What You Need to Know About Design Protection in the Modern Age

Photo: Christina Jones Photography

Although counterfeiting and “copycat production” happens around the world on a daily basis, the media has shed light on specific incidents such as the escalating dispute between a small Los-Angeles based illustrator and designer, Tuesday Bassen, and the Spanish retailer, Zara. Young designers should be wary of the lessons learned from this case and would be all the wiser by looking into what unique elements of their clothing can be protected. In addition, knowing how much “inspiration” they can take from other designers without it violating the intellectual property rights of another artist or designer is equally as important. 

In the case of Tuesday Bassen, some fans believed that she had been secretly working with the big-time Spanish retailer. However, that was not the case. Tuesday Bassen first realized similarities in her designs and Zara’s later products in early 2016 and attempted to take legal action. However, for someone like Bassen, her funds have taken a hit from just these introductory legal exchanges. What we know from the press is that Bassen has already shelled out thousands of dollars in defense of her accusations. She also took to Instagram to voice her grievances to her followers, resulting in artists and bloggers publicly supporting and sharing Bassen’s, and even sharing their own stints with other alleged copycats. Zara later provided a statement detailing the company’s character as one of the utmost caliber with respect for all creators and the art they produce. The company even went so far as to suspend sales of the products in question when originally notified by Bassen’s legal representation and has stated that it wishes to stay in contact with Bassen to resolve this matter amicably.

In light of the lightning-fast pace of the industries, it seems that designers and artists are constantly copying, reworking, and building on the works of other creatives. Simply trademarking your name or logo only goes so far to protect designers in this day and age. 

“Simply trademarking your name or logo only goes so far to protect designers in this day and age.”

So where does the modern artist or designer turn to in an effort to protect their designs?

1. Copyright Protection

Copyright is a legal right that grants the creator of an original work exclusive rights for its use and distribution. This is usually only for a limited time. The exclusive rights are not absolute but limited by limitations and exceptions to copyright law, including what is called “the doctrine of fair use.” A major limitation on copyright is that copyright protects only the original expression of ideas, and not underlying ideas themselves.

Copyright law requires that the work (1) be of a sufficiently permanent nature that it may be reproduced or communicated for more than a transitory period; (2) be independently created by the author, and that it possesses at least some minimal degree of creativity; and (3) not be an “idea, procedure, process, system, method of operation, concept, principle or discovery.”  Artwork, photographs, and three-dimensional sculptures are prime candidates for copyright protection. Another great form of protection for designers is to incorporate a unique and copyrightable fabric pattern into their designs.

Copyright protection protects unique designs on accessories and apparel, such as ornamental graphic logos, but not the designs themselves unless the design features sculptural or pictorial features. An entire body of law exists which extends copyright protection to certain unique jewelry designs, as well. While the copyright in and to an original work exists from the moment it is “published,” copyrights should be registered with the U.S. Copyright Office within the first sixty (60) days after publication in order to be able to recover attorneys’ fees and statutory damages from endeavoring copycats. 

2. Trademark Protection

A trademark is a recognizable sign, design, or expression which identifies products or services of a particular source from those of others, although trademarks used to identify services are usually called service marks. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. Slogans, logos, brand names, and similar all merit trademark protection, however, trademark protection does not protect unique designs in and of themselves, only identifiable signs. That being said, often clothing does not feature any identifiable name brand on the exterior.

“Trademark protection does not protect unique designs in and of themselves, only identifiable signs.”

Most men’s jackets, for example, may feature a label on the inner jacket pocket. Crafty designers have found ways to incorporate their brand into other design features of the clothing such as embroidery or emblazoning their insignia on buttons or lapel pins.

3. Trade Dress Protection

Trade dress, like a trademark, is a legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. Some of the best examples of trade dress in the fashion industry are Christian Louboutin’s red sole, Bottega Veneta’s intrecciato or “woven” leather designs, the red stripe on the heel of Del Toro’s slippers and the match stick, tucked into the brim of a Nick Fouquet hat. Colors, patterns, symbols, and other similar design features can classify as trade dress.

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), protects the author from infringement of the unregistered trade dress of a product. However, obtaining a registration for trade dress is often a costly and time-consuming process. Generally, trade dress is protectable only under either of two circumstances: (1) the trade dress is inherently distinctive or (2) has acquired “secondary meaning”, such that consumers have come to identify the brand simply by the appearance of the trade dress.

Trade dress protection is generally not available to works where (1) the design element is in any way functional, or (2) the claimed trade dress amounts to nothing more than an abstract image or marketing approach.  In most cases, the U.S. Trademark Office only affords full protection to trade dress after five (5) years of use or if a designer can provide sufficient evidence that the industry and the general public recognize the design element as belonging to the designer. (For example, a consumer knows just by looking at the red sole of a high-heeled shoe, that the shoe was made by Louboutin). 

4. Design and Utility Patent Protection

 In general terms, a "utility patent" protects the way an article is used and works, while a "design patent" protects the way an article looks. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and “ornamentality” of an article are not easily separable. 

A design patent is a form of legal protection granted to the ornamental design of a functional item. Design patents are a type of industrial design right. While copyright law requires only that a work of expression be sufficiently original to be protected, patent law requires a much higher degree of novelty and “non-obviousness.” Design patent protection is much shorter than the duration of copyright. It provides a complete monopoly so that even if someone independently comes up with your design, your design is protected. The US Patent and Trademark Office will generally grant a design patent if a designer can prove that his or her design is: (1) new, (2) "nonobvious"—a legal term of art; and (3) ornamental only, not solely functional. Elements one and two are hard to meet in the fashion world.

Unlike under copyright protection where the preparers of derivative works based on the original copyright hold no rights, the second-comer who invents a patentable improvement on a design patent may apply for and receive a patent regardless of whether the first inventor authorized the improvement. 

Alexander Wang is famous for filing design patents for his fashion items, particularly for his handbags. Many of his items that have been afforded design or utility patents are “hardware heavy”. Earlier this year, Wang successfully obtained a 14-year design patent on several of his "bags with corners"—the official title of the patents on his handbags with metal-covered corners. 

In Conclusion:

Designers should not limit themselves to only one of these options but should consult with an attorney who is well-versed in intellectual property protection to prevent the tragedy of having their work knocked off by companies large and small who are "inspired" by their hard work and ingenuity.

About the Author: Christopher Dischino leads Dischino & Company, a Miami-based law firm that provides legal advice and strategic consulting for the modern business, the entrepreneur, the free-thinker, and those looking for something outside the box. With a knack for the creative and an entrepreneurial attitude, Christopher specializes in business law, intellectual property, and corporate transactions, assisting private clients and corporate entities to establish and expand their businesses domestically and abroad. His experience allows him to create value for his clients by using resourceful structuring techniques to help minimize unnecessary costs and risks. Get more info on Christopher and his law firm here.

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This story was originally published on February 17, 2019, and has since been updated.

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