On August 2, 2007, Senator Orrin Hatch announced S. 1957, a bill intended to provide protection for fashion designs. In his comments introducing the draft legislation, Senator Hatch noted that the goal of the legislation "is to ensure that those who spend their time and money developing new and innovative fashion designs are able to secure and enforce adequate copyright protections for their hard work." Senator Hatch noted while introducing S. 1957 that the current bill is "not perfect" and that "some areas of the bill that need to be improved are: the standard for liability, the definition of designs in the public domain, and the secondary liability provisions." Co-sponsored by Senators Clinton, Feinstein and Schumer, among others, the bill is the latest rendition of the proposed Design Piracy Prohibition Act which was twice previously introduced in the House by Representatives Goodlatte and Delahunt as H.R. 5055 (109th Congress, 2d Session) and H.R. 2033 (110th Congress, 1st Session). Although not yet available, S. 1957 is reported to mirror the content of the prior bills which are available at: http://frwebgate.access.gpo.gov/cgiin/getdoc.cgi?dbname=109_cong_bills&docid=f:h5055ih.txt.pdf and http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=110_cong_bills&docid=f:h2033ih.txt.pdf
Under U.S. Copyright law, copyright protection generally does not extend to fashion designs, such as the dimensions, style, cut or shape of a fashion item like clothing. However, original patterns or images that are imprinted or stitched on fabric are protected by copyright. H.R. 5055 and 2033 sought to change this statutory framework. The bills aimed to extend copyright protection to clothing (including undergarments, outerwear, gloves, footwear, and headgear); handbags, purses, and tote bags; belts; and eyeglass frames. Protection would extend to the appearance of the article of apparel as a whole, including any ornamental elements of the article.
The protection under H.R. 5055 and 2033 would be short — a period of three (3) years, which could not be renewed. The rationale for this shorter period is that market demand and prices for a design are highest during the design’s initial period on the market. Unlike most other protectable works, registration would be mandatory. The time frame to apply for a registration would likewise be short — filing an application is required within three months of the design being made public. A design would be "made public" when it is offered for individual or public sale. Thus, showing a design to potential buyers at fashion shows would, presumably, trigger the date, as well as a more private showing to a single buyer.
After registration of the design, the copyright owner would have the exclusive right to "make, have made, or import, for sale or for use in trade, any useful article embodying that design; and (ii) sell or distribute for sale or for use in trade any useful article embodying that design." The owner would have the right to prevent any other person from infringing on those rights and to seek remedies for such infringing acts. H.R. 5055 and 2033 would extend "acts of infringement" to both primary and secondary liability, including for instance, acts of contributory infringement, vicarious liability, and inducement of infringement. However, H.R. 5055 and 2033 also provide a possible "out" to alleged infringers. An act would not be considered infringing if the alleged infringer did not have "reasonable grounds to know that protection for the design is claimed." Copyright owners could address this by, perhaps, consistently adding copyright notices to the hang tags or point of sale materials with specific reference to the design as being protected by copyright. Cease and desist letters to unauthorized users might also be helpful, at least with respect to unauthorized uses occurring after the demand letter is received.
The fashion and apparel industry should continue to pay close attention to the progress of the Design Piracy Prohibition Act legislation. The bills introduced in the House, and now Senate, would make it easier to protect intellectual property in designs, which is currently very difficult under existing laws. On the other hand, the proposed legislation may substantially curtail the ability of designers to emulate the designs of others and could affect the way the industry does business. For instance, internal systems to apply for and monitor copyright registrations of new designs would be needed to take advantage of the legislation’s benefits. Careful copyright clearance screenings of new designs would be needed to reduce the risks of suit.
Only time will tell whether the Senate’s latest proposal will be enacted into law. However S. 1957 proceeds, the fashion and apparel community will be watching the latest season’s version of the Design Piracy Prohibition Act with keen interest.