Turkish Law Blog

The Role of Intellectual Property Law in The Fashion Industry: An Analysis of the Legal Framework in Various Jurisdictions

Hazal Alanya Hazal Alanya/ Arlingsworth Solicitors
11 October, 2018
1597

Fashion Industry and the Role of Intellectual Property

The economic significance of the fashion industry all around the world is undeniable. In 2017, the United States’ apparel and footwear market were valued at 341.626 billion US dollars[1] whereas the same market was valued at 324.572 billion US dollars[2] for Western Europe. From a commercial perspective, it is crystal clear that the industry is massive, but these numbers also indicate the social importance that society attaches to fashion. As for the artistic side of fashion, at least once a month you can visit an exhibition related to fashion in Victoria & Albert Museum in London and the Metropolitan Museum of Art in New York presents various fashion design exhibits all year round. Despite all these artistic, social and most importantly economic significances of the fashion industry, the legal protection provided for fashion articles is very limited in the United States (“US”).[3] Supporters of a more stringent intellectual property protection argue that the process of producing a fashion design is extremely difficult and expensive but on the other hand, copying them is relatively easy and cheap.[4]

As Jeffrey Banks describes the process:

If you\'re creating original prints, original patterns ... you have to go through trial and error, you are talking about thousands and thousands of dollars. Then if you go to put on a show, you can spend anywhere from fifty thousand dollars to a million dollars just ... to show buyers and press what you\'re creating for that season. So, before you have even received your first order, you\'ve spent thousands and thousands and thousands of dollars”.[5]

On the contrary, copiers can easily “reproduce designer looks with the impunity and speed of Robin Hood[6]; they neither need to have creative input on their product nor spend any money to promote it since it has already been taken care of by the original creators of the designs. Considering all these facts, higher intellectual property protection is essential and urgent to award the original designers and prevent the underproduction of original fashion designs. While a solution is certainly required, it is evident that the existing types of protection will not be able to solve the problem.[7]Therefore, while creating the ultimate legal mechanism, the seasonal nature of fashion should be taken into consideration. According to Susan Scafidi, the protection should be far briefer than the protection for other subject matters such as literature or music.[8]

In contrast to the US, as discussed below, the European Union (“EU”) provides different types of protection to fashion designs including footwear, apparel, and accessories. In addition to the EU regulations, some of the Member countries have also their own national legislations regulating this area.

This essay examines the role of intellectual property law in the fashion industry paying special attention to the protection provided by different jurisdictions such as the US and EU. Throughout the essay, the implementation of intellectual property law to the industry will be analyzed and in order to demonstrate whether the current status of protection hinders creativity, important cases will be studied.

Fashion Design and Copyright Protection under Different Jurisdictions

i.                   United States

As mentioned above, despite the artistic, social and economic importance of the industry, the law does not meet with the expectations of the designers and most of the people in the industry. In the US, the main types of intellectual property protection provided for fashion designs are (i) trademarks, (ii) copyrights and (iii) patents.

Trademarks role in the fashion industry is no different than any other industry, it is a form of protection of logos, words, or in general, signs to distinguish the goods or services of one undertaking from others.[9] Having a distinctive trademark that allows its customer group to recognize the source of the fashion article is one way of having protection.[10] Some brands take it to a step further and do not even tolerate any kind of jokes which can easily be considered as a parody. For example, Louis Vuitton is known for its seriousness when it comes to its trademark. In 2014, the company sued My Other Bags regarding its cloth bags that are decorated with cartoon versions of expensive and iconic bags such as Louis Vuitton.[11] However, in 2016, the Court stated that “use of Louis Vuitton\'s marks in service of what is an obvious attempt at humor is not likely to cause confusion or the blurring of the distinctiveness of Louis Vuitton\'s marks; if anything, it is likely only to reinforce and enhance the distinctiveness and notoriety of the famous brand”.[12]

On the other hand, it is worth noting that the trademark protection only protects the logos or signs but not the design itself. Thus, when fashion houses or designers obtain the trademark protection, they should also take into consideration the risk that when the design becomes popular, others can copy the design without facing any legal consequence. This is one of the main reasons why fast fashion companies, such as Primark, H&M or Forever21, exist.[13]

Another option for protection is design patents which provides protection to any “new, original and ornamental design for an article of manufacture”.[14] The main problem with this type of protection is that the protection can be granted only if the design is ‘novel’ and since generally the designs incorporate pre-existing ones, most of the time the designs do not qualify for the protection.[15]

Last but not least, under US copyright law, “original works of authorship fixed in a tangible medium of expression[16] are protected. Similar to the EU law, in order to obtain copyright protection, registration is not needed, yet, in the US, copyright owners can also choose to register their copyrights since it is a prerequisite for certain remedies. The threshold for the originality requirement to obtain copyright protection is a lower hurdle than the “novelty” criterion which needs to be met to obtain a design patent.[17] As per a landmark decision of US Courts, “Originality requires independent creation plus a modicum of creativity”.[18] However, contrary to patent law, which provides protection to the manufacturing process and product design, fashion designs are not protected by copyright. At this point, the concepts that fall under “fashion design” should be analyzed. According to David Nimmer, there are two main concepts: (i) fabric designs and (ii) dress designs.[19]The patterns that appear on the fabric that forms an article of clothing, such as hounds tooth on a jacket, can be defined as fabric designs and these patterns are copyrightable. Nevertheless, dress designs which can be described as “graphically set … forth the shape, style, cut, and dimensions for converting fabric into a finished dress or another clothing garment[20] are not protected under US copyright law.

As per section 101 of the Copyright Act, the design of a garment cannot be protected under copyright, unless it “can be identified separately from, and is capable of existing independently of, the utilitarian aspects of the article”.[21] The US Courts have long been interpreted this article as the “physical” or “conceptual” separability test.[22] According to this test, physical separability is ensued when the decorative elements could physically be removed from the article and sold individually whereas the conceptual separability is when the garment “invoke[d] in the viewer a concept separate from that of the [garment’s] ‘clothing’ function” and this function “was not motivated by a desire to enhance the [garment’s] functionality qua clothing”.[23] The sum and the substance of it, only the unique and non-functional aspects are protected under US copyright law.[24]

From 1954, when the Mazer v Stein[25] case was established, until 2017, the Courts used different methods and various separability tests in order to decide whether the design elements of the clothing are merely utilitarian, or they can exist separately from the article’s utilitarian purpose. On 22 March 2017, the US Supreme Court handed its landmark decision that established a single test regarding the copyrightability of designs: Varsity Brands Inc. v Star Athletica LLC.[26]

The Varsity Brand v Star Athletica decision is crucial in terms of that the Court determined the circumstances in which it is possible to separate the artistic work from the functional product, in this case, cheerleading uniforms. Varsity Brands, the dominant US maker of cheerleader uniforms, filed a suit against its smaller competitor Star Athletica for infringement of their five designs (from the total amount exceeding 200 registered and copyrighted designs).[27]

The Varsity Brand had to challenge the following strong arguments of the Star Athletica:

  • that the chevron, stripes and other visual elements are utilitarian in the case of cheerleading uniforms because the result of their separation would be a plain outfit with no signalization of a cheerleader (or the team)
  • that the disputed chevron, stripes, and other visual elements would create a picture of a cheerleading uniform on paper or canvas, not a work of authorship if separated.

The Supreme Court of the US ruled that surface decoration such as chevron, stripes, and other visual elements are under the pictorial, graphic and sculptural (PGS) category and are separable from the uniform and applicable to other medium such as canvas, paper etc. which would not replicate the uniform itself, however, would result in a stand-alone work of authorship; therefore, copyrightable.[28]

The new imagination test[29], promulgated by the Supreme Court, harmonized all the previous Court tests and set forth a single two-part test. According to this test;

An artistic feature of the design of a useful article is eligible for copyright protection if the feature (i) can be perceived as a two or three dimensional work of art separate from the useful article and (ii) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article”.[30]

With this relatively new decision, we can assume that it will open a door for brands and designers to seek higher protection against copiers especially abovementioned the fast fashion companies. Yet, arguably, this is not enough protection for the US since it has such a massive market, considering various types of protection provided by other jurisdictions.

ii.                 European Union

While the US is falling far behind other countries in its copyright regime regarding fashion designs, other major fashion-centered countries, such as Italy or France, have provided different types of copyright protection to this subject matter.

In 1998, the EU adopted the EU Designs Protections Directive (98/71/EC) (the “EU Directive”). As per the Directive, a ‘design’ is defined as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation[31] and Member Countries are entailed to provide protection to designs by registration and confer exclusive rights to the right holders.[32]

According to the EU Directive, in order to obtain protection, the design should be novel and have its own individual character.[33] For a design to be regarded as novel, there should be no identical design available to the public[34] and the individual character[35] criterion is fulfilled if the overall impression of the design on an informed user is different from the overall impression of another publicly available design. If the design meets these requirements, five-year protection, which is renewable in five-year terms up to twenty-five years, can be granted.[36]

Subsequent to the adoption of the EU Directive, in 2002, the EU Regulation on Community Designs (6/2002/EC) (the “EU Regulation”) was enacted. Since the protection of unregistered designs is not covered under the EU Directive, the EU Regulation brought new and unique design protection that covers unregistered designs in the EU.[37] This way, the EU Regulation resulted in two types of protection, namely, Registered Community Designs and Unregistered Community Designs. With this extended version of protection, a non-renewable three-year period of protection is given to the unregistered designs.[38] Since fashion is usually based on short-life products, due to its seasonal nature, this is a very efficient way to protect fashion designs.

The scope of protection provided by the Registered Community Designs does not merely cover copying but also includes the independent creation of an identical or alike design[39]. It also allows authors to test the designs in real life by sanctioning a 12-months grace period between placing the design on the market and applying for registration. Moreover, the Registered Community Designs provide an option for designers to postpone their publication in the Community Design Bulletin so that the design can be kept as a secret until it is available to the public.[40] Unregistered Community Designs on the other hand, provide protection against deliberate copying only.[41]

Even though there is a stark contrast between EU and US regarding the legal instruments provided to protect fashion designs, the effects of the EU regulation can also be hard to measure since there are not many cases disputing design protection[42].  In the Jimmy Choo v Towestone case, Jimmy Choo filed a suit utilizing the protection offered by the EU law regarding the infringement of its registered and unregistered design rights.[43] The Court decided in favor of Jimmy Choo stating that the handbags in dispute were copies, which suggests that the EU regulations can be highly effective and advantageous to high-end fashion designers. Despite the lack of case law, the designers can indeed utilize the EU protection offered for both registered and unregistered designs to reach out of court resolutions.

It should be noted that the main aim of the EU Regulation is not to override national design laws of the Member States but to harmonize them.

-         United Kingdom

In the United Kingdom (“UK”), copyright and design protections are set forth under the Copyright, Designs, and Patents Act 1998 (“CDPA”). In order to obtain copyright protection in the UK, the work must fall under one of the categories listed in section 3 and one of these categories is ‘artistic works’. The CDPA defines an artistic work as an “a graphic work, photograph, sculpture, or collage, irrespective of artistic quality, a work of architecture being a building or a model for a building or works of artistic craftsmanship[44] therefore fashion designs are categorized as works of artistic craftsmanship.[45] Case law, on the other hand, shows that in order to be categorized as artistic craftsmanship, a very high threshold must be met which makes it challenging to claim fashion design protection under copyright law.[46]

The Courts examined ‘what constitutes artistic work’ in various cases. The leading case on this subject is the unanimous decision of the House of Lords in Hensher v Restawile. According to the Court, a prototype for a distinctive three-piece lounge suite was not a work of artistic craftsmanship.[47] In 2001, in Guild v Eskandaar Ltd. case[48], which concerned the design of a shirt, a sweater and a cardigan, the Court decided that the garments do not qualify as a work of artistic craftsmanship since they were machine-made as prototypes for mass production and that the designer’s intention was not to create a work of art.[49]  In another case, Merlet v Mothercare, a baby cape was not considered as a work of artistic craftsmanship as it was considered solely utilitarian. These cases suggest that the Courts look for evidence of creativity while deciding whether a work is artistic or not. In the light of case law, it can be said that being aesthetically appealing to the public is essential, yet, being only “pleasing to the eye” is not sufficient enough to meet the threshold.[50]

As for design rights, under the CDPA, in order to obtain design protection, it has to be original and include “… the shape or configuration of the whole or part of an article”.[51] In the UK, there is both registered and unregistered design regime which mirror the Registered Community Design in all important areas such as infringement rules and validity. Although the national regime was overshadowed by the Community Designs, the need for the national system may be much needed after the Brexit.[52]

In 2007 the British high street retailer Karen Millen filed a suit against the Irish retail chain Dunnes, which became the first case to be taken in the Republic of Ireland under the Unregistered Community Designs.[53] In 2006, Dunnes wilfully copied three designs of Karen Millen and sold in the Republic of Ireland. Identical designs were sold by Dunnes under its sub-brand SAVIDA across the country. Sale of the designs in question came to the attention of Karen Millen who sought damages and injunction at the High Court in 2007 reasoned by the Dunnes’s infringement of the Karen Millen’s Unregistered Community Designs.

Following Dunnes’ appeal against the High Court judgment siding with Karen Millen, the Supreme Court referred questions to the Court of Justice of the European Union (“CJEU”) for a preliminary ruling:

    i.           “In consideration of the individual character of a design which is claimed to be protected as Unregistered Community Design, is the overall impression it produces on the informed user, within the meaning of Article 6 of the EU Regulation, to be considered by reference to whether it differs from the overall impression produced on such user by:

a. any individual design which has previously been made available to the public, or

b. any combination of known design features from more than one such earlier design?

     ii.           Is the Court obliged to treat Unregistered Community Designs as valid for the purposes of Article 85(2) of the EU Regulation where the right holder merely indicates what constitutes the individual character of the design or is the right holder obliged to prove that the design has individual character in accordance with Article 6 of the EU Regulation?”[54]

The CJEU provided for the first question:

In those circumstances, the answer to the first question is that Article 6 of Regulation No 6/2002 must be interpreted as meaning that, in order for a design to be considered to have individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user, not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually”.[55]

The Court also stressed that provision of the article 25 of the Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPs”) “Member states may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features[56] is worded in optional terms and was not employed therefore the novel character or originality of a design is not subject to assessment in comparison with such combinations.

Moreover, it was ruled that the right holder does not need to prove the individual character of his/her Unregistered Community Designs, however, he/she is obliged to specify what forms the individual character of the design, what in his/her opinion, are the components of the design concerned which give it its individual character. Therefore, the CJEU reduced the evidential burden of the rights holders and supported the presumption of the Unregistered Community Designs validity.[57]

Subsequently, the Supreme Court rejected Dunnes’s appeal who then admitted to copying the Karen Millen designs from the outset and stated only that the designs cannot be considered as Unregistered Community Designs because they lack individual character and uphold the decision of the High Court.

-         France

It is often said that France has been the center of fashion since the 17th century thanks to King Louis XIV, who brought numerous artistic industries under the control of the royal court. Therefore, it is no surprise that France adopted a broad system of copyright which applied even to fashion apparel and accessories very early – in the 18th century. Initially, the Copyright Act of 1793 recognized fashion designs as applied art[58] which was followed by the implementation of the Copyright Act of 1909 in which the scope of protection was extended to non-functional designs and patterns.[59] Currently, the “creations of the seasonal industries of dress and articles” are listed as protected works under the French Intellectual Property Code (Code de la Propriete Intellectuelle) in article L. 112-2.[60] It should be noted that even though the French national intellectual property system does not provide protection to the unregistered designs, such designs are protectable under the EU Regulation.

Isabel Marant v Mango France[61] is one of the most recent and important cases regarding the approach of French Courts towards applying the law. In 2013, Isabel Marant released its “Scarlet” boots as a part of their Fall collection and shortly after, the boots became incredibly popular all around the world. Moreover, the Scarlet boots’ design was registered on 20 March 2013 as a community design at the Office for Harmonisation in the Internal Market Office (today named European Union Intellectual Property Office (“EUIPO”)) for footwear. In response to their growing popularity, the fast fashion giant Mango launched its wedge boots very similar to the Scarlet boots to benefit from their popularity. Following Mango’s launch, Isabel Marant, as a vocal opponent of widely spread trends and counterfeits, filed a suit claiming copyright infringement by Mango.

The Court stated that there is a point in the Mango claim that the Scarlet boots lack originality in terms of the wedge shape being common and usage of two different materials as well. On the other hand, the Court concluded that there has not been any type of shoe with a combination of all these elements before the launch of the Scarlet boots and highlighted that the conjunction of these pre-existing elements was a result of Isabel Marant’s choice, thus the designer created a novel shoe design worth protecting.[62]

As the Mango boots were found having an overall visual impression of the Scarlet boots, the Tribunal awarded Isabel Marant EUR 37,800 in damages suffered by sale in France from the total of EUR 350,000 claimed by the designer.[63]

However, it may seem that the French Act on Copyright may serve the needs of fashion designers well and French courts are aware of their artistic and economic importance, the protection is always provided only to original works of art. If the design is considered commonplace, it would not be protected by the copyright even in France.[64]

-         Italy

Fashion designs are protected under a national copyright system also in Italy just like France and the UK.[65] The Italian Copyright Law protects “works of the mind having a creative character and belonging to literature, music, figurative arts, architecture, theatre or cinematography, whatever their mode or form of expression”[66] and “in particular, protection shall extend to ... industrial design works that have a creative character or inherent artistic character”.[67] Also, similar to French law, Italian law does not provide protection for unregistered designs, yet again, these designs can be protected under the EU Directive.

In a very recent case, Tecnica Group SPA v Anniel Srl, Court of Milan ruled that industrial design may enjoy copyright protection if it has an artistic value.[68] More than 40 years ago, the Italian business company Tecnica Group SPA created distinctive snow boots inspired by the U.S. astronauts’ boots and named the model “Moon Boots”. At the time of their market launch, the boots brought novelty into the concept of snow boots and due to their inherent aesthetic appeal, they have become iconic not only in Italy but also worldwide.

When the Tecnica Group SPA discovered that similar boots are sold as snow boots by Anniel Anouk, the Tecnica Group SPA filed a suit for alleged copyright infringement, infringement of the registered community design and unfair competition as well.[69] In accordance with article 17 of the EU Directive, Italy (so as France and UK) remains double protection of designs by design patents on one hand and copyright on the other. Therefore, the Court of Milan had to determine whether the Moon Boots meet the legal criteria to be a work of authorship:

  • a particular degree of creativity
  • novelty
  • the work’s externalization
  • affiliation to art or culture[70]

The Court stated that the importance of the artistic value may be ascertained if the products receive national or worldwide awards or accolades, publications in monographies on contemporary design, popularity or generally broad acceptance by the public over the years of their existence. The main argument is taken into account vested in the fact that in 2000 Moon Boots were selected and exhibited at the Louvre Museum of Paris as one of the 100 most significant design icons of the 20th century.[71]The Court then declared that the Moon Boots meet the criteria of creativity and artistic value and found the snow boots by Anniel Anouk counterfeits, as they present all the creative features of the Moon Boots apart from the reduced height and two eyelets instead of three. The Court stressed the claim that the shape of the Moon Boots is the public domain is false because at the time of the Moon Boots’ launch, their shape and general design were a pure novelty and since then their owner has been taking appropriate actions against any counterfeits.[72] Without determining of infringement of Tecnica Group SPA’s community design or unfair competition by the defendants, the Court ordered the defendants not to further market the snow boots in question and set a fine equal to EUR 250 for each pair for the copyright infringement with further proceedings regarding the assessment of the damages.[73]

Conclusion

The intellectual property rights are granted to authors of artistic works, registrars of novel and individual designs or distinctive marks. The main reason for protection is inherently present in these subjects – their intellectual creation is worth protecting. Other reasons which should not go unnoticed vest in sustainable and ethical business models.

Moreover, one of the most important reasons why there is a need to establish a legal framework for fashion is because the industry is worth more than a million dollars.[74] As mentioned above, the fashion market has its unique dynamics and rules which cannot be gathered under the same roof with other subject matters. Therefore, as Susan Scafidi suggests, the law should correspond to the needs of the industry.[75]

In the EU, there are several mechanisms to protect fashion designs under intellectual property rights. Even though the US is wilfully nowhere near the protection systems provided in the EU, with the recent Star Athletica case, it can be argued that the initial steps into a more regulated market have been taken.


Table of Legislation

  • Copyright, Designs and Patent Act 1998 (“CDPA”), article 4
  • CDPA, article 213(2)
  • Council Regulation (EC) No 6/2002 on Community Designs (“EU Regulation”), article 11(1)
  • EU Regulation, article 19(1)
  • EU Regulation, article 19(2)
  • EU Regulation, article 50(1)
  • Directive 98/71/EC of the European Parliament and of the Council (“EU Directive”), article 1
  • EU Directive, article 10
  • EU Directive, article 3(1)
  • EU Directive, article 3(3)
  • EU Directive, article 5(2)
  • EU Directive, article 6(1)
  • French Intellectual Property Code (Code de la Propriete Intellectuelle), article L. 112-2
  • Law Protection of Copyright and Neighbouring Rights Law No. 633 (“Law no 633”), article 1
  • Law No. 633, article 2
  • Trade Marks Act 1994, article 1(1)
  • US Code Title 17, section 101
  • US Code Title 17, section 102s
  • US Code Title 35, section 171

Table of Cases

- Case C-345/13 Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd [2014]

- Céline v Zara France 2012/04542, Vanessa Bruno v Zara France 2011/09133 

- Chosun Int. Inc. v Chrisha Creations Ltd. 413 F 3d 324 (2005)

- Feist Publications Inc v Rural Telephone Service Co, 499 US 346

- George Hensher Ltd v Restawile Upholstery (Lancs) Ltd AC 64 [1976]

- Guild v Eskandaar Ltd FSR 38 [2001]

- Isabel Marant v. Mango France, Punto FA et Mango Online 2013/16593 

- J Choo (Jersey) Ltd v Towerstone Ltd EWHC 346 [2008]

- Jovani Fashions Ltd v Fiesta Fashions 12-598-cv (2012)

- Louis Vuitton Malletier S.A. v My Other Bag Inc. INC.14-CV-3419 (JMF) 28 (2016)

- Mazer v Stein, 347 US 201 (1954)

- Tecnica Group S.p.A v Gruppo Anniel Snc Di Simeoni Anna & C., Anniel SRL and Gruppo Coin SpAN70313/2013 RG 

- Varsity Brands Inc. v Star Athletica LLC, 580 US (2017)


Bibliography

- Berg A., Brantberg L., Hedrich S., Amed I., “The State of Fashion 2017” (2017) McKinsey & Company

- Derclaye E., “CUDR and CRDR post-Brexit from a UK and EU perspective – Will All Unregistered Design Rights Become History?” (2018) 13 Journal of Intellectual Property Law and Practise 325

- Ferril E., Tanhehco T., “Protecting the Material World: The Role of Design Patents in the Fashion Industry” (2011) 12 North Carolina Journal of Law and Technology 251

- Ferris A. J., “Real Art Calls for Real Legislation: An argument Against Adoption of the Design Piracy Prohibition Act” (2008) 26 Cardozo Arts and Entertainment Law Journal 559

- Hart T., Clark S., Fazzani L., Intellectual Property Law (Macmillan International Higher Education, 2013)

- Hedrick L. J., “Tearing Fashion Design Protection Apart at the Seams” (2008) 65 Washington and Lee Law Review 215

- Jimenez G. C., Murphy J., Zerbo J., “Design Piracy Legislation” in Guillermo C. Jimenez and Barbara Kolsun (eds), Fashion Law: A Guide for Designers, Fashion Executives and Attorneys (Bloomsbury, 2014)

- Lozano D. M., “The Parody Defense Against Trademark Bullies: Analysis of the Louis Vuitton vs Mob Case” (2017) 24 Revista la Propiedad Inmaterial 213

- Moskin J. E., “C-O-P-Y-R-I-G-H-T: What Does That Spell? Star Athletica v Varsity Brands Reimagines Protection for Useful Articles” (2017) 107 Trademark Reporter 776

- Mysers E., “Justice in Fashion: Cheap Chic and the Intellectual Property Equilibrium in the United Kingdom and the United States” (2009) 37 AIPLA Quarterly Journal 47

- Nimmer M. B., Nimmer on Copyright A Treatise on the Law of Literary, Musical and Artistic Property, and the Protection of Ideas (Matthew Bender, 1963)

- O’Sullivan N., “Karen Millen v Dunnes Stores: CJEU Clarifies ‘Individual Character’ Requirement for Community Designs” (2014) 9 Journal of Intellectual Property Law and Practice 890 

- Sala C., “The Moon Boot is a Copyright Icon” (2017) European Communities Trademark Association 25

- Tirohl B., Law for Artists: Copyright, the Obscene and All the Things in Between (Routledge, 2014)

- United States Congress House Committee on the Judiciary Subcommittee on Courts, the Internet. A bill to provide protection for fashion design: hearing before the Subcommittee on Courts, the Internet, and Intellectual Property of the Committee on the Judiciary, House of Representatives, one hundred and ninth, second session, on H.R. 5055, July 27, 2006. Washington: US G.P.O.

- Xiao E. Y., “The New Trend: Protecting American Fashion Designs Through National Copyright Measures” (2010) 28 Cardozo Arts and Entertainment Law Journal 405


[1] Statista, “Market Value of Apparel and Footwear in the United States from 2013 to 2018” (February 2018) <https://www.statista.com/statistics/491214/apparel-and-footwear-united-states-market-value/> accessed 9 May 2018

[2] Statista, “Market Value of Apparel and Footwear in the Western Europe from 2013 to 2018” (February 2018) <https://www.statista.com/statistics/491566/apparel-and-footwear-eastern-europe-market-value/> accessed 9 May 2018

[3] Christiane Schman Campbell, “Protecting Fashion Designs Through IP Law” (Lexology, April 2015) <https://www.lexology.com/library/detail.aspx?g=f4e56278-eceb-46e8-8a65-752c972d8397> accessed 9 May 2018

[4] Erika Mysers, “Justice in Fashion: Cheap Chic and the Intellectual Property Equilibrium in the United Kingdom and the United States” (2009) 37 AIPLA Quarterly Journal 47

[5] United States Congress House Committee on the Judiciary Subcommittee on Courts, the Internet. A bill to provide protection for fashion design: hearing before the Subcommittee on Courts, the Internet, and Intellectual Property of the Committee on the Judiciary, House of Representatives, one hundred and ninth, second session, on H.R. 5055, July 27, 2006. Washington: US G.P.O., page 11-12 accessible at https://babel.hathitrust.org/cgi/pt?id=pst.000058949221;view=1up;seq=1

[6] Eric Wilson, “Before Models Can Turn Around, Knockoffs Fly” (New York Times, 4 September 2007) <https://www.nytimes.com/2007/09/04/us/04fashion.html> accessed 27 April 2018

[7] There are many scholars who believe that the intellectual property protection is not a necessity in the fashion industry, see Johanna Blakley, “Lessons from Fashion’s Free Culture” (TED, 2010) <https://www.ted.com/talks/johanna_blakley_lessons_from_fashion_s_free_culture/up-next > accessed 9 May 2018

[8] Committee hearing (n 5)

[9] Trade Marks Act 1994, article 1(1)

[10] Campbell (n 3)

[11] Daniela Molano Lozano, “The Parody Defense Against Trademark Bullies: Analysis of the Louis Vuitton vs Mob Case” (2017) 24 Revista la Propiedad Inmaterial 213

[12] Louis Vuitton Malletier S.A. v My Other Bag Inc. (2016) INC.14-CV-3419 (JMF) 28

[13] See Jenna Sauers, “How Forever 21 Keeps getting Away with Designer Knockoffs” (Jezebel, 11 July 2011) <https://jezebel.com/5822762/how-forever-21-keeps-getting-away-with-designer-knockoffs> accessed 9 May 2018

[14] US Code Title 35, section 171

[15] Elizabeth Ferril, Tina Tanhehco, “Protecting the Material World: The Role of Design Patents in the Fashion Industry” (2011) 12 North Carolina Journal of Law and Technology 251

[16] US Code Title 17, section 102

[17] Lisa J. Hedrick, “Tearing Fashion Design Protection Apart at the Seams” (2008) 65 Washington and Lee Law Review 215

[18] Feist Publications Inc v Rural Telephone Service Co, 499 US 346

[19] Melville B. Nimmer, Nimmer on Copyright A Treatise on the Law of Literary, Musical and Artistic Property, and the Protection of Ideas (Matthew Bender, 1963)

[20] ibid

[21]US Code Title 17, section 101

[22] Jovani Fashions Ltd v Fiesta Fashions 12-598-cv (2012) WL (“We have construed 17 U.S.C. § 101 to afford protection to design elements of clothing only when those elements, individually or together, are separable - ‘physically or conceptually’ - from the garment itself”.)

[23] Chosun Int. Inc. v Chrisha Creations Ltd. 413 F 3d 324 (2005)

[24] Jovani Fashions (n 22) (“Jovani has not alleged, nor could it possibly allege, that the design elements for which it seeks protection could be physically removed from the dress in question and separately sold”.)

[25] Mazer v Stein, 347 US 201 (1954)

[26] Varsity Brands Inc. v Star Athletica LLC, 580 US (2017)

[27] Although the copyright is of informal basis, Section 412 of the US Act on Copyright provides that if the work of authorship is not registered in the US Copyright Office, statutory damages and attorney’s fees will not be awarded in case of infringement suit. 

[28] Jonathan E. Moskin “C-O-P-Y-R-I-G-H-T: What Does That Spell? Star Athletica v Varsity Brands Reimagines Protection for Useful Articles” (2017) 107 Trademark Reporter 776

[29] ibid

[30] Varsity Brands (n 26)

[31] Directive 98/71/EC of the European Parliament and of the Council (“EU Directive”), article 1

[32] EU Directive, article 3(1)

[33] EU Directive, article 3(3)

[34] EU Directive, article 5(2)

[35] EU Directive, article 6(1)

[36] EU Directive, article 10

[37] Emma Yao Xiao, “The New Trend: Protecting American Fashion Designs Through National Copyright Measures” (2010) 28 Cardozo Arts and Entertainment Law Journal 405

[38] Council Regulation (EC) No 6/2002 on Community Designs (“EU Regulation”), article 11(1)

[39] EU Regulation, article 19(1)

[40] EU Regulation, article 50(1)

[41] EU Regulation, article 19(2)

[42] Guillermo C. Jimenez, Joseph Murphy, Julie Zerbo, “Design Piracy Legislation” in Guillermo C. Jimenez and Barbara Kolsun (eds), Fashion Law: A Guide for Designers, Fashion Executives and Attorneys (Bloomsbury, 2014)

[43] J Choo (Jersey) Ltd v Towerstone Ltd [2008] EWHC 346

[44] Copyright, Designs and Patent Act 1998 (“CDPA”), article 4

[45]Iona Silverman, “Copyright and Fashion: A UK Perspective” (WIPO Magazine, June 2014) <http://www.wipo.int/wipo_magazine/en/2014/03/article_0007.html> accessed 3 May 2018

[46] ibid

[47] George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64

[48] Guild v Eskandaar Ltd [2001] FSR 38

[49] Tina Hart, Simon Clark, Linda Fazzani, Intellectual Property Law (Macmillan International Higher Education, 2013) 158

[50] Blu Tirohl, Law for Artists: Copyright, the Obscene and All the Things in Between (Routledge, 2014) 18

[51] CDPA, article 213(2)

[52] For detailed review of the impact of Brexit on the subject, see Estelle Derclaye, “CUDR and CRDR post-Brexit from a UK and EU perspective – Will All Unregistered Design Rights Become History?” (2018) 13 Journal of Intellectual Property Law and Practise 325, see also Ewan Grist, “Brexit and Your Designs” (Bird and Bird, June 2017) <https://www.twobirds.com/en/news/articles/2016/uk/brexit-and-design-implications> accessed 3 May 2018

[53] Nina O’Sullivan, “Karen Millen v Dunnes Stores: CJEU Clarifies ‘Individual Character’ Requirement for Community Designs” (2014) 9 Journal of Intellectual Property Law and Practice 890

[54] Case C-345/13 Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd [2014] 22                        

[55] ibid 35

[56] ibid 4

[57] Leighton Cassidy, Richard Hing “Karen Millen Fashions Ltd V. Dunnes Stores, Dunnes Stores (Limerick) Ltd: Clarifying the Assessment of Individual Character in EU Designs” (Fieldfisher, 12 February 2016) <https://intellectualpropertyblog.fieldfisher.com/2016/karen-millen-fashions-ltd-v-dunnes-stores-dunnes-stores-limerick-ltd-clarifying-the-assessment-of-individual-character-in-eu-designs> accessed 3 May 2018

[58] Anya J. Ferris, “Real Art Calls for Real Legislation: An argument Against Adoption of the Design Piracy Prohibition Act” (2008) 26 Cardozo Arts and Entertainment Law Journal 559

[59] ibid

[60] French Intellectual Property Code (Code de la Propriete Intellectuelle), article L. 112-2

[61] Isabel Marant v. Mango France, Punto FA et Mango Online 2013/16593 

[62] ibid

[63] ibid

[64] See Céline v Zara France 2012/04542, Vanessa Bruno v Zara France 2011/09133 

[65] Giovanni Francesco Casucci, “Italy” (World Trademark Law, 11 December 2014) <http://www.worldtrademarkreview.com/Intelligence/Design-Rights/2015/Country-chapters/Italy> accessed 7 May 2018

[66] Law Protection of Copyright and Neighbouring Rights Law No. 633, article 1

[67] Law Protection of Copyright and Neighbouring Rights Law No. 633, article 2

[68] Tecnica Group S.p.A v Gruppo Anniel Snc Di Simeoni Anna & C., Anniel SRL and Gruppo Coin SpAN 70313/2013 RG 

[69] Carlo Sala, “The Moon Boot is a Copyright Icon” (2017) European Communities Trademark Association 25

[70] Salvatore Sica, Virgilio D’Antonio, “The Balance of Copyright in Italian National Law” (Compatazione e Diritto Civile, 2017) <http://www.comparazionedirittocivile.it/prova/files/sica_balance.pdf> accessed 7 May 2018

[71] Gustavo Ghidini, “Industrial Design Works: Exhibition in Museums as Proof of Special Artistic Merit?” (IP Lens, 21 September 2016) <https://iplens.org/2016/09/21/industrial-design-works-exhibition-in-museums-as-proof-of-special-artistic-merit/> accessed 7 May 2018

[72] Tecnica Group (n 68)

[73] Elena Martini, “Copyright on Industrial Design: the IP Court of Milan Grants Protection to the Moon Boots” (Martini Manna, 27 July 2016) <http://www.martinimanna.com/copyright-on-industrial-design-the-ip-court-of-milan-grants-protection-to-the-moon-boots/> accessed 7 May 2018

[74] Achim Berg, Leonie Brantberg, Saskia Hedrich, Imran Amed, “The State of Fashion 2017” (2017) McKinsey & Company

[75] Committee hearing (n 5)

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