January 9th, 2013 NY Legal Hackers Roundtable IV: Hacking the Law of Fashion Design

On Wednesday, January 9, 2013, OLC attended NY Legal Hackers' event, Roundtable IV: Hacking the Law of Fashion Design, featuring Joseph Murphy, Peter Fields and Jeff Trexler.

Design laws are expensive and a lot of copyrights are not applicable to fashion.

Peter Fields began the roundtable, talking about his firm, Ritholz Levy Sanders Chidekel & Fields, a media and entertainment law firm which also deals with fashion. The firm's clients range from high profile designers—Tommy Hilfiger and Nicole Miller—to indie designers like Eugenia Kim. "For those clients, we represent their work—licensing, IP [intellectual property] work...and we're on the creator's side of the transaction. We're on the side of protecting IP and sending cease & desist letters."

Joseph Murphy introduced himself as specializing in protecting creative people. "Fashion is a tough business to protect," he said. "Even graffiti artists have more IP than designers. Design patents protect appearance—it deals with ornamentation and appearance."

"Fashion has no copyright," Jeff Trexler said. "But fashion lawyers can push—there are ways to push the limits of the law. There's a couple ways to hack fashion. 1) It's more than intellectual property. That's just one part of it. 2) Not all of it is non-controversial. 3) Social hacking exploits certain qualities. 4) Tech hacking is pushing the law into new space."

Regarding fashion designers going after counterfeiters and impersonators, but saying that they are okay with having no copyright, Fields said, "If you're a major fashion designer, you want to be trendy, you want to be someone that youth can look up to, so they say they're okay with imitators. They use a PR trick, but they spend time and money fighting these impersonators. Their public posture might be, 'I'm with you on sharing with everybody,' but really, they're not."

"No one wants to be the bad guy," Murphy said. "It doesn't need to be that anyone for these laws isn't an enemy of creativity."

A question was raised regarding the Innovative Design Protection Act (IDPA). "All the versions of IDPA don't make—in my view—make it easier or add any value to copyrighting fashion," Fields said. "It's not a good law for the industry."

"There's some misunderstanding with some people on IDPA," Trexler said. "It doesn't give fashion designers full copyright. It gives some protection...but it's much more limited than copyrights."

"People have been disenchanted with IDPA," Murphy said. "There is a paradigm shift, however. It's moving away from the Wild Wild West."

An audience member asked why people were against IDPA. Fields answered, "The IDPA is just not clear. Most of fashion ends with a cease and desist letter. It usually never ends up in litigation. We can focus on brands and strategy immediately to prevent imitators—and of course, get copyright in China."

Murphy took the time to read the United States Patent Office's official definition of a design patent. "A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture."

"A design patent gives a lot of protection on any kind of outfit," he continued. "It allows to claim one idea at a time, so you're able to protect a single feature of a garment or all of it. It's underutilized in the fashion industry [probably] because it's expensive. It's 10 to 100 times more expensive than a copyright. When you apply for a design patent, you have to think about the longevity of a product and if you're able to recover the money spent on the patent. There's a lot of things designers can do too, which is talk to lawyers, who will see to it that the designers are using the patents and trademarks correctly."

"We're particularly sensitive as to structuring trademarks," Fields said. "Fashion businesses come and go, but your name is your livelihood, so we're careful to put the name into a trademark holding company and create an operations company. You own the holding company, but the investors own the operations company."

A question regarding trademarking individual names was brought up. Real living individuals must sign a consent form to use their names. It is, however, difficult to trademark surnames, yet easier to trademark nicknames with surnames.

The conversation shifted into the technology space, with Trexler warning everyone present about modified bamboo turned rayon. "This is considered fraud by the United States government," he said. "You need to be careful on how you market your product as well," Trexler said. "If you don't have evident backing your claim on your 'Green' product, you'll be in big trouble. 'Organic' products need to have substantial evidence as well."

On counterfeiting, Fields said, "Lots of designers spend time and money trying to go after all of the counterfeiters and the landlords. They try to create a high-profile court case so that counterfeiters think twice."

"One thing that gets overlooked is self-regulation," Trexler said. "There are different levels of regulation and not all are related with the government." Trexler also dipped into the natural vs. synthetic discussion. "One thing that's growing right now is 3D printing. One problem in the future will be 3D printing of organic materials. This raises ethical and legal issues. Synthetic leather will raise natural suspicion—is it vegan-friendly? Should it be called leather? Someone might have an idea to create human skin handbags using 3D printers.... With 3D printers, it's going to be easier to copy."

Murphy agreed that 3D printers were going to create a lot of problems in the future. "Someone reproduced a vinyl, which the RIAA did not see coming at all," he said. "With 3D printers, users can even create another 3D printer, which will create a lot of problems with companies."