Saper Law Attorneys Discuss Fashion Law at Chicago-Kent


Chicago-Kent College of Law’s Intellectual Property Law Society hosted Saper Law attorneys Shyla Jones and Aaron Midler for a discussion on Fashion and Law.  Shyla and Aaron shared with Kent students the basics of protecting fashion with intellectual property law.

Aaron began the presentation with an overview of the classic trademark case Qualitex Co. v. Jacobson Products Co.,where the Supreme Court of the United States determined that color per se is eligible for trademark protection if it is non-functional and serves as a source identifier.  Shyla continued the discussion with a review and analysis of both the District Court and 2nd Circuit’s competing interpretations of Qualitex and each court’s decision on the validity of the Red Sole Mark in Christian Louboutin v. Yves Saint Laurent.  While the District Court in New York found color to be functional in the fashion industry and therefore categorically ineligible for trademark protection, the 2nd Circuit of New York overturned the narrow analysis as being contrary to the intentions of Supreme Court in Qualitex.  Although the 2nd Circuit found the Red Sole Mark a valid trademark, Shyla explained that the Court narrowed the scope of the mark’s protection and determined that monochrome red shoes featuring a red sole do not infringe Louboutin’s trademark.

Turning to copyright law, Aaron explained the narrow protection afforded to designers for their creative prints and the lack of protection for clothing patterns (the shape and cut of the garment), which are deemed utilitarian under US copyright law.  This “loophole” in the law is what allows companies to rip-off clothing patterns once they come down the runway.  Aaron reviewed the current state of the case law, concluding that copyright protection is available for creative fashion works if the design element is separable from the function of the work.  For example, the Burberry plaid print, and each of its seasonal derivatives, is protected by copyright.

Finally, Shyla finished the discussion with an overview of the protection patents can offer designers.  Noting that utility patents can protect a new clothing material or a novel garment production process and design patents can protect the novel ornamental design of a functional item, Shyla explained that a patent is generally not practical for fashion designers.  With an industry that literally changes with the seasons, the length of time it takes to secure a patent makes it an unrealistic option.

For more information on how the law protects fashion, please contact Saper Law Offices.

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