In response to my posting Your legal questions last week, a reader submits this question to Mark Wilson P.C:
I have a question regarding legal positions in the apparel industry. I really don’t want to mention specific names of brands in your blog as some of my clients may get their knickers in a knot. Here is is a situation that we have faced for several years. We have manufactured for many brands of outerwear, for police, military, emergency applications.One company that is prominent, Spiewak, market a patented “telescopic sleeve” in their designs. It seems that many other companies have incorporated this feature, exact, into their styles, although they don’t plaster this feature onto their hang tags to advertise, as Spiewak does. Are these companies guilty of any infringement, or is it an interpretation thing?
Mr Wilson responds:
If this item is truly patented, this is out of my area of expertise. There are attorneys who specialize in patent law, and most of them are engineers by trade. I think I am still safe concluding that if one manufacturer is copying a patented product, it seems self evident that the copier would be liable for patent infringement. If the item is not patented (and I suspect it is not), the item probably is not protected by copyright laws. I have an article on my blog –Fashion Law Blog– that addresses this very issue. The article is as follows:
Garment Designs – What’s Copyrightable; What’s Not
In evaluating what is protected by federal copyright law, it is important to distinguish between garment design (i.e., its shape, style, cut, and dimensions for converting fabric into a finished product) and fabric design (such as an original beach scene with people riding bicycles on the boardwalk). This is because garment designs (as defined above) are generally not copyrightable. Original fabric designs are copyrightable.
Garments are considered “useful articles” under copyright law. Useful articles have an “intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C. section 101. Copyright in the design of a useful article may be claimed “only if, and only to the extent that, such designs incorporate pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. section 101.
Courts have held garment designs do not meet the referenced test. For a thorough discussion of why garment designs are not protected, see Galiano v. Harrah’s Operating Company, Inc., 416 F.3d 411 (5th Cir. 2005).
Mark B. Wilson, P.C.
Klein & Wilson
326 Old Newport Blvd.
Newport Beach, CA 92663
(949) 631-3300 tel
(949) 631-3703 fax
The link to Mark’s article is here. There’s more useful material to read there as well. I really appreciate Mark’s response and hope you’ll contact him for advice regarding apparel copyright law.
If you’d like to read the Fifth Circuit United States Court of Appeals decision in the case he cites, you can find that here. If you’d like to follow a discussion of the decision, read Casino costumes not copyrightable because elements were not separately marketable from the IP Law Observer. Another discussion of the same ruling appears on the Patry Copyright blog
I understand that garments are not copyrightable, but I also know that, in very rare circumstances, garment manufacturers have received patents on innovations that can be considered technological innovations by clueless patent reviewers.
I would NOT be that surprised if the telescoping sleeve DOES have a patent, because as a former biotechnologist, I have no respect for the logic of the patent office (I mean, patenting a sequence of DNA? come on!). If my encounters with average persons says anything, the average person today finds garment making to be completely mysterious–as mysterious as cell phone operation, for example. I’m not sure how careful the patent office is in consulting experts in the field of the invention.
So if you can’t copyright a garment, do you at least have any control over images which others take of your garments?
I recently produced a fashion show. Several photographers took photos which they are now selling online. Can they make money selling images of other peoples’ hard work? And if not, how unfair to designers, to not be afforded the same protection as illustrators and photographers!
It is a well know fact that some designers ask photographers to sign non-disclosure agreements, prior to a show, runway or otherwise. There have been many examples of photographers selling images from a fashion show, faxing or emailing the styles at the shows conclusion, and within a few days, those designs are now finished garments ready for sale. You may think about speaking to an attorney prior to your next show. You must let these guys know you mean business. Don’t sign, dont get in. You are right. It is unfair to the designer’s. You must help them protect the integrity of their work, by at least having some type of safeguards in place.
BTW, I heard about your show.Do you know Toronto is “on the map” fashionwise, and many European cities are watching closely ? They can’t quite put a label on the style yet, but someone will coin the phrase. Keep up your fresh ideas.
I’m a fashion designer in search for protection!!! If there’s any… I’m in desperate need of patening some of my work. I’ve been told by several people that I need to hold on to my creations and patten them before selling. The problem is, every season that passes by I see more and more of the similar designs that a come up with. I dont want to miss out on a opportunity but at the same time I dont want my designs to get snatched up. As a artist, is there any way to protect yourself from creation theft?