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).
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