Just as every piece of artwork is unique, there is no “one size fits all” when it comes to protecting your fashion goods with intellectual property tools. Below are three possible situations in which you can use intellectual property tools with respect to a product’s nature, originality, consumer driven features, and potential for growth.
Scenario 1: Protecting the Work by Copyright.
The next time you would like to protect the design on a T-shirt, the pattern of design on fabric, or a jewelry design, you should consider whether your work can be copyrighted. Copyright protects “original works of authorship” fixed in any tangible medium of expression, such as “pictorial, graphic, and sculptural works.” The best part about a copyright is that its registration is typically inexpensive and straightforward.
The term of a copyright for a particular work may depends on certain factors such as whether it has been published, and, if so, the date of first publication. The general rule for works created after January 1, 1978, provides that copyright protection lasts for the life of the author plus an additional 70 years. For a work made for hire, anonymous work or pseudonymous work, the term is 95 years from the date of publication or 120 years from the date of creation, whichever expires first.
In the event that infringement occurs, a designer must show that the infringer copied the designers copyrighted work. Direct proof of copying can be difficult; however, a designer can establish the element of copying by providing evidence that (1) the infringer “had access to” the designer’s work and (2) the two works are “substantially similar.” If a designer is able to successfully improve infringement they may recover not only their own lost profits but also any profits accrued by the infringer from the infringed work.
Although the copyright process is fairly inexpensive and simple, fashion companies should take extra care as to not be copyright infringers themselves. Take, for example, a T shirt which features a painting, sculpture, or even graffiti. Fashion companies should be aware that they may need to obtain a license to, or ownership of, the copyright from the photographer. As with all intellectual property tools, careful consideration should be taken when assessing a particular product’s copyright status.
Scenario 2: Protecting Novel Designs by Patent.
The next time you would like to protect a great innovative design you expect will be a big hit on the market, you should consider obtaining a design patent. Design patents are great for new designs that are expected to be sold beyond a single year or season. The essential elements of a design patent are that the new creation be “new, original and ornamental.”
A novel design is entitled to a patent unless it is has been (1) described in a printed publication; (2) in public use; or (3) on sale more than one year prior to the date of the application of the patent.
The application process for a design patent is simple. As long as the design is new, original and unidentical, the design patent can protect the design’s ornamental features. It is important to note that a design patent’s protection only extends to ornamental features rather than its functional features. Ornamental refers to the visual appearance of a product such as its color or shape.
The reviewal process for the U.S. Patent and Trademark Office (USPTO) typically takes only nine to 12 months and the patents remain in force for 15 years from the date of issuance (or 14 years, for applications filed before May 13, 2015). Once the USPTO has issued a design patent, the method for enforcement is also relatively straightforward. A designer can establish infringement “if an ordinary observer, familiar with the prior art…would be deceived into believing the [accused design] is the same as the patented [design].” The designs do not necessarily need to be identical; infringement can be found even when there is only minor difference between the patented design and an accused article’s design.
Even if a design does not have significant longevity and it does not last beyond a single season, a design patent may still be useful if later down the line a competitor comes out with an infringing product. In that scenario, designers would then have the right to recover profits as a remedy.
Scenario 3: Protecting Well-known Products by Trade Dress.
The next time you think you have found your signature product you may be afforded protection of your work through trade dress. Trade dress is great for products that have had much success and longevity to the extent that consumers associate the nonfunctional aspects of the design with a particular manufacturer. Trade dress generally protects the “total image and overall appearance” of a product, but can extend to features such as size, shape, color or texture.
A product’s trade dress may be a collection of individual elements that are not separately protectable, but together, are protectable because they distinctively identify the source of a product. It is important to note that the product as a whole cannot be functional. A product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article and would put competitors at a significant, non-reputation-related disadvantage.
Unlike design patents, trade dress protection does not have a term and is enforceable so long as the product’s “secondary meaning” exists, or the product is inherently distinctive. A showing of secondary meaning is essential in order to receive trade dress protection. Secondary meaning may be established when a manufacturer can show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself. Courts consider the following seven factors to determine whether a trade dress has secondary meaning: (1) direct consumer testimony, (2) consumer surveys, (3) exclusivity, length, and manner of use, (4) amount and manner of advertising, (5) amount of sales and number of customers, (6) established place in the market, and (7) proof of intentional copying.
In the event that a designer seeks a trade dress infringement action, court have looked to the following three elements: (1) distinctiveness, (2) nonfunctionality, and (3) a likelihood of confusion among consumers between the owner’s trade dress and the infringer’s trade dress. Additionally, remedies available for trade dress infringement are the same as trademark infringement.
In order in ensure the best protection, trade dress should be considered in circumstances where a fashion product has sufficiently established that the design has secondary meaning, the design’s use has been continuous, and the inventor is willing to continuously police the marketplace and enforce their right.
In sum, these scenarios exemplify only a number of ways in which you can use intellectual property tools to protect your fashion design. So, the next time you find yourself in one of these scenarios, be sure to consider these factors for protection via copyrights, designs patents, and trade dress.
Nadine Bañuelos is a Law Clerk, based in the firm’s Minneapolis, MN office.
 17 U.S.C. § 102(a)(5); see also Darden v. Peters, 488 F.3d 277 (4th Cir. 2007).
 See 17 U.S.C. §§ 302.
 Home Design Servs., Inc. v. Turner Heritage Homes Inc., 825 F.3d 1314, 1320 (11th Cir. 2016).
 Hamil America, Inc. v. GFI, 193 F.3d 92, 108 (2d Cir. 1999).
 Smith v. Dental Products Co., 140 F.2d 140, 152 (7th Cir. 1944).
 35 U.S.C. § 102(a); see also Pride Family Brands, Inc. v. Carl’s Patio, Inc., 992 F. Supp. 2d 1214, 1217 (S.D. Fla. 2014).
 See OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405-06 (Fed. Cir. 1997).
 Richardson v. Stanley Works, 597 F.3d 1288, 1293 (Fed. Cir. 2010) (citing Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988)).
 See, e.g., Blue Ribbon Pet Prod., Inc. v. Rolf C. Hagen (USA) Corp., 66 F. Supp. 2d 454, 458 (E.D.N.Y. 1999)
 35 U.S.C. § 173.
 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 681 (Fed. Cir. 2008).
 Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1300 (Fed. Cir. 2010) (quoting Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 991 (Fed. Cir. 1993)).
 See, e.g., Decorations for Generations, Inc. v. Home Depot USA, Inc., 128 F. App’x 133 (Fed. Cir. 2005).
 See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 (1992).
 See, e.g., Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 842 (9th Cir. 1987).
 See Id.
 Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 165 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 (1982)).
 Nora Beverages, Inc. v. Perrier Group of America, Inc., 269 F.3d 114, 118 (2d Cir. 2001).
 Inwood Labs., 456 U.S. at 851.
 General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 418 (6th Cir. 2006).
 See Allstate Ins. Co. v. Airport Mini Mall, LLC, 265 F. Supp. 3d 1356 (N.D. Ga. 2017).