Just weeks before New York Fashion Week began in New York, Stella McCartney was granted a design patent for a bestselling Lucia mesh polka dot dress from her Fall 2012 collection. Can any fashion designer now claim a patent and thereby protect her brand from copycats? Will Zara have to go out of business? Here are some answers ...
A utility patent protects the way a product is used and works (for example, a machine or method of production). A design patent protects the way a useful product looks and requires that the patented article be “new, original, and ornamental.”
Rights like trademarks and copyrights have traditionally been granted for limited fashion products (UGG Boots, Rolex watches, and Louis Vuitton handbags and accessories), but most designers have not been successful in patenting articles of clothing.
True Religion Brand Jeans successfully overcame the obstacles to obtain a design patent in July 2007. The company filed a patent in which it claimed protection for, “the ornamental stich pattern applied to pants.” The stitch on the pants met the design patent requirements.
More recently, in August 2012, Lululemon brought Calvin Klein to court and claimed that Calvin Klein was selling a pair of yoga pants that “have infringed and are still infringing” on three of the yoga line’s patents. The three design patents covered the “Astro Style” yoga pant – one for the waistband, and the other two for specific styles of the pant. The two companies settled in November (terms of the settlement were kept confidential), but my guess is that Lululemon had a pretty good shot at winning this battle in court. The waistband of the yoga pants is no less “ornamental” to the design of the pant than the stitching on True Religion jeans.
In Stella McCartney’s case, Oklahoma University College of Law professor, Sarah Burstein: “The dotted portion of the dress (including the dots themselves) are claimed; the rest is not. So, if someone else made a dress with the same dotted portions, Stella McCartney could claim infringement—no matter what the rest of the dress looked like. It could be patterned, cut-out, have some crazy kick-pleat, etc.” Sounds like a pretty strong patent.
“But”, the professor continues, “to be clearly infringing, the dotted portions would have to have be in the same shape and have the same pattern. If someone used huge polka dots, stripes, etc. in that same configuration, he would have a good non-infringement argument. So, this patent is actually pretty narrow.”
Design patents are difficult to obtain and even the celebrated patented dress by Ms. McCartney offers rather slim protection. The process for patenting is timely and expensive, too. Ms. McCartney filed for a patent in November 2011 and the patent wasn’t approved for a full year.
So you’d need both the money and a design that will be relevant a year or so after filing for a patent — because of the economy and the lightning-quick changes in fashion trends, these are, today, not easy to come by.