Chapter 2: An Introduction to Intellectual Property Protection in Fashion
George Gottlieb, Marc Misthal and Barbara Kolsun
Summary adapted from Chapter 10 of "Fashion Law: A Guide for Designers, Fashion Executives and Attorneys" edited by Guillermo C. Jimenez and Barbara Kolsun (Fairchild Books, 2010).
There are many different kinds of Intellectual Property (IP) protection in fashion and a single garment or product may be covered by several different forms of legal protection at the same time. "Fashion" in this book refers to design intensive products on the market today such as apparel, footwear, and accessories as well as textiles in any format, jewelry and even house wares and home products. Chapter 2 discusses the various types of legal protection afforded to fashion products and sets forth strategies for protecting your IP.
IP law currently provides protection for trademarks, copyrightable material, utility patents and design patents, and trade secrets. It is important to note, however, that fashion design, that is the way a specific garment is cut and assembled, is not currently protected under U.S. law with certain exceptions.
A trademark enables customers to distinguish between goods of different companies and can consist of words, slogans, logos, and designs, and even personal names. Trademark protection lasts as long as the mark is in use. Trade dress is a form of trademark protection that specifically protects the look or form of a product but only if the public has come to recognize that look as indicating that a product with that look comes from a particular source. Trade dress protection can last forever provided it remains in active use. Copyright is a powerful tool for protecting fabric designs and other types of artistic expression (such as jewelry). Copyright protection lasts for the life of the author plus 70 years. Design Patents (sometimes known as "picture patents") are used to protect the ornamental appearance of an object or an object component, and expire 14 years from the date of issuance of the patent. Utility patent protection may be obtained for innovations in product functionality or processes and techniques, and lasts 20 years from the effective filing date. Finally, trade secret law protects many different kinds of confidential business information which can include formulas and techniques, customer lists, and computer software. Trade secrets can be retained forever but only if they are carefully guarded by agreements and security.
It is extremely important to protect intellectual property on a worldwide basis, not just in the United States. IP rights must be secured in countries where a company sells or plans to sell its products and countries where the company's products are manufactured. The Madrid Protocol (trademarks), the Berne Convention (copyrights), and the Patent Cooperation Treaty (PCT) are international agreements or treaties covering IP. They are administered by the World Intellectual Property Organization (WIPO).
The law provides a number of useful tools for protecting fashion designs and fostering brand growth. When creating and marketing a product, fashion companies need to be aware of trademark, copyright, patent and trade secrets. It is crucial, however, to consult with an IP specialist who is experienced in the fashion industry, obtaining recommendations from local bar associations and other fashion companies.
Author details:
George Gottlieb
Gottlieb, Rackman & Reisman PC
New York, New York
Marc Misthal
Gottlieb, Rackman and Reisman PC
New York, New York
Barbara Kolsun
VP and General Counsel
Stuart Weitzman LLC
New York, New York
Summary by: Lara Corchado
