Fordham Law

Interview: Susan Scafidi, Professor, Fordham University School of Law

Susan Scafidi in Managing IP, August 05, 2011

Media Source

Karen Bolipata, New York

Susan Scafidi – a Fordham University School of Law professor who worked on the fashion copyright bill – talks exclusively to Karen Bolipata about IP protection for the fashion industry and why it is the emerging designer who needs it most.

There are trademark and design patent protections for the fashion industry. Why the need for copyright protection?

The core of fashion really falls through the cracks between patents and copyrights and trade marks and trade dress. We police that line between copyrights and patents. Fashion doesn't fit into either easily. It's excluded deliberately from copyrights because it's utilitarian, but it doesn't tend to meet the very high bar for patents. Design patents take so long and are so expensive to get.

With respect to trade marks, of course fashion has reasonably strong protection but only for labels and logos. But the designs themselves - the most creative part - are left out. With trade dress, if iconic it can be elevated. But that's a vanishingly small number of designs.

In so many cases when dealing with copying a fashion design, it's done without copying the label or the logo, especially with emerging designers and therefore their labels and logos - the value really rests on the designs themselves. The body is left unprotected.

The Innovative Design Protection and Piracy Prevention Act (IDPPPA) borrows the substantially similar standard from trade mark law and introduces the substantially identical standard. How did this come about?

We spent a long time on that. It's been written to incorporate other areas that don't fit well within the existing copyright system. We thought about specifics of tailoring this to a particular industry or a particular creative medium.

Five years ago, I made a proposition: let's try substantially similar. They came back with virtually identical. There were long negotiation processes, a back and forth.

The core of the substantially identical definition is there are no more than trivial differences between the original and the alleging infringing item. Trivial differences would be things like a square buckle on the straps of one bag, a round buckle on the straps of another. That's trivial because when you look at the overall item it's still substantially identical to the original. If a judge or jury can understand substantially similar, surely they can understand substantially identical.

Members of the industry know what's trivial and what's not. The industry has developed an industry of copyists. Copyists go see which designs are hot, which are popular, and they do their own imitations of them. There's not a whole lot of accidental copying in the industry. There's a whole lot of deliberate copying.

Why hasn't the fashion industry gotten copyright protection while the music and publishing industries have?

The US has never protected fashion. One reason for that is cultural ("It's merely fashion"). The other is we grew our industry by copying. That's true of other industries - publishing and music. But typically once you develop local geniuses, once the great American novel is written, Mark Twain can call for copyright protection. That's just happening now in fashion. Fashion as a critical mass is relatively young in the US. We've come really far in a short time. At first Paris would create, then New York, Cleveland, Los Angeles and San Francisco would copy. Now it's the

US cities doing the creating, and the copyists are often in factories in Asia. It just makes sense for the US to think more seriously about protecting.

In that sense, should fashion designs be treated the same as books and songs?

I think fashion is having a cultural moment. We've had almost a decade now of fashion and fashion designers, so we have a new generation that's really focused on fashion as a creative medium not unlike music or film or fine arts and so on.

Should we treat them exactly the same? Not necessarily. The key difference is fashion is a medium based on a business model driven seasonally. Fashion doesn't have the same kind of long life as a book might or a movie might. If we have the opportunity to narrowly tailor a law to the fashion industry, I think a shorter time frame makes sense.

The bill gives three years of protection - it's parallel to the shortest available protection in Europe. It's three years of unregistered protection for qualified designs.
A university professor challenged the proposed bill, saying it would cause frivolous litigation. What's your response to that?

From an IP perspective this bill is really, really careful. In fact, I think it's a good example of bills going forward because it's been so carefully drawn to avoid frivolous litigation - precise standards, not leaving a lot of gray area. It also has heightened pleading standards. We borrowed in fact from common law fraud and securities litigation.
Rather than just coming in with a generalised complaint, the complaint has to show three things: It has to show the original garment in question does qualify for protection (originality plus novelty is something that's never been done before), is significantly different and has that novelty aspect. Two, the pleadings have to show the alleging infringing garment is in fact substantially identical (a direct comparison, point-by-point). And third, the plaintiff coming into court must argue the alleged infringer had access, had seen the infringing design. It's a lot harder to get to court. I'm almost concerned we set the barrier too high.
The other thing is to look at two different examples, one category in the US, the other in Europe. In the US, we don't have protection for fashion, but we have full copyright protection for jewellery and full copyright protection for fabrics, prints and patterns. In those cases, the courts are not overwhelmed or clogged. Basically, they settle out after the complaint is filed or settle out based on the cease and desist letter. We're dealing with many of the same players.
In Europe, designs are copyright protected. We still see many of the same kinds of companies that operate internationally, and we do not see a flood of lawsuits. There has only been a handful in Europe that actually went to court. History has shown us that frivolous lawsuits or excessive lawsuits are not going to be a problem.
Who will this bill really help?

I think the greatest misperception perhaps is this is only a benefit to high-end designers or it is somehow harmful to consumers. It's not the highest of high-end designers that benefit the most. It's not the creator of the $3,000 dress that's hurt the most. It's the creator of the $300 dress. That's the level where you can get market substitution.
There's a certain amount of dilution that goes on. The customer who might have bought an expensive original gown may not want to have 100 copies of it. But I think it's a greater concern when we're dealing with mid-priced dresses of items and clothing that are knocked off. That's where the real changes take place with the passage of this law.
You've said emerging designers are your biggest concern. How would they benefit from copyright protection?

Emerging designers get very little protection from trade marks. Slapping an emerging designer's logo doesn't add a lot of value. For an emerging designer, it is very often the case that the protected logo is left behind while the design is stolen. They have no legal recourse at all. They have no protection.
I think it will change the behaviour of the industry. I think the industry right now operates as it does because the repeat players in the industry know the law permits them to copy. In design school, they make no bones about that fact. There's a law in place so the next generation of design students will learn a different story and have a different mindset, and the companies that authorise a lot of copying will think twice as a risk-benefit calculus. It doesn't make sense to pay a fine, so they should pay on the front end. It creates jobs for designers to make those changes, helps those designers who did create original works to get return on their investment.
Having a law on the books providing a bit of deterrence, changing the culture of the industry itself that has been necessarily accepting of copies is going to make a difference. That's the biggest, greatest assistance to emerging designers. Having US Congress look at the fashion industry, shaking a finger and saying copying works is wrong - that it's not the way we do business; it's not the kind of value we put in this industry - makes a difference.
The bill's greatest function is the teaching function. The blogs and fashionistas do a lot to point fingers at and shame copyists. But there are some companies, some manufacturers that won't be shamed. For them, it takes more than fashionable chatter to stop them. It takes a law. The teaching function of law can be really useful. I do think a new generation of designers can be trained to think about fashion in a different way.