Copyright Legislation for Fashion Designs (Proposed)

I. Design Piracy Prohibition Act

The Design Piracy Prohibition Act (H.R. 5055, 109th Congress) (“DPPA”) was the first of a number of bills introduced in the United States Congress that proposed to amend Title 17 of the United States Code in order to provide sui generis (or unique) protection to fashion designs under the Copyright Act.

Introduction and Sponsor/Co-Sponsors

The bill was introduced March 30, 2006 by Representative Robert W. Goodlatte (R-Va.). It was co-sponsored by: Rep. Delahunt, William D. [D-MA-10]; Rep. Coble, Howard [R-NC-6]; Rep. Wexler, Robert [D-FL-19]; Rep. Sensenbrenner, F. James, Jr. Rep. Bono Mack, Mary [R-CA-45]; Rep. Maloney, Carolyn B. [D-NY-14]; and Rep. Shays, Christopher [R-CT-4].

Summary

Per Congress.gov, the DPPA:

• Extends copyright protection to fashion designs. Excludes from such protection fashion designs that are embodied in a useful article that was made public by the designer or owner more than three months before the registration of copyright application. Gives fashion designs copyright protection for three years.;
• Declares that it is not infringement to make, have made, import, sell, or distribute any article embodying a design which was created without knowledge or reasonable grounds to know that protection for the design is claimed and was copied from such protected design.
• Extends the definition of infringing article to include any article the design of which has been copied from an image of a protected design without the consent of the owner;
• Applies the doctrines of secondary infringement and secondary liability to actions related to original designs. Makes any person who is liable under either such doctrine subject to all the remedies, including those attributable to any underlying or resulting infringement.
• Requires the Register of Copyrights to determine whether or not the application relates to a design which on its face appears to be within the subject matter protected as original designs and, if so, register the design
• Increases allowable damage awards for infringement of original designs.

Additional Action(s)

The bill was referred by the U.S. House Committee on the Judiciary to the U.S. House Subcomittee on Courts, the Internet, and Intellectual Property. The subcommittee held a hearing on the bill on July 27, 2006, at which there was disagreement among legal experts as well as representatives of the fashion industry as to whether there was a need for copyright protection.

II. Innovative Design Protection and Piracy Prevention Act

The Innovative Design Protection and Piracy Prevention Act (S. 3728, 111th Congress) (“IDPPPA”) was the second of a number of bills introduced in the United States Congress that proposed to amend Title 17 of the United States Code in order to provide sui generis protection to fashion designs under the Copyright Act.

Introduction and Sponsor/Co-Sponsors

The bill was introduced by Sen. Schumer, Charles E. [D-NY] on August 5, 2010. It was co-sponsored by: Sen. Hatch, Orrin G. [R-UT]; Sen. Graham, Lindsey [R-SC]; Sen. Whitehouse, Sheldon [D-RI]; Sen. Gillibrand, Kirsten E. [D-NY]; Sen. Snowe, Olympia J. [R-ME]; Sen. Boxer, Barbara [D-CA]; Sen. Feinstein, Dianne [D-CA]; Sen. Cardin, Benjamin L. [D-MD]; Sen. Kohl, Herb [D-WI]; and Sen. Hutchison, Kay Bailey [R-TX].

Summary

Per Congress.gov, the IDPPPA:

• Extends copyright protection to fashion designs. Revises the definition of “useful article” to include an article of apparel.
• Defines “apparel” as articles including clothing, handbags, purses, wallets, tote bags, belts, and eyeglass frames.
• Excludes from protection designs embodied in a useful article that was made public by the designer or owner: (1) more than two years before the date of the application for registration in the case of a vessel hull design; and (2) more than three years before the date upon which protection of the design is asserted in the case of a fashion design.
• Prohibits considering the presence or absence of a particular color or of a pictorial or graphic work imprinted on fabric when determining the protection of a fashion design.
• Sets the term of protection at 3 years for a fashion design and 10 years for a design of a vessel hull.
• Revises provisions concerning acting without knowledge to state that it is not infringement to make, have made, import, sell, offer for sale, advertise, or distribute any article embodying a design which was created without knowledge, either actual or reasonably inferred from the totality of the circumstances, that a design was protected and was copied from such protected design.
• Prohibits deeming a vessel hull design to have been copied from a protected design if it is original and not substantially similar in appearance to a protected design.
• Prohibits deeming a fashion design to have been copied from a protected design if it: (1) is not substantially identical in overall visual appearance to and as to the original elements of a protected design; or (2) is the result of independent creation.
• Declares that it is not an infringement for a person to produce a single copy of a protected design for personal use or for the use of an immediate family member, if that copy is not offered for sale or use in trade during the protection period.
• Rewrites provisions concerning the remedy for infringement to state, in general, that: (1) in the case of a vessel hull, the owner of a design is entitled, after issuance of a certificate of registration of the design, to institute an action for any infringement of the design; and (2) in the case of a fashion design, the owner of a design is entitled to institute an action for any infringement of the design after the design is made public.
• Sets forth pleading requirements for a claimant in an action for fashion design infringement.
• Increases the penalty for false representation.
• Excludes protected fashion designs from: (1) importation enforcement regulations issued by the Secretary of the Treasury and the U.S. Postal Service; and (2) seizure and forfeiture provisions. Limits the applicability of such regulations and provisions to specified vessel hulls.