Copyright isn't *always* useless for designers; sometimes, it's actually dangerous

Posted by Charles Colman

Today, let's look at a couple of cases that show the exceptions to the rule that the U.S. Copyright Act offers no protection for the creative output of fashion designers.


In the recent case of Mon Cheri Bridal, Inc. v. Wu, wedding dress designer Mon Cheri sued Wu and others, alleging that the defendants "had conspired to copy an entire line of Mon Cheri dresses[.]"  (In copyright law, by the way, the copyist's intent generally doesn't matter when it comes to the question of infringement, but it can matter a great deal when it comes to damages.)  At the district court level in Mon Cheri, some defendants settled, but not "the Wu defendants," who went to trial, lost before a jury, and appealed the ruling to the Third Circuit (the federal appellate court that covers New Jersey, Pennsylvania, and Delaware.)  When losing parties appeal, they often throw everything they've got at the appellate court; here too, Wu made numerous arguments about why the jury verdict against him should be thrown out.  Most important for our purposes is his claim that Mon Cheri was entitled to no copyright protection for the embroidery and bead patterns on its dresses.  The Third Circuit disagreed.  The lesson: in some instances, designers may receive copyright protection for original embroidery and bead patterns.  (Sequins aren't so lucky.)


It will probably come as no surprise, then, to learn that jewelry designers may obtain copyright protection for their creations, though as a practical matter, such creators have not always had great luck in the courts.


Of greater concern to the typical fashion designer than beading or embroidery, original fabric patterns are often eligible for copyright protection.  In the 1991 case of Folio Impressions, Inc. v. Byer California, for example, the Second Circuit (the federal appellate court for New York, Connecticut and Vermont) found "limited" protection for a fabric design of "slight originality" consisting of "roses [that] were placed in straight lines and turned so that the roses faced on various directions."  The court noted that if this particular pattern had been motivated by ease of manufacturing, no copyright protection would be available.  (As we'll see later, the so-called "functionality" bar to intellectual property protection is a common theme in product design cases.)  In Folio, however, the available evidence indicated that the designer's placement of the roses in a straight line was "an artistic decision," so copyright protection was available.  The Second Circuit nevertheless concluded with a caveat: "what is protected in this case is the Folio Rose itself and the way in which that rose is arranged; the copyright umbrella does not cover the idea of arranging roses generally in a straight line pattern."  (This touches on another crucial theme in copyright: the "idea/expression dichotomy", a legal doctrine that ensures an idea, by itself, cannot receive copyright protection-- copyright attaches only to the original expression of that idea, once embodied in a fixed form.)


So what does all of this mean for fashion designers?  First, be careful where you buy your fabric.  (Some attorneys have observed that lawsuits by "copyright trolls" seem to be on the rise; since a finding of copyright infringement does not require any showing of intent, it is a ripe area for "gotcha" lawsuits.)  Most major distributors of fabric will readily agree to a provision that makes the distributor, and not the designer, liable, if the fabric turns out to infringe on a third party's intellectual property rights.  (This type of provision is usually called an "indemnification" provision: if I incur damages because of you, you'll reimburse me for 100% of those damages.)  An indemnification provision is especially important when dealing with an overseas manufacturer or distributor.  When buying from domestic fabric companies, a designer can take some comfort in a widely-enacted statutory provision that-- at least absent an agreement to the contrary-- imposes a warranty on merchant sellers that their goods don't infringe on the rights of others.  (Note: 1) not all sellers are "merchants," 2) even "merchants" will not be the hook unless they "regularly deal[] in goods of the kind" you purchased, and 3) even if a seller is technically responsible under the law, companies have a way of vanishing-- or quickly going bankrupt-- at the first sign of legal trouble.)


In short, be careful.


Conversely, what does all of this mean for designers who want to affirmatively protect their designs?  In general, the simpler the design, the less likely it is that a designer will be able to claim copyright protection over his creation.  To illustrate, take a look at a hastily-draped version of my final project for my first class at Parsons:



The "original" aspects of this garment (if you'll so oblige-- the "originality" required for copyright is minimal) are the asymmetrical shape of the skirt, the sewn "tubes" at each hem, and the manner in which the different-colored panels are assembled.  But the fabric is just plain wool.  And there are no sculptural or pictorial elements that are "physically or conceptually separable" from the design itself.  No pattern.  No embroidery.  The likely verdict: no copyright protection.  (On the other hand, I probably can't be sued for copyright infringement, either.)  For better or worse, this will most often be the case for apparel following a "more is less" philosophy, at least until Congress amends the Copyright Act.


This doesn't mean there aren't other avenues to protect original designs, but they're fraught with legal and practical difficulties... and best saved for another day.