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Citation:
Katherine B. Felice, Fashioning a Solution for Design
Piracy: Considering Intellectual Property Law in the
Global Context of Fast Fashion, 39 SYRACUSE J. INT'L L.
& COM. 219 (2011).

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 FASHIONING A SOLUTION FOR DESIGN PIRACY:
CONSIDERING INTELLECTUAL PROPERTY LAW
IN THE GLOBAL CONTEXT OF FAST FASHION
Katherine B. Felice*
"Fashion is not something that exists in dresses only.
Fashion is in the sky, in the street, fashion has to do with ideas,
the way we live, what is happening."
- Gabrielle "Coco" Chanel

"From the catwalks of London to the rubbish heaps of Kampala

the impact of fast fashion is wide and deep." 2
- Jack Garland
INTRODUCTION ............................................ 220
I. FASHION COUNTERFEITING ................................. 222
The CounterfeitCrackdown ......................... 223
II. FASHION DESIGN PIRACY .................................... 225
Fast Fashion: A New Business Model Raising New Policy
Concerns..................................... 225
The Right to Look Fabulous?............................... 227
Reconciling Policy Issues: The "Democratization"of
Modern Fashion .................................. 227
Piracy Threatens American Innovation: "American style.
American design. It has meaning.And it has value. .... 229
Sweatshop Labor: The Human Cost ofDesign Piracy.............. 231
Sweatshops Continued: Fast Fashion in the UK..................... 232
Affordability Without Sustainability: The Environmental
Cost ofDesign Piracy............................ 234
Lawful PiracyEnables Illicit Counterfeiting....... ....... 236

* J.D., Syracuse University College of Law (expected 2012); B.A., Colgate University
(1999). Before law school, Kate worked in merchandising for the Bergdorf Goodman and
Ann Taylor corporate offices in New York City, and taught a Fashion Communications
course at the S.I. Newhouse School. Author's note: Special thanks to Professor Aliza
Milner and Professor Theodore Hagelin for their continued insight, advice and
encouragement. Thanks also to the members of JILC. I would like to dedicate this note to
my family with gratitude for their love and support.
1. SIMoN SEIVEWRIGHT, RESEARCH AND DESIGN 37 (2007).
2. Jack Garland, FastFashionfrom UK to Uganda, BBC NEWS, Feb. 20, 2009.
220 Syracuse J. Int'l L. & Com. [Vol. 39:1

III. LEGAL PROTECTION FOR FASHION DESIGNS ................. 236

Copyright Law. ...................................237
TrademarkLaw ............................. 238
.....
PatentLaw..................... ................. 240
FashionDesign Protections in France .................... 241
FashionDesign Protectionsin the European Union ................ 242
IV. FASHIONING A SOLUTION INTHE UNITED STATES: THE
INNOVATIVE DESIGN PROTECTION AND PIRACY PREVENTION
ACT........................................... 243
High PleadingStandardto Limit Frivolous Lawsuits............... 244
Limited Term of Protection ................... ....... 245
Levels the Playing Fieldwith InternationalDesigners............. 245
CONCLUSION. ......................................... 246

INTRODUCTION
Knockoffs date back to ancient Rome. 3 Citizens sought luxury
merchandise to gain social status in the Roman Republic.4 Those who
could not afford genuine articles bought knockoffs, or less expensive
imitations, such as ersatz reproductions of a citron table purchased by
Cicero.5 In the 18t and 19 t centuries, modem designer brands Louis
Vuitton, Hermes and Cartier created fashions for the French royal court,
European aristocrats, and prominent American families.6 As consumer
demand for designer goods grew, counterfeit and pirate operations
7
emerged to supply low-cost copies of high-fashion merchandise.
Today, knockoffs comprise 7% of world trade, totaling $600
billion annually.8 American anti-counterfeiting laws ban the production
and sale of counterfeit goods, or goods containing a fake trademark of
another.9 However, design piracy, or the blatant copying of another's

3. DANA THOMAS, DELUXE: How LUXURY LOST ITS LUSTER 273 (2007).
4. Id. at 273-74.
5. Id.
6. Id. at 7.
7. Id.at 273-74.
8. THOMAS, supra note 3, at 274 (citing statistics from the International Anti-
Counterfeiting Coalition); see also Rosemary Feitelberg, WWD CEO Summit, WOMEN'S
WEAR DAILY, Nov. 2, 2010.
9. 15 U.S.C. §§ 1114(1)(a), 1116(d)(1), 1117-18, 1125(a)(1)(A) (2006); 18 U.S.C. §§
1961(1)(B), 1962, 1964(c), 2318, 2320 (2006).
2011] Fashioning a Solution for Design Piracy 221

design, is currently legal in the United States.10 Considering the

staunch prohibition against counterfeiting, legal piracy seems
incongruous. As advocates for fashion design protection observe,
"Design piracy is just counterfeiting without the label."' The fast
fashion business model has turned design piracy into big business
worldwide, as new technology churns out knockoffs at accelerated
speeds. 12 Accordingly, concerns regarding design piracy continue to
escalate as the repercussions of fast fashion are felt around the globe.
This note examines the U.S. legal system's different approaches
to the parallel practices of fashion counterfeiting and fashion design
piracy. The note also evaluates policy considerations underpinning
legally permitted design piracy within the context of the modern fashion
industry.
Part I presents a brief overview of counterfeiting as background
for the note's larger discussion of design piracy. This section describes
the social harms of counterfeiting including: (1) lost jobs and tax
revenue; (2) child and sweatshop worker exploitation; and (3)
perpetuation of criminal activity such as gang warfare, drug trafficking
and terrorism. Part I also discusses the recent crackdown on counterfeit
merchandise in the U.S. to illustrate the government's different
treatment of counterfeiting and design piracy.
Part II explains the traditional rationale supporting lawful design
piracy and highlights changes in the fashion industry that call for
reexamination of policy issues. The section provides an overview of
today's fast fashion business model of design piracy, including
arguments in favor of low-cost imitation goods. Next, this section
illustrates the human and environmental costs of knockoffs with a
discussion of the global impact of design piracy including: (1)
threatening designer innovation; (2) exploiting child and sweatshop

10. Innovative Design Protection and Piracy Prevention Act: Hearing on H.R. 2511
Before the Subcomm. On Intellectual Property, Competition, and the Internet of the H.
Comm. on the Judiciary, I1 2th Cong. 2 (2011) (prepared statement of Rep. Bob Goodlatte).
11. STOP FASHION PIRACY, http://www.stopfashionpiracy.com/index.php/the industry
speaksout/ (last visited Oct. 7, 2011); See also Innovative Design Protection and Piracy
Prevention Act: Hearing on H.R. 2511 Before the Subcomm. On Intellectual Property,
Competition, and the Internet of the H. Comm. on the Judiciary, 1 1 2th Cong. 8 (2011)
(statement from Lazaro Hernandez, Designer and Co-Founder, Proenza Schouler)
[Hereinafter Hernandez Statement] ("[A] copy of a design is really a counterfeit without the
label.")
12. See Innovative Design Protection and Piracy Prevention Act: Hearing on H.R.
2511 Before the Subcomm. On Intellectual Property,Competition, and the Internet of the H
Comm. on the Judiciary, 1l21 h Cong. 110-11 (2011) (response to post-hearing questions
from Lazaro Hernandez, Designer and Co-Founder, Proenza Schouler).
222 Syracuse J. Int'l L. & Com. [Vol. 39:1

workers; (3) precipitating environmental damage; and (4) enabling

counterfeiting.
Part III examines the scope of protection for fashion articles
under the U.S. intellectual property system including: (1) copyright law;
(2) trademark law; and (3) patent law. This section also explores
alternative legal models employed by France and the European Union to
safeguard fashion designs.
Part IV analyzes the Innovative Design Protection and Piracy
Prevention Act and its various provisions. 13 Finally, the Conclusion
considers the implications of anti-piracy legislation for the future of the
American fashion industry.

I. FASHION COUNTERFEITING
The fashion industry loses up to $9.2 billion from counterfeiting
each year. 14 In the United States, the fashion industry generates $350
billion annually and supports the printing, trucking, advertising,
publicity, publishing, merchandising and retail industries. 5 In New
York City alone, the fashion industry employs 5.7% of the workforce,
providing 173,000 jobs and $2 billion in annual tax revenue.16 Fake
designer merchandise is believed to be "directly responsible for the loss
of more than 750,000 American jobs."' 7 Further, many counterfeits are
produced using child and sweatshop labor, raising human rights
concerns.' 8 During an assembly plant raid in Thailand, an investigator
encountered a group of small children, all less than ten years old,
crouched on the floor assembling counterfeit handbags. 1 9 The
sweatshop owner had broken the children's legs and arranged the bones
to prevent healing because the children asked to play outside.20
In addition to perpetuating unscrupulous labor practices,
counterfeit operations launder money and finance illicit activities

13. Innovative Design Protection and Piracy Prevention Act, S. 3728, 111th Cong.
(2010); Innovative Design Protection and Piracy Act, H.R. 2511, 112th Cong. (2011).
14. THOMAS, supra note 3, at 275.
15. Design Piracy ProhibitionAct: Hearing on H.R. 2033 Before the Subcomm. on
Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 11Oth
Cong. (2008) (statement of designer Jeffrey Banks) [hereinafter Banks Statement].
16. Rosemary Feitelberg, Bloomberg's Action Plan, WOMEN'S WEAR DAILY, Feb. 14,
2012.
17. Dana Thomas, The Fight Against Fakes, HARPER'S BAZAAR, Jan. 9, 2010, at 69.
18. THOMAS, supra note 3, at 287-88.
19. Thomas, supra note 17.
20. Id.
2011] Fashioning a Solution for Design Piracy 223

including gang warfare, drug trafficking and terrorism. 21 Sales from a

counterfeit t-shirt store in Manhattan financed the 1993 truck bomb
attack on the World Trade Center.22 The 2004 train bombings in
Madrid were also partly funded by sales of counterfeit goods. 23 As a
U.S. Treasury Department official
24
reported, "The age of terror has met
the world of illicit finance."

The Counterfeit Crackdown

American government has responded with an aggressive
crackdown on counterfeits. The United States Trade Representative
"has repeatedly targeted the rising global trade in counterfeit
trademarked goods, including apparel."25 Federal agencies have also
targeted fake fashion merchandise.26 The multiagency "Operation
Holiday Hoax" seized more than $71.3 million of fashion counterfeits
during the 2011 holiday season. 27 In New York City, headquarters to
some 900 fashion brands, Mayor Bloomberg has made prosecution for
counterfeiting a priority. 28 According to Bloomberg, "Counterfeit
goods cheat the City, consumers, legitimate business owners, and
trademark holders." 29 During one raid, Bloomberg's Office of Special
Enforcement closed 31 stores on Canal Street for selling counterfeits
posing as Chanel, Gucci and other designer brands. 30
With globalization, New York and Paris "are no longer the

21. THOMAS, supra note 3, at 275.

22. Ross Tucker, Battling Counterfeiters,WOMEN'S WEAR DAILY, Feb. 2, 2005.
23. Jennifer Lee, That Fake Gucci: Does it Have Links to Terrorists?, N.Y. TIMES,
May 17, 2008.
24. Tucker, supra note 22.
25. The Design PiracyProhibitionAct: Hearingon H.R. 5055 Before the H. Subcomm.
on Courts, the Internet, and Intellectual Property, 109th Cong. (2006) (statement of Susan
Scafidi) [hereinafter Scafidi Statement]; see also OFFICE OF U.S. TRADE REP., 2010 SPECIAL
301 REPORT, Apr. 30, 2010.
26. Lisa Casabona, Feds Seize $100K in Fakes in Pittsburgh, WOMEN'S WEAR DAILY,
Dec. 3, 2010; Kristi Ellis & Rachel Brown, Latest Counterfeit Seizure Largely Fashion
Products, WOMEN'S WEAR DAILY, Dec. 23, 2011.
27. U.S. Immigration and Customs Enforcement, U.S. Customs and Border Protection,
the U.S. Postal Inspection Service, and the U.S. Consumer Product Safety Commission
partnered for Operation Holiday Hoax. Id.
28. Jim Dwyer, Closing Pipeline to the Needy, City Shreds Clothes, N.Y. TIMES, Jan.
12, 2010, at Al.
29. Press Release, Mayor Bloomberg, Commissioner Kelly and Special Enforcement
Director Hyman Announce Major Counterfeit Goods Seizure (Feb. 26, 2008).
30. Rosemary Feitelberg, MI. T. Professor Studies Effects of Counterfeiting,WOMEN'S
WEAR DAILY, Jan. 6, 2010.
224 Syracuse J. Int'l L. & Com. [Vol. 39:1

exclusive luxury meccas." 3 ' China is a rapidly growing market for

luxury goods, and accelerated growth is projected through 2020.32
During the 2011 fiscal year, China was the number-one source of
counterfeit and pirated merchandise confiscated by U.S. federal
authorities, accounting for 62%, or $109.9 million, of seized goods.33
Kevin Burke of American Apparel and Footwear Association observed,
"China is not only largely responsible for the proliferation of counterfeit
apparel, footwear and fashion accessories in the United States and other
major markets around the world, but also in the U.S. apparel and
footwear industry's fastest-growing market-China."3 New
technology and communications systems have enabled quicker
production and easier sales of counterfeit merchandise internationally
and "crime-just like fashion-has gone global."35
Using multiple websites registered to unknown addresses,
online counterfeit operations are notoriously difficult to locate and
control.36 However, recent court decisions have provided new legal
ammunition for fighting elusive cybersquatters. In a joint action against
a Chinese counterfeiting ring, the U.S. District Court for the Southern
District of New York granted plaintiffs, Polo Ralph Lauren and The
North Face, on oing authority to disable defendants' websites used to
sell fake goods. The ruling allowed plaintiffs to take down counterfeit
sites without filing an injunction for each new domain name.38
Additionally, the Court awarded the brands $78 million in damages and
the ability to collect money from third parties, such as PayPal, that
transferred customer payments to counterfeiters. 39
The seminal Polo-North Face decision laid the foundation for

31. Michiko Kakutani, The Devil Wears Hermes, N.Y. TIMES, Aug. 21, 2007.
32. The percentage of households with annual income exceeding $10,000, the point
consumers begin buying luxury goods, has increased from 3.1% in 2000 to 17.9%, with
projected double-digit growth for the next eight years. The Chinese luxury market is
forecasted to grow at a rate of 25% a year for the next five years, and continue annual
growth at a rate of 22% thereafter. China is poised to represent 44% of the world luxury
market by the year 2020. Ellen Sheng, Report: China Near HalfofLuxury Market by 2020,
WOMEN'S WEAR DAILY, Feb. 14, 2011; see also Kakutani, supra note 29.
33. U.S. CUSTOMS AND BORDER PROT., CBP No. 0153-0112, INTELLECTUAL PROPERTY
RiGHTS FISCAL YEAR 2011 SEIZURE STATISTICS (2011).
34. Kristi Ellis, USTR Sees Some Progress in 'Notorious Markets' Fight, WOMEN'S
WEAR DAILY, Dec. 21, 2011.
35. Feitelberg, supra note 8.
36. Id.
37. Alexandra Steigrad, Tory Burch Wins $164 in Cybersquatting Suit, WOMEN'S
WEAR DAILY, June 10, 2011.
38. Steigrad, supranote 37.
39. Id.
2011] Fashioning a Solution for Design Piracy 225

designer Tory Burch's legal victory over cybersquatters who sold

counterfeits via 232 different domain names. 4 0 Burch's attorneys
derived inspiration from the Polo-North Face action and adopted
similar legal arguments for the designer's case in the same judicial
district. 4 1 Following suit, Judge Deborah Batts granted Burch "the same
ability to collect from third parties and disable infringing sites; the
principal difference is she awarded the brand more money in
43 "The damage award is
damages."42 Burch won $164 million.
massive, but the action against rogue websites is even more
impressive," noted Professor Susan Scafidi, Director of the Fordham
University Fashion Law Institute. 44 According to Scafidi, the ruling
indicates "the potential for a single decision to cut a wide swath through
a network of illicit sites." 4 5

II. FASHION DESIGN PIRACY

Despite the legal crackdown on fashion counterfeits, "copies of
a garment rather than its label remain beyond the reach of American
law." 46 Regarding design piracy, U.S. District Court Judge Jack B.
Weinstein observed:
Important policies are obviously at stake. Should we
encourage the artist and increase the compensation to the
creative? Or should we allow cheap reproductions which will
permit our less affluent to afford beautiful artifacts? ... Thus
far Congress and the Supreme Court have answered in favor
of commerce and the masses rather than the artists, designers
and the well-to-do. 47
Historically, legal protection for fashion designs has been denied based
on the market theory that competition fosters innovation in creative
industries.4 8 However, design piracy in the new era of fast fashion calls
for reexamination of traditional policy considerations.

FastFashion:

40. Steigrad, supra note 37.

41. Id
42. Id.
43. Id
44. Id
45. Steigrad, supra note 37.
46. Scafidi Statement, supra note 25.
47. Kieselstein-Cord v. Accessories By Pearl, Inc., 632 F.2d 989, 999 (2d Cir. 1980).
48. Cheney Bros. v. Doris Silk Corp., 35 F.2d 279 (2d Cir. 1929).
226 Syracuse J. Int'l L. & Com. [Vol. 39:1

A New Business Model Raising New Policy Concerns

Criticized as "the sartorial equivalent of the fast food industry,"
fast fashion businesses chum out low-cost imitations of high-fashion
styles within weeks of their debut on the runway. 49 Simonia Fashions is
one of hundreds of companies that openly engage in design piracy.o
Headed by Seema Anand, Simonia manufactures imitation designer
clothing for major retailers including Macy's, Bloomingdale's, Forever
21, Rampage, and Urban Outfitters. ' While design piracy has always
existed in the fashion industry, new technology and communications
systems have accelerated the process. 52 Historically, fashion magazines
introduced the first images of designer collections, usually only a month
or so before items appeared in stores. 53 Today's fashion shows are
broadcast in real time-disseminating high-resolution images of designs
straight from the runway.54
Anand described the rapid turnaround of modem copying,
explaining, "If I see something on Style.com, all I have to do is e-mail
the picture to my factory and say, 'I want something similar, or a
silhouette made just like this' . . . The factory, in Jaipur, India, can
deliver stores a knockoff months before the designer version."55
Simonia Fashions contracts with 2,000 factory workers who specialize
in clothing design, tailoring and pattern making.5 6 Equipped with
computer programs that can replicate a garment's design from an
internet image, the factory makes and returns samples within fourteen
days. The Jaipur factory is not unique. It is just one in a highly
competitive network of factories using the latest technology to copy
designer styles. 5 8
Ms. Anand referenced a gold sequined tunic that Simonia
Fashions created for Bloomingdale's private label. 59 The item is nearly

49. SUSAN SCAFIDI, Intellectual Property and Fashion Design, in INTELLECTUAL

PROPERTY AND INFORMATION WEALTH: ISSUES AND PRACTICES IN THE DIGITAL AGE 115, 117
(Peter K. Yu ed., 2006).
50. Eric Wilson, Before Models Can Turn Around, Knockoffs Fly, N.Y. TIMES, Sept. 4,
2007, at Al.
51. Id.
52. Id.
53. Hernandez Statement, supra note 34, at 103.
54. Banks Statement, supra note 14.
55. Wilson, supra note 50.
56. Id.
57. Id
58. Id.
59. Wilson, supra note 50.
2011] Fashioning a Solution for Design Piracy 227

identical to a Tory Burch dress that retails for $750.60 However, the
Simonia version sells for $260.61 According to Anand, "This is the
requirement of the market . .. If a buyer tells us, 'This is what I need,'
we'll make it for them. This is our business." 62 And for Anand,
business is booming. With ten employees in the New York showroom,
Simonia Fashions boasts sales of $20 million. 63

The Right to Look Fabulous?

Anand believes that her work serves the vast majority of
consumers who wish to buy stylish clothes but cannot afford designer
prices. 64 "It's their right to look fabulous," she pronounced.6' Thus,
Simonia righteously chums out knockoffs "with the impunity and speed
of Robin Hood." Others similarly contend that fast fashion copies
provide greater accessibility to designer styles. U.K. Vogue editor
Alexa Shulman questioned, "Since many people can't afford the
obviously more desirable expensive buys, why should they be deprived
of owning a cheaper version?" 67

Reconciling Policy Issues:

The "Democratization"of Modern Fashion6 8
Over half a century ago, high-fashion apparel was only available
to the wealthy and social elite. 69 Then, "the A-list wore Paris originals
and everyone else settled for copies . .. Original but inexpensive simply
wasn't an option." 70 In the modem fashion era, designer Narciso
Rodriguez dressed First Lady Michelle Obama and created an
affordable collection for eBay during the same year.7 1 Rodriguez is one
of many high-fashion designers reaching out to a larger population of

60. Id.
61. Id.
62. Id.
63. Id.
64. See Wilson, supra note 50.
65. Wilson, supra note 50.
66. Id.
67. Liz Jones & Alexandra Shulman, Should We Boycott Throwaway Fashion? Liz
Jones Takes on Vogue EditorAlexandra Shulman, DAILY MAIL (Aug. 21, 2008).
68. See Scafidi Statement, supra note 25.
69. Susan Scafidi, Re-Fashioning Intellectual Property Law, Aug. 13, 2010, http://
www.acslaw.org/acsblog/re-fashioning-intellectual-property-law (last visited Oct. 11, 2011).
70. Id.
7 1. Id.
228 Syracuse J. Int'l L. & Com. [Vol. 39:1

consumers through collaborations with mass-market retailers.72 Fashion

houses experiment with new clothing concepts in runway collections;
then create less expensive versions in diffusion lines adapted "for a
broad range of consumer needs and budgets." 73 Licensing deals with
large retailers-including Wal-Mart, Target, Kohl's, Gap, J.C. Penney,
and J.Crew-compensate designers for their innovation and Provide
consumers authentic designer merchandise at a variety of prices.
The Missoni for Target collection made headlines and generated
"unprecedented" consumer demand, crashing the Target website and
selling out within hours of its debut in September 201 1L7 The 400-
piece collection combined Missoni's high-fashion prints with Target's
mass-market accessibility. While Missoni pieces at Bergdorf Goodman
are priced up to $12,000, most of the Missoni for Target items cost less
than $40.76 Today, lower-priced diffusion lines "have become virtually
de rigueur for iconic designers," 77 signaling that "the old high-low,
creator-copyist divisions no longer control." 78
In 1980, Judge Weinstein asked, "Should we allow cheap
reproductions which will permit our less affluent to afford beautiful
artifacts?" 79 Weinstein's query reflects a traditional argument
underpinning design piracy. In the past, designer imitations provided
stylish options for consumers who could not afford authentic designer
merchandise. However, today's consumers no longer need knockoffs
for the opportunity to purchase designer styles. The widespread
accessibility of authentic designer goods renders this traditional
argument for piracy obsolete. As Diane von Furstenberg observed, in
the modem fashion market, "great American fashion designs, not cheap
imitations" are available at every price point.80

72. See Feifei Sun, Demand for Diffusion Lines, TIME NEWSFEED, Dec. 29, 2011,
http://newsfeed.time.com/2011/12/30/karlie-kanye-and-more-five-fashion-stories-to-watch-
in-2012/#demand-for-diffusion-lines (last visited Jan 2, 2012); See also Hernandez
Statement, supra note 11.
73. Scafidi Statement, supra note 25.
74. Hernandez Statement, supra note 11.
75. Stephanie Clifford, Demand at Target for Fashion Line Crashes Web Site, N.Y.
TIMES, Sept. 13, 2011; Emanuella Grinberg, 'Missonifor Target' Line Crashes Site, Sells
Out in Stores, CNN LIVING, Sept. 13, 2011, http://articles.cnn.com/2011-09-13/living/living
missoni-for-target-line-creates-black-friday-like-demandi missoni-isaac-mizrahi-target-
com?_s=PM:LIVING (last visited Oct. 15, 2011).
76. Clifford, supra note 75.
77. Sun, supra note 72.
78. Scafidi, supra note 69.
79. Kieselstein-Cord,632 F.2d at 999.
80. STOP FASHION PIRACY, supra note 11.
2011] Fashioning a Solution for Design Piracy 229

Piracy ThreatensAmerican Innovation:

"American style. American design. It has meaning.And it has value. "81
Fashion Avenue in New York City has "a long, rich tradition of
knocking off European designs." 82 Thirty years ago, most of the
apparel in the United States had been copied from the European fashion
centers of Paris and Milan.83 Since then, American designers have
forged a new tradition: creating original, innovative American style. 84
"It has meaning. And it has value."85 However, the lack of intellectual
property protection for fashion designs in the United States poses an
unprecedented threat to the future of the American fashion industry.
According to Professor Susan Scafidi, "While the U.S. has
deliberately denied copyright protection to the fashion industry over the
past century, other nations have incorporated fashion into their
intellectual property systems - and have consequently developed more
mature and influential design industries."86 The U.S. and China are the
only industrialized nations without legal protection for fashion designs,
putting American designers at a distinct disadvantage in the global
context. 87 As Zac Posen asserted, intellectual property protection for
fashion designs is necessary to encourage and invigorate American
designers "so that we can compete globally."88
An original designer invests considerable time and money into
research, pattern making and fashion shows. 89 A copyist simply steals
the end product of the designer's investment and, by having a cost-free
design, can sell the item at a lower price. 90 Accordingly, piracy forces a
designer to compete with cheaper, more widely accessible versions of
the designer's own creation.9 1 Further, a flood of poor quality
knockoffs in the marketplace damages the designer's reputation and
diminishes the value of the original design. 92

81. Banks Statement, supra note 14.

82. Teri Agins, Copy Shops: Fashion Knockoffs Hit Stores Before Originals as
Designers Seethe, WALL. ST. J., Aug. 8, 1994, at Al.
83. Banks Statement, supra note 14.
84. Id.
85. Id.
86. Scafidi Statement, supra note 25.
87. See Hernandez Statement, supra note 11.
88. STOP FASHION PIRACY, supra note 11.
89. Statement of Thakoon Panichgul, STOP FASHION PIRACY, supra note 11.
90. Id.
91. See Banks Statement, supra note 14; See also Hernandez Statement, supra note 11,
at 4 (discussing piracy of Proenza Schouler's PS I satchel).
92. Rep. Bob Goodlatte statement, supra note 11.
230 Syracuse J. Int'l L. & Corn. [Vol. 39:1

While copying has always occurred in the fashion industry,

copying in the fast fashion era poses a greater threat to designers. As
Anna Sui explained, "The issue is also timing. These copies are hitting
the market before the original versions do." 93 This is a daunting
prospect for renowned designers like Tom Ford who banned
photographers, except one he commissioned himself, from capturing
images of his September 2010 fashion show. 94 While established
designers may survive the economic hit of design piracy, failure to
recoup the substantial financial investment of producing a show can
devastate the career of an emerging designer. 95
According to Narciso Rodriguez, a single fashion collection
takes six to twelve months to create and production costs total close to
$6 million. 96 Piracy drastically impairs a designer's ability to earn
financial return on this significant investment. 97 For example,
Rodriguez earned international acclaim for creating Carolyn Bessette's
wedding gown in 1996.98 The dress was imitated more than any
silhouette from the previous decade, selling between 7 million and 8
million copies. 99 Strikingly, only forty of these dresses were original
Rodriquez designs.' 00 The rest were pirated copies. 0 '
As opponents of legal protection for fashion designs, Kal
Raustiala and Christopher Sprigman argue that copying ultimately
benefits the fashion industry, an effect they call the "piracy paradox."' 02
According to Raustiala and Sprigman, "The interesting effect of
copying is to generate more demand for new designs, since the old
designs-the ones that have been copied-are no longer special. The
overall result is greater sales of apparel." 0 3 While copying may drive

93. Wilson, supra note 50.

94. Jerico Tracy, Tom Ford Won't Release Show Images, HARPER'S BAZAAR (Sept. 14,
2010).
95. Hernandez Statement, supra note 11, at 2-5.
96. Design Piracy ProhibitionAct: Hearing on HR. 2033 Before the Subcomm. on
Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 110th
Cong. 25 (2008) (statement of Narciso Rodriguez) [hereinafter Rodriguez Statement].
97. Id
98. Id.
99. Id.
100. Id.
101. Rodriquez Statement, supra note 96, at 25.
102. Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and
Intellectual Property in Fashion Design, 92 VA. L. REv. 1687, 1691 (2006); Kal Raustiala
& Christopher Sprigman, The Piracy Paradox Revisited, 61 STAN. L. REv. 1201, 1203
(2009).
103. Kal Raustiala & Christopher Sprigman, Is the Design Piracy ProhibitionAct A
Good Idea?, FREAKONOMICS (Mar. 12, 2010), http://www.freakonomics.com/2010/03/12/
2011] Fashioning a Solution for Design Piracy 231

apparel sales in general, copies often divert sales from the original
designer, as demonstrated by Rodriquez's account above.
Rodriguez attested, "There are so many aspects of a fashion
business that make it risky in the best of circumstances and the pirates
are only making it riskier."' 04 Rodriquez warned lawmakers that piracy
is particularly devastating for emerging designers who "will not survive
in the face of knockoffs that dilute the value of the original design." 05
Further, emerging designers "are the ones who are creating the new
designs," observed Jeffrey Banks.106 Consequently, many of the most
innovative designers also face the greatest risk from design piracy.1 07
This risk may threaten future innovation in the American fashion
industry, as the lack of protection for creations could dampen designers'
incentive to create. "Innovation is an investment but we can't innovate
without protection against copying," Banks urged. 0 8 As U.S. law
currently stands, "innovation launched on the runway or the red carpet
is stolen in plain sight."1 09

Sweatshop Labor: The Human Cost ofDesign Piracy

Design piracy not only threatens designers, but also poses dire
risks for the many workers who produce pirated goods in hazardous
sweatshops. Low price points drive the fast fashion business, allowing
consumers to justify purchasing trendy items that will soon be outdated.
Some retailers have used sweatshop labor to cut merchandise
production costs, including Forever 21, one of the fastest-growing
clothing chains in the United States."10 Garment workers described the
squalid conditions of a downtown Los Angeles sewing factory with one
bathroom and no running water."' Here, illegal immigrants labored ten
hours a day, six days a week sewing Forever 21 clothes for $4 an

should-fashion-be-protected-by-copyright-laws-a-guest-post/ (last visited Oct. 27, 2011).

104. Rodriquez Statement, supra note 96.
105. Kristi Ellis, Copyright vs. Vendor: Battle Over Copyright Issue Hits Congress,
WOMEN'S WEAR DAILY, Feb. 15, 2008.
106. Banks Statement, supra note 14.
107. See Design Piracy ProhibitionAct: Hearing on H.R. 2033 Before the Subcomm.
on Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 11Oth
Cong. 14 (2008) (statement of Jeannie Suk, Professor of Law, Harvard Law School).
108. Banks Statement, supra note 14.
109. Id.
110. POV: Made in L.A. (PBS Television Broadcast Sep. 4, 2007).
111. Kate Berry, Workers Gain Rights to Sue Forever 21 in Sweatshop Case, ORANGE
COUNTY Bus. J. (Apr. 5, 2004).
232 Syracuse J. Int'l L. & Corn. [Vol. 39:1

hour.112
Julia Figueira-McDonough, an attorney with the Asian Pacific
American Legal Center of Southern California, represented nineteen
garment workers in a California state court action against Forever 21.113
The lawsuit sought to hold the retailer jointly responsible for the
practices at sweatshops that produced the company's private-label
clothes.11 4 Figueira-McDonough observed the intrinsic link between
the fast fashion business model and sweatshop labor, as retailers'
demands for lower prices and faster production times "could only be
met if manufacturers and their subcontractors impose sweatshop
conditions on workers." 5 According to Figueira-McDonough, Forever
21 contracted with manufacturers "knowing full well" that the contract
prices were too low to pay workers legal wages.1" 6 She suggested, "It's
a very conscious strategy to insulate the company from liability."" 7
Forever 21, in turn, denied responsibility for wages and working
conditions at factories that produced its merchandise." 8
Despite legal controversies, the Forever 21 chain continues to
grow."l With more than 460 stores across the U.S., Canada, Puerto
9
Rico, South Korea, Japan and the U.K., Forever 21 announced plans to
enter the French fashion market in 2012.120 According to Women's
Wear Daily, "Even as it rapidly expands, Forever 21 has maintained its
appeal for trendy fast fashion, low prices and color, and its sharp read
on what teens want and the price they'll pay for it."'21 While other
chain brands are cutting between 10 and 25 percent of their stores,122
Forever 21 "is primed for significant international growth" in 2012.123

Sweatshops Continued: FastFashion in the U.K.

112. Berry, supranote I 11.

113. Id.
114. Id.
115. Id.
116. Id.
117. Berry, supra note 111.
118. Id.
119. Joelle Diderich, Forever 21 to Enter French Market, WOMEN'S WEAR DAILY,
Dec. 23, 2011.
120. Id.
121. David Moin, The Winners and Losers This Holiday, WOMEN'S WEAR DAILY, Jan.
3, 2011, at 1, 8; Sharon Edelson, Retailers Eye Openings Again: Retailers Coming Back to
Expansion, WOMEN'S WEAR DAILY, Dec. 13, 2010, at 1, 5.
122. Alexandra Steigrad, Specialty Chains Seen Slashing Store Counts, WOMEN'S
WEAR DAILY, Dec. 9, 2011.
123. Diderich, supra note 119.
2011]1 Fashioning a Solution for Design Piracy 233

Fast fashion retailers are also on the rise abroad, and the
increasingly global market has led to the general trend of outsourcing
production to countries with cheap labor and attractive tax policies. 2 4
In the United Kingdom, stores such as Primark, Asda and M&S sell
"cheap fashion" produced by underpaid workers in developing
countries.125 Meanwhile, Britain's once-thriving apparel industry in the
Yorkshire Dales and the Borders "is on its knees, with one of the last
family-owned mills about to close its doors."1 26 British journalist Liz
Jones has called for a boycott of fast fashion retailers, where cheap
fashion comes at great human cost.127
Jones visited the Bangladesh slums that are home to 2.5 million
garment workers who sew clothing for "the biggest, best-known brands
in the world." 28 Jones described the grim specter of women raising
children beneath canopies of plastic bags and condemned the slums as
"a living hell." 29 Major brands admit to employing children under the
age of sixteen and paying the minimum wage in Bangladesh, India and
Sri Lanka, which is well below a living wage.130 Some employees earn
less than minimum wage, such as fourteen-year-old Bristi, who works
in a Dhaka factory sewing clothes for British stores. 131 Bristi must
work fifty overtime hours per month because her wage, as she
explained, "is not enough to live on."' 32
Another worker, Sufia, has been making clothes for more than
thirteen years and also earns less than minimum wage. 3 3 During her
time working in the Dhaka garment industry, Sufia experienced the
transition to a fast fashion business model, which demands quicker
production of higher volumes of merchandise.1 34 "In the beginning the
whole environment was much better," she explained.' 3 5 "But now
things are very bad. We get told off if someone talks. Sometimes they
are kept standing as punishment. I can be told36 'if you cannot reach your
target then you will have to work for free."'

124. Vivienne Perry, Fast FashionNation, BBC NEWS (Apr. 18, 2008).
125. Jones & Shulman, supra note 67.
126. Id.
127. Id.
128. Id.
129. Id.
130. Jones & Shulman, supra note 67.
131. Perry, supra note 124.
132. Id.
133. Id.
134. Id.
135. Id.
136. Perry, supra note 124.
234 Syracuse J. Int'l L. & Com. [Vol. 39:1

Despite increased material costs, women's clothing prices in the

U.K. have dropped 35% over the past ten years.' 37 As Jones reported,
"ten years ago a pair of jeans by George at Asda cost £17.99; today they
cost E3."'3 Reluctant to raise prices, fast fashion retailers refuse to
improve workers' wages and factory conditions.1 39 Governments and
unions in developing countries, in turn, are reluctant to intervene on
behalf of factory workers, fearing that brands will relocate their
businesses elsewhere.140 Jones concluded that ever-cheaper fashion "is
like cheap food: it means people's lives and the environment are being
violated."'41

Affordability Without Sustainability:

The Environmental Cost ofDesign Piracy
A dirty pile of clothes lies in a heap among empty water bottles,
hypodermic needles, and mangled cardboard.1 42 A black blouse reveals
the label of a British fast fashion brand. 4 3 The birds scavenging for
food in the waste are not the seagulls of Britain, however.144 They are
the giant Marabou storks of Uganda, scouring the artificial hills built by
some 1,500 tons of garbage discarded from Kampala every day.145 As
BBC reporter Jack Garland observed, British fast fashion clothing
strewn about the landfill "is not only a sign of the impact of
globalization but also a symptom of the U.K.'s growing addiction to
throwaway fashion."146
The U.K. House of Lords Science and Technology Committee
called attention to fast fashion's role in the "wasteful consumption to
which our society has become accustomed." 47 According to a
committee report, the culture of fast fashion "encourages consumers to
dispose of clothes which have only been worn a few times in favour of
new, cheap garments which themselves will also go out of fashion and

137. Id.
138. Jones & Shulman, supra note 67.
139. Id.
140. Id.
141. Id.
142. Garland, supra note 2.
143. Id.
144. Id.
145. Id.
146. Id
147. SCIENCE AND TECHNOLOGY COMMITTEE, WASTE REDUCTION, 2007-8, H.L. 163-1,
at 52.
2011] Fashioning a Solution for Design Piracy 235

be discarded within a matter of months."l 48 As Alexandra Shulman of

U.K Vogue remarked, a fast fashion dress "is cheap enough to get rid of
if the red wine stains are so bad that it won't recover, and, anyway, the
dry cleaning might well end up costing about as much as the dress did
in the first place."1 49 However, this very reasoning has contributed to
the proliferation of abandoned knockoffs crowding landfills from the
U.K. to Africa-and beyond.
According to the U.K. Department for Environment, Food and
Rural Affairs, discarded clothing contributes to a host of environmental
problems, including growth of the U.K.'s carbon footprint and chemical
waste output.150 In fact, the clothing industry "is a close rival to the
chemical industry in its levels of pollution."' 5' The prevalence of
synthetic materials, such as polyester and nylon, in fast fashion items
makes it difficult to recycle or capture any value from the fabric.' 52
Recycling companies, like LMB Supplies in East London, use cloth
from old apparel to produce new products such as carpets and
mattresses. However, the high proportion of synthetic fibers largely
precludes recycling fast fashion clothes.1 54 Consequently, only 16% of
apparel discarded in the U.K. is ultimately recycled, and the greater
proportion ends up in landfills.' 55
Most synthetic textiles will never biodegrade in landfills,
precipitating long-term environmental hazards.' 56 As a representative
from Environmental Alert Uganda explained, "Non-biodegradable
clothes tamper with the soil's productivity - they stop water from
entering and the run-off hampers food production."' 57 The resulting
stagnant water spreads diseases like malaria.' 5 8 Thus, Garland
concluded, "From the catwalks of London to the rubbish heaps of
Kampala the impact of fast fashion is wide and deep. And if the trend
continues, the West's wardrobes will be feeding landfill tips around the
world for many years to come."' 59

148. SCIENCE AND TECHNOLOGY COMMITTEE, supra note 147.

149. Jones & Shulman, supra note 67.
150. Garland, supra note 2.
151. Madeleine Holt, How EthicalIs Your Fashion?,BBC NEws (Feb. 7, 2008).
152. Garland, supra note 2.
153. Id.
154. Id.
155. Id.
156. Id.
157. Garland, supra note 2.
158. Id.
159. Garland,supra note 2.
236 Syracuse J. Int'l L. & Com. [Vol. 39:1

Lawful PiracyEnables Illicit Counterfeiting

Lawful design piracy also enables illicit counterfeiting. U.S.
law prohibits counterfeiting, or the "knowing use of a spurious mark
which is identical with or substantially indistinguishable from a
registered trademark, in connection with the trafficking of counterfeit
merchandise."1 60 However, trademark counterfeiters have exploited the
lack of anti-piracy law to import copies and add illegal labels after items
have cleared customs.1 6 1 U.S. investigators reported an increase in such
finishing operations with counterfeiters "legally shipping in generic
items, then having workers, many of them illegal immigrants, stamp,
embroider, or attach the logo or other identifying details."l 62 One
investigator remarked, "Anything that can be brought in blank is being
brought in blank ... They can attach a Prada tag or interlocking GG on
demand." 63 As Scafidi observed, this simple scheme undermines both
government efforts to combat counterfeits and "IP law itself." 64

III. LEGAL PROTECTION FOR FASHION DESIGNS

U.S. Intellectual Property Enforcement Coordinator Victoria
Espinel asserted, "America's creativity and ingenuity cannot thrive
without intellectual property protection and enforcement, which allows
a revolutionary idea to blossom into economic opportunity." 65
However, Senator Orrin Hatch observed that the U.S. fashion industry is
not "taken as seriously" as other industries regulated by intellectual
property. 166 According to U.S. Senator Charles Schumer, "Design is
every bit intellectual property - yet the law says, 'Come, rip it off - it's
absolutely amazing."l 67 The European Union, Japan, and India have
laws protecting fashion designs.1 68 France established protection for its

160. Trademark Counterfeiting Act of 1984, Pub. L. No. 98-473, Tit. II, §1502(a), 98
Stat. 2178 (1984); See 15 U.S.C. § 1127 (2008) (definitions); 15 U.S.C. § 1116 (d) (2008)
(civil actions); 18 U.S.C. §2320 (2008) (further statutory and criminal remedies).
161. Thomas, supra note 17.
162. Id.
163. Id.
164. Scafidi, supra note 69.
165. Victoria Espinel, Progresson the Intellectual Property Enforcement Strategy, THE
WHITE HOUSE BLOG, Feb. 7, 2011, http://www.whitehouse.gov/blog/2011/02/07/progress-
intellectual-property-enforcement-strategy (last visited Oct. 6, 2011).
166. 153 CONG. REc. S10, 804 (daily ed. Aug. 2, 2007) (statement of Sen. Orrin
Hatch).
167. STOP FASHION PIRAcY, supra note 11.
168. Scafidi, supra note 69.
2011] Fashioning a Solution for Design Piracy 237

celebrated couture more than a century ago.169 American fashion

designers have been pursuing better intellectual property protection for
their creations for at least that long, yet fashion design piracy remains
legal in the United States today.' 7 0

CopyrightLaw
U.S. copyright law protects "original works of authorship fixed
in any tangible medium of expression." 1 7 1 However, the Copyright Act
does not include fashion designs among the protected creative mediums
enumerated in Section 102.172 According to legislative history, "ladies'
dress" was specifically excluded from the act's protected subject
matter. 17 3 Consequently, copyright law does not shield fashion designs
in the same manner that it protects other creative mediums such as
literary works, music and film.1 74 As Congressman Jerrold Nadler
observed, "Kate Winslet's movies are protected from pirates, but Kate
Spade's bags are not." " 5
Copyright protection does not generally extend to "useful
article[s]," defined as those with "an intrinsic utilitarian function that is
not merely to portray the appearance of the article or to convey
information." 76 Deemed useful articles rather than artistic creations,
clothes have been categorically excluded from copyright protection.177
However, "pictorial, graphic, or sculptural features" that are separable
and can exist apart from the functional aspects of a garment may be
guarded under the doctrine of conceptual separability.' 78 For example,

169. Id.
170. Id.; See also Susan Scafidi, The Red-Soled Shoe Case, WALL ST. J., Jan. 25, 2012.
171. 17 U.S.C. § 102 (2011).
172. BRIAN T. YEH, CONG. RESEARCH SERV., COPYRIGHT PROTECTION FOR FASHION
DESIGN: A LEGAL ANALYSIS OF LEGISLATIVE PROPOSALS (2011) [hereinafter CRS Report];
17 U.S.C. §§ 101-102 (2010); Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d 452,
455 (2d Cir.1989).
173. H. REP. No. 94-1476, at 55 (1976).
174. See 17 U.S.C. § 102 (2010).
175. STOP FASHION PIRACY, supra note 11.
176. 17 U.S.C. § 101 (2010); but see id. § 1305(a) (1998) (allowing copyright
protection for vessel hulls and deck designs for a ten year period as per the Vessel Hull
Design Protection Amendments of 2008).
177. Registrability of Costume Designs, 56 Fed. Reg. 56, 530-32 (Nov. 5, 1991) ("On
this point the copyright law is reasonably clear. Garments are useful articles, and the designs
of such garments are generally outside of the copyright law.").
178. 17 U.S.C. §§ 101, 102(a) (2010); Mazar v. Stein, 347 U.S. 201, 213 (1954); A Bill
to Provide Protection for Fashion Design: Hearings on H.R. 5055 Before the House
Subcomm. on Courts, the Internet, and Intellectual Property, 10 9th Cong. 202 (2006)
(statement of the U.S. Copyright Office).
238 Syracuse J. Int'l L. & Com. (Vol. 39:1

lace and embroidery accents "that were totally irrelevant to the

utilitarian functions" of a tunic were copyrightable.' 7 9 Similarly,
costume jewelry and belt buckles may be protected under the doctrine
of separability. 8 0
Copyright law also covers fabric designs such as the patterns
printed on a dress.' 8 ' Courts have distinguished fabric designs from
dress designs which, as useful articles, are not copyrightable.1 82
Accordingly, copyright law does not safeguard design elements such as
the style, cut, shape or dimensions of a garment.' 8 Similarly, design
details like buttons or pleats are not sufficiently separable from the
useful function of clothing to qualify for copyright protection.' 84 Thus,
copyright protection for clothing designs is "extremely limited." 8 1
Designer Oscar de la Renta emphasized the significance of the
unprotected design elements, explaining, "My designs are known for
their sophisticated shapes and feminine silhouettes. The fit, cut, and
detailing of our clothes are as much a part of the Oscar de la Renta
brand as our logo itself. They are just as recognizable to our
customers."' 86

TrademarkLaw
Trademark law prohibits the commercial use of "any word,
term, name, symbol, or device" that is likely to cause confusion
concerning the origin, sponsorship or approval of goods.1 87 Thus,
trademark protection may cover fashion brand names and logos, but not
fashion designs.' 88 For example, both the Gucci name and interlocking
GG logo are protected trademarks that convey an association with the
designer brand.' 89 While unauthorized use of Gucci's marks is barred

179. Express, LLC v. Fetish Group, Inc., 424 F.Supp. 2d 965, 1211 (C.D.C.A. 2006).
180. Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 997 (2d Cir. 1980)
(holding that belt buckle design is protected by copyright law); see also Trifari, Krussman &
Fishel v. Charel Co., 134 F. Supp. 551 (S.D.N.Y. 1955) (holding that costume jewelry is
protected by copyright law).
181. Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir. 1991);
Knitwaves Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995); Peter Pan Fabrics Inc. v.
Brenda Fabrics Inc., 169 F. Supp. 142, 143 (S.D.N.Y. 1959).
182. Folio Impressions, 937 F.2d at 759; Whimsicality, Inc., 891 F.2d at 455.
183. Galiano v. Harrah's Operating Co., 416 F.3d 411, 414 (5th Cir. 2005).
184. Id. at 419.
185. See Statement of U.S. Copyright Office, supranote 177, at 202.
186. STOP FASHION PIRACY, supra note 11.
187. Lanham Act, 15 U.S.C. § 1125 (2006)
188. Goodlatte Statement, supra note 10, at 2; SCAFIDI, supra note 49, at 121.
189. See Gucci America, Inc. v. Duty Free Apparel, Ltd., 315 F.Supp.2d 511 (S.D.N.Y.
2011] Fashioning a Solution for Design Piracy 239

under trademark law, the overall appearance of a Gucci handbag

without the marks may be legally copied and sold. 190
Consequently, some established designers promote and protect
merchandise by distinctly featuring their trademarks on designs.191
However, new designers' trademarks lack the market recognition to
protect and sell merchandise in the same manner.' 92 New designers also
lack extensive advertising budgets to develop market recognition and
promote their trademarks.' 93 As one young designer noted, while
famous logo-driven companies "can just sell their trademarks,"
emerging designers must rely on their designs to achieve commercial
success.194
Trade dress is a subcategory of trademark law that shields
certain product characteristics and packaging,195 such as a Coca-Cola
bottle's curvy shape.' 96 To secure trade dress protection, a design must
be non-functional 97 and have secondary meaning,'" or the ability to
convey the product's source. The Supreme Court unanimously held that
a product design is never "inherently distinctive" or intrinsically capable
of identifying its source. 99 Accordingly, to prevail on a trade dress
claim, a designer must "convince a court that when people see the
copied product, they think of the maker of the original.',2oo Established
designs in the marketplace, such as an Hermes Birkin handbag or a
Converse Chuck Taylor All Star sneaker, will be more likely to convey
their sources than new designs by emerging designers. 2 0' Thus, like
trademark protection, trade dress is more effective for safeguarding
well-known designs by established designers than "new arrivals on the
fashion scene."202

2004).
190. See SCAFIDI, supra note 49, at 121. There are limited exceptions under trade dress
for certain designs that are both non-functional and have acquired secondary meaning. See
TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23 (2001); Wal-Mart Stores v.
Samara Bros., 529 U.S. 205, 211-16 (2000).
191. Scafidi, supra note 69.
192. Id.
193. See Suk Statement, supra note 105.
194. Id.
195. Inwood Labs. Inc. v. Ives Labs. Inc., 456 U.S. 844, 851 n.1 1(1982).
196. C. Scott Hemphill and Jeannie Suk, Schumer's Project Runway, WALL ST. J.,
Aug. 24, 2010.
197. TrajFix Devices, 532 U.S. at 23.
198. Wal-Mart Stores, 529 U.S. at 206.
199. Wal-Mart Stores, 529 U.S. at 216.
200. Hemphill & Suk, supra note 194.
201. SCAFIDI, supra note 49, at 121-22.
202. SCAFIDI, supra note 49, at 122.
240 Syracuse J. Int'l L. & Com. [Vol. 39:1

PatentLaw
Patent law is largely inapplicable for protecting fashion designs.
Utility patents shield certain functional elements of clothing that meet
the patentability requirements of novelty, utility and non-
obviousness.203 For example, fasteners such as the zipper and Velcro,
and high-performance textiles including Lycra and Kevlar have
successfully secured utility patents. 204 For nonfunctional creations,
design patents may protect new, original and ornamental designs 205 that
meet the novelty and nonobvious requirements for patentability. 206
However, the exacting standards for patentability are particularly
difficult to demonstrate for an article of clothing as a whole, rather than
a specific innovative element, like Velcro. Apparel designs are
generally "reworkings and are not 'new' in the sense that the patent law
,,207
requires. Accordingly, clothing designs consistently fail to satisfy
the novelty and nonobvious standards to obtain patent protection.208
Further, the lengthy and expensive process to register a patent,
which can take two or more years, makes this particular form of
intellectual property protection unsuitable for fashion designs. 209 The
amount of time required to secure a patent is inherently incompatible
with the seasonal nature of fashion trends.210 In this context, "it is
important to recognize the distinction between the general category of
clothing and the subcategory of fashion, which may be understood as a
seasonally produced form of creative expression., 21 1 While clothing
may last for years, the average stylistic life span of most high-fashion
designs is one season, approximately three to six months.212 By the
time a design receives patent protection, assuming it can satisfy the
stringent requirements, the article would be rendered stylistically

203. 35 U.S.C. §§ 101-103 (2006).

204. U.S. Patent No. 504,038 (issued Aug. 29, 1893) (shoe zipper); U.S. Patent No.
3,009,235 (issued Nov 21, 1961) (Velcro); U.S. Patent No. 3,819,587 (issued June 25, 1974)
(Kevlar); U.S. Patent No. 2,692,874 (issued Oct. 26, 1954) (Lycra).
205. 35 U.S.C. § 171 (2006).
206. See e.g., Belding Heminway Co. v. Future Fashions, Inc., 143 F.2d 216 (2d Cir.
1944) (per curiam); White v. Lenore Frocks, Inc., 120 F.2d 113 (2d Cir. 1941) (per curiam);
Neufeld-Furst & Co. v. Jay-Day Frocks Inc., 112 F.2d 715 (2d Cir. 1940); Nat Lewis
Purses, Inc. v. Carole Bags, Inc., 83 F.2d 475 (2d Cir. 1936) (per curiam).
207. The PiracyParadox,supra note 102.
208. Id
209. SCAFIDI, supra note 49, at 122.
210. Id.
211. Id.
212. Id.
2011] Fashioning a Solution for Design Piracy 241

obsolete by today's increasingly fast fashion cycle.213 Patents are more

effective for protecting an innovation, such as the zipper, that will be
licensed repeatedly over many years. 214 However, fashion is
"notoriously ephemeral and transient; what is 'in' this season, is pass6
the next." 21 5 As Coco Chanel famously remarked, fashion "dies the
minute it is born." 216

Fashion Design Protectionsin France

According to Professor Susan Scafidi, France has "the world's
strongest legal protections for fashion design." 2 17 The silk weavers of
Lyon, France sought intellectual property protection for their original
designs during the early eighteenth century. 2 18 By 1787, a French royal
decree granted design protection to silk manufacturers nationwide. 219
During the nineteenth century, following the industrialization of textile
production, design pirates began to manufacture and sell less expensive
copies of Parisian haute couture. 220 The couture industry demanded
intellectual property protection for original fashion designs and,
subsequently, licensed designs to reputable manufacturers. 221 French
designers found protection in 1793 copyright law, as amended in 1902,
and the 1806 industrial design law, as amended in 1909.222 French
courts applied both types of protection to fashion designs in lawsuits
brought by Jeanne Paquin, Madeline Vionnet, and Coco Chanel during
the early twentieth century. 223
Today, the Intellectual Property Code of France expressly
identifies fashion items among the "works of the mind" covered by
copyright law. 224 Article L1 12-2(14) protects "creations of the seasonal

213. SCAFIDI, supra note 49, at 122.

214. Id.
215. Jennifer Mencken, A Design for the Copyright of Fashion, 1997 B.C. INTELL.
PROP. & TECH. 121201 (1997).
216. EDMONDE CHARLES-Roux, CHANEL AND HER WORLD: FRIENDS, FASHION, AND
FAME 377 (Daniel Wheeler trans., 2005).
217. SCAFIDI, supra note 49, at 122.
218. Id. at 116.
219. Id.
220. Id. at 117.
221. Id.
222. SCAFIDI, supra note 49, at 117 (citing JEANNE BELHUMEUR, DROIT INTERNATIONAL
DE LA MODE 71-73 (2000)).
223. Id. at 117 (citing DIDIER GRUMBACH, HISTOIRES DE LA MODE 67-72 (1993); Mary
Lynn Stewart, Copying and Copyrighting Haute Couture: Democratizing Fashion, 1900-
1930s, 28 FRENCH HisT. STUD. 102, 118-30 (2005)).
224. CODE DE LA PROPRIfTE INTELLECTUELLE art. L 12-2(14).
242 Syracuse J. Int'l L. & Corn. [Vol. 39:1

industries of dress and articles of fashion ... which, by reason of the

demands of fashion, frequently renew the form of their products."225
Specific examples include "dresses, furs, underwear, embroidery,
fashion, shoes, gloves, [and] leather goods." 226 Some fashion items also
qualify for terms of protection up to twenty-five years as registered
industrial designs.227
During a high-profile design dispute in 1994, the French court
ruled against Ralph Lauren for copying a sleeveless tuxedo gown
created by Yves Saint Laurent in 1966. The American designer was
ordered to pay $395,000 in damages and advertise the court's decision
in ten different publications. 228 The two design houses eventually
settled the case, agreeing to a lower fine and eliminating the publication
requirement altogether. 229 Although few piracy disputes result in
litigation, copyists challenged under French law often pay financial
settlements to design originators.230 As such disputes illustrate, French
intellectual property law has not eliminated design piracy. However,
the protection afforded to fashion designs has contributed to the strength
of the French fashion industry and its global influence.23 1

FashionDesign Protectionsin the European Union

In 2002, the European Union established community-wide
intellectual property protection for original fashion designs including
apparel and accessories.232 The Office for Harmonization in the Internal
Market registers trademarks and designs that are valid throughout the
twenty-seven countries of the EU.233 Since 2003, creators may register
their designs for a five-year term of protection, renewable for up to
twenty-five years.234 Original designs also receive three years of

225. Id
226. Id.
227. Id. art. L511-1 and L513-1.
228. Soci6t6 Yves Saint Laurent Couture S.A. v. Socidt6 Louis Dreyfus Retail Mgmt.
S.A., [1994] E.C.C. 512, 514 (Trib. Comm. Paris).
229. TERI AGINS, THE END OF FASHION: How MARKETING CHANGED THE CLOTHING
BUSINESS FOREVER 43-44 (2000).
230. SCAFIDI, supra note 49, at 117 (citing Interview with Didier Grumbach, President
of the F6d6ration Frangaise de la Couture, du Prdt-A-Porter des Couturiers et des Cr6ateurs
de Mode (Aug. 2, 2006)).
23 1. Id.
232. Council Regulation 6/2002, 2002 O.J. (L 3) (EC).
233. OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET, http://oami.europa.eu/ows
/rw/pages/index.en.do (last visited Oct. 14, 2011).
234. Council Regulation 6/2002, 2002 O.J. (L 3) 1 (EC); SCAFIDI, supra note 49, at
126.
2011] Fashioning a Solution for Design Piracy 243

automatic, unregistered protection under EU law. 235

EU law defines design as "the appearance of the whole or a part
of a product resulting from the features of, in particular, the lines,
contours, colors, shape, texture, and/or materials of the product itself
and/or its ornamentation." 236 The law protects a design "to the extent
that it is new and has individual character." 237 A design is considered
new "if no identical design has been made available to the public." 238
Further, a design is deemed to have individual character "if the overall
impression it produces on the informed user differs from the overall
impression produced on such user by any design which has been made
available to the public." 239 Despite the strengthened protections, the EU
has not experienced a notable increase in litigation related to fashion
design infringement. 240 This may help allay concerns regarding the
potential for increased litigation in the United States from adopting
intellectual property protection for fashion designs.

IV. FASHIONING A SOLUTION IN THE UNITED STATES:

THE INNOVATIVE DESIGN PROTECTION AND PIRACY PREVENTION ACT
As early as 1913, the U.S. Register of Copyright called for an
amendment to the Copyright Act "to follow the French model and allow
registration of fashion designs." 241 Another Register of Copyright
identified the lack of design protection as "one of the most significant
and pressing items of unfinished business" in U.S. copyright law. 24 2
Judge Learned Hand similarly lamented the "hiatus in completed
justice" due to the lack of legal recourse for a textile manufacturer
whose design was deliberately copied by another. 24 3 "It seems a lame
answer in such a case to turn the injured party out of court," Judge Hand
observed. 244 Accordingly, he suggested, "It would seem as though the

235. Council Regulation 6/2002; SCAFIDI, supra note 48, at 126.

236. Council Regulation 6/2002, art. 3, 2001 O.J. (L 3) 1 (EC).
237. Council Regulation 6/2002, art. 4, 2001 O.J. (L 3) 2 (EC).
238. Council Regulation 6/2002, art. 5, 2001 O.J. (L 3) 1 (EC).
239. Council Regulation 6/2002, art. 6, 2001 O.J. (L 3) 1 (EC).
240. Design Piracy ProhibitionAct: Hearing on HR. 2033 Before the Subcomm. on
Courts, the Internet, and Intellectual Prop.of the H. Comm. on the Judiciary,1 1 Oh Cong. 1-
3 (2008) (Statement of Rep. William D. Delahunt).
241. SYLVAN GOTSHAL, THE PIRATES WILL GET You: A STORY OF THE FIGHT FOR
DESIGN PROTECTION 10 (1945).
242. Barbara Ringer, The Unfinished Business of Copyright Revision, 24 UCLA L.
REV. 951, 976 (1977).
243. Cheney Bros. v. Doris Silk Corp., 35 F.2d 279, 281 (2d Cir. 1929) (Hand, J.,
dictum).
244. Cheney Bros., 35 F.2d at 281 (Hand, J., dictum).
244 Syracuse J. Int'l L. & Com. [Vol. 39:1

plaintiff had suffered a grievance for which there should be a remedy,

perhaps by an amendment of the Copyright law." 245
Representing the creative core of the U.S. fashion industry, the
Council of Fashion Designers of America ("CFDA") has lobbied for
such a remedy. 246 Members of the trade group have met with legislators
and testified before Congress to support anti-piracy bills including the
Design Piracy Prohibition Act ("DPPA").2 4 7 However, another
powerful fashion industry group, the American Apparel and Footwear
Association ("AAFA"), opposed the bill. 2 4 8 Representing over 700
manufactures and suppliers that account for nearly 75% of the
American fashion .business, the AAFA contended that the bill was too
broad and would expose its members to frivolous lawsuits. 249
U.S. Senator Chuck Schumer brought the CFDA and AAFA
together in 2009.250 After a year of negotiations, Senator Schumer
introduced the bipartisan Innovative Design Protection and Piracy
Prevention Act ("IDPPPA") on August 5, 2010.251 As a product of
close collaboration between the creative designers of the CFDA and the
corporate manufacturers and distributors of the AAFA, the bill struck
the right balance to win the support of both groups.252
The IDPPPA proposes to amend title 17 of the United State
Code to extend copyright protection to fashion designs. 253 The
amendment would cover designs for men's, women's, and children's
clothing, including undergarments, outerwear, gloves, footwear,
headgear, handbags, purses, wallets, duffel bags, suitcases, tote bags,
belts, and eyeglass frames.254

High PleadingStandardto Limit FrivolousLawsuits

245. Id.
246. SCAFIDI, supra note 49, at 126; David Jacoby & Judith S. Roth, Wait 'Till Next
Year, BLOOMBERG L. REP. INTELL. PROP., Vol. 5, No. 5, Jan. 31, 2011 at 2.
247. Design Piracy Prohibition Act, H.R. 2033, 110th Cong. (2007); S. 1957, 1 10 th
Cong. (2007); H.R. 2196, 1 11th Cong. (2010).
248. Cathy Horyn, Schumer Bill Seeks to Protect FashionDesign, N.Y. TIMES (Aug. 5,
2010).
249. Id.
250. Id.
251. Innovative Design Protection and Piracy Prevention Act, S. 3728, 111th Cong.
(2010) [hereinafter IDPPPA]; Press Release, Office of Sen. Charles E. Schumer (Aug. 6,
2010).
252. Scafidi, supra note 69; See also Fashionon the Hill, WOMEN'S WEAR DAILY, July
8,2011.
253. IDPPPA; see also CRS Report, supra note 172.
254. IDPPPA § 2(a); CRS Report, supra note 172.
2011] Fashioning a Solution for Design Piracy 245

As Senator Schumer's office explained, the IDPPPA "provides a

very limited intellectual property protection to the most original fashion
designs - those that are extremely unique and extraordinary - and does
so in a way that limits unwarranted litigation." 255 Like patent law, the
IDPPPA establishes a high qualifying standard for design protection,
but without the lengthy and expensive registration process required for
patent protection.
A design must be new and original to merit protection under the
bill, and all other designs remain in the public domain. 257 To secure
protection under the IDPPPA, a design must provide "a unique,
distinguishable, non-trivial and non-utilitarian variation over prior
designs."258 Factors such as color, patterns and graphic elements cannot
be used to claim protection. 259 As AAFA's Kurt Courtney explained,
the bill's protection "will only cover those original articles which are so
truly unique that they come closer to art than functionality." 260

Limited Term ofProtection

The term of protection begins when a design is made public and
lasts for three years, "the shortest term of protection available under any
legal system in the world." 261 Infringing items are limited to
"substantially identical" copies, a standard that the plaintiff must plead
with particularity. 262 To be found infringing, a product must be "so
similar in appearance as to be likely to be mistaken for the protected
design."263 Additionally, the bill provides blanket exemptions for
teaching, analysis, and home-sewing during the three-year term of
protection.264

Levels the PlayingFieldwith InternationalDesigners

Senator Schumer observed that the U.S. fashion industry "has

255. Press Release, Office of Sen. Charles E. Schumer, (Dec. 1, 2010).

256. Scafidi, supra note 69.
257. Id.
258. IDPPPA § 2(a).
259. Scafidi, supra note 69.
260. Innovative Design Protection and Piracy Prevention Act: Hearing on H.R. 2511
Before the Subcomm. On Intellectual Property, Competition, and the Internet of the H
Comm. on the Judiciary, 1 12tb Cong. 92 (2011) (statement of Kurt Courtney, Government
Relations Manager, American Apparel & Footwear Association).
261. Scafidi, supra note 69.
2 62. Id.
263. IDPPPA § 2(a).
264. Scafidi, supra note 69.
246 Syracuse J. Int'l L. & Com. [Vol. 39:1

been at an unfair disadvantage because greater protections are afforded

to overseas competitors." 265 According to Schumer, "It would be
foolhardy and short-sighted to leave our important businesses
vulnerable to piracy here, especially when they could easily pick up and
leave for Paris or London for more security." 266 The IDPPPA "levels
the playing field with overseas designers," he concluded.267 CFDA's
Steven Kolb noted, in turn, "The fact that there will be a law in this
country, as there are in other developed countries will make people
think twice" before copying fashion designs. 268 "The law in itself is a
powerful deterrent." 269

CONCLUSION

The Senate Judiciary Committee approved the IDPPPA on

December 1, 2010 in a unanimous decision that Senator Schumer
declared "a major step forward" for the American fashion industry. 270
Since the bill was not cleared for consideration until the end of the 1 1 1 th
Congress, however, the IDPPPA did not make it to the floor for a full
vote before the session adjourned. 27 1
Congressman Bob Goodlatte reintroduced the bill, dubbed the
ID3PA, in the 112th Congress on July 13, 2011.272 Supported by
thirteen cosponsors, the ID3PA was referred to the House
Subcommittee on Intellectual Property, Competition and the Internet on
August 25, 2011.273 The U.S. Chamber of Commerce endorsed the bill,
citing the critical role of intellectual property protection for job creation,
economic growth and the success of the American fashion industry.274
According to the Chamber of Commerce, there are more than 14,000
fashion and apparel companies in the U.S. "directly employing
approximately 4 million Americans and indirectly employing countless

265. Schumer, Dec. 1, 2010 Press Release, supra 255.

266. Schumer, Aug. 6, 2008 Press Release, supra 251.
267. Schumer, Dec. 1, 2010 Press Release, supra 255.
268. Horyn, supra note 248.
269. Id.
270. Schumer, Dec. 1, 2010 Press Release, supra 255.
271. Jacoby & Roth, supra note 245; Fashionon the Hill, supra note 252.
272. Innovative Design Protection and Piracy Act, H.R. 2511, 112th Cong. (2011).
273. Jacoby & Roth, supra note 246.
274. Kristi Ellis, Design Piracy Bill Picks Up Support, WOMEN'S WEAR DAILY, Oct.
12, 2011; Letter from R. Bruce Josten, Executive Vice President of Gov't Affairs, U.S.
Chamber of Commerce, to Rep. Bob Goodlatte (Oct. 12, 2011), http://www.theglobalipcen
ter.com/sites/default/files/designpiracyidpppahr251I letter.pdf (last visited Dec. 30, 2011).
2011] Fashioning a Solution for Design Piracy 247

others." 275 Though ID3PA has yet to reach a full vote in the 112th
Congress, lobbying efforts of its supporters continue to raise awareness
of design piracy and its dire consequences for the American economy.
As lawmakers and their constituents recognize the enormity of the
economic interests at stake, stronger legal protection for American
fashion designs will likely follow suit.
Coco Chanel famously remarked, "Those who create are rare;
those who cannot are numerous." 276 The iconic designer's sentiment
echoes in the words of Jeffery Banks concerning the future of the
American fashion industry: "We must understand that design innovation
is the real leverage point for American companies both big and small.
More competition and growth won't occur simply by everybody
distributing the identical product around the world because copying
isn't illegal." 277 By demanding intellectual property protection for
fashion designs in the United States, we recognize the value of
innovative American designs, as well as the value of innovation itself.
We recognize Coco Chanel's axiomatic truth: "In order to be
irreplaceable one must always be different." 278

275. R. Bruce Josten, supra note 274.

276. "Coco" Chanel's Style in Wit, THIS WEEK MAGAZINE, Aug. 20, 1961, at 19.
277. Banks Statement, supra note 14.
278. VINOD V. SOPLE, MANAGING INTELLECTUAL PROPERTY: THE STRATEGIC
IMPERATIVE 289 (2d ed. 2010).
VOLUME 39 SPRING 2012 NO. 2

SYRACUSE JOURNAL
OFINTERNATIONAL LAW
AND COMMERCE
--- yC]UIFNVERY COLL~GRO ,W.

I --- t

~~T~t"W Provisi4unaer T CECUDAi-E~ibSery-

Convention Elizabeth k. Spahn

Exit, Voice and Inte national Jurisdictional Competition:

ACase tudy of th Evlutimodfiwaus tRegulatoy
Regime for Outward Investment in Mainland China,
1997-2008 Chang-hsienTsai

--- Naasty-Round1-e easate in the

Internat onal Order; Tara Helfman

Legal Ir tifada: Palestinian NGOs and Resistance

Iitireti~ n in iCoa&res -Roben Nicholsoa

Catastrqphe Lurks ii South America: Tainted Food and

Internatjonal Comnnerce in the Andean Community of
Gusavd Marles

Beyond Kampala: The U.S.' Role in Supporting the

International Crimifial Court's Mission David Lim
 HONORARY
BOARD OF ADVISORS

YORAM DINSTEIN MYREs S. McDOUGAL*

Tel Aviv, Israel New Haven, Connecticut

NORTHCUTr ELY EDWARD MCWHINNEY

Washington, D. C. Burnaby,British
Columbia, Canada

VICTORC. FOLSOM CECIL J. OLMSTEAD

Green Valley, Ar izona New York, New York

MICHAEL W. GORD ON NATALINO RoNzrrri

Gainesville, Florida Pisa, Italy

GUNTHER JAENICKE SHABTAI ROSENNE

Heidelberg, Germany Jerusalem, Israel

MANFRED LACHS* DAVID M. SASSOON

The Hague, Net)herlands Washington, D.C.

HOWARD S. LEVIE IVAN SHEARER

Newport, Rhode Island Sydney, Australia

RICHARD B. LLLIC H* RICHARD YOUNG

Charlottesville, Virginia Van Hornesville, New York

* Deceased Member