On August 6th, Sen. Charles Schumer (D-NY), introduced the “Innovative Design Protection and Piracy Prevention Act (“the Innovative Design Act”) (S. 3728). If passed (and it has a long way to go before that happens), it will become the first U.S. law extending copyright protection to design elements of “men’s, women’s or children’s clothing, including undergarments, outerwear, gloves, footwear, and headgear; handbags, purses, wallets, duffel bags; suitcases, tote bags, belts and eyeglass frames” which are “unique, distinguishable, non-trivial and non-utilitarian variation[s] over prior designs.”
Under current copyright law, “useful articles” including clothing and accessories are not copyrightable. This is because they have “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C. § 101. (See [http://scholar.google.com/scholar_case?case=1543511895959862808&q=copyright+clothing+design&hl=en&as_sdt=2002] Whimsicality, Inc. v. Rubie’s Costume Co., Inc., 891 F. 2d 452 (2d Cir., 1989), finding that children’s costumes were not copyrightable.) However, fabric design elements are copyrightable. (See [http://scholar.google.com/scholar_case?case=8782088230809450480&q=copyright+clothing+design&hl=en&as_sdt=2002] Knitwaves, Inc. v. Lollytogs Ltd., 71 F. 3d 996 (2d Cir., 1995). In that case, the defendant was found guilty of copyright infringement for copying plaintiff’s stylized oak and maple leaf appliques on children’s sweaters.)
The Innovative Design Act, however, would not grant the same scope of protection to clothing designs that it does to fabric designs. Here the period of protection would be a mere three (3) years, but that is more than enough to eliminate the problem or benefit (depending on which side of the fence you sit) of knock-offs. To be sure, the Innovative Design Act would apply only to new designs, old ones being dedicated by law to the public domain. Moreover, in order to win an infringement suit, a designer will not only have to describe in detail exactly what s/he is laying claim to, but will have to prove in court that:
the copyrighted elements are wholly original and a “unique, distinguishable, non-trivial and non-utilitarian variation over prior designs;”
the accused design is “substantially identical,” i.e., so similar that it is likely to be mistaken for the original;
the allegedly infringing design “contains only those differences in construction or design which are merely trivial” — i.e., the design is truly “substantially identical” and not simply identical in certain features; and
the defendant had the opportunity to see the original design before creating the alleged infringement.
To uncomplicate the court’s job slightly, the law provides that a knock-off of a truly original work would be infringing regardless of its color or the design of the fabric with which it is made. Finally, the proposed law limits damages to a maximum penalty of $50,000 or $1.00 per copy, whichever is greater, although the law also makes clear that “the damages awarded shall constitute compensation and not a penalty.”
Whether the Innovative Design Act survives the legislative process is anyone’s guess, but it is worth observing here that it is not so much a law that protects the exclusive rights of the designer as one that mandates a compulsory fee for copying. In other words, the creation of knock-offs will continue to be economic decisions, but with the consideration that there might be an added cost should a designer decide to invest a substantial amount of money in lawyers’ fees to start a legal action. Thus one would presume that the law, if passed, will lead to knock-offs of only the most commercially successful products.