There is no one form of intellectual property protecting fashion designs in the United States. Instead, aspects of fashion designs may be protected using a combination of copyright, trademark, trade dress and patent laws. Trade dress law is a subset of trademark law, so its application in fashion design is limited to designs that are source-identifying.
A. Purposes of Trade Dress Law
. Trademark law has a three-fold purpose: (1) promoting competition and basic fairness;[1] (2) preventing the consumer from being confused as to a source of a good or service;[2] and (3) protecting the holder’s investment in the mark and associated good will.[3] Overall, trademark law allows the designer who owns the trademark to control his own reputation.[4] If other designerscan use the mark, their use in connection with less fashionable or lower quality goods may diminish a consumer’s positive opinion of the mark.[5] Similarly, trademark law ensures that other designers will not benefit from the designers reputation by using his mark.[6] Trademarks empower consumers to participate more meaningfully in the market because they can distinguish between designers, purchasing only from those they like best. Consumer participation drives excellence in design by sending designers a message regarding the quality and appeal of their designs.[7]
B. Development of Trade Dress from Trademark
Although trademarks are used frequently in fashion, trade dress can be used to protect the overall appearance of an item, including its trademarks.[8] Trade dress law developed out of general trademark law, unfair competition law and section 43(a) of the Lanham Act. The Lanham Act provides that, “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 [is liable for trademark infringement].”[9] Trade dress protects “the total image of a product,” and it “may include features such as size, shape, color or color combinations, texture, graphics or even particular sales techniques.”[10] This broad definition suggests that trade dress may be used to protect the entirety of a garment, handbag or shoe, but there are widely used limitations to the trade dress doctrine that prevent such use in most cases.
C. Fashion and Requirements for Trade Dress
To prevail in a trade dress infringement action, a plaintiff must show three elements: (1) distinctiveness, (2) non-functionality, and (3) a likelihood of confusion.[11] The distinctiveness requirement ensures that the trade dress actually identifies its source, either inherently or by acquiring distinctiveness over time with use of the trade dress.[12] The non-functionality requirement ensures that competitors can enter the market and maintains the boundary between trademark and patent laws.[13] Lastly, the likelihood of confusion requirement ensures that consumers are not misled or deceived by the competitor’s use of a designer’s trade dress.[14]
1. Distinctiveness
Fashion designs are never inherently distinctive, but must acquire distinctiveness over time instead. In Wal-Mart Stores v. Samara Brothers, the Supreme Court distinguished between the distinctiveness standards for trade dress protection of product designs and product packaging.[15] In that case, a children’s clothing maker, Samara, discoveredthat another company was making copies of its garments for sale at lower prices at discount stores.[16] Samara filed suit, claiming that its garments have trade dress protection.
In Wal-Mart, the Court determined that aesthetic or functional purposes, rather than source-identifying purposes, governed the design of the children’s apparel at issue.[17] Therefore, the garments could not ever be “inherently distinctive,” but instead must develop secondary meaning in order to identify their sources to consumers in the marketplace.[18] The court noted that, “In the case of product design…we think consumer predisposition to equate the feature with the source does not exist. Consumers are aware of the reality that, almost invariably, even the most unusual of product designs—such as a cocktail shaker shaped like a penguin—is intended not to identify the source, but to render the product itself more useful or more appealing.”[19] Unlike product packaging, where frequently the purpose is to identify the source, the design of the product is rarely dictated by that same concern. This is not to say that a product design could never have the requisite distinctiveness for trade dress protection. Rather, in such a case distinctiveness requires a showing of acquired distinctiveness, termed “secondary meaning.”[20]
A product has secondary meaning if “the primary significance of a product feature…is to identify the source of the product rather than the product itself.”[21] There must be “a mental association in buyers’ minds between the alleged mark and a single source of the product.”[22] The owner of a mark may show the mark has acquired distinctiveness using direct evidence or circumstantial evidence.[23] Circumstantial evidence may include evidence of sales volume, time period of use, and advertising and promotion used to establish the symbol.[24] Direct evidence may consist of customer surveys.[25]
The evidentiary requirements for secondary meaning are difficult to reach for many fashion designers.[26] Fashion designs have a short life span—typically only lasting a couple months.[27] At the end of that season, the value of the product is diminished, and a new set of products are available. Although there are exceptions, such as the Hermes Birkin bag or Chanel tweed jacket, those affected most – the emerging designers – have had neither the time nor experience to generate signature items more likely to have secondary meanings.[28] This short time period allotted for exposing consumers to the product means that designers must make a substantial investment in advertising campaigns, and attempt to gain media coverage through editorial coverage or celebrity endorsements. Without such exposure, secondary meaning is difficult for a designer to attain. The economic burden of advertising may be too much to bear for designers who have not yet established themselves. Therefore,trade dress protects established designers, who can attract more media attention based on their reputations and make an investment in advertising, more than it protects emerging designers.[29]
2. Functionality
Trade dress protection is unavailable for functional product features. A feature is functional is it “is essential to the use or purpose of the article or if it affects the cost or quality of the article,”[30]or if it is a feature “the exclusive use of [which] would put competitors at a significant reputation-related disadvantage.”[31] The functionality doctrine prevents trademark owners from preventing competitors from using a product feature necessary for it to compete.[32] A product that is functional in the utilitarian or aesthetic sense cannot be protected using trade dress.
a. Aesthetic Functionality
The courts do not have a consistent definition of aesthetic functionality. However, an aesthetic product feature that does not serve a “significant trademark function” may be deemed functional.[33] Still, when a mark is also source-identifying, courts generally will not hold that it is aesthetically functional,[34]unless there is a competitive necessity for others to be able to use the mark.[35]
Most courts have looked at competitive need in determining whether a design is aesthetically functional. In Knitwaves Inc. v. Lollytogs Ltd[36], plaintiff Knitwaves sued defendant Lollytogs for trade dress infringement relating to children’s sweater designs. Knitwaves’ sweaters were decorated with autumn-themed designs, including leaves, acorns and squirrels.[37] Lollytogs, a competitor in the children’s clothing market whose products were sold at the same store as Knitwaves’ products, designed a similar clothing line based on the Knitwaves designs.[38] Knitwaves subsequently sued for copyright and trade dress infringement.
In its defense to the trade dress claims, Lollytogs claimed that the sweaters were functional, meaning that their primary purpose is to enhance the aesthetic appeal of the garments, and not to identify their makers.[39] However, the court ruled that although the primary purpose of the sweaters was aesthetic, Lollytogs failed to show that protecting Knitwaves’ trade dress would restrict its ability to compete effectively in the back-to-school clothing market.[40] Here, although the primary purpose was aesthetic and not source-identifying, the sweaters were still considered nonfunctional.
Similarly, in Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters,[41] the Sixth Circuit refused to allow trade dress protection to Abercrombie’s clothing designs because protection would leave competitors at “a significant nonreputational competitive disadvantage and would, therefore, prevent effect competition in the market.”[42] Abercrombie sought to protect certain words used as designs on its garments, such as “performance,” which it claimed conveyed the active nature of the clothing, and others they claimed conveyed the reliability of the clothing, such as “authentic,” “genuine brand,” “trademark” and “since 1892.”[43] Abercrombie argued for protecting these words when used in conjunction with its trademarks and clothing bearing “primary color combinations…in connection with solid, plaid and stripe designs” and made from “all natural cotton, wool and twill fabrics.”[44] The court denied protection, refusing to allow Abercrombie a monopoly over its selected words, as the English language currently “contains a limited list of synonyms for reliable and other words that convey a product’s integrity.”[45] Similarly, Abercrombie’s sports imagery would leave competitors with very limited comparable alternatives needed to compete, and are therefore functional.[46] Allowing Abercrombie to obtain trade dress protection would impermissibly exclude competitors from the casual clothing market.
b. Utilitarian Functionality
A garment could be functional in the utilitarian sense if its appearance served a particular purpose. For example, a maker of safety-related clothing who made brightly colored clothes would be unlikely to get trade dress protection, since the bright colors are essential to the use or purpose of the garment – safety.[47]
3. Likelihood of Confusion
It can be very difficult for designers to show a likelihood of confusion. To determine the likelihood of confusion, courts frequently use a multifactor test, looking to such factors as the “strength of the plaintiff’s mark, degree of similarity between plaintiff’s and defendant’s marks, proximity of the products, likelihood that plaintiff will bridge the gap, evidence of actual confusion, defendant’s good faith in adopting the mark, quality of defendant’s product or service and sophistication of buyers.”[48] In addition, post-sale confusion, occurring when observers think a purchaser of a knockoff has purchased an original, can also be a factor.[49] This is also helpful to designers because in many cases purchasers are aware that they are in fact buying a knockoff, but others may not know and may judge the designer by the knockoff, thereby hurting the designer’s reputation.
A recent example where the court looked at the likelihood of confusion in trade dress isLouis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108. In that case, Louis Vuitton sought protection for its line of handbags created jointly with artist Takashi Murakami. The handbags were with its logo (the Vuitton “legend”)[50] arranged in what is called the “Toile Monogram,” consisting of “entwined LV initials with three motifs—a curved diamond with a four-point star inset, its negative, and a circle with a four-leafed flower inset.”[51] The bags were an update of the traditional Toile monogram termed the Louis Vuitton Monogram Multicolore because it consisted of 33 Murakami-selected bright colors printed on a white or black background.[52] Vuitton argued that Dooney & Bourke, which also marketed handbags bearing its initials in an interlocking pattern in a similar color palette termed the “It Bag,”[53]copied its bags shortly after the success of the Monogram Multicolore.[54][MSOffice1]
The court accepted the validity of the Vuitton mark and proceeded to asses the likelihood of confusion between the bags. The district court held that there was no likelihood of confusion between the two bags, relying primarily on a side-by-side comparison. However, the Second Circuit took issue with the district court’s side-by-side comparison of the bags, ruling that they should instead look to whether consumers would be confused by their similar appearances in the context of the market.[55] Designs that may be readily differentiated when viewed side-by-side may still be confused in the real world market, and that is the confusion at issue in trade dress infringement.[56]
D. Conclusion
Trade dress is an available form of protection for fashion designs. However, to qualify designers must first show that their designs have acquired secondary meaning, a difficult showing considering the realities of the fashion industry. The next hurdle is functionality—if protecting the designs would leave competitors at a serious disadvantage, the courts are unlikely to grant protection. Finally, to prevail in an infringement action, the plaintiff would have to show that there is a likelihood that consumers were confused regarding the origins of the two products.
[1] Faye M. Hammersley, The Smell of Success: Trade Dress Protection for Scent Marks, 2 Marq. Intell. Prop. L. Rev. 105, 109 (1998).
[2]Id.
[3]Id.
[4]See Mitchell M. Wong, The aesthetic functionality doctrine and the law of trade-dress protection, 83 Cornell L. Rev. 1116, 1124 (1998).
[5]See id.
[6]See id.
[7]See id.
[8] Susan Scafidi, Intellectual Property and Fashion Design 121-22.
[9] 15 U.S.C. § 1125(a)(3) (1999).
[10] Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992) (quoting John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir 1983).
[11]Two Pesos, 505 U.S. at 764; see also Artomatique, 28 F.3d at 868. See also Karina K. Terakura, Insufficiency of trade dress protection: Lack of guidance for trade dress infringement litigation in the fashion design industry, 22 U. Haw. L. Rev. 569, 281 (2000).
[12]See Restatement (Third) of Unfair Competition § 13 (1995).
[13]See Terakura, supra note 11, at 583.
[14]Id. at 589.
[15] 529 U.S. 205 (2000).
[16]Id. at 208.
[17]Id. at 209-15.
[18]Id. See also Knitwaves v. Lollytogs, 71 F.2d 996, 1009 (2d Cir 1995).
[19]Id. at 213.
[20]See id. at 214.
[21] Two Pesos, 505 U.S. at 766.
[22] J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15:5
[23]See 2 McCarthy, supra note 22, § 15.30.
[24]Id.
[25]Id.
[26]See Terakura, supra note 11.
[27]See Terakura, supra note 11.
[28]Susan Scafidi, Intellectual Property and Fashion Design122.
[29]Susan Scafidi, Intellectual Property and Fashion Design 122.
[30] Inwood Labs., Inc. v. Ives Labs., Inc., 465 U.S. 844, 850 (1982).
[31] Traffix Devices v. Marketing Displays, Inc., 532 U.S. 23, 24 (2001) (quoting Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1996)).
[32] Hammersley, supra note 1, at 115.
[33]See Qualitex, 514 U.S. at 170.
[34]See, e.g., Au-Tomotive Gold v. Volkswagon of America, Inc., 457 F.3d 1062, 1069 (2006).
[35]See, e.g., Abercrombie, 280 F.3d at 641; see also Traffix, 532 U.S. at 33.
[36] 71 F.3d 996 (2d Cir. 1995).
[37]Id. at 1000.
[38]Id.
[39]Id.at 1006.
[40]Id. See also Banff Ltd. v. Express, Inc., 921 F. Supp. 1065 (S.D.N.Y. 1995).
[41]280 F.3d 619 (6th Cir. 2002).
[42]Id. at 643.
[43]Id.
[44]Id.
[45]Id.
[46]Id.
[47]SeeIn re Howard S. Leight and Associates Inc., 29 U.S.P.Q.2d 1058, 1060 (TTAB 1996) (holding that brightly colored earplugs are functional because they are colored orange for visibility and safety).
[48] Anne Theodore Briggs, Hung out to dry: clothing design protection pitfalls in United States law, 24 Hastings Comm. & Ent. L.J. 169, 197 (2002) (citing Polaroid Co. v. Polarad Elecs. Co., 287 F.2d 492, 495 (2d Cir. 1961)).
[49]Id. at 198.
[50] Louis Vuitton S.A. v. After Dark Boutique, 680 F. Supp. 1507, 1508 (N.D. Fla. 1988).
[51] Louis Vuitton Malletier v. Donney & Bourke, Inc., 340 F. Supp. 2d. 415, 424 (SDNY Aug. 27, 2004).
[52] Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 122 (2d. Cir. 2006).
[53]Id. at 424-45 nn.13-14.
[54]See Sarah J. Kaufman, Trend Forecast: Imitation is a legal form of flattery—Louis Vuitton Malletier v. Dooney & Bourke, Inc., 23 Cardozo Arts & Ent. L.J. 531, 548-49 (2005).
[55] Louis Vuitton, 454 F.3d at 117.
[56] Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532 (2d Cir. 2005).
[MSOffice1]Read all of the Vuitton opijons!