Fabric design is a creative art form that has existed for thousands of years. Although the methods for creating such designs have evolved, the purpose and function of such designs has not changed as significantly. Fabric designs are used for purely ornamental and decorative purposes, for purposes of identity, and also to convey information. From an intellectual property standpoint, how a fabric design is used may dictate what type of protection it can claim. In addition, the time it takes to obtain each type of IP protection, its duration, and the procedures for enforcement may also dictate the type of protection to seek.
First, it is important to distinguish between a fabric design and the design of an article of clothing. The protection afforded to each under US copyright, trademark, and patent law differs since each form of protection has a different purpose.
US copyright law protects “original” works of authorship fixed in a tangible medium of expression, including visual arts. Copyright protection may not be obtained in any “useful” articles with an intrinsic utilitarian function. Thus, clothing such as shirts, dresses, pants, coats, shoes, and outerwear are not eligible for copyright protection because they provide utilitarian functions, such as warmth, protection, and modesty, making them “useful” articles. A design on fabric used to make clothing, however, can be protected by copyright if it meets the originality and nonfunctionality standards for copyrightability.
Trademark law protects branding elements used to identify the source of a product or service. Under US trademark law, both a fabric design and clothing or footwear designs may be protected. However, designs of this type are not considered “inherently distinctive,” and acquired distinctiveness or secondary meaning must be demonstrated before protection can be claimed. If the design has not acquired distinctiveness, it will be considered “merely ornamental” and not capable of functioning and being protected as a source identifier. Moreover, the design must not be “functional” or essential to the use or purpose of the article and cannot affect the cost or quality of the article.
A design patent protects any “new, original, and ornamental design” that would not be obvious to an “ordinary designer” skilled in the art. Moreover, as with the other two types of intellectual property protection for “designs,” there are limits to the level of functionality that can exist in the design of an “article of manufacture” before it can be protected by a design patent. In the US, there is also a bar on seeking design patent protection if the design has been publicly known for more than a year. Thus, design patents may be obtained for fabric designs and for clothing or footwear designs.
Not only do the standards for protection differ for each type of intellectual property, but the time it takes for protection to come into existence also greatly differs. Under copyright law, a copyright comes into existence from the moment of creation without the need for any registration and without the need for use of any type of copyright notice. In contrast, trademark protection for a fabric design or clothing design will only exist after the design has “acquired” distinctiveness. Under Section 2(f) of the Trademark Act, substantially exclusive and continuous use of a mark in commerce for five years creates a rebuttable presumption that the mark has acquired distinctiveness, and distinctiveness can also be demonstrated in less time if widespread recognition and notoriety can be established by other evidence. In the world of fashion, for example, this may not be practical since fashion designs can change frequently. The length of time it takes to obtain a design patent, although much shorter now than it has historically been, averages twelve months from filing to issuance . Thus, the perceived longevity of the fabric design may dictate whether any type of formal protection is ever obtained.
The length of protection each type of intellectual property offers for a fabric design may also play into the decision on which type of protection to seek. Trademark protection is based on use and can exist forever if the fabric design mark remains in use. Copyright protection, although having a defined term, has an extremely long life as well. A fabric design first created after January 1, 1978 will be protected by copyright for the life of the author +70 years. If the fabric design is a work made for hire, the copyright exists for a term of 95 years from the year of its first publication or for 120 years from the year of its creation, whichever expires first. For fabric designs that existed prior to 1978, the terms will vary depending on numerous factors. Design patents only protect designs for 14 years from the date of grant. Thus, depending on whether the fabric design is very trendy and will have real value for a limited period of time or whether it is the type of the design that may have appeal for many years is a factor to consider in adopting a protection strategy.
Also to be considered in this analysis is what is required in order to successfully enforce an intellectual property right in a fabric design. Under copyright law, for example, infringement cannot occur “coincidentally,” as it can under trademark or patent law. Rather, for there to be copyright infringement, the infringer must have had access to the original copyrighted work and subsequently have created a work that is “substantially similar,” in whole or in part, to the original copyrighted work. Under trademark law, “innocent” infringement can occur since the focus is on whether consumers are likely to confuse the goods or services provided by two different parties, assuming they come from the same source, whether or not that source is known. In evaluating the issue of “likely confusion,” the court will consider many factors such as the similarity between the marks, the similarity and sophistication of the target customers, the similarity of the channels of trade and markets, the level of third-party use of similar marks, whether any actual confusion has occurred, the level of time both marks have been used concurrently without any instances of actual confusion, and various other factors. Under a design patent infringement analysis, infringement occurs if an “ordinary observer” would think that the allegedly infringing design is substantially the same as the patented design when the two designs are compared within the context of the prior art. Thus, “innocent” infringement of a design patent can occur without the need to prove actual or likely consumer confusion.
Can the same fabric design be protected by trademark, copyright, and a design patent? The answer is yes if the particular design can meet all the criteria for each type of intellectual property to apply. However, it does not appear that it is common for fabric design owners to claim or to seek formal protection under all three types.
For example, in a recently filed litigation, Star Fabrics, Inc., a US textile maker, sued Sears Holding Corp. and other companies for infringement of its registered copyrights in various fabric patterns and designs. The Complaint contains illustrations of the three different designs registered by Star Fabrics and the three designs alleged to infringe those copyrights. No claims for infringement of any other type of intellectual property rights have been asserted.
The US Navy through NEXCOM and the US Marine Corps owns multiple registered trademarks for “camouflage” fabric designs issued for use on Navy uniforms as well as various fabrics, Christmas stockings, plush toys, coasters, cups, mugs, and foam drink holders. The US Navy also owns design patents on camouflage fabric designs. Although it does not appear the Navy owns any copyright registrations for these fabric designs, registration is not needed for copyright to exist and it is likely the Navy would also claim copyright protection for these fabric designs.
Trademark registrations for fabric designs based on acquired distinctiveness are also owned by numerous other entities including the European fashion designers Christian Dior, Louis Vuitton, and Burberrys, with only the two French designers also owning design patents for the same designs.
The lack of “acquired” distinctiveness may be what is holding the athletic clothing company Under Armour Inc. from yet applying for trademark protection for its fabric designs. However, in March 2014, it obtained a US design patent for a camouflage fabric pattern, and it owns formal copyright registrations for various other fabric prints
Thus, what method of intellectual property protection should be pursued for a fabric design is very specific to the designer, its business model, and the projected life of its design. One size does not necessarily fit all, so it is important to ensure the IP fit is right from the start.