Downward Docket: The Yoga Pants WarSusan Scafidi in The Wall Street Journal, September 11, 2012
The fashion industry's latest hope for protecting its designs may hang on a slimming pair of yoga pants.
Yoga-apparel maker Lululemon Athletica Inc. LULU +1.36%is accusing fashion house Calvin Klein Inc. of infringing on design patents for its popular $98 "Astro Pant" in a legal battle that could provide new ammunition for the industry to wield against copycats while bolstering Lululemon's dominant position in high-end yoga apparel.
Lululemon, in a complaint filed in federal court in Delaware last month, claims that Calvin Klein is selling pants that "have infringed and are still infringing" on three patents, including one for a distinctive waistband featuring overlapping panels of fabric. The company was awarded one of the patents last year, and the two others in June.
The nine-page complaint, which also names as a defendant G-III Apparel Group Ltd., GIII +2.23%a Calvin Klein supplier, offers few other details. But intellectual-property law experts say the suit represents a novel approach at a time when there are few legal protections for designs on apparel.
The fashion industry has historically sought and been granted protection for limited aspects of their products, like trademarks on logos and brand names, which are recognized as their property. For instance, in a trademark dispute between French designers Christian Louboutin SA and Yves Saint Laurent, a unit of PPR SA, FR +1.70%a federal court of appeals in New York last week ruled that Louboutin largely owns the exclusive right to use the color red to coat the bottoms of its high-heeled shoes.
But designers haven't had much success in protecting designs on fundamental articles of clothing, ones that might cover, say, the shape of a blouse or the cut of a collar on a shirt.
Generally speaking, copyright law protects forms of art, but not items that are predominantly functional, like shirts and pants. Recent congressional bills that would grant greater copyright protection to clothing designs have failed to advance.
Lululemon is trying to chart a new path by filing and litigating patents secured on the basis of its designs.
Such patents, called design patents, have "for too long been grossly underappreciated" by the fashion industry, said Perry Saidman, a design-law expert and lawyer in Silver Spring, Md.
Fashion designers have only sporadically gone to court over such patents. But slowly, design patents are coming into vogue across a widening number of industries. Apple Inc. AAPL +1.58%made them a key part of its case in its recent legal victory over rival Samsung Electronics Co., 005930.SE +2.69%in which a jury found that Samsung had copied Apple's designs.
"The time is right for this kind of effort," said Susan Scafidi, the founder of the Fashion Law Institute at Fordham University in New York and an advocate for greater protections for the industry. "These days, it's easier than ever to copy and market even the most innovative designs."
Lululemon's lawsuit also comes at a time when it is easier to get a design patent approved.
It used to take a year or more to secure one from the U.S. Patent and Trademark Office. "By the time a patent issued, that season's designs would be out the door, and new ones would be coming in," said Ms. Scafidi. The PTO generally has become more efficient at reviewing design-patent applications, often taking just months from application to grant. A 2008 ruling from the Federal Circuit Court of Appeals, a specialized court largely focused on patents, made it easier for a design-patent holder to prove infringement.
Partly as a result, The number of design-patent applications awarded has increased significantly in recent years. Last year, the PTO issued 21,356 design patents, 65% more than the 12,951 it issued in 2005.
Since its founding 14 years ago, Lululemon has grown steadily alongside the yoga boom, selling pricey gear designed to stretch and support during downward dog and warrior pose. The company, which went public in 2007, took in $1 billion in revenue last year and has said it expects to top that in its current fiscal year with revenue in the range of $1.3 billion to $1.325 billion. In the fiscal second quarter that ended in July, the company booked revenue of $283 million, which represented a 33% increase over the same period in 2011.
A spokeswoman for Lululemon declined to comment on ongoing litigation. Calls to PVH Corp., PVH +1.40%which owns the Calvin Klein brand, weren't returned. Calls to G-III Apparel weren't returned.
Lawyers for Calvin Klein haven't yet filed any paperwork in the case, but legal experts say they will likely use a host of potentially damaging defenses, including that Lululemon's patents should never have been granted in the first place.
Indeed, some argue that granting such patents may cause more harm, than help, to the industry. "This whole notion that you'd grant a patent to anyone who adds a seam or two to a waistband is quite problematic," said Ilse Metchek, the president of the California Fashion Association, a trade group that represents some manufacturers, domestic and international garment suppliers, and others close to the fashion industry. "It's only going to create more litigation, and that's hardly something the fashion industry needs more of."
Others doubt whether a Lululemon will provide much of a boost to the industry, partly because design patents provide protection only against exact copies or near copies. "This is not going to be a panacea," said Kal Raustiala, a law professor at the University of California, Los Angeles, and the co-author of "The Knockoff Economy," a recent book on intellectual property. "Design patents are a limited tool."
But any outcome that recognizes Lululemon's patents could trigger a broader move by the fashion industry to bring its ideas to the PTO, and perhaps give the industry the control over its designs it has long wanted, other legal experts say.
"Design patents used to be in the backwaters of the patent system," said Christopher Carani, a design-law expert and lawyer in Chicago. "That's just not the case anymore."