The Innovative Design Protection and Piracy Prevention Act (IDPPPA) is once again up for vote in the senate and legal bloggers are not sure whether the new law will simply codify existing common law or trigger a landslide of frivolous lawsuits that will end fashion as we know it. Ron Coleman at LIKELIHOOD OF CONFUSION® comments on the blogger Staci Riordan who is of the latter opinion (sorry for the double citation, but I thought Ron’s comments were equally amusing):
[U]nless you want to walk around in ugly and expensive clothes, let old white men in black robes decide whether two fashion designs are “substantially identical,” tie up your inventory, screw up your relationship with your factor and have to pay scary sums of money to lawyers, I urge you to take action.
Call, write, or email your congressman or senator and tell them to let this fashion fauxpau die!
I also agree that the proposed Act strays a bit too far from the common law, which already exists in quite a few Circuits, for the protection of fashion articles and sculptures.
For example, in Chosun International, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005), the Second Circuit overruled the longstanding broad brush characterization of Learned Hand’s opinion in Fashion Originators Guild of America, Inc. v. FTC, 114 F.2d 80 (2d Cir. 1940) as an absolute prohibition on the copyrightability of garments simply because they are useful articles (I am proud to credit our senior partner Tony Handal as the lead counsel in Chosun). In Chosun, the Second Circuit laid out a two-part separability analysis consisting of (1) determining the utilitarian function of the useful article, and (2) determining whether the feature at issue could be removed without affecting the functionality of the article and was thus separable. Thus, at common law, protection for fashion articles already exists (at least in the 2nd Circuit).
In addition to the IDPPPA’s oddly worded standard for infringement (clothing articles are infringing if they are “substantially identical”), the proposed Act seems to eschew the above common law separability analysis in favor of protecting articles that “provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.”
Does this mean that the Library of Congress will create the fashion equivalent of a patent database so that registrants could consult “prior art?” And if not, then how will courts determine protection under the new Act without forcing litigants to engage in a great deal of expensive discovery?
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