New York City is considered one of the fashion capitals of the world. Twice a year, fashionistas travel from all over to seek out the latest trends during New York Fashion Week. What people are not privy to is how much work actually goes into creating the final product that is featured on the runway, in a magazine, or in your clients’ closets.
Lawyers are not well-known for their sense of fashion. Rather an attorney’s “strongest suit” is ensuring that their clients’ needs are met in a professional and timely manner. So, you handle creating the latest trends and our team will handle all legal aspects involved with creating, maintaining, or enhancing your successful brand from the first sketch to the final consumer product.
Why is Having a Fashion Lawyer Important?
Like entertainment law, fashion law is a business-focused combination of many legal disciplines, such as intellectual property law, business law, and employment law. Thus, it is important to work with an experienced law firm, that is well-versed in each of these branches of law.
For example, Jane Playn, a fashion designer, is interested in creating a sustainable lounge-wear company called “Playnie Jaynie Loungewear.” Before launching this brand, she should meet with an experienced attorney to discuss her vision and the steps necessary to turn it into a reality. We can use Jane’s brand throughout as an example to further highlight the issues a client might encounter.
Jane tells the attorney about her vision to own her own business and sells clothing made of sustainable materials online. There are many steps involved before Jane can even begin selling her clothing. An attorney can assist her in selecting the appropriate business entity, forming that entity, and protecting her intellectual property.
Other areas that the attorney can provide counseling on concern: licensing and strategic planning, advice on regulations that govern manufacturers, customs and import and export control, leasing commercial space such as warehouses, showrooms, storefronts, and temporary “pop-up” locations, explaining advertising rules and regulations, obtaining the appropriate releases from models and employees, large agreements, such as those with manufacturers and distributors, advice on raising capital and taking on investors and/or partners, the protection of trade secrets and providing Jane with employment and tax counseling.
How Do Designers Protect Their Intellectual Property?
Intellectual property (IP) law is a huge component of fashion law. There are three major types of IP law that fashion brands deal with: trademarks, copyright and patents. A common misunderstanding is that people think they can easily copyright or patent their brand. However, copyrights or patents usually pertain to one specific unique design or pattern. Trademarks, on the other hand, protect your brand name and/or logo. Trademarks help customers identify your company as the source of the goods.
A trademark can be a name, word, symbol, unique logo, slogan, or phrase that identifies the source of the goods or services and distinguishes from other sources. Generally, colors do not fall under any trademark protection, unless the color is a source identifier and is not merely for decorative or utilitarian purpose. In other words, the source identifier is a way for consumers to associate the trademark with the business and its products or services. There are both common law and federal trademark protection.
Common law protection is afforded when a source identifier has not been federally registered with the United States Patent and Trademark Office (“USPTO”). However, this protection is limited to the geographical location where the trademark is used in commerce. A common law trademark may be enforced if the trademark was used in commerce before other similar trademarks within that geographical area. Moreover, common law protection is sometimes the only option if the trademark is not used in interstate commerce, such as when products are sold in one brick and mortar location or services are provided within one geographical area. For example, if Jane only wanted to only sell her product in a shop in Brooklyn, New York, her unregistered trademark would only be protected by New York’s common law.
To receive federal law protection, it is important to register your trademark with the USPTO to receive national protection. Since Jane wants to sell her brand online to consumers all across the country, she could potentially register her trademark with the USPTO. The USPTO takes many variables into consideration when reviewing a trademark application. Some variables include the strength of the mark, the types of goods or services associated with it, and if it has been used in commerce. Thus, it is essential to consult with an attorney at the outset of creating a brand to better protect your brand. If you are in the business of selling products or providing services overseas, you will also want to discuss how to receive trademark protection in each country in which you want to do business.
For instance, Jane’s ideal brand name is “Playnie Jaynie Loungewear.” To make sure this potential brand name is distinctive and not potentially infringing on other clothing brands, it would be prudent to conduct a thorough trademark search before launching her brand and products. When creating a fashion line, we highly recommend that you register with the USPTO your brand name and any logos that you regularly and consistently use, so your brand receives that greatest degree of protection.
Moreover, we would recommend that Jane register a “house brand” instead of one brand name that specifically indicates the type of clothing she intends to sell, like loungewear. A house brand is a company’s key principle mark or source identifier that is recognized by the public, like a badge of origin. For example, iPhone is a product mark that is used for a certain device that is sold under the Apple house brand. Creating new styles, fashion lines, or products in the future will become more streamlined and cost-effective since the house brand has already created brand recognition. Furthermore, keeping consistency between your various products, styles, and lines with a house brand will likely increase your consumer’s loyalty to your brand. The house brand allows for future brand recognition and consistency when creating new styles, fashion lines, or products. Thus, Jane should register a house brand such as, “Playnie Jaynie,” so in the future she has more flexibility to expand the brand name as a source identifier in fashion lines beyond loungewear.
In the United States, copyright is a form of protection by federal copyright statutes that apply to original creative works in “fixed” tangible forms of expression (i.e. written down, captured on film, drawn, painted, sculpted). A copyright vests automatically upon fixation in a tangible medium. However, under the Copyright Act of 1976, the creator must register the work with the United States Copyright Office to bring a lawsuit. Thus, it is highly recommended to register the work quickly after fixation to obtain the greatest degree of protection.
A common misconception is that fashion designs (the cut and construction) are entitled to copyright protection. Copyright law does not afford protection to fashion designs since apparel and shoes are considered “functional.” Nevertheless, some aspects of fashion are copyrightable, such as, certain fabric designs like lace and embroidery; jewelry and accessories (since they have sculptural quality); and photographs, images or prints that are printed onto fabrics, garments or other fashion. For instance, in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017), the United States Supreme Court ruled that graphics on Varsity Brands’ cheerleading outfits were entitled to copyright protection because the uniform design could be identified separately and exist independently from the uniforms, which were merely useful articles. The Supreme Court held that elements in a useful item, like a cheerleading uniform, are eligible for copyright protection “if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.” Therefore, as long as a fashion design is separable from the unique pattern, picture, or graphic then the design is eligible for copyright protection.
Patent protection, like copyright, is difficult to obtain in the fashion industry. There are two types of patents that are applicable in fashion law: a design patent and a utility patent.
A design patent protects ornamental, non-functional features on a useful product, like an intricate flower bow on a handbag. This protection lasts for 14 years. A design patent can take approximately ten to twenty months to obtain, however, it is possible to pay an additional fee to expedite the approval process down to about three months. If you are unable to expedite the application, then there is a great risk that the design will be “out of season” by the time protection is obtained.
A utility patent protects scientific or technical innovations, like a sweat-wicking fiber used in a shirt. This protection lasts for 20 years. A utility patent can take two to three years to obtain. However, because it is a technical invention, it will likely not go out of style.
Enforcing your company’s IP rights are critical in maintaining your brand’s reputation. Unfortunately, sometimes it may be difficult to maintain a brand’s authenticity in the presence of copycat designs and knock-offs. Sometimes, these situations can be rectified by filing an infringement suit. An infringement occurs when an unauthorized user is illegally replicating or using your trademarked, copyrighted, or patented goods. Enforcing your IP rights against knock-offs and counterfeits can be complex and difficult to navigate without an attorney by your side.
How Do I Start My Own Clothing Line?
While IP law is arguably the star of fashion law, it is important that you also pay attention to the business side is of your company. It is vital to conduct legal due diligence before entering into keys deals, especially those that involve taking on an investor, member or partner, or entering into large agreements, such as a joint venture agreement, commercial leasing agreements, and manufacturing or distribution agreements. If you are expanding your operations and hiring employees or independent contractors, it is highly recommended that you seek advice concerning employment law and tax law.
Fashion law is subject to several different laws. Accordingly, it is important to consult with a detail-oriented firm with experience in each of these areas of law. Fashion designers should seek legal advice prior to creating a fashion brand and if they need advice related to fashion.
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