A Fashion Design Examiner?

This article considers how utilizing fashion examiners, similar to patent examiners, could change the way fashion designs are legally protected.
March 26, 2017

Protection for fashion design has been consistently debated in the legal arena.[1] For someone who loves fashion, this was actually an exciting discovery: case law about Louboutins![2] It doesn’t beat shopping, but hey, it’s a close fifth. Yes, it’s not really close to shopping. One reason for the confusion is fashion’s unique nature, working at the intersection of patent, copyright and trademark law.[3] The United States Patent and Trademark Office employs 2,500 people, mainly trained in science or engineering, to review design patent applications and their corresponding materials.[4] These science and engineer patent examiners analyze the information, as “[t]he United States Patent System is at the forefront of technological advancement”.[5] But as I sat in bed last night, I thought, “why aren’t we requiring a similar level of education for fashion design and apparel registrations? Isn’t that clearly promoting the sciences more than the arts?”

What if fashion designers were involved in reviewing the types of apparel claiming protection? As Mandy Barbara Seuffert states in her comment, Soft-Science Examiners at the USPTO: A Non-Obvious Solution to Reduce Erroneous Patent Grants, patents can be related to a wide range of subjects, from business models to mathematical equations.[6] Having this variety of subject matter reviewed by someone knowledgeable in only the “traditional subject areas” could be one source of patent registrations that are “questionable”.[7] Along those same lines, having someone review a registration for an off-the-shoulder dress or a romper, someone that probably has little to no understanding as to the level of creativity that goes into producing such a garment, makes it hard for apparel to ever be fairly considered in the legal field.

I understand that, generally speaking, most fashion and apparel cannot be protected as intellectual property[8] because it doesn’t consist of a “pictorial, graphic or sculptural work” that copyright law protects;[9] and that “clothing rarely meets the demanding requirements of “novelty” and “nonobviousness” for patentability.”[10] But it is also understandable that someone looking at a pair of shoes would not know whether a certain aspect, such as the fluffy inside lining of the mule, a current design sold by Gucci,[11] for example, would fall under either of those headings.

In Varsity Brands, Inc. v. Star Athletica, LLC., the Sixth Circuit explained in considering the copyright-ability of clothing, the “[t]he design-process approach may also help courts determine whether a design feature is necessary to the utilitarian aspects of the article because the designer’s testimony may offer clues as to which components of the design are essential to the functionality of the useful article.”[12] If the “design-process”[13] is considered important by courts, why don’t we have designer-examiners considering these questions, just as we have scientists and engineers considering similarly difficult questions in patent applications?[14] It should be a designer’s discerning eye that deciphers what’s novel or original for the industry, rather than a scientist, attorney or judge, with less grasp on the ins-and-outs of the trade.

 

 


[1] See generally Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015) (cert. granted); Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206 (2d Cir. 2012); Galiano v. Harrah’s Operating Co., 416 F.3d 411 (5th Cir. 2005); Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002).

[2] Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206 (2d Cir. 2012).

[3] See Oliver Herzfeld, Protecting Fashion Designs, Forbes, (Jan. 3, 2013, 9:14 AM), https://www.forbes.com/sites/oliverherzfeld/2013/01/03/protecting-fashion-designs/#105e4a9bb317.

[4] See Patent Examiner Positions, uspto.gov, https://www.uspto.gov/web/offices/pac/exam.htm (last visited Feb. 26, 2016).

[5] Id.

[6] See Mandy Barbar Seuffert, Soft-Science Examiners at the USPTO: A Non-Obvious Solution to Reduce Erroneous Patent Grants, 10 Marq. Intell. Prop. L. Rev. 111, 116­–17 (2006).

[7] See id. at 116.

[8] See New Rights Media, Can you Copyright Clothing Designs? New Media Rights, (Nov. 26, 2011, 11:07 PM) http://www.newmediarights.org/business_models/artist/can_you_copyright_clothing_designs.

[9] See Varsity Brands, Inc. v. Star Athletica, LLC., 799 F.3d 468, 487 (6th Cir. 2015) (quoting 17 U.S.C. § 102 (2016) (cert granted).

[10] See Tyler E. Baker & Christine Steiner, Fashion Designers: Legally Naked?, Sheppard Mullin Richter & Hampton LLP, Law360, (Feb. 21, 2012) https://www.law360.com/ip/articles/311083/fashion-designers-legally-naked-

[11] See Princetown Slipper with Bee, Gucci.com, https://www.gucci.com/us/en/pr/men/mens-shoes/mens-moccasins-loafers/princetown-slipper-with-bee-p-456133DKHH01063?gclid=CLCh4_myrtICFd6Lswodb9YBQQ (last visited Feb. 26, 2017).

[12] 799 F.3d at 488.

[13] Id.

[14] See Patent Examiner Positions, uspto.gov, https://www.uspto.gov/web/offices/pac/exam.htm (last visited Feb. 26, 2016).