Various fashion designers have made headlines lately for taking fashion pirates to court—Diane von Furstenberg, Gwen Stefani, Anna Sui, BeBe Stores and Anthropologie, just to name a few.  The problem of knock-offs is not new to the fashion world.  However, the problem is much more of a threat to designers now that the copied designs are moving from the cat-walk to the fashion racks just as quickly as the originals. 

In essence, copyright law protects “original works of authorship that are fixed in a tangible medium of expression.” By original work of authorship, the courts typically mean the design is an independent creation.This does not mean the design has to be strikingly unique or novel.[4]  On the contrary the courts do not expect much by way of originality.Many fashion designs meet this burden of originality even when they are clearly derived from common shapes and patterns.  As one court has noted, "although the idea of a plaid or floral pattern may not of its own be original, the patterns' sizes, shapes, arrangements and colors taken together are original and copyrightable.”

It is important to note that a design that is derived from an earlier, copyrighted design does qualify for protection as long as it contains elaborations and modifications that render it sufficiently original.The courts generally look to see that the derivative work is not merely a slavish copy of the earlier design.  In other words, the derivative design must incorporate a distinguishable variation of the earlier work.Obviously, there is a lot of room for argument between what a slavish copy is and what is not.

A common myth about copyright and fashion is that copyright law does not apply to useful articles like clothing.  While it is true that copyright law does not protect the shape or silhouette of a garment, copyright law does protect the “pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”[8]  When the courts say these features must exist independently of the utilitarian aspects, they mean a conceptual independence.[9]  That is the pictorial, graphic or sculptural features must add an aesthetic element that is unrelated to the utilitarian function.[10]  Accordingly, fashion designs that incorporate some form of graphic image—be it a print, embroidery, or even stitching—are easily protected under copyright law.

Currently, Congress is considering altering copyright law so that it protects even the overall appearance of an article of apparel, as opposed to only the pictorial, graphic and sculptural elements. The protection would be limited to three years.[12]  This would bring the protection of fashion designs in this country more in line with the protection that is afforded in other countries like Japan, France and the United Kingdom.

Another point for designers to note here is the importance of registering their designs with the United States Copyright Office.  This is important because registration is a prerequisite for bringing an infringement suit, although the registration may occur after the time of the infringement.[13]  More importantly, registration is a prerequisite for obtaining statutory damages.[14]

Monetary damages under copyright law are measured by “statutory damages” or the “actual damages and any profits that resulted from the infringement.” Actual damages are monetary losses that directly result from the infringement.  Typically, courts measure actual damages by the sales the plaintiff would have made were it not for the infringement.Accordingly, the courts look for a causal connection between lost sales and the infringement.In certain situations, proving this causal connection is not easy.  For example, if the infringing designs are sold at significantly lower prices than the originals, most courts hesitate in assuming that the plaintiff would have made the cheaper sales were it not for the infringement.

In such situations, plaintiffs will typically focus on recovering the infringer’s profits.  However, the copyright owner does not need to prove the infringer’s profits, only the infringer’s gross revenue.[19]  This is easily accomplished because a court will usually require that the infringer produce documents showing sales of the garments at issue.  Once the copyright owner shows the gross revenue, the infringer must prove the profits by showing the costs of the infringement which should be deducted from the gross revenue.[20]  Usually the plaintiff and defendant will argue over which costs should be deducted and which should not be deducted but the courts will interpret any uncertainties in favor of the copyright owner.

Proving actual damages and profits may not be needed where the copyright owner has registered his or her copyright before the design is infringed, in which case the copyright owner may choose statutory damages.Statutory damages are fixed in the statute and thus do not hinge upon the plaintiff proving the harm done to its market value. Under the Copyright Act, the court may award up to $150,000 per infringement if the infringement is willful. If the infringement is not willful, the court may award not less than $750 or more than $30,000.[25]  If the court finds the infringement to be innocent, the court may reduce the minimum award to $200—although this happens very rarely.[26]

In addition to the statutory damages, the court may award attorney’s fees as well as the full costs that the plaintiff has incurred from bringing the suit to trial.  The award of attorney’s fees and full costs does not depend upon the copyright owner proving the infringement was willful.

The provisions for statutory damages and attorney’s fees and full costs are helpful not only where the value of the copyright and thus any damage to it are difficult to measure but also where the value of the copyright might not equal the expense of the litigation.  As one court noted, the purpose of statutory damages is to not allow infringers to “sneer in the face of copyright owners and copyright laws.”

The above offers a brief introduction to how designers use copyright law to protect their original creations.  Understanding how copyright protects fashion designs is important in determining whether or not litigation is a worthwhile option for the designer that finds him or herself the victim of fashion piracy.