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When fashion meets intellectual property, it pays to know the rules

Posted on March 10, 2016

IP Law: A Primer

When fashion meets intellectual property, it pays to know the rules.

March 07, 2016

By Amanda Greenspon, Contributing Writer

Designer Wolfgang Joop once said, “Fashion is about suspense, surprise and fantasy. It’s not about rules.” With all due respect to Mr. Joop, most lawyers would disagree. 

Fashion must abide by the same laws that other products do — even trademark and copyright laws. But intellectual property (IP) laws were not written for the fashion industry, and they can be confusing to navigate. 

To start, it’s important to understand the difference between copyrights and trademarks. Outside the legal community, the terms often are used interchangeably, which is incorrect.

A copyright applies to a work of authorship — like the pattern on a piece of fabric or the design on a T-shirt. Importantly, copyright law does not apply to functionality or an artist’s mere idea. So it does not apply to a cut of clothing; it’s limited to the artistic expression that appears on the clothing. 

Secondly, copyright laws exist to protect the author or artist that created the expression. The rights are vested in the person who put the ink to the paper, so to speak. There are some specific exceptions to this, which can be convoluted and may require a lawyer’s explanation. 

Next, not everything is entitled to copyright protection. For example, if you design clothing that incorporates a heart print, you cannot stop everyone else from using hearts on clothing. Copyright law would protect your rights in the specific heart as it is drawn, but if it is a simple heart design, copyright protection could be limited, if not negligible. If you are sourcing art from a third party (including the Internet), it is up to you to identify whether it is copyrighted (and if so, who owns the copyright) and to obtain the necessary licenses. 

Finally, it’s important to note that copyright infringement of registered works can carry hefty statutory damages.

Insight Into Trademarks
Trademark laws apply to a brand name, logo or slogan used to assist customers in identifying the source of the products. These laws protect the business and the public. It doesn’t matter who created them as long as the company was the first to use the mark in interstate commerce. 

What constitutes “use” is sometimes complicated. For example, a trademark owner seeking to register a trademark for “use” on T-shirts must use the mark on hang tags or labels. It is not sufficient to use it on the front of the shirt in a decorative manner. Decorative usage is not trademark usage, although you could use a logo on both a hang tag and the front of the shirt and be fine. And then the added requirement of interstate commerce also matters. 

Dates are important in trademark law, especially those that involve first use. It’s a good idea to keep your early invoices so that you can prove when you started using your mark. That includes documents that show the first date a mark was put on the goods and marketed, as well as the date those goods were first sold. 

While there are other areas of intellectual property law that can sometimes be relevant — design patents and trade dress are some examples — copyrights and trademarks are the predominant concerns for the fashion industry. Like most areas of the law, these “soft IP” laws can appear inconsistent at times. 

For instance, you can register both trademarks and copyrights, and there are benefits to each, but you don’t need to register them in the United States. You generally can’t use someone else’s logo for decorative purposes even if you are not using it as a trademark, and you should be wary of doing so if the logo is for a famous brand. 

But there are exceptions to that rule — for example, if you are critiquing the brand in question. The term “fair use” may appear in both trademark and copyright law, but it has different meanings in each. If your trademark is similar to another company’s mark — either intentionally or accidentally — you are likely to be liable for trademark infringement. 

If you accidentally create something independently that is identical to another creation you have never seen before, you may not be liable for copyright infringement. However, if you were exposed to something that was copyright protected and then unintentionally created something similar, whether your creation was independent may not matter. These inconsistencies are why soft IP lawyers exist. 

Protection for your products can come outside of the law as well. It’s important to look at your entire supply chain — especially if your product is entirely manufactured in the United States — to see if any of the countries along the way provide different or stronger protection. You also should consider where potential counterfeits may originate — many times, it is from the same factory where you are manufacturing your products. 

A good IP attorney will assist you in navigating foreign IP laws with a network of foreign associates. Similarly, non-disclosure agreements and non-competes can let your innovative creations be the first to market. 

Protecting your fashion designs is a multifaceted process. But keep creating and remember, a true sign of a success is when everyone else is copying you — just ask Tiffany, Louis Vuitton, Yves St. Laurent, Chanel, adidas, Converse, Christian Dior, etc.

Amanda Greenspon is a trademark, copyright and intellectual property attorney at Munck Wilson Mandala. For more information or to comment on this article, email Amanda at agreenspon@munckwilson.com.