Fashion Design Right Revealed - foley.com · 1 1 ©2015 Foley & Lardner LLP • Attorney Advertising • Prior results do not guarantee a similar outcome • Models used are not clients

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1©2015 Foley & Lardner LLP • Attorney Advertising • Prior results do not guarantee a similar outcome • Models used are not clients but may be representative of clients • 321 N. Clark Street, Suite 2800, Chicago, IL 60654 • 312.832.4500

©2015 Foley & Lardner LLP 2

Today’s Speakers

Richard McKennaPartner

Foley & Lardner LLP

Andrew Baum Partner

Foley & Lardner LLP

Laura Ganoza Partner

Foley & Lardner LLP

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3©2015 Foley & Lardner LLP

Design Patents

Basic Concepts For the Fashion Industry


■Product Innovations » Distinguish products from

competitors

■Type of Innovation» Functional – Utility Patents» Ornamental – Design Patents

■ IP Protections» Can create effective barriers to

competition

Innovation

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■Rights Granted» Right to exclude others

for making, using, selling or offering for sale a product which is substantially the same

■ Term 14 Years (soon 15 years)

What is a Design Patent?


■Protects » Ornamental, Non-

Functional Designs

■Requirements» Design must be new» Cannot be an obvious

modification of existing designs

What is a Design Patent?

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Example Design Patent


Example Design Patent

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Fashion Design Patents



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■Requirements» Design must be new» Cannot be an obvious modification of existing

designs

■Time Limitations» US Application must be filed no later than 1

year from the date of first public disclosure

Timing Requirements


■Details for Application» Drawings (typically 7 views per embodiment)» Identify “Inventor(s)”» Application examined at Patent Office, first

action typically 12 – 14 months from filing.» Patent typically issues 13 to 18 months from

filing.

Prosecution

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■Contents of application remain secret until design patent issues

■Cost Estimate – typically under $3,000 (one embodiment with solid drawings from client).

Prosecution


■Search Patent Office records for patents which disclose similar features

■Purpose – identify potential infringement risk.

Clearance

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■Class 02 – Apparel (clothing, footwear)» 18,476 Issued Patents since 1975» 1167 Issued Patents in 2014 - 2015

■Class 03 – Purses and Bags» 16,703 Issued Patents since 1975» 948 Issued Patents in 2014 - 2015

■Class 11 – Jewelry and Ornaments» 13,852 Issued Patents since 1975» 777 Issued Patents in 2014 - 2015

Statistics


■Lululemon» 33 issued design patents (perhaps more)

■Louis Vuitton Malletier» 80 issued design patents (perhaps more)

■Hermes Sellier» 223 issued design patents (perhaps more)

Statistics

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Trade Dress and Copyright



■Trade dress: Nonfunctional design feature, or combination of features, which signify a brand

■Trade dress acts like a trademark to identify a single source for a product line

Trade Dress – What Is It?

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Packaging and Labels

Originally, “trade dress” was labels and package designs


■magazine or book cover designs(Reader’s Digest, Cliff’s Notes, Harlequin Romance)

■ restaurant design/style(Fuddruckers, Two Pesos)

■packaging elements(dripping red wax for Maker’s Mark bourbon)

■designs applied to product exteriors(Louis Vuitton “Toile”; Bottega Veneta

“Weave”)

Today, Trade Dress Takes Many Other Forms

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■The design of a product can be protectable trade dress,

- BUT -■Only with proof that the relevant public

actually recognizes the design feature(s) as coming from a single company (“secondary meaning”)

What About Product Designs?


The Wal-Mart Case

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■Length of time■Sales volume■Exclusivity■Advertising expenditures■Unsolicited media coverage and references■Awards■Testimony of experts in the field■Survey evidence

Proving Secondary Meaning


Secondary Meaning Proven?

YES NO

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Secondary Meaning

Express “Track Jacket” Forever 21 “Traveler Knit”


■What doesn’t count:» creativity, novelty, esthetic merit

■What does count:» public recognition that the design signifies a

single source

■The bottom line:» “trade dress” protection is an option only for long-

used well-established designs

Secondary Meaning

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■Trade dress must always be defined using specific, consistent, elements» “Style” or “look and feel” is not enough

■Concepts, marketing ideas and commonplace themes are not “trade dress”» Frusen Glädje did not infringe Häagen-Dazs» American Eagle knockoff of A&F style and image

did not infringe

Specificity


■To be protectable, trade dress must be nonfunctional

■Protected design cannot make the product» work better» be easier to use» cheaper to make

Nonfunctionality

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Functional?


Product designs can be registered as trademarks only with a lot of proof of secondary meaning

Registered Trademark?

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■Does not protect» immaterial variations on “classic” designs» “useful articles”

■Does protect» parts of useful articles that are “physically or

conceptually separable”» fabric designs» 2-D graphics» jewelry

Copyright


■Author is person who puts idea into tangible form

■Employer owns copyright only if creator is a true employee – not an independent contractor

■Obtain written assignments from all outside designers

■Registration is desirable, but not necessary

Copyright-Ownership

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Design Rights Enforcement



■Trademarks/Trade Dress » Confusingly Similar

■Copyrights » Substantially Similar

■Design Patents» Overall Design is Substantially the Same

■None require designs to be exactly the same

Tests for Infringement

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Copyright Enforcement:DVF v. Forever 21 and Target


• Diane Von Furstenberg has sued Forever 21 and Target, and others, for copying her prints

• DVF had copyright registrations on the fabric designs

• Permanent injunctions were issued against both Forever 21 and Target

• Even in these situations, DVF’s fabric design were protected, not the overall design of the dress

Copyright Enforcement:DVF v. Forever 21 and Target

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■Trademark protection for single color, if non-functional and has acquired distinctiveness

■The red of the sole must be a contrast with the rest of the shoe

■YSL’s monochromatic red shoe did not infringe the Louboutin Trademark

Trade Dress Enforcement Louboutin v. YSL


Trade Dress Enforcement Hermès Birkin Bag v. Emperia, Inc. , et al.

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Trade Dress EnforcementConverse Chuck Taylor


Trade Dress EnforcementConverse Chuck Taylor

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Trade Dress Enforcement Converse Chuck Taylor


ITC 337 PROCEEDINGS:A powerful remedy■ United States International Trade Commission (ITC)

■ The ITC is federal agency that determines the impact of imports on U.S. industries, and directs actions against certain unfair trade practices, such as patent, trademark, and copyright infringement.

» Remedy is limited to injunctive relief» Exclusion order enforced by U.S. Customs and Border Protection » Bars importation of the accused product

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■U.S. Pat No. D645,644

Design Patent EnforcementLululemon v. Calvin Klein


Design Patent Enforcement Lululemon v. Calvin Klein

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■The Innovative Design Protection Act of 2012» The bill set the standard for infringement of copies

that were “ substantially identical” to the originals – a much stricter standard than the “ substantially similar” threshold

■Provides a three-year period of protection ■Designs must be original and unique

Proposed Legislation


■Create own “Knock-Off” Line

Other options for designers?

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QUESTIONS??


Contact Information

Laura GanozaPartner

Foley & Lardner LLPMiami, FL

[email protected]

Andrew BaumPartner

Foley & Lardner LLPNew York, NY

212.338.3527 [email protected]

Richard McKennaPartner

Foley & Lardner LLPMilwaukee, WI414.297.5723

[email protected]

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Thank You!

■ A copy of the PowerPoint presentation and a multimedia recording will be available on Foley’s website within 24 to 48 hours: http://www.foley.com/fashion-design-rights-revealed/

■ A copy will also be available on FGI’s website http://southflorida.fgi.org/

■ We welcome your feedback. Please take a few moments before you leave the web conference today to provide us with your feedback, and any ideas for future events.

Documents

Fashion Design Right Revealed - foley.com · 1 1 ©2015 Foley & Lardner LLP • Attorney Advertising • Prior results do not guarantee a similar outcome • Models used are not clients