirloom Gown: A Tale of Love and LegacyThe Heirloom Gown: A Tale of Love and Legacy
The Heirloom Gown: A Tale of Love and Legacyirumsohale
 
Beyond Academics - Anibal Romero .pdf
Beyond Academics - Anibal Romero    .pdfBeyond Academics - Anibal Romero    .pdf
Beyond Academics - Anibal Romero .pdfroberttianibal
 
Alex Gurkin: Strategies for a Sustainable Tech Career
Alex Gurkin: Strategies for a Sustainable Tech CareerAlex Gurkin: Strategies for a Sustainable Tech Career
Alex Gurkin: Strategies for a Sustainable Tech CareerAlex Gurkin
 
Bridging Cultures: Antique Indian Doors with Mediterranean Arches
Bridging Cultures: Antique Indian Doors with Mediterranean ArchesBridging Cultures: Antique Indian Doors with Mediterranean Arches
Bridging Cultures: Antique Indian Doors with Mediterranean ArchesEra Chandok
 
HVAC Replacement Process for Commercial Buildings Guide
HVAC Replacement Process for Commercial Buildings GuideHVAC Replacement Process for Commercial Buildings Guide
HVAC Replacement Process for Commercial Buildings Guideoutreachacdirect
 
Secrets for A Happy Relationship & Marriage.
Secrets for A Happy Relationship & Marriage.Secrets for A Happy Relationship & Marriage.
Secrets for A Happy Relationship & Marriage.Surajkurrey
 

Último (8)

Boys Wholesale Clothing Online | Port 213
Boys Wholesale Clothing Online | Port 213Boys Wholesale Clothing Online | Port 213
Boys Wholesale Clothing Online | Port 213
 
Oι πιο ευτυχισμένες και οι πιο δυστυχισμένες χώρες: Πρωτιά για τη Φινλανδία -...
Oι πιο ευτυχισμένες και οι πιο δυστυχισμένες χώρες: Πρωτιά για τη Φινλανδία -...Oι πιο ευτυχισμένες και οι πιο δυστυχισμένες χώρες: Πρωτιά για τη Φινλανδία -...
Oι πιο ευτυχισμένες και οι πιο δυστυχισμένες χώρες: Πρωτιά για τη Φινλανδία -...
 
The Heirloom Gown: A Tale of Love and Legacy
The Heirloom Gown: A Tale of Love and LegacyThe Heirloom Gown: A Tale of Love and Legacy
The Heirloom Gown: A Tale of Love and Legacy
 
Beyond Academics - Anibal Romero .pdf
Beyond Academics - Anibal Romero    .pdfBeyond Academics - Anibal Romero    .pdf
Beyond Academics - Anibal Romero .pdf
 
Alex Gurkin: Strategies for a Sustainable Tech Career
Alex Gurkin: Strategies for a Sustainable Tech CareerAlex Gurkin: Strategies for a Sustainable Tech Career
Alex Gurkin: Strategies for a Sustainable Tech Career
 
Bridging Cultures: Antique Indian Doors with Mediterranean Arches
Bridging Cultures: Antique Indian Doors with Mediterranean ArchesBridging Cultures: Antique Indian Doors with Mediterranean Arches
Bridging Cultures: Antique Indian Doors with Mediterranean Arches
 
HVAC Replacement Process for Commercial Buildings Guide
HVAC Replacement Process for Commercial Buildings GuideHVAC Replacement Process for Commercial Buildings Guide
HVAC Replacement Process for Commercial Buildings Guide
 
Secrets for A Happy Relationship & Marriage.
Secrets for A Happy Relationship & Marriage.Secrets for A Happy Relationship & Marriage.
Secrets for A Happy Relationship & Marriage.
 

Proposed New US fashion design law 2010

  • 1. Overview of Proposed U.S. Fashion Design Legislation Darrell G. Mottley, Banner & Witcoff, LTD dmottley@bannerwitcoff.com December 6, 2010
  • 2. “INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT” 1. BILL INTRODUCED IN U.S. SENATE AUGUST 5, 2010 S.3728 111TH CONGRESS 2ND SESSION 2. BILL AMENDED IN U.S. SENATE DECEMBER 6, 2010 S.3728 111TH CONGRESS 2ND SESSION 2 December 6, 2010
  • 3. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT WHAT IS PROTECTABLE? • § 1301. Designs protected • “ A “fashion design”— (A) is the appearance as a whole of an article of apparel, including its ornamentation; and (B) includes original elements of the article of apparel or the original arrangement or placement of original or non-original elements as incorporated in the overall appearance of the article of apparel 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. US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 4. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT WHAT IS FASHION DESIGN? • (9) The term ‘apparel’ means— (A) an article of men’s, women’s, or children’s clothing, including undergarments, outerwear, gloves, footwear, and headgear; (B) handbags, purses, wallets, tote bags, and belts; and (C) eyeglass frames. • (Proposed 17 U.SC §1301(b)(9)) US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 5. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT STATUTORY BARS TO PROTECTION • § 1302. Designs not subject to protection • (B) in the case of a fashion design, embodied in a useful article that was made public by the designer or owner in • the United States or a foreign country before the date of enactment of this chapter or • more than 3 years before the date upon which protection of the design is asserted under this chapter. • (Proposed 17 USC § 1302(B)) US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 6. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT STATUTORY BARS TO PROTECTION • § 1302. Designs not subject to protection • in General • (1) not original; • (2) staple or commonplace, such as a standard geometric figure, a familiar symbol, an emblem, or a motif, or another shape, pattern, or configuration which has become standard, common, prevalent, or ordinary; • (3) different from a design excluded by paragraph (2) only in insignificant details or in elements which are variants commonly used in the relevant trades; • (4) dictated solely by a utilitarian function of the article that embodies it • (Proposed 17 USC §1302) US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 7. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT When Does Protection Start? • § 1304. Commencement of protection • the date the design is first made public - when an existing useful article embodying the design is anywhere publicly exhibited, publicly distributed, or offered for sale or sold to the public by the owner of the design or with the owner's consent. • § 1305. Term of protection • for a fashion design, shall continue for a term of 3 years beginning on the date first made public • (Proposed 17 U.S.C. §1305(a)(2)) US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 8. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT WHAT IS FASHION DESIGN? • § 1306. Design notice – Once the design is made public • (A) the words “Protected Design”, the abbreviation “Prot'd Des.”, or the letter “D” with a circle, or the symbol “*D*”; • (B) the year of the date on which protection for the design commenced; and • (C) the name of the owner, an abbreviation by which the name can be recognized, or a generally accepted alternative designation of the owner. US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 9. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT Rights Protected for Fashion Designs • § 1308. Exclusive rights • The owner of a design protected under this chapter [17 U.S.C.A. § 1301 et seq.] has the exclusive right to-- • (1) make, have made, or import, for sale or for use in trade, any useful article embodying that design; and • (2) sell or distribute for sale or for use in trade any useful article embodying that design. US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 10. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT WHAT IS INFRINGEMENT? • § 1309. Infringement • 1) IN GENERAL.—As used in this section, an “infringing article” is any article the design of which has been • copied from a design protected under this chapter, or from an image thereof, • without the consent of the owner of the protected design. • An infringing article is not an illustration or picture of a protected design in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture, or similar medium. • (Proposed 17 U.S.C. §1309(1)) US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 11. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT SELLER AND DISTRIBUTORS LIABILITY? • (b) A seller or distributor of an infringing article who did not make or import the article shall be deemed to have infringed on a design protected under this chapter only if that person— • (1) induced or acted in collusion with a manufacturer to make, or an importer to import such article; or • (2) refused or failed, upon the request of the owner of the design, to make a prompt and full disclosure of that person's source of such article, and that person orders or reorders such article after receiving notice by registered or certified mail of the protection subsisting in the design. • (Proposed 17 U.S.C. §1309(b)) US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 12. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT NOT AN INFRIGEMENT • (c) Acts without knowledge.--It shall not be infringement under this section to make, have made, import, sell, offer for sale, advertise, or distribute, any article embodying a design which was created without knowledge either actual or reasonably inferred from the totality of the circumstances, that a design was protected under this chapter [17 U.S.C.A. § 1301 et seq.] and was copied from such protected design. • (Proposed 17 U.S.C. §1309(c)) US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 13. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT INFRINGEMENT DEFENSE • (3) FASHION DESIGN. In the case of a fashion design, a design shall not be deemed to have been copied from a protected design if that design • (A) is not substantially identical in overall visual appearance to and as to the original elements of a protected design; or • (B) is the result of independent creation. • (Proposed 17 USC §1309(e)(3)) US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 14. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT WHAT IS SUBSTANTIALLY IDENTICAL? • (10) In the case of a fashion design, the term “substantially identical” means an article of apparel which 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. trivial • (Proposed 17 USC §1301(b)(10)) US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 15. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT EXCEPTION TO INFRINGMENT • § 1309. Infringement • (i) HOME SEWING EXCEPTION. • (1) IN GENERAL.—It is not an infringement of the exclusive rights of a design owner for a person to produce a single copy of a protected design for personal use or for the use of an immediate family member, if that copy is not offered for sale or use in trade during the period of protection. • (2) RULE OF CONSTRUCTION.—Nothing in this subsection shall be construed to permit the publication or distribution of instructions or patterns for the copying of a protected design. • (Proposed 17 USC §1309(i)) US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 16. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT ENFORCEMENT • § 1321. Remedy for infringement • (a) IN GENERAL. • (2) FASHION DESIGN. In the case of a fashion design, the owner of a design is entitled to institute an action for any infringement of the design after the design is made public under the terms of section 1310(b) of this chapter. • (Proposed 17 USC §1321(a)(2)) US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 17. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT ENFORCEMENT • § 1321. Remedy for infringement • (e) PLEADING REQUIREMENT FOR FASHION DESIGNS. • (1) IN GENERAL. In the case of a fashion design, a claimant in an action for infringement shall plead with particularity facts establishing that • (A) the design of the claimant is protected under this chapter; • (B) the design of the defendant infringes upon the protected design as described under section 1309(e); and • (C) the protected design or an image thereof was available in such location or locations, in such a manner, and for such duration that it can be reasonably inferred from the totality of the surrounding facts and circumstances that the defendant saw or otherwise had knowledge of the protected design. US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 18. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT REMEDIES • § 1322. Injunctions – TEMPORARY RESTRAINING ORDER – PERMANENT INJUNCTION • § 1323. Recovery for infringement – ENHANCED DAMAGES – INFRINGER’S PROFIT - the infringer's sales are reasonably related to the use of the claimant's design – Destruction of Infringing Articles, molds, etc. US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 19. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT WHAT ABOUT DESIGN PATENTS? • § 1329. Relation to design patent law • The issuance of a design patent under title 35, United States Code, for an original design for an article of manufacture shall terminate any protection of the original design under this chapter. US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 20. INNOVATIVE DESIGNS PROTECTION AND PIRACY PREVENTION ACT REGISTRATION REQUIRED? • NO REGISTRATION FOR A FASHION DESIGN • NO COPYRIGHT OFFICE REVIEW • § 1310. Application for registration • (a) Time limit for application for registration ** Registration shall not apply to fashion designs. US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 21. Disclaimer – For Illustrative Purposes Only This presentation has been prepared for discussion purposes only in connection with this educational presentation. Illustrative scenarios were prepared to encourage group participation and discussion. None of the material contained in this presentation represents the views or opinions of Banner Witcoff, LTD or sponsoring organization. This presentation is not intended to be used in litigation. As stated above, the context of this presentation is educational and not specific to any particular litigation. Because each intellectual property litigation is specific to its own fact situation; it would be unwise and even misleading to take a passage of static words or slides from this presentation and assume that it can be applied to a particular circumstance without applying reasoned judgment to the specific facts and circumstances of the situation. US PROPOSED DESIGN FASHION LAW |COMMENTS| December 6, 2010
  • 22. QUESTIONS THANK YOU 22 US PROPOSED DESIGN FASHION LAW|COMMENTS| December 2010
  • 23. ABOUT THE PRESENTER • Darrell G. Mottley is President-Elect of the District of Columbia Bar of Washington, D.C. for the 2010-2011 term. He is an intellectual property lawyer focusing on patent and trademark cases, including design law, opinions, licensing and litigation. Darrell is a contributing author of the Annual Review of Intellectual Property Law Developments: 2006-2008; 2008-2009 and the Public Contract Law Journal, both publications of the American Bar Association. He is a Fellow of the American Bar Foundation. • Darrell earned his law degree, with honors, from The George Washington University in 2000; his Masters of Business Administration in 1994, and his B.S. Engineering in 1987 from Virginia Tech, where he was Phi Kappa Phi. He is admitted to practice before the U.S. Patent and Trademark Office and courts in the District of Columbia, Virginia, New Jersey, and the Federal and Fourth Circuits. dmottley@bannerwitcoff.com 202-824-3000 US PROPOSED DESIGN FASHION LAW|COMMENTS| December 2010