This document discusses whether fashion design should receive copyright protection under intellectual property law. It provides background on past attempts to protect fashion through antitrust laws and unfair competition claims, which were unsuccessful. Fashion design meets the criteria of original works of authorship fixed in a tangible medium, as required for copyright. However, there is debate around how much creativity is needed and where to draw the line for protection. The document argues that highly original fashion designs deserve the same protection as other creative works like paintings and sculptures.

1. ANTITRUST LAW
DESIGN PIRACY
PILAGING ON THE HIGH FINANCIAL SEAS OF FASHION
Kathleen Broughton
CWRU School of Law

2. April 27, 2009
Abstract
Fashion design provides insight to culture, geographical climate and political
statements all of which defines the periodic time. People, since the beginning of time, have
used clothes to define themselves. Fashion designers are paid for their talent and
creativity. Their talents are no different than that of the painter and his canvas, the
scientist and his laboratory, and the singer and his studio. A fashion designer deserves
protection for his intellectual property when such innovation qualifies under similar arts
deemed protected by intellectual property law. This paper will explore the background of
antitrust and anti-competition issues arising from the lack of legal protection available to
fashion design. It will then discuss the different types of intellectual property protection
available and the associated financial costs of not extending protection to fashion design.
An argument will then be presented drawing the concerns of allowing fashion design to
receive statutory protection. The overall goal of this paper is to discuss the infringement
issues that arise from no available intellectual property protection for fashion design and
provide meaning to why fashion design should be protected under copyright law.
Introduction
In the spring of every year, thousands of college students gear up for having a week
of relaxation and social interaction by flocking to warm climates with sandy beaches. At
the same time, thousands of fashion related personnel—designers, runway models, the
media, high powered executives and influential people—flock to fashion capitals of the
world—Milan, New York City, and, above all, Paris—to participate in Fashion Week. This
2

3. spectacular week of displaying up and coming trends publicly is when a designer can
display their predictions for what the next little black dress looks like. It is an opportunity
for bold moves of new talents and classic revivals of established designers. The one
unfortunate scenario for all designers, regardless of skill or establishment in the industry,
is the preying of new designs by secondary hacks—design pirates—who take a designer’s
eloquently crafted new innovation and transform it into a cheap, replicated version of the
original high-glam ingenious work. This act of intellectual property stealing is legal
because, unfortunately, no statutory protection is allocated to fashion design. Typically,
intellectual property rights span to all ideas and inventiveness, regardless if it is scientific,
artistic, or symbolic to define products. Fashion design is a very fruitful industry both in
artistic creation and in financial benefit. With the wide array of protected intellectual
property, it is appropriate to extend protection to fashion design.
Protection of fashion design is a growing need as the economic stakes of the fashion
industry increases. The United Kingdom government reports that the wholesales sales
revenue for U.K. designers was at 600M GBP in 1997.1
Sales revenues grew at an increase
of over 225% from 1990, where the combined wholesales revenue was at a mere 185M
GBP. 2
Amazingly, the UK government indicates that their sales revenues are modest
compared to the leading fashion industry countries. It is reported that France’s industry in
1997 is valued at a comparable 900M GBP, while Italy earned approximately 1.5B GBP the
same year as the United States has the astonishing record of 5.2B GBP in sales.3
At that
time, the British government rationalized that sales from fashion design would continue to
1
See Designer Fashion, Section 6. http://www.culture.gov.uk/images/publications/fashion.pdf (last visited April
13, 2009).
2
Id.
3
Id.
3

4. rise in future years based on trends of consumers, sponsorship of events by non-fashion
companies, support of the media and continued outstanding innovation from fashion
designers. The media likely does have a strong influence on the behavior of the consumers
and continues to display to the general public the positive emotions associated with
wearing trendy and stylish clothing. Network television, for example, has spun reality T.V.
from people surviving on an island to fashion designers expunging creative fashion
innovation on a whim to Tim Gunn, Heidi Klum, Michael Kors and Nina Garcia on Project
Runway. The general public grows more star-struck with time and the appeal of wearing
“designer” clothing becomes more of a need of the middle class rather than a luxury
afforded only to economically wealthy.
These trends of the media, and the responses by the general public, prove that
fashion design is an important aspect of popular culture. Fashion plays an important role
in defining culture of any society; it is timeless and holds a defined and large economic
stimulus. As the global society is more self-focused, fashion becomes an even greater
source of defining an individual’s sense of wealth and character. It is apparent in such
strips as Rodeo Drive of Los Angeles and 5th
Avenue in New York that the elite pride their
financial wealth and parade it around by wearing stylish couture exclusively made designs.
The exclusive designs made by high-end fashion realtors are investments for some people –
just as certain cars or jewelry has appreciative value to it. The value is initiated by the
designer and the worth in the design. A fashion designers ideas and implementation of
such ideas should receive credit and be afforded intellectual property rights. Since there is
no protection, the designs of fashion trickle down the realty pipelines over time until the
once $5000 runway gown becomes the bargain basement $50 muumuu. Thus, the
4

5. questions evoked are why is there no protection and what alternative steps were
attempted to gain protection; what previous forms of protection were attempted; where
should the limits be placed on protection; and how should enforcement be handled and
regulated. Design piracy, an act that has pillaged itself in fashion design for decades, will
continue to escalate unless protection is adopted and enforced.
Antitrust and Unfair Competition
Multiple attempts to protect fashion design are apparent from the various forms of
traditional IP protection designers and companies have tried. Protection has also been
attempted by anti-compete clauses and organizations formed just to protect fashion design.
The Fashion Originator’s Guild, an organization created in 1933 to prevent the copying of
clothing designs, provided a registration scheme for manufacturers with the intent to
boycott retailers if the retailers were found to sell copied designs of the manufacturers.
The Guild consisted of 176 manufacturers of women’s garments and accounted for more
than 38% of all women’s garments wholesaling at $6.75 and up, and more than 60% of
those garments of $10.75 and above. The Federal Trade Commission brought suit against
the Guild in the Second Circuit Court claiming violation of section 1 of the Sherman Act,
section 12 of the Clayton Act, and section 41 of the Federal Trade Commission Act. 4
Collectively, the Guild was charged with illegally creating a contract, combination or
conspiracy to restrain trade or commerce among the several states related to fashion
designs.5
The Court found that “the purpose and object of this combination, its potential
power, its tendency to monopoly, the coercion it could and did practice upon a rival
method of competition, all brought it within the policy of the prohibition declared by the
4
Fashion Originators' Guild, Inc. v. FTC, 312 U.S. 457 (1941).
5
15 U.S.C.S. §1
5

6. Sherman and Clayton Acts.”6
The decision found by the Supreme Court has kept any
further development of a coalition to protect fashion design.
Section 1 of the Sherman Act makes illegal every contract, combination or
conspiracy in restraint of trade or commerce among the several states;7
Section 2 makes
illegal every combination or conspiracy which monopolizes or attempts to monopolize any
part of that trade or commerce.8
A complete monopoly is not necessary to establish a
violation of the Sherman Act. To prove a violation of the Sherman Act regarding a
monopoly, proof must be made to indicate that the public was deprived of the advantages
of free competition. The restraints of trade found in Fashion Guild were illegal per se. In a
per se violation of the Sherman Act there must be a motive to create a restraint on trade as
well as an agreement among the parties to act in such a manner as to restrict trade. In
comparison to a violation of antitrust laws, a corporation can also commit a tort of unfair
competition.9
This tort is another form which some companies have approached the way to
combat design piracy.
6
Fashion Originators' Guild, Inc. v. FTC, 312 U.S. 457 (1941).
7
15 U.S.C.S. §1
8
15 U.S.C.S. §2
9
The 3rd
Restatement of Unfair Competition, section 1(a) states:
One who causes harm to the commercial relations of another by engaging in a business or trade is not subject to
liability to the other for such harm unless:
(a) the harm results from acts or practices of the actor actionable by the other under the rules of this Restatement
relating to:
(1) deceptive marketing, as specified in Chapter Two;
(2) infringement of trademarks and other indicia of identification, as specified in Chapter Three;
(3) appropriation of intangible trade values including trade secrets and the right of publicity, as specified in Chapter
Four;
or from other acts or practices of the actor determined to be actionable as an unfair method of competition, taking
into account the nature of the conduct and its likely effect on both the person seeking relief and the public;
6

7. In Millinery Creator’s Guild v. FTC, a 1941 case also heard by the Supreme Court,
focused on restricting trade related to the production of woman’s fashion hats.10
In
Millinery Creator’s Guild, “the members of the guild were designers and manufacturers of
women's hats, and it was stipulated by the parties that tendency and purpose of the plan
under which the guild operated was to limit retail dealers and deprive the public of the
benefits of competition as to price and otherwise in the sale of stylish hats.”11
The
Commission found that the effect of the plan was to limit competition and create a
monopoly in the sale of women’s hats. The Court held this case was parallel to Fashion
Originators’ Guild but the plan did not explicitly state price-fixing, any illegal restraint of
trade, deterioration of product quality, nor show any monopolistic characteristics. Rather,
the plan requires competition by member’s skill and organization rather than by
appropriation of skill and organization of others through limiting the retail dealers’ source
of supply to inhibit price competition.12
Despite the holding in Fashion Originators’ Guild
and Millinery Creator’s Guild, efforts to restrict design piracy have still been attempted by
various entities through other traditional forms of intellectual property rights.
Intellectual Property Protection
a. Copyright
Copyright protection is the main form of intellectual property protection for
creative works of artistic expression and is currently based upon the laws of the 1976
Copyright Act. Copyright law is federal and governed by the United States Code Section 17.
Under 17 U.S.C. §102(a), “copyright protection subsists…in original works of authorship
10
Millinery Creator's Guild, Inc. v. Federal Trade Com., 312 U.S. 469 (1941).
11
Id.
12
Id.
7

8. fixed in any tangible medium of expression.”13
Copyright protection is available to the
copyright owner for the life of the author plus seventy years.14
Copyright protection is
available for an extremely broad range of expressions, including literary works, music,
choreographic expressions, paintings, drawings, sculptures, and even architectural works.15
Copyright protection is, therefore, available for a wide array of creative expression.
For a work to be copyrightable, it must be original. “Original, as the term is used in
copyright, means only that the work was independently created by the author…and that it
possesses some minimal degree of creativity.”16
The term original was under question in
Feist because the subject matter was focused on whether or not telephone directories are
copyrightable. The Feist Court found that although the facts, the names and contact
information of the people, were not copyrightable, the actual organization and details of
displaying the facts were a mode of creative expression and thus protectable under
copyright law.17
A scintilla of creativity is necessary, at least, to gain protection.
In 1903 the Supreme Court first began to analyze the term original in Bleinstein v.
Donaldson Lithograph Company. In Bleistein, the Court was dealing with chromolithograph
designs that were created for an advertisement by the plaintiff through derivative works.18
The question was whether or not the plaintiff’s chromolithographs were protected by
copyright law and, if such protection exists, whether or not the defendant’s infringed the
13
17 U.S.C. §102a
14
17 U.S.C. §302
15
17 U.S.C. §102a
16
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991).
17
Id.
18
A derivative work is a personal reaction to an original work of expression. The copyright protection extended to
the derivative work is the originality found in such derivative work and is protected independently from the
original work. Copyright protection for derivative works is available because of fair use and is protected under 17
U.S.C. 103 and 107.
8

9. plaintiff’s works. The court held that chromolithographs are protectable by copyright law
because “originality appears to lie in the very act of producing the tangible work, rather
than in the act of forming an intellectual creation in the mind, then transferring it to written
form.”19
Thus, originality is focused on the actual product not the way in which it is
derived. The Court, in regard to copying, recognized that “if a copyrighted article has merit
and value enough to be the object of piracy, it should also be of sufficient importance to be
entitled to protection.”20
This established concept of protecting expressions that succumbs
to piracy should apply to fashion design.
Fashion can be original in design. If it were not, then fashion week would not
receive the hype and revenue as it does—twice a year in the cities of glam. Just like car
shows that reveal the newest, latest and greatest aerodynamic design for a sports car or a
SUV created by an engineering team, a runway show is a fashion designers opportunity to
first display their new creative idea. Copyright protection is already available for jewelry.
The protection is available to the extent of utilitarian purposes. Thus, in Kieselstein-Cord
the Southern District Court of New York held that protection was available to the artistic
design of a belt buckle to the extent that no utilitarian purpose exists in the copyrighted
material.21
The court found that jewelry qualified as a type of structural design. The court
went on to state:
The belt buckles in this case seem to belong more to the world of fashion
design than to the world of literature and art, which is the traditional domain of
copyright law. The status of designs for clothing is instructive. The design
superimposed on a fabric is copyrightable, whereas the style of the dress (even an
expensive Parisian couturier's design) in which the fabric is used is not no matter
19
Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903).
20
Id.
21
Kieselstein-Cord v. Accessories by Pearl, Inc., 489 F. Supp. 732 (S.D.N.Y. 1980).
9

10. how original, ornamental, or nonessential for function that design may be. The
fabric design can be seen as a separable artistic element, whereas the overall dress
design like the overall shape of the belt buckle cannot.22
It would then appear that a major concern in copyrighting fashion design lies in the overall
creativity imposed in the designs. It is alarming for the court to note that the design
imposed on a fabric is copyrightable but the style of the dress is not. The design imposed on
a fabric could be more than just the textile design on a fabric and rather be the design cut of
the dress. It is then a question of whether or not the design cut is original enough to be
afforded copyright protect. For an expression to be original, creativity is required.
Creativity is an important aspect of copyright. Copyright protection is available for
original works of art. Original works of art are inherently creative. When dealing with
fashion design it becomes a question of how much creativity must be present to create an
original work of copyrightable expression. This would make sense in regard to simple,
everyday designs of clothing, such as t-shirts or blue jeans. It is a slippery slope as to
where protection starts and stops. That is a question of fact, rather than of law. Justice
Holmes, in the 1903 Bleistein case, recognized that it is not for the court to decide what is
art. Justice Holmes remarked:
It would be a dangerous undertaking for persons trained only to the law to
constitute themselves the final judges of the worth of pictorial illustrations, outside
of the narrowest and most obvious limits. At the one extreme, some works of genius
would be sure to miss appreciation. Their very novelty would make them repulsive
until the public had learned the new language in which their author spoke. It may be
more than doubted, for instance, whether the etchings of Goya or the paintings of
Manet would have been sure of protection when seen for the first time. At the other
end, copyright would be denied to pictures which appealed to a public less educated
than the judge. (Emphasis added.)23
22
Id.
23
Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903).
10

11. Justice Holmes, in recognizing that judges should not determine the value of a creative
work, has influenced courts to let the legislature determine what is and what is not
protected by copyright law. The point Justice Holmes was making, however, was that no
legal personnel should be allowed to dictate what constitutes artistic expression. It should,
therefore, be acceptable to allow fashion design copyright protection if the minimum
threshold of copyright standards are met.
It is a difficult task to determine what is and is not protectable copyright subject
matter and protecting fashion design has plagued the court and the legislature for the
greater half of the century. An early case addressing a parallel issue to fashion design
protection is Cheney Brothers v. Doris Silk Corporation where a court was evaluating
whether or not protection was available for design prints on silk fabrics. These designs by
the Cheney Brothers were new and unique each year. Doris Silk Corporation copied one of
the most popular designs and undercut Cheney Brothers in the sale to the public. The
Cheney Brothers requested protection for a single season but the 1929 court ultimately
denied such protection.24
Nearly thirty years later the court again addressed the question
of textile design copyright protection.
In Peter Pan Fabrics v. Martin Weiner Corporation the question as to whether or not
copyright protection extended to textile designs printed on fabric was infringed. The
Second Circuit, in evaluating infringement of a copyright noted that “in the case of verbal
'works' it is well settled that although the 'proprietor's' monopoly extends beyond an exact
reproduction of the words, there can be no copyright in the 'ideas' disclosed but only in
24
Cheney Bros. v. Doris Silk Corp., 35 F.2d 279 (1929).
11

12. their 'expression.'”25
The Second Circuit went on to state that the idea itself cannot be
copyrighted – only the actual expression.26
When addressing potential infringement of
screen prints on fabric the court stated:
In the case of designs, which are addressed to the aesthetic sensibilities of an
observer, the test is, if possible, even more intangible. No one disputes that the
copyright extends beyond a photographic reproduction of the design, but one
cannot say how far an imitator must depart from an undeviating reproduction to
escape infringement. In deciding that question one should consider the uses for
which the design is intended, especially the scrutiny that observers will give to it
as used. In the case at bar we must try to estimate how far its overall appearance
will determine its aesthetic appeal when the cloth is made into a garment. Both
designs have the same general color, and the arches, scrolls, rows of symbols,
etc. on one resemble those on the other though they are not identical. Moreover,
the patterns in which these figures are distributed to make up the design as a
whole are not identical. However, the ordinary observer, unless he set out to
detect the disparities, would be disposed to overlook them, and regard their
aesthetic appeal as the same. That is enough; and indeed, it is all that can be said,
unless protection against infringement is to be denied because of variants
irrelevant to the purpose for which the design is intended.27
The principles the court set out to determine if there is infringement of a textile
design on fabric can also serve the general analysis to determine if copyright protection is
available for a garment design. Extending the Peter Pan Fabrics analysis to determine if
there is infringement of a fabric textile design could weigh in against fashion design by
evaluating principles such as the cut of the design, the previous known designs, the cost of
producing the garment, the number of garment reproductions, and the overall originality of
the garment expression. The slippery slope argument would cease at the point where there
is functionality to the design and where the protection extends into common, ordinary
design. The question of common design would, unless obvious, become a question of fact.
25
Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (1960).
26
Id.
27
Id.
12

13. Another example of when the courts were determining if copyright protection
extended to lace designs used in fashion. In Thomas Wilson and Company v. Irving J.
Dorfman Company the Second Circuit, in 1970, reviewed the validity of copyright in the
designs of lace used in lingerie. In Thomas Wilson the defendant was given a sample of the
plaintiff’s lace by a customer of the plaintiffs with a request to produce a similar product at
a reduced price. 28
The willful infringement of the defense was claimed as acceptable
because there was a lack of “creativity” found in the pansy lace design. In its ruling the
court acknowledged that the plaintiff’s staff was the original creators of the design and “the
configuration of the design, including such details as petals and leaves, required an
appreciable amount of creative skill and judgment.”29
Ultimately, the Second Circuit Court
affirmed the district court’s ruling that there was sufficient creativity displayed in the lace
design to constitute a valid copyright and the defendant did infringe such copyright.
Likewise, in Eve of Milady v. Impression Bridal the Southern District of New York
court was determining if copyright protection should be extended to bridal gown dress
designs. In Eve of Milady the plaintiff requested a preliminary injunction to prevent the
defendant from infringing the copyright or trademark of the plaintiff and entering into
unfair competition by producing and selling replica bridal dresses at reduced cost.30
The
copyrightable material on the dresses was the lace designs rather than the bridal gowns
because these designs are considered a form of “writings” under copyright law.31
Ultimately, the court granted the preliminary injunction because potential irreparable
harm was shown along with the likelihood of infringement of the copyright.
28
Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409 (1970).
29
Id.
30
Eve of Milady v. Impression Bridal, 957 F. Supp. 484 (S.D.N.Y. 1997).
31
Id.
13

14. As indicated in Eve of Milady, the issues of protecting fashion design spread beyond
just copyright law because designers face multi-levels of legal issues, such as unfair
competition, trademark infringement or patent infringement. Although copyright appears
as the most sensible form of intellectual property protection available for fashion design, a
brief analysis of previous attempts of protection under trademark and patent law should be
explored.
b. Trademark
A trademark is a word, name, symbol, device, or other designation, or a combination
of such designations, that is distinctive of a person’s goods or services that is used in a
manner that identifies and distinguishes such goods or services from competitors.
Trademarks are not required registration with the United States Patent and Trademark
Office. However, registration provides constructive notice and is a strong form of intrinsic
evidence to prove effective date of use of a trademark. There are five levels of trademark
distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful. Generic distinction
is not afforded any copyright protection. Descriptive trademark protection is allowed if the
owner of the mark can prove secondary meaning. Suggestive, arbitrary, and fanciful are
known as technical trademarks and no secondary meaning is necessary for full protection.
Trademarks are source identifies and serve an important role in the fashion industry. Most
designers have a trademark to represent their brand and line of clothing. Sometimes the
trademark is displayed in an emblem, such as Russell Simmons’ Babyphat cat, ADDIDAS’
three stripes or Tommy Hilfiger’s classic white and red block symbol or is displayed in a
signature of the designer, such as Sean Jean or Michael Kors. Source identifiers carry into
fashion design frequently. It is the emblem itself that creates the look of some fashions.
14

15. For example, the ADDIDAS three stripe trademark is well-known but livid sports players
and young hipsters alike and the stripes are not only accents to the clothes and shoes but
truly the design that sell the clothing. It is protection of such emblems that is allowed by
trademark. It then becomes a question as to what extent the trademark makes the clothing
where protection should also extend into the actual fashion design.
A well known case of unfair competition through creating “knock-off” creations of a
designer is Walmart v. Samara Brothers. In Samara Brothers, Samara Brothers brought suit
against Walmart for trade dress infringement under Section 43(a) of the Lanham Act.32
Essentially, Walmart went to a third party manufacturer with pictures of the Samara
Brothers children’s clothing, complete with trademarked designs, in hopes of a
reproduction.33
The manufacturer agreed to produce look-a-like designs, which were sold
in the Walmart stores at a reduced price. The designs were not registered with the PTO
and thus a common-law action was brought by Samara Brothers for trade dress
infringement. The court held that the trade dress is afforded protection if the design is
inherently distinctive or if secondary meaning is established.34
Ultimately, the district
court ruled with a jury, and the court of appeals affirmed, the injunctive relief sought along
with a violation of copyright, unfair competition and trademark law with damages totaling
32
Lanham Act §43(a) False Designation of Origin, occurs when:
(1) 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, which –
a. Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of such person with another person, or as to the origin, sponsorship, or approval of his or
her goods, services, or commercial activities by another person.
33
Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000).
34
Id.
15

16. $1.6M. The Supreme Court, in reviewing the trademark violation through illegal copying
trade dress, stated that trade dress was “a category that originally included only the
packaging, or "dressing," of a product, but in recent years has been expanded by many
courts of appeals to encompass the design of a product.”35
Thus, trade dress is based on a
product’s total image and overall appearance to customers. It determined that design is
not inherently distinctive because it would not allow for competition in the marketplace.
The Supreme Court, ultimately, reversed and remanded the case to the Second Circuit
because it was found that trade dress is not inherently distinctive and can only gain legal
protection if secondary meaning is shown.36
As the Court noted, trade dress is becoming
more prevalent to protect design.
Similarly to Samara Brothers, in the case of Knitwaves v. Lollytogs the court was
evaluating an unfair competition suit after the defendant created a substantially similar
design on children’s sweaters to that of the plaintiff.37
Knitwaves, a children’s clothing
designer and manufacturer, produced a line of sweaters that were eco-themed. Lollytogs, a
competing manufacturer, introduced a sweater line that was similar to Knitwaves.
Knitwaves brought suit for copyright infringement and unfair competition under the
Lanham Act and New York law. Knitwave claimed their sweater design with matching
skirts and pants utilized innovation color schemes unique to their line.38
Lollytog admitted
that their sweater set designs had the “same feel” as Knitwaves but claimed that their
design was different enough to avoid infringement. Lollytog, while working with their
manufacturer, gave instructions to reproduce a background stripe that was identical to
35
Id.
36
Id.
37
Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (1995).
38
Id.
16

17. Knitwaves and provided picture examples of the sweater stripe. The district court rejected
the testimony of Lollytog that the designs were meant to be different and instead
concluded that Lollytog’s intent and actual manufactured goods were knock-off
reproductions.39
The district court granted an injunction against a continued sale of the
goods and that because Lollytog’s violation was willful Knitwave was entitled to an order
requiring an immediate recall of all Lollytogs’ infringing sweaters. The Second Circuit,
ultimately, held that the district court properly found that Lollytogs illegally copied
Knitwaves designs in two sweaters, in violation of the Copyright Act, but there was no
violation of unfair competition.
The problem with the district court’s analysis of unfair competition rested in the
notion that Knitwaves’ sweaters were inherently distinctive and there was a likelihood of
consumer confusion between the products. The Second Circuit found that the Knitwave
designs were primarily aesthetic and were not used as source identifiers. When the marks
under question are not considered source identifiers, then an action for trade dress
infringement cannot prevail. The Circuit, therefore concluded, that the copyright of the
sweater designs was infringed but no infringement of trade dress existed.
As it is apparent that a cross-over of law exists in defining how to protect fashion
design, it is clear that there must be a unique and creative aspect in the design. If the
design is not considered original, copyright protection is not available. If the design is not
distinguishable enough to serve as a source identifier, then trademark or trade dress
protection is not available. In either of these types of protection, the basis of protection is
for artistic expression. Patent protection, on the other hand, is based on the utility of the
39
Id.
17

18. good. Some designers, in an alternate method of searching for protection of their fashion
design have attempted protection through patent law.
c. Patent
Patent law was established at the founding of the U.S. government. The U.S.
Constitution authorizes Congress “to promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors the exclusive Right to their respective
Writings and Discoveries.”40
The founding commissioner of the United States Patent and
Trademark Office (USPTO) was Thomas Jefferson. Patent protection is extended to protect
new ideas of utility. A patent provides a property right—mainly the right to exclude. This
is unique to copyright law, which only affords protection to actual expressions and leaves
full opportunity for one to create an alternative expression as long as it is not substantially
similar to the original. In the protection of ideas, a wider array of potential legal protection
is available. To protect an idea, a person must file and receive approval from the USPTO.
Protection is available to the claims disclosed in a patent and the patent claims are read in
light of the specifications. The specification provides a written description of the invention
along with the method of creating the invention and a best mode in carrying out the
invention. Alternative uses or bi-products are also disclosed in the specification. Legal
protection is only extended to what is actually claimed, although patents of economic
worth are litigated over to determine the actual meaning and intent of the language
claimed in a patent. Fashion design, while usually based on creative elements and not
utility, does occasionally spring up as a patentable idea rather than a copyright expression.
40
U.S. Constitution. Article I Section 8 clause 8.
18

19. A primary foundation case outlining protectable patent design is Gorham Company
v. White. In Gorham, the 1871 Supreme Court was evaluating whether or not the designs of
silverware was infringed by a competitor.41
Design patents are afforded for creations of
manufactured decorative arts. An infringement of a patent design occurs if substantial
similarity is found through the differences in the lines, configuration or the modes by which
the aspects they exhibit are considered. The Court realized, however, that the controlling
consideration of infringement is the resultant effect—the actual design appearance—of the
products in question.42
The Court, in reference to the Patent Act of 1842, stated that design
infringement exists if an ordinary observer cannot differentiate between the two designs.
After the Court heard testimony by multiple influential people in the cutlery and jewelry
industry, the Court concluded that a patent design infringement existed if the designs
appeared similar enough to deceive a person to interchangeable believe one pattern is that
of the other. On remand, the Second Circuit found infringement because the designs were
similar enough to deceive the ordinary observer. Attempts of design piracy have also
spread into varied clothing designs with patent design protection.
For example, in Avia Group International v. L.A. Gear California, the court was
reviewing the potential infringement of two Avia ornamental design patents by two of L.A.
Gear’s design patents.43
The patent designs under question relate to the sole of sneakers.
The district court found, on summary judgment, L.A. Gear willfully infringed the Avia
patents because there was no material fact in question. The Federal Circuit, in review of
the district court noted that “under 35 U.S.C. § 171, a patent may be obtained on the design
41
Gorham Co. v. White, 81 U.S. 511 (1872).
42
Id.
43
Avia Group International, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557 (1988).
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20. of an article of manufacture which is ‘new, original and ornamental’ and ‘nonobvious’
within the meaning of section 103.”44
The court, in recognizing that functional patents are
not allowed, stated that ornamental design patents are allowed when the primary purpose
of the design is not functional. The court noted that infringement of a patent can be found
even when an infringer does not produce a product, which is a key difference between
copyright and trademark verses patent law.45
Ultimately, the Federal Circuit affirmed the
district court’s ruling in full. The holding of Avia Group demonstrates that even patent
protection is available to a degree for fashion design as long as the statutory requirements
of patent law are met by the applicant.
With findings of intellectual property protection spanning across copyright,
trademark, and patent law to certain degrees, there is a genuine issue as to where fashion
design should ultimately be afforded protection. Designers, in not being afforded a genuine
statutory provision to protect their artistic fashion, continually attempt to carve common
law protection. If there was genuine statutory language protecting fashion design the
current state of protection would not be in a current piece part meal spanning across the
different corners of intellectual property.
Limitations on Protection
One of the likely issues with providing intellectual property protection extend to
fashion design is determining where the limitation exists in extending protection. If there
was copyright protection for fashion design, other industries of design may raise brows
and desire protection for their creative expressions. For example, if protection existed for
44
Id.
45
Id.
20

21. fashion design, cosmetologists may also begin to demand protection for unique and
popular hair styles; the Jennifer Aniston “Rachael” cut was extremely popular in the mid
1990’s and polls indicate that over 50% of the American female population have tried the
haircut.46
The original hair stylist, despite the fame for creating a famous cut, would likely
prefer to have copyright protection and associated royalties for their creative expression.
Likewise, another type of design that may desire copyright protection is make-up.
For example, make-up design continues to grow more extensive as movies, television and
theatre continue to grow in production and economic investment. It would be obvious that
a make-up artist that does common make-up such as foundation, gloss and mascara should
not receive protection. However, make-up artists, such as Jean Ann Black who worked on
Curious Case of Benjamin Buttons or Ron Perlman who created the looks of Hellboy or Rick
Baker who led the make-up team for the X-Men Movie characters, deserve copyright
protection for their original creations as well. It should become an irrelevant concern as to
whether or not the creations are likely to be replicated. The question should be whether or
not protection is allowed for these creative expressions.
The limitation of protection for creative expressions is difficult to reconcile. The
Court has long held that it is not for those who practice law, in any form, to dictate where
creativity begins and ends in intellectual property. Yet, it is the responsibility of the
legislature to create the arbitrary lines of what is and is not protected. This imaginary line
is drawn at the point where new, creative expression is demonstrated in copyright and
where new useful invention is found in patent law. The primary problem with fashion
46
See Jennifer Aniston in Famous Friends Hairstyle called “The Rachael,” Beautiful Hairstyles.
http://www.beautifulhairstyles.com/jenniferaniston/rachel.html, (last visited April 26, 2009).
21

22. design is determining where the creative expression is considered “new” and where it is
not considered an element of “utility.” The secondary issue with fashion design is
regulating competitors from engaging in unfair competition or in modifying designs just
enough to allow for fair use or a derivative work.
Conclusion
As fashion design continues to grow through the wide-spread hype of the media and
the investments made by consumers, the heightened need to statutorily protect fashion
continues. It was nearly seventy years ago when designers first attempted to organize and
protect their marvel ideas. Although the Supreme Court dictated that antitrust laws were
violated by the Fashion Originators’ Guild and Millinery Creator’s Guild, the idea of
organized protection of fashion design has continued to exist. Many designers have found
alternate routes to protect their intellectual property through common law trademark,
copyright law and patent design.
Even with the lack of effort made by the legislature thus far to protect fashion
design, “the Federal Trade Commission itself has specifically condemned the piracy of
patterns, styles and designs.”47
The Court has continued to view that “the conduct of the
copyist is "wrongful," that is to say, it is condemned by both the courts and society.”48
However, acts of unfair competition through design piracy continue to persist in retail
fashion. Until statutory protection is properly provided, design piracy will continue to
plague the fashion industry, and “while no plagiarist can excuse the wrong by showing how
much of his work he did not pirate, a defendant may legitimately avoid infringement by
47
Fashion Originators' Guild, Inc. v. FTC, 312 U.S. 457 (1941).
48
Id.
22

23. intentionally making sufficient changes in a work which would otherwise be regarded as
substantially similar to that of the plaintiff's."49
Patent law is currently under a necessary
revival in the statutory provisions protecting utility ideas; it is also time for copyright law
to afford fashion design adequate protection.
49
Warner Bros, Inc. v. American Broadcasting Cos., 654 F. 2d 204, 211 (1981).
23