Knock it Off, Forever 21! The Fashion Industry's Battle Against Design Piracy

Journal of Law and Policy

Volume 18

Issue 2 Article 9

2010

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893

KNOCK IT OFF, FOREVER 21!

THE FASHION INDUSTRY’S BATTLE

AGAINST DESIGN PIRACY

Irene Tan*

INTRODUCTION

For the Presidential Inauguration Ball, First Lady Michelle

Obama wore a stunning ivory-colored one-shoulder chiffon

gown adorned with Swarovski crystals.

An emerging young

designer, Jason Wu, created the dress as a one-of-a-kind piece

for Mrs. Obama with no intention of reproducing versions of it

for sale.

Nonetheless, in a matter of days, fast-fashion retailers

were selling copies of the dress online.

This phenomenon is

* J.D. Candidate, Brooklyn Law School, 2011; B.S., Cornell University,

2006. The author wishes to thank her parents Ni Ju Chun and Jeng Tan, her

sister Miranda, her brother Daniel, and her nephew Isaac, for their constant

love and support. The author also thanks her faculty advisor, Professor Susan

Scafidi, and the members of the Journal of Law and Policy for their help and

assistance.

Cheryl Lu-Lien Tan, Jason Wu’s “Dream-Like” Vision for Michelle

Obama, W

ALL ST. J., Jan. 21, 2009, http://blogs.wsj.com/runway/2009/01/

21/jason-wus-dream-like-vision-for-michelle-obama.

Id.

This Article uses fast-fashion retailers to describe retail chains like

Forever 21, H&M, and Zara, which are able to provide recent fashion trends

on an expedited schedule and at discounted prices. See discussion infra Part I

and III.

Gina Salamone, Fashion’s Copycats are Having a Ball Knocking Off

Michelle Obama’s Gown, N.Y. D

AILY NEWS, Jan. 21, 2009, http://www.

nydailynews.com/lifestyle/fashion/2009/01/22/2009-01-22_fashions_copycats_

are_having_a_ball_knoc.html. Fast-fashion retailer, Faviana, began recreating

the dress within hours of its debut on national television. Id. Two days after

President Obama’s inauguration ceremony, EdressMe was selling copies of

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894 JOURNAL OF LAW AND POLICY

known as design piracy or “knocking off”

and is “standard

operating procedure for many [companies] both large and

small.”

The “blatant copying of another’s designs is akin to

counterfeiting without affixing the fake designer label.”

While

counterfeiting is illegal, design piracy is an unregulated

phenomenon that is rampant in the fashion industry.

Intuitively,

it may seem unfair that fashion copycats can “knock off” a

designer’s work when they have not expended the time, energy,

and financial investment required to create it;

however, as of

now, the practice of design piracy is entirely legal in the United

States.

While other countries protect fashion designs,

the United

Wu’s dress online. Olivia Barker, Obama Fashion Stimulus Plan is Already

Yielding Results, USA

TODAY, Jan. 27, 2009, http://www.usatoday.com/life/

lifestyle/fashion/2009-01-26-obama-fashion-stimulus_N.htm. A.B.S. had its

own version of the dress available in department stores just in time for prom

season. Id.

See Christine Magdo, Protecting Works of Fashion from Design Piracy

1 (2000) (unpublished comment, available at http://leda.law.harvard.edu/

leda/data/36/MAGDO.html#fnB14); see also H. Shayne Adler, Note,

Pirating the Runway: The Potential Impact of the Design Piracy Prohibition

Act on Fashion Retail, 5

HASTINGS BUS. L.J. 381, 382 (2009) (defining

design piracy as “when an individual or manufacturer produces an imitation

of a designer item at lower costs”).

Safia A. Nurbhai, Note, Style Piracy Revisited, 10 J.L. & POL’Y 489,

490 (2002) (citing J.

JARNOW ET AL., INSIDE THE FASHION BUSINESS: TEXT

AND

READINGS 28 (4th ed. 1987)).

Stop Fashion Piracy, http://www.stopfashionpiracy.com (last visited

Jan. 21, 2010).

Id. (noting that design piracy has become a “way of life in the garment

business”); see also Biana Borukhovich, Note, Fashion Design: The Work of

Art that is Still Unrecognized in the United States, 9 W

AKE FOREST INTELL.

PROP. L.J. 92, 92–93 (2008).

S. Priya Bharathi, There Is More than One Way to Skin a Copycat: The

Emergence of Trade Dress to Combat Design Piracy of Fashion Works, 27

EX. TECH L. REV. 1667, 1667 (1996).

Id.

France has afforded copyright protection to clothing since 1793.

Jennifer E. Smith, Flattery or Fraud: Should Fashion Designs Be Granted

J.L. & TECH. ONLINE EDITION 1, 4 (2007).

“[M]any other nations—Europe, Japan, even India—have responded to the

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KNOCK IT OFF, FOREVER 21! 895

States has become a safe haven for design piracy.

Under the

current intellectual property regime, American designers have

limited recourse against fashion copycats for blatantly “knocking

off” their work.

Despite relentless lobbying by high profile

fashion designers and the Council of Fashion Designers of

America (“CFDA”),

Congress has repeatedly refused to enact

legislation protecting fashion designs.

Nonetheless, the fashion

industry continues to clamor for protection against design

piracy, and Congress is currently considering whether to extend

Piracy Prohibition Act (hereinafter the “DPPA”).

The DPPA,

if passed, would extend copyright protection to

fashion designs for a three-year period.

Jason Wu is among the

congregation of designers lobbying Congress to pass the DPPA,

which would protect his future designs from being copied for a

increased speed of information and advances in copying technology by

extending legal protection to fashion design.” Susan Scafidi, Design Piracy

Prohibition Act: Historical Regression, C

OUNTERFEIT CHIC, Mar. 10, 2008,

http://www.counterfeitchic.com/2008/03/design_piracy_prohibtion_act_h.php.

A Bill to Provide Protection for Fashion Design: Hearing on H.R.

5055 Before the Subcomm. on Courts, the Internet, and Intellectual Property

of the H. Comm. on the Judiciary, 109th Cong. 77 (2006) [hereinafter

Hearing on H.R. 5055] (statement of Susan Scafidi, Visiting Professor,

Fordham Law School, Associate Professor, Southern Methodist University).

See Peter K. Schalestock, Forms of Redress for Design Piracy: How

Victims Can Use Existing Copyright Law, 21 S

EATTLE U. L. REV. 113, 113

(1997).

The CFDA is a not-for-profit trade association comprised of American

fashion designers. Council of Fashion Designers of America, About CFDA,

http://www.cfda.com/category/about/ (last visited Jan. 21, 2010).

See, e.g., S. 1957, 110th Cong. (2007); H.R. 2033, 110th Cong.

(2007); H.R. 5055, 109th Cong. (2006).

See Design Piracy Prohibition Act, H.R. 2196, 111th Cong. § 2

(2009).

When discussing the DPPA, this Article refers to H.R. 2196. The

DPPA was originally introduced in the 109th Congress as H.R. 5055. In

April 2007, Representative Delahunt reintroduced the legislation as H.R.

2033. In August 2007, Senator Schumer introduced a similar bill as S. 1957.

None have passed as of this writing. See discussion infra Part IV.A.

H.R. 2196 § 2(d).

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896 JOURNAL OF LAW AND POLICY

limited period of time so that he may reap some of the benefits

of his investment.

After years of allowing design piracy to

spread at the expense of the fashion industry and designers,

Congress should pass legislation aligning United States copyright

protection with that of other nations, and to alleviate the burden

placed on emerging young designers.

In the absence of copyright protection, designers have turned

to alternative theories, such as trade dress, to protect their

work.

Trade dress is traditionally defined as the “overall

appearance of labels, wrappers, and containers used in

packaging a product.”

Over time, the definition has expanded

to include “a combination of any elements in which a product or

service is presented to the buyer.”

More simply, trade dress

protects the overall appearance of a product. Designers are

hoping courts will extend trade dress protection to a fashion

design’s “shape, color, font, size, styling, layout, design,

language, and [overall] appearance” in order to prevent fast-

fashion retailers from “knocking off” their designs.

Renata Espinosa, Design Piracy Prohibition Act Reintroduced in

Congress, F

ASHION WIRE DAILY, May 1, 2009, http://www.fashionwiredaily.

com/first_word/news/article.weml?id=2615. In fact, a number of designers

for Mrs. Obama, including Narciso Rodriguez, Maria Cornejo, and Thakoon

Panichgul have also lobbied Congress to pass the DPPA. Id.

See Susan Scafidi, Fashion’s Financial Fiction, COUNTERFEIT CHIC,

Jan. 27, 2009, http://www.counterfeitchic.com/2009/01/fashions_financial_

fiction.php.

See Lauren Howard, Article, An Uningenious Paradox: Intellectual

Property Protections for Fashion Designs, 32 C

OLUM. J.L. & ARTS 333, 334

(2009).

See, e.g., Complaint at 15–16, Express LLC v. Forever 21, Inc., No.

09-CV-04514 (C.D. Cal. June 23, 2009) [hereinafter Express Complaint];

Complaint at 11–13, Trovata, Inc. v. Forever 21, Inc., No. 07-CV-01196

(C.D. Cal. Oct. 15, 2007) [hereinafter Trovata Complaint]; Magdo, supra

note 5 at 9–16.

J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR

COMPETITION 8-1 (4th ed. 2009) (citing RESTATEMENT (THIRD) OF UNFAIR

COMPETITION § 16, cmt. a (1995)).

J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR

COMPETITION 8-1 (4th ed. 2009).

Express Complaint, supra note 22, at 15.

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Trade dress is a difficult argument to make in the fashion

context because designers must prove secondary meaning.

order to prove secondary meaning, a fashion designer must

show that, “in the minds of the public, the primary significance

of a product feature or term is to identify the source of the

product rather than the product itself.”

In other words,

consumers must associate the fashion design with the designer.

In this Article’s example, Jason Wu would have to establish that

consumers associate the one-shoulder ivory-colored chiffon

gown with him as its source.

Despite the difficulty of arguing secondary meaning, a

successful trade dress claim can have significant results. If

designers can succeed in obtaining trade dress protection for

fashion designs, it will greatly reduce the degree to which

fashion copycats can “knock off” a designer’s work.

Furthermore, if trade dress is used to protect designers against

design piracy, it may also render the DPPA legislation

unnecessary.

This Article argues that trade dress is not a viable defense

against design piracy, and, therefore, Congress should pass the

DPPA in order to adequately address the rising design piracy

problem. Part I discusses the problem of design piracy within

the fashion industry. Part II discusses current intellectual

property protection for fashion designs. Part III discusses trade

dress infringement as a cause of action in the recent litigation

against Forever 21, Inc. (“Forever 21”) in Trovata, Inc. v.

Forever 21, Inc. Part IV discusses the pending DPPA

Lynsey Blackmon, Comment, The Devil Wears Prado: A Look at the

Design Piracy Prohibition Act and the Extension of Copyright Protection to

the World of Fashion, 33 P

EPP. L. REV. 107, 126–27 (2007) (“[T]he

Supreme Court made the possibility of trade dress protection for fashion

designs virtually unattainable in any case.”).

See Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11

(1982).

See Amy Odell, Trovata Fights Forever 21 with Music, Forever 21

Fights Back with Apple Cobbler, N.Y. M

AG., June 14, 2009, http://nymag.

com/daily/fashion/2009/05/trovata_fights_forever_21_with.html.

See discussion infra Part IV.

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legislation. Part V discusses the impracticability of trade dress as

adequate recourse against design piracy for fashion designers

and suggests that Congress adopt the DPPA, which proposes

extending copyright protection to fashion designs.

I. THE FASHION INDUSTRY

The United States fashion industry is a multi-billion dollar

industry.

The industry affects an array of people ranging from

designers to “fabric manufacturers, printers, the people who

produce paper for making patterns, the shippers who ship the

merchandise, the truckers who truck, design teams, fabric

cutters, tailors, models, seamstresses, sales people,

merchandising people, advertising people, publicists, [and] those

who work for retailers.”

Design piracy threatens the livelihood

of hundreds of thousands of people

employed by the United

States fashion industry,

and costs designers hundreds of

millions of dollars in revenue each year.

C. Scott Hemphill & Jeanni Suk, The Law, Culture, and Economics of

Fashion, 61 S

TAN. L. REV. 1147, 1148 (2009) (noting the fashion industry

has annual U.S. sales of more than $200 billion); Jennifer Mencken, Note, A

Design for the Copyright of Fashion, 1997 B.C.

INTELL. PROP. & TECH. F.

121201 (1997), http://www.bc.edu/bc_org/avp/law/st_org/iptf/articles/index.

html; Nurbhai, supra note 6, at 489 (estimating the fashion industry

generated $784.5 billion in sales in 1999); Kal Raustiala & Christopher

Sprigman, The Piracy Paradox: Innovation and Intellectual Property in

Fashion Design, 92 V

A. L. REV. 1687, 1693 (2006) (noting the global

fashion industry sells over $750 billion of apparel annually).

Hearing on H.R. 5055, supra note 12, at 11 (statement of Jeffrey

Banks, Fashion Designer).

Id.; see also Press Release, Congressman Jerrold Nadler, Delahunt,

Goodlatte and Nadler Reintroduce Legislation to Combat Design Piracy (May

2, 2009) [hereinafter Nadler Press Release] available at http://nadler.house.

gov/index.php?option=com_content&task=view&id=1238&Itemid=115 (“It

has been estimated that counterfeiting merchandise, as a whole, is responsible

for the loss of 750,000 American jobs . . . .”).

See id. at 9.

See Design Law—Are Special Provisions Needed to Protect Unique

Industries: Hearing Before the Subcomm. on Courts, the Internet, and

Intellectual Property of the H. Comm. on the Judiciary, 109th Cong. 25

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On average, a single collection takes six to twelve months to

create and costs nearly $6 million to produce;

however, design

piracy prevents designers from earning a return on that

investment.

Today, it is significantly easier and faster for

fashion copycats to “knock off” designers.

Previously, “a

designer had exclusive use of his design for a limited period of

time because of the time required for a pirate to produce and

market copies.”

Because of modern technology, a design can

now go from the runway to retail stores within a matter of

days.

Now, a photograph taken at a fashion show in Paris can

be emailed to a factory in China for a sample within hours.

(2008) [hereinafter Hearing on Design Law] (statement of Narciso Rodriguez,

Designer).

Id. (statement of Narciso Rodriguez, Designer). According to fashion

designer, Narciso Rodriguez, “[t]o design and fabricate my 250 piece

collection it takes six to twelve months. The fall and spring runway shows

cost on average $800,000 to stage. The fabric another $800,000, the work

room that develops the patterns and garments another $1,500,000. The travel

budget for design and fabric development is $350,000 and marketing is

another $2,500,000. There are so many aspects of a fashion business that

make it risky in the best of circumstances, and the pirates are only making it

riskier.” Id.

Thakoon Panichgul, an American fashion designer, explains “we find

our ability to [build a career] is undermined by pirates who, instead of laying

out the money we do for research, pattern makers, to mount runway shows,

etc [sic], they just copy the end product of all our investments and, by virtue

of having a cost free design, sell our design in the market place cheaper than

we can.” Nadler Press Release, supra note 32; see also Adler, supra note 5,

at 382.

Id.

Schalestock, supra note 13, at 115.

Nurbhai, supra note 6, at 490 (citing Mencken, supra note 30, at

n.75).

Id. at 114 (citing Teri Agins, Copy Shops: Fashion Knockoffs Hit

Stores Before Originals as Designers Seethe, W

ALL ST. J., Aug. 8, 1994, at

A1); see also Hearing on H.R. 5055, supra note 12, at 79 (statement of Prof.

Susan Scafidi) (“Digital photographs from a runway show in New York or a

red carpet in Los Angeles can be uploaded to the internet [sic] within

minutes, the images viewed at a factory in China, and copies offered for sale

online within days—months before the designer is able to deliver the original

garments to stores.”).

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900 JOURNAL OF LAW AND POLICY

The advent of modern technology has increased the rate of

design piracy so that copies of the dress can reach stores before

the originals and at a fraction of the cost.

In other words, the

designer cannot profit from his work because the person selling

the item in the retail stores is not the one who designed it.

representative for the CFDA stated that “[a]lthough a designer

can spend tens of thousands to mount their runway show to

reveal their new lines, they frequently don’t even recoup their

investments. Their designs are stolen before the applause has

faded [because] software programs develop patterns from

photographs taken at the show and automated machines then cut

and stitch copies of designers work from those patterns.”

For example, designer Narcisco Rodriguez testified before

Congress that one of his gowns sold approximately 7 to 8

million copies; however, only 40 of the gowns sold were

originals.

Because almost all of the gowns were “knock offs,”

Rodriguez did not benefit from the sales of those 7 million

gowns despite having expended the time, energy and resources

to create his gown.

As a result, “knock offs” and pirated

See Schalestock, supra note 13, at 114.

See, e.g., Ronald Urbach & Jennifer Soussa, Is the Design Piracy

Protection Act a Step Forward for Copyright Law or Is It Destined to Fall

Apart at the Seams?, 16 M

ETROPOLITAN CORP. COUNS. 28 (2008); see also

Elizabeth F. Johnson, Note, Defining Fashion: Interpreting the Scope of the

Design Piracy Prohibition Act, 73 B

ROOK. L. REV. 729, 729 (2008)

(describing the design piracy of Zac Posen’s 2006 Academy Awards Show

black gown for Felicity Huffman and Marc Bouwer’s Golden Globe Awards

coral dress for Marcia Cross).

Urbach and Soussa, supra note 42 (citing Megan Williams, Fashioning

a New Idea: How the Design Piracy Prohibition Act is a Reasonable Solution

to the Fashion Design Problem, 10 T

UL. J. TECH. & INTELL. PROP. 303, 312

(2007).

Hearing on Design Law, supra note 34, at 22 (statement of Narcisco

Rodriguez).

For a similar account, see Mary Angela Rowe, Proposed New Law

Sparks Rift in U.S. Fashion Industry, R

EUTERS, July 17, 2009, http://www.

reuters.com/article/idUSTRE56G4NI20090717 (“‘We had other designers

coming and shopping in our stores. I felt like crying afterwards because I

knew they were buying samples (to copy),’ said [Maria] Cornejo. ‘They’re

basically putting their hand in my head, which is my bank, and stealing

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imitations can cause significant harm to emerging designers,

especially when such large investments are required on the

front-end of the design process.

Meanwhile, many retailers have created a profitable living

“knocking off” designers.

For example, Forever 21, a Fortune

500 company, is considered by some as the “most notorious

copyist retailer”

and is the target of over fifty lawsuits for

Dana Foley, a designer

with a Lower East Side boutique, said Forever 21 has copied

her twice.

One of the designs was not even in stores yet.

Foley is only one of the many designers that Forever 21

“knocked off.” A recent trade dress infringement lawsuit stands

out amongst the numerous copyright and trademark infringement

suits against Forever 21.

This Article will study the trade dress

infringement case in depth,

and analyze the viability of trade

dress as a means of recourse against design piracy.

ideas. It’s basically robbery.’”).

See Adler, supra note 5, at 382; see also discussion supra Part I

(costing approximately $6 million to create a single collection).

Schalestock, supra note 13, at 114–15 (“Two major design pirates

have been attributed with $50 million and $200 million, respectively, in

annual revenue from their knockoff sales.”).

Hemphill & Suk, supra note 30, at 1172.

Id. at 1173; Amy Odell, Forever 21’s Ability to Copy Designer

Clothes Could Be in Jeopardy, N.Y. M

AG., Apr. 13, 2009,

http://nymag.com/daily/fashion/2009/04/forever_21s_ability_to_copy_de.html

(“[C]ompanies including Diane von Furstenberg, Anna Sui, and

Anthropologie have filed over 50 lawsuits against Forever 21 over the last

three years relating to copyright infringement.”).

Associated Press, Bill Would Extend Copyright Rules to Fashion,

MSNBC, Aug. 8, 2007, http://www.msnbc.msn.com/id/20183923. Foley

says “[i]t cuts our legs out from underneath us in terms of building a brand,

an identity.” Id. Foley’s dresses cost $300 to $400, while the Forever 21

version sells for only $29.99. Id.

Id.

See, e.g., Express Complaint, supra note 22; Trovata Complaint,

supra note 22.

See discussion infra Part III.

See discussion infra Part V.

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II. THE CURRENT STATE OF PROTECTION FOR FASHION DESIGNS

United States law does not offer any substantive safeguards

against fashion design copying.

While fashion designers may

receive some protection under the current intellectual property

regime,

these safeguards are very limited and do not explicitly

protect the group of designers that are most vulnerable to design

piracy—unrecognized, emerging young designers.

A. Copyright Protection

Although the Copyright Act covers an array of creative

works including literature, music, motion pictures, sound

recordings, and architecture,

it currently does not protect

fashion designs.

Significantly, the “useful articles” doctrine

precludes copyright protection to fashion designs that are used to

cover and protect one’s body.

A “useful article” is defined as

“an article having an intrinsic utilitarian function that is not

merely to portray the appearance of the article or to convey

information.”

The legislative history of the 1976 Copyright Act

explains that the purpose of excluding useful articles from

between copyrightable works of applied art and uncopyrightable

works of industrial design.”

Examples of uncopyrightable

See discussion infra Part II.

Steven Wesiburd et al., The Design Piracy Prohibition Act, N.Y.L.J.,

Jan. 20, 2009, http://www.dicksteinshapiro.com/files/upload/DesignPiracy

Prohibition.pdf.

17 U.S.C. § 102 (2006).

Id. (limiting copyright protection to original works of authorship fixed

in any tangible medium of expression that are created as (1) literary works;

(2) musical works; (3) dramatic works; (4) pantomimes and choreographic

works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and

other audiovisual works; (7) sound recordings; and (8) architectural works).

Id. § 101; see also Johnson, supra note 42, at 734 (“Generally, courts

have considered clothing to be ‘useful articles’ and therefore not protected by

the Copyright Act.”); Nurbhai, supra note 6, at 499–500.

17 U.S.C. § 101.

H.R. REP. NO. 94-1476, at 55 (1976).

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works cited in the legislative history include “[t]he shape of an

automobile, airplane, ladies’ dress, food processor, [and a]

television set.”

Congress’ explicit mention of a “ladies’ dress”

in the list of useful articles examples is indicative of the hurdles

facing the fashion industry in defining fashion designs as

something more than just clothing.

The Copyright Act, however, does provide an exception for

designs that are “separable and independent of the utilitarian

function of the article.”

Separability can be interpreted as

“either physical separability or conceptual separability.”

For

example, in Mazer v. Stein, the Court held that a statuette

forming the base of a lamp could be copyrighted because the

artistic elements of the lamp were separable from the utilitarian

functions of the lamp.

Therefore, theoretically speaking,

fashion designs should also be eligible to receive copyright

protection if they contain “some element that, physically or

conceptually, can be identified as separable from the utilitarian

aspects of the article.”

Historically, courts have generally

considered fashion designs as physically and conceptually

inseparable from the article of clothing, and, therefore,

Id.

The “useful articles” doctrine “expresses Congress’ desire to limit the

ability of manufacturers to monopolize designs dictated solely by the function

the article is to serve, such that the first manufacturer to adopt the design

would have the exclusive right to produce those kinds of products.” Anne

Theodore Briggs, Article, Hung Out to Dry: Clothing Design Protection

Pitfalls in United States Law, 24 H

ASTINGS COMM. & ENT. L.J. 169, 181

(2002); see also Knitwaves Inc., v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d

Cir. 1995) (explaining the purpose of the functionality doctrine is to

“prevent[] trademark law, which seeks to promote competition by protecting

a firm’s reputation, from instead inhibiting legitimate competition by allowing

a producer to control a useful product feature”) (quoting Qualitex Co. v.

Jacobson Prods. Co., 514 U.S. 159, 164 (1995)).

Magdo, supra note 5.

Id.

Mazer v. Stein, 347 U.S. 201, 212–13 (1954). Cf. Norris Indus., Inc.

v. Int’l Tel. Corp., 696 F.2d 918, 923–24 (11th Cir. 1983) (holding that

automobile hubcaps are not protected as sculptural works because hubcaps are

useful articles).

Schalestock, supra note 13, at 118 (citing 17 U.S.C. § 101 (1996)).

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904 JOURNAL OF LAW AND POLICY

incapable of receiving copyright protection under the “useful

articles” exception.

Despite the court’s categorization of fashion designs as

useful articles, the purpose of a fashion work is different from

that of a piece of clothing used to cover and protect.

Instead, a

fashion work, like a beautiful ball gown, is a piece of art.

For

instance, Jason Wu’s inaugural ball gown is now part of an

exhibit in the Smithsonian’s National Museum of American

History in Washington.

The Copyright Act should be amended

to extend copyright protection to fashion works because it is the

best method of addressing design piracy.

Congressional

legislation is currently pending that would amend the Copyright

Act to protect fashion works, which this Article addresses in

further detail below.

B. Patent Law Protection

Patents protect the inventor of “any new, original and

ornamental design for an article of manufacture”

for fourteen

years.

To be eligible for a patent, a work must be a new

Nurbhai, supra note 6, at 500; Urbach & Soussa, supra note 42, at

28; see Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000);

see also Poe v. Missing Persons, 745 F.2d 1238, 1241 (9th Cir. 1984);

Aldridge v. Gap, Inc., 866 F. Supp. 312, 314 (N.D. Tex. 1994); Blackmon,

supra note 26, at 129 (noting that copyright protection does not exist for

garments because of their useful nature); Briggs, supra note 63, at 183

(noting that “[C]lothing is clearly a ‘useful article,’ whether one considers its

function to be protecting its wearer from the elements, ensuring modesty, or

symbolizing occupation, rank or status”).

Hearing on H.R. 5055, supra note 12, at 79 (statement of Prof. Susan

Scafidi).

Id. at 80.

Kate Philips, First Lady’s Inaugural Gown Installed, N.Y. TIMES,

Mar. 9, 2010, http://thecaucus.blogs.nytimes.com/2010/03/09/first-ladys-

inaugural-gown-installed.

See discussion infra Part IV.

See id.

35 U.S.C. § 171 (2006).

Id. § 173.

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invention and must advance beyond the prior art in a way that is

non-obvious.

Courts have generally held that fashion works fail

to meet these criteria. As such, patents are not a viable solution

to design piracy.

Moreover, design patents are “ill-suited for fashion designs

for other practical reasons, including (1) the patent application

process is costly, lengthy and the prospects of protection are

uncertain and (ii) design patent protection lasts for fourteen

years, which is too long to fit sensibly in the fast-paced fashion

market.”

When compared to the relevant life span of most

fashion works, patents take a long time to obtain and are

prohibitively expensive.

The Patent and Trademark Office takes

an average of twenty-two months to review each design patent

after application,

and almost half of those applications get

rejected.

Because the relevant life span of most fashion designs

is one season, which lasts approximately three to six months,

obtaining a patent for a fashion design is fruitless.

Therefore,

fashion designers do not normally seek patents for their

designs.

Id.

See Leslie J. Hagin, A Comparative Analysis of Copyright Laws

Applied to Fashion Works: Renewing the Proposal for Folding Fashion Works

into the United States Copyright Regime, 26 T

EX. INT’L L.J. 341, 355

(1991); Urbach & Soussa, supra note 42, at 28.

Urbach & Soussa, supra note 42, at 28.

See Hagin, supra note 77, at 355.

Id. at n.110.

Magdo, supra note 5 at 6–7 (citing Richard G. Frenkel, Intellectual

Property in the Balance: Proposals for Improving Industrial Design

Protection in the Post-TRIPS Era, 32 L

OY. L.A. L. REV. 531, 541 (1999)).

See Hagin, supra note 77, at 355 n.110.

See Susan Scafidi, Intellectual Property and Fashion Design, in 1

NTELLECTUAL PROPERTY AND INFORMATION WEALTH 115, 122 (Peter K. Yu

ed., 2006) (“For most fashion designs, however, the patentability

requirements of novelty, utility, and nonobviousness, the expense of

prosecuting a patent, and above all the amount of time required to obtain a

patent make this form of protection impractical if not impossible.”).

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906 JOURNAL OF LAW AND POLICY

C. Trademark Protection

Trademark law offers some protection to fashion designers.

A trademark is “any word, name, symbol, or device, or

combination thereof”

that is adopted and used by a

manufacturer or merchant “to identify his goods and distinguish

them from those manufactured and sold by others.”

Trademark

protects words, emblems, logos or symbols such as the Nike

swoosh or the interlocking Chanel double-C logo.

However,

trademark protection would not protect emerging designers

because their names and logos are not yet recognizable to a

broad range of consumers.

Furthermore, trademark protection

does not protect the overall look of a design.

D. Trade Dress Protection

Given the current intellectual property scheme, fashion

designers are attempting to use trade dress to protect their

work.

Trade dress, like trademarks, is embodied under the

Lanham Trademark Protection Act §43(a) (“Lanham Act”),

which states:

Any person who, on or in connection with any goods or

services, or any container for goods, uses in commerce

any word, term, name, symbol, or device, or any

combination thereof, or any false designation of origin,

false or misleading description of fact, or false or

misleading representation of fact which . . . [i]s likely to

cause confusion, or to cause mistake, or to

See Lanham Trademark Protection Act § 43(a), 15 U.S.C. § 1125(a)

(2006).

Id. § 1125(a)(1).

Id. § 1127.

Scafidi, supra note 83, at 121; Urbach & Soussa, supra note 42, at

28.

Scafidi, supra note 83, at 121.

See 15 U.S.C. § 1125(a).

See, e.g., Express Complaint, supra note 22; Trovata Complaint,

supra note 22.

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deceive . . . as to the origin, sponsorship, or approval of

his or her goods, services, or commercial activities by

another person, or . . . in commercial advertising or

promotion, misrepresents the nature, characteristics,

qualities, or geographic origin of his or her or another

person’s goods, services, or commercial activities, shall

be liable in a civil action by any person who believes that

he or she is likely to be damaged by such an act.

The distinction between trade dress and trademarks is largely

historical, which has essentially disappeared over the years.

trademark infringement claim focuses on whether a discrete

symbol functions as a mark and whether the defendant’s mark is

likely to cause confusion.

In contrast, a trade dress

infringement claim focuses on whether the “plaintiff has defined

the trade dress as the total image or overall impression of [the]

plaintiff’s product, package and advertising,” and whether the

defendant’s trade dress is likely to cause confusion with the

plaintiff’s trade dress.

Over the years, trade dress has evolved through three

different forms. The traditional definition of trade dress was

“limited to the overall appearance of labels, wrappers, and

containers used in packaging a product.”

Gradually, trade dress

expanded to include “a combination of any elements in which a

product or service is presented to the buyer.”

The combination

of elements creates a visual image that is capable of acquiring

15 U.S.C. § 1125(a); see also Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763, 776 (1992) (Stevens, J., concurring) (“[T]he [Supreme] Court

interprets this section [§ 43(a)] as having created a federal cause of action for

infringement of an unregistered trademark or trade dress and concludes that

such a mark or dress should receive essentially the same protection as those

that are registered.”).

J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR

COMPETITION 8-2 (4th ed. 2009).

Id. at 8-3.

Id. at 8-7.

Id. at 8-2.

Id. at 8-4.

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908 JOURNAL OF LAW AND POLICY

exclusive legal rights as a type of trade dress.

The third type of

trade dress covers the shape and design of the product.

Generally, trade dress is most commonly used to protect a

product’s “total image and overall appearance”

of the product

“as well as that of the container and all elements making up the

total visual image by which the product is presented to

customers.”

Essentially, trade dress protects a product’s overall

look and feel.

100

A party may claim trade dress protection for a unique

combination of features, even though others may have used each

of the features previously.

101

For example, courts have granted

trade dress protection to a variety of designs, such as “a china

pattern, fishing reel design, a restaurant’s ambience, a television

commercial’s theme, and the style of a rock group’s musical

performance.”

102

At issue here is whether the trade dress

protection can be extended to the overall appearance of a dress

like the one First Lady Michelle Obama wore to the

Inauguration Ball.

To prevail in a trade dress infringement claim, the plaintiff

must demonstrate that (i) the trade dress is nonfunctional; (ii) the

trade dress is distinctive; and (iii) the infringing product creates

a likelihood of confusion.

103

This Article will discuss each of

Id.

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992);

Knitwaves Inc., v. Lollytogs Ltd., 71 F.3d 996, 1005 (2d Cir. 1995).

Knitwaves, 71 F.3d at 1005 (citing Jeffrey Milstein, Inc. v. Greger,

Lawlor, Roth, Inc., 58 F.3d 27, 31 (2d Cir. 1995)).

100

Two Pesos, 505 U.S. at 764 n.1.

101

Paddington Corp. v. Attiki Importers & Distribs., Inc. 996 F.2d 577,

584 (2d Cir. 1993) (“One could no more deny protection to a trade dress for

using commonly used elements than one could deny protection to a trademark

because it consisted of a combination of commonly used letters of the

alphabet.”).

102

Bharathi, supra note 9, at 1679–80.

103

Two Pesos, 505 U.S. at 763; see also MCCARTHY, supra note 92, at

8-4.50 (“‘Trade dress’ is an expansive concept, and has been held to include

such things as: the cover of a book; a magazine cover design; the layout and

appearance of a mail-order catalog; the registration process for a trade fair;

the appearance and decor of a chain of Mexican-style restaurants; the method

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these elements in detail below.

1. Non-Functionality

If the trade dress of a product is functional, then it falls

outside the scope of protection.”

104

A trade dress is considered

functional “if it is essential to the use or purpose of the article

or if it affects the cost or quality of the article [or] if exclusive

use of the feature would put competitors at a significant non-

reputation-related disadvantage.”

105

2. Distinctiveness

The trade dress of a product must be distinctive.

106

Trade

dress is distinctive if it is “inherently distinctive” or has

“acquired distinctive” status through secondary meaning.

107

of displaying wine bottles in a retail wine shop; the use of a lighthouse as

part of the design of a golf hole; the appearance of a teddy bear toy; a

Christmas tree ornament in the shape of a bubble-blowing Santa Claus; a

Rubik’s cube puzzle; the shape of a classic automobile; the appearance of a

lamp; the design of a doorknob; the shape of a flashlight; the ‘G’ shape of

the frame of a GUCCI watch; the appearance of four models of CARTIER

luxury watches; the design of jewelry modeled on a plumeria flower; the

design of a line of childrens’ clothing; the overall design of a sports shoe; the

design of a handbag; the shape and appearance of the head of a golf club; the

appearance of a video game console; the appearance of a casino table for

four-hand poker; a combination of features of a folding table; the appearance

of a water meter; the appearance of a bathroom scale; the design of a

MIXMASTER kitchen stand mixer; a fish-shaped cracker; the design of a

pop-up irrigation sprinkler; the design of a medical instrument; the decor,

menu and style of a restaurant; the ‘Marlboro Man’ western cowboy motif;

wine with picture of Marilyn Monroe on the label; and even the distinctive

performing style of a rock music group.”).

104

Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164–65 (1995).

105

Id. at 165.

106

Id.

107

RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 13 cmt. e (1995);

see discussion infra Part II.D.ii.a; see also Qualitex, 514 U.S. at 163

(citations omitted) (finding secondary meaning where “in the minds of the

public, the primary significance of a product feature . . . is to identify the

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910 JOURNAL OF LAW AND POLICY

Marks that are “arbitrary,” “fanciful,” or “suggestive” are

inherently distinctive.

108

Acquired distinctiveness is not only a

mark that is descriptive, but one that consumers can use as a

source identifier.

109

Distinctiveness of product packaging trade dress may be

either inherent or acquired.

110

However, in Wal-Mart v. Samara

Brothers, the Court held that product design trade dress must

show secondary meaning.

111

In other words, the Court held that

clothing cannot be inherently distinctive.

i. The Significance of Wal-Mart v. Samara Brothers

In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., Samara

Brothers, Inc. (“Samara”) manufactured a line of children’s

clothing.

112

Wal-Mart Stores, Inc. (“Wal-Mart”) hired a

competing manufacturer to produce clothing that copied the

overall Samara look using photographs of Samara garments.

113

Wal-Mart then sold these outfits under their own label “Small

Steps” at a cheaper price.

114

J.C. Penney, a store that sold

Samara’s clothing under contract with Samara, called Samara’s

offices to complain that they had seen Samara’s garments on sale

at Wal-Mart for a lower retail price than allowed under their

contract.

115

When Samara investigated the complaint, it

discovered that Wal-Mart was selling copies of its garments

under its own label “Cuties by Judy.”

116

Samara filed suit against Wal-Mart alleging trade dress

source of the product rather than the product itself”).

108

Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210–11

(2000).

109

Id. at 211.

110

Id. at 214–15.

111

Id. at 216.

112

Samara Bros. v. Wal-Mart Stores, Inc., 165 F.3d 120, 122 (2d Cir.

1998).

113

Id.

114

Id.

115

Id. at 123.

116

Id.

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infringement.

117

The Supreme Court held that when a trade dress

is found in the packaging of a product, it can be inherently

distinctive;

118

however, when the trade dress’ product design or

configuration itself is in question, secondary meaning is

required.

119

The Supreme Court’s requirement of secondary

meaning has made it extremely difficult for fashion designers to

succeed on a trade dress infringement claim.

ii. Secondary Meaning

To establish secondary meaning, one must show the trade

dress is a source identifier.

120

For example, if the Michelle

Obama gown is a trade dress, then Jason Wu must show that

consumers associate the one-shoulder ivory-colored chiffon dress

with Swarovski crystals with his name. Secondary meaning

evidence can include (but is not limited to): significant sales,

consumer testimonials, long-term relatively exclusive use of the

trademark in the industry, survey evidence of consumer

association, substantial numbers of customers, proof of an

infringer’s copying and extensive or substantial advertising.

121

The problem is that secondary meaning is extremely challenging

for fashion designers to prove.

122

Fashion works have a short life

cycle, and, therefore, it is extremely hard for a designer to show

that consumers identify the trade dress with a specific source to

establish secondary meaning.

123

As a result, it is extremely

117

Id.

118

Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 210–

11 (2000).

119

Id. at 211.

120

RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 13 cmt. a (1995);

Urbach & Soussa, supra note 42, at 28.

121

Karina K. Terakura, Comment, Insufficiency of Trade Dress

Protection: Lack of Guidance for Trade Dress Infringement Litigation in the

Fashion Design Industry, 22 U. H

AW. L. REV. 569, 588 (2000) (citing

Centaur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d 1217, 1222

(2d Cir. 1987)).

122

See generally Express Complaint, supra note 22; Trovata Complaint,

supra note 22.

123

See Urbach & Soussa, supra note 42, at 28.

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912 JOURNAL OF LAW AND POLICY

difficult for an unknown design to establish secondary

meaning.

124

This precludes emerging fashion designers from

obtaining trade dress protection and even if the designer can

establish secondary meaning, fashion copycats, presumably, will

have proceeded to the next current fashion design by the time

the case is brought before a court.

125

3. Likelihood of Confusion

Lastly, the plaintiff must show the trade dress causes a

likelihood of confusion.

126

Likelihood of confusion arises

“whenever consumers are likely to assume that a mark or trade

dress is associated with another source or sponsor because of

similarities between the two marks or trade dresses.”

127

Courts

employ two different tests and consider a variety of factors when

deciding whether there is a likelihood of consumer confusion:

the Second Circuit’s Polaroid test

128

and the Ninth Circuit’s

Sleekcraft factors.

129

This Article will focus on the Sleekcraft

factors because both trade dress cases against Forever 21

130

are

124

Id.

125

See Trovata Complaint, supra note 22; see also Urbach & Soussa,

supra note 42, at 28; Susan Scafidi, Faithfully Yours (and Yours, and Yours):

McQueen v. Madden, C

OUNTERFEIT CHIC, Oct. 8, 2009, http://counter

feitchic.com/2009/10/faithfully-yours-and-yours-and-yours.html.

126

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992).

127

Rain Bird Corp. v. Hit Prods. Corp., No. 02-CV-09422, 2004 U.S.

Dist. LEXIS 20790, at *13 (C.D. Cal. 2004) (quoting Acad. of Motion

Picture Arts & Scis. v. Creative House Promotions, Inc., 944 F.2d 1446,

1456 (9th Cir. 1991)).

128

Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.

1961). In the Second Circuit, the courts consider the Polaroid factors:

(1) strength of the prior owner’s mark or dress; (2) degree of similarity

between the national product’s trade dress and the trade dress of the knockoff

product; (3) proximity of the products in the market; (4) likelihood that the

prior owner will bridge the gap; (5) actual confusion; (6) bad faith of

knockoff company; (7) quality of defendant’s product; and (8) sophistication

of the buyer. Id.

129

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 n.11 (9th Cir.

1979).

130

See discussion infra Part III.

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litigated in district courts within the Ninth Circuit.

131

In the Ninth Circuit, courts use the Sleekcraft factors in

analyzing a likelihood of consumer confusion claim.

132

The eight

Sleekcraft factors are:

(1) similarity of the marks; (2) proximity of the goods;

(3) marketing channels; (4) defendant’s intent in electing

its mark; (5) strength of plaintiff’s mark; (6) evidence of

actual confusion; (7) type of goods and the degree of

care likely to be exercised by purchasers; and

(8) likelihood of expansion of the product lines.

133

The Ninth Circuit has held that the proximity of goods, the

similarity of the marks and the marketing channels used are the

three most important factors in the Sleekcraft analysis.

134

For many years, trade dress protection was associated with

product infringement suits.

135

However, fashion designers’

attorneys have attempted to use trade dress as a defense against

design piracy, especially in light of the influx of fashion

copycats in recent years.

136

Forever 21 is currently facing two

dress suits, one of which this Article will now examine in depth.

III. TRADE DRESS INFRINGEMENT LITIGATION AGAINST

FOREVER 21

Discount clothing retailer, Forever 21, faced two separate

lawsuits brought by fashion designers alleging clothing design

trade dress infringement.

137

Do Won Chang and Jin Sook Chang

131

See Express Complaint, supra note 22; Trovata Complaint, supra note

22.

132

Sleekcraft, 599 F.2d at 348–49.

133

Id. at 348 n.11.

134

GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir.

2000).

135

See, e.g., Samara Bros. v. Wal-Mart Stores, Inc., 165 F.3d 120, 122

(2d Cir. 1998).

136

See, e.g., Express Complaint, supra note 22; Trovata Complaint,

supra note 22.

137

See Express Complaint, supra note 22; Trovata Complaint, supra note

22.

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founded Forever 21 in 1984 when the entrepreneurial couple

opened their first store in downtown Los Angeles.

138

Now,

twenty-five years later, Forever 21 is one of the fastest growing

clothing retailers with almost 500 stores around the world.

139

The

company’s net worth is in excess of $2 billion dollars,

140

and it is

the 376th largest private company in the United States.

141

Forever 21 has become synonymous with trendy clothing

items, low prices, and high turnover rates.

142

It markets itself to

“trend savvy shoppers,” where the “greatest value” can be

purchased

143

for the most recent men’s and women’s fashion

trends.

144

A typical Forever 21 location will turnover twenty

percent of its stock every week in order to make room for the

newest trends.

145

Forever 21’s success can be largely attributed to its quick

turnover.

146

It is capable of moving product to market within a

few weeks, in comparison to midmarket competitors like Gap,

Old Navy and Urban Outfitters, which need three months to take

an item from design to rack.

147

For designers, the design process

takes even longer, ranging from 18 to 24 months for the initial

design to reach production.

148

It is this constant turnover of

138

Soyoung Ho, Forever 21 Fortune, FORBES, Apr. 29, 2009,

http://www.forbes.com/2009/04/29/billionaire-retail-forever21-korea-rich-09-

wealth.html.

139

Id.

140

Express Complaint, supra note 22, at 6.

141

Ho, supra note 138.

142

Adler, supra note 5, at 391.

143

Plaintiff’s Notice of Motion and Motion for Summary Judgment at 2,

Trovata, Inc. v. Forever 21, Inc., No. 07-CV-01196 (C.D. Cal. June 9,

2008) [hereinafter Trovata Summary Judgment Motion].

144

Id.

145

Adler, supra note 5, at 391.

146

See Jincey Lumpkin, The Fashion Slinger: Forever 21 is Forever in

Lawsuits, F

ASHION LAWYER BLOG, Jan. 30, 2008, http://fashionlawyerblog.

com/?p=371.

147

Quick-Fashion Retailer Forever 21 Redefining Retail, RETAIL SAILS,

July 27, 2009, http://retailsails.com/2009/07/27/quick-fashion-retailer-

forever-21-redefining-retail.

148

Id.

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lower quality copies of high-end designs that makes Forever 21

the “most notorious copyist retailer.”

149

Over the years, it has

been the defendant in over fifty lawsuits for copyright and

trademark infringement.

150

Between 2007 to 2008, Forever 21 has been sued by Anna

Sui for seventeen articles of clothing, Anthropologie for ten

articles, Bebe Stores for twenty-eight articles, Carole Hochman

for a nightgown with a “Marilyn Monroe” fabric design, Diane

von Furstenberg for four wrap dresses and one blouse, Haraujku

Lovers for clothing with “Heart and Heart/Box design” print,

Harkham Industries for a dress with the “Shadow Fern” design,

and Trovata for six articles of clothing.

151

All of these lawsuits

ended in settlement.

152

In comparison, only two copyright and trademark

infringement lawsuits have been filed against Forever 21’s

competitor, H&M.

153

This vast discrepancy in lawsuits can be

attributed to the fact that H&M “engage[s] in loose design

‘referencing’ by borrowing high fashion ideas and interpreting

them for the masses,” while Forever 21 generally copies a

design to the very last detail.

154

Judge Dolinger for the United

States District Court for the Southern District of New York

reprimanded Forever 21 for its deceptive conduct, noting “the

extraordinary litigating history of this company . . . raises the

most serious questions as to whether it is a business that is

predicated in large measure on the systematic infringement of

competitors’ intellectual property.”

155

149

Hemphill & Suk, supra note 30, at 1172.

150

Id.; Ho, supra note 138.

151

Hemphill & Suk, supra note 30, at 1174 tbl.1.

152

Izzy Grinspan, Lawsuits: Ever-Slippery Forever 21 Settles with

Trovata, R

ACKED, Oct. 12, 2009, http://ny.racked.com/archives/2009/10/12/

lawsuits_forever_21_keeps_perfect_record_settle_with_trovata.php.

153

Hemphill & Suk, supra note 30, at 1173.

154

Victoria Elman, Note, From the Runway to the Courtroom: How

Substantial Similarity is Unfit for Fashion, 30 C

ARDOZO L. REV. 683, 686

(2008).

155

Memorandum and Order at 11, Anthropologie, Inc. v. Forever 21,

Inc., No. 07-CV-7873 (S.D.N.Y. March 13, 2009).

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916 JOURNAL OF LAW AND POLICY

Recently, attorney Frank Colucci brought two federal trade

dress infringement cases on behalf of his clients against Forever

21.

156

This Article will now analyze the trade dress claim in

Trovata, Inc. v. Forever 21, Inc.

A. Trovata, Inc. v. Forever 21

On October 15, 2008, Trovata, Inc. (“Trovata”) filed a

complaint against Forever 21 in the Central District of

California alleging federal trade dress infringement, false

designation of origin, false advertising in violation of the

Lanham Act, common law unfair competition, false advertising

and dilution in violation of California state and federal

statutes.

157

Trovata is a clothing design and manufacturing company that

was founded in 2001.

158

Trovata quickly earned a name for itself

in the fashion industry by winning numerous awards for its

trendy, fashion forward garments.

159

Its men’s and women’s

clothing lines are sold exclusively at high-end specialty stores,

such as Barney’s New York, Louis Boston, Colette, Harvey

Nichols, Ron Herman and American Rag.

160

Trovata has made

millions of dollars in sales of its products.

161

The Trovata look is called “twisted preppie,”

162

meaning the

156

See Express Complaint, supra note 22; Trovata Complaint, supra note

22. The Express case is still pending.

157

Trovata Summary Judgment Motion, supra note 143, at 2.

158

Id. at 3. The founders of Trovata are Jeff Halmos, Sam Shipley, Josia

Lamberto-Egan, and John Whitledge.

159

Trovata: Label Overview, NYMag.com, Sept. 7, 2007, http://nymag.

com/fashion/fashionshows/designers/bios/trovata. In 2005, Trovata was

awarded the Ecco Domani Fashion Foundation award and the CFDA/Vogue

Fashion Fund award. Id. Trovata was also featured in fashion and industry

magazines, such as Vogue, GQ, DNR, Woman’s Wear Daily, and Rolling

Stone for its distinctive and fashionable products and designs. Trovata

Complaint, supra note 22, at 4.

160

Trovata Summary Judgment Motion, supra note 143, at 4.

161

Trovata Complaint, supra note 22, at 4.

162

Transcript of Order Granting in Part and Denying in Part Plaintiff’s

Motion to Compel and Defendant’s Motion to Compel at 3, Trovata, Inc. v.

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designers “take things that are very, very old and they give them

a little twist to make them more modern.”

163

Trovata alleges that

its customers identify its designs through the use of uneven-

shaped and mismatched buttons and stripes,

164

a “T” design label

featuring a “unique floral design” and “quirky” care

instructions,

165

and “Frankenstein” stitching.

166

Trovata argues its

trade dresses consist of the various combinations of these

elements to create a unique overall appearance for each

garment.

167

Trovata’s attorney, Frank Colucci, analogizes the

Trovata Trade Dresses to a combination of notes, chords, sharps

and flats. “[T][he designer] takes notes, chords, sharps and flats

and combines them and arranges them to make original

music.”

168

In other words, Trovata concedes that the mismatched

buttons, stripes and stitching have been used before, but that the

combination of these elements creates a unique and original look

that constitutes a trade dress.

In February 2007, Trovata first discovered that Forever 21

was selling garments in its stores that allegedly copied its trade

dresses.

169

Trovata contends Forever 21 infringed seven of its

trade dresses (collectively, the “Trovata Trade Dresses”).

170

Forever 21, Inc., No. 07-CV-01196 (C.D. Cal. Dec. 9, 2008) [hereinafter

Trovata Order on Motions to Compel].

163

Id.

164

Trovata Summary Judgment Motion, supra note 143, at 3.

165

Id. at 4. The care instructions read: “If you want this thing to last, I

would suggest to machine wash with similar colors cold, do not use chlorine

bleach, tumble dry low. Iron if needed. I know you already know all this.

–Sam.” Id. at 5. The “T” design label is registered with the United States

Patent and Trademark Office (“USPTO”). Id. at 4.

166

Trovata Order on Motions to Compel, supra note 162, at 8

(describing “Frankenstein” stitching as the following: “[T]he idea is that

someone wore this shirt and tried to repair it themselves—and this is a bad

job that they did on repairing . . . . It’s called Frankenstein or Frankenstitch

because it looks like the stitching on the monster”).

167

Trovata Summary Judgment Motion, supra note 143, at 3–4.

168

Odell, supra note 28.

169

Trovata Complaint, supra note 22, at 9.

170

Id. at 6–9. The seven trade dresses are: (1) the “Fife S/S Voile

Blouse”; (2) the Luge Hoodie; (3) the “Berber Polo—Four Stripes”; (4) the

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918 JOURNAL OF LAW AND POLICY

For the sake of brevity, this Article will only discuss one of

the seven Trovata Trade Dresses: the Fife S/S Voile Blouse.

Trovata argued that the Fife S/S Voile Blouse is a protectable

trade dress because its overall appearance is created using a

unique combination of five different elements: evenly spaced

dots in a box pattern, ruffles on a short-sleeve opening,

mismatched buttons, and two-hole buttons with contrasting

burgundy thread and stripe patterns.

171

When the Fife S/S Voile

Blouse is compared to the Forever 21 garment, the designs are

almost indistinguishable to a viewer, and, therefore, Trovata

sought an injunction against the sale of the defendant’s item.

172

However, in order to establish trade dress protection,

Trovata had the burden of proving three things.

173

First, Trovata

needed to show that the trade dresses it claimed were

nonfunctional.

174

Second, Trovata needed to show that the trade

dresses it claimed acquired distinctiveness through secondary

meaning.

175

Lastly, Trovata needed to show that under the

Sleekcraft factors, Forever 21’s garments created a likelihood of

confusion.

176

Because a designer is required to establish all three

elements in order to obtain trade dress protection, it is difficult

for designers to prevail on such a claim.

First, Trovata argued the Fife S/S Voile Blouse trade dress

is not functional because none of the design elements are

essential to the function of the clothing with which they are

used, and that they create an “arbitrary overall visual

impression.”

177

Second, Trovata argued that its trade dress has

“Merchant S/S Henley”; (5) the “Highlands”; and (6) the “Outpost

Cardigan,” which comes in two color schemes. Id. The “Outpost Cardigan”

is a cardigan with horizontal stripes and multi-color buttons. Id. at 8.

171

Id. at 6.

172

Id. at 18–20.

173

See discussion supra Parts II.D.i-iii.

174

See discussion supra Part II.D.i.

175

See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216

(2000) (holding that product design trade dresses must establish secondary

meaning).

176

See discussion supra Part II.D.iii.

177

Trovata Summary Judgment Motion, supra note 143, at 10.

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acquired distinctiveness through secondary meaning as evidenced

by its rise in popularity in the fashion industry,

178

and Forever

21’s exact copying of its trade dresses.

179

Lastly, Trovata argued

that there is a likelihood of confusion between the Fife S/S Voile

Blouse Trade Dress and Forever 21’s garment because (1) the

products are identical;

180

(2) both retailers sell fashion-forward

apparel;

181

and (3) Forever 21 intentionally copied its trade

dress.

182

In response, Forever 21 alleged that the Fife S/S Voile

Blouse trade dress is functional in both an aesthetic and

utilitarian sense.

183

First, Forever 21 alleged that the Fife S/S

Voile Blouse trade dress is functional in the aesthetic sense

because “there are a limited number of pleasing stripe patterns,

dot patterns, silhouetting accents, [and] types of buttons.”

184

addition, Forever 21 contended that the Fife S/S Voile Blouse

trade dress is also functional in the utilitarian sense because

ruffles on short-sleeve openings “provide a more comfortable fit

for the wearer,” and striped patterns are used to create a wider

or slimmer appearance.

185

Forever 21 argued that competitors

would be put at a significant non-reputational disadvantage in the

sale of similar designs if the court granted the Fife S/S Voile

Blouse injunction because it would preclude them from using

certain combinations of stripes, dots, ruffles, and buttons.

186

More simply, if the court found in favor of Trovata on the Fife

178

Id. at 20. Some courts have found that if a product with a particular

trade dress becomes popular in a short period of time, it can be distinctive

through secondary meaning in a matter of months. See, e.g., Eliya Inc. v.

Kohl’s Dep’t Stores, 82 U.S.P.Q.2d 1088, 1094 (S.D.N.Y. 2006).

179

Trovata Summary Judgment Motion, supra note 143, at 12–13.

180

Id. at 14.

181

Id.

182

Id. at 15.

183

Id. at 6.

184

Defendant’s Answer to Plaintiff’s Complaint for Copyright

Infringement, Trade Dress Infringement, and Unfair Competition at 29,

Express, Inc. v. Forever 21, Inc., No. 09-CV-04514 (C.D. Cal. June 23,

2009) [hereinafter Defendants’ Answer to Express Complaint].

185

Id. at 10.

186

Id. at 9–10.

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920 JOURNAL OF LAW AND POLICY

S/S Voile Blouse trade dress, Forever 21 would be competitively

disadvantaged because it could not use those key elements that

are not attributable to Trovata’s reputation in the fashion

industry.

Second, Forever 21 argued that Trovata failed to

demonstrate secondary meaning evidence, such as domestic

advertising, domestic expenditures or sales figures concerning

the products at issue, to support an inference that the style or

style features achieved mark recognition.

187

Forever 21 argued

that the likelihood of consumer confusion is low because the

products at issue bear the Forever 21 trademarks and are

marketed only in Forever 21 retail stores or on their website.

188

Third, Forever 21 argued that Trovata customers are

unlikely to believe that products bearing Trovata’s trademarks

actually originate from Forever 21, particularly given the

considerable price difference.

189

Furthermore, Forever 21 pointed

out that the marketing channels used by Forever 21 and Trovata

are “unquestionably distinct”

190

because Forever 21’s products

are sold only in its retail stores and on its website while Trovata

sells its products in high-end department stores.

191

Lastly,

Forever 21 argued that Trovata’s customers are sophisticated

consumers

192

who are attentive to details such as location, price,

and labeling, and are therefore less likely to be confused as to

the sources of the products that they purchase.

193

On May 27, 2009, U.S. District Court Judge James V. Selna

announced a mistrial after two tumultuous years of litigation.

194

The eight-person jury was unable to reach a verdict as to

whether Forever 21 knowingly infringed on Trovata’s trade

187

Id. at 11–12.

188

Id. at 16.

189

Id. at 19.

190

Id. at 5.

191

Id.

192

Id.

193

Id.

194

Izzy Grinspan, Jury Hijinks Lead to Mistrial in Trovata vs Forever

21, R

ACKED, May 27, 2009, http://la.racked.com/archives/2009/05/27/

jury_hijinks_lead_to_mistrial_in_trovata_vs_forever_21.php.

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dresses.

195

In other words, at least half of the jury did not believe

that Forever 21 knowingly “knocked off” Trovata’s trade

dresses. Shortly after, the parties settled.

196

Although this is

certainly a loss for fashion designers seeking some form of

protection for their work, this is the furthest a design piracy case

has ever proceeded against Forever 21.

197

Nonetheless, it is unsurprising that trade dress failed in this

instance, even though the garments are indistinguishable. First

of all, trade dress is a confusing legal doctrine for juries to

grasp.

198

Second, the disputed articles of clothing, are relatively

unremarkable.

199

Third, Trovata is a relatively new player in the

fashion industry.

200

This case demonstrates how difficult it is for

a fashion designer to succeed on a trade dress claim.

IV. THE DPPA

Given the unlikelihood of using trade dress to protect fashion

designers against design piracy, Congress should pass the

Design Piracy Prohibition Act.

A. The History of the DPPA

On March 30, 2006, Representative Robert Goodlatte (VA)

introduced H.R. 5066,

201

commonly known as the DPPA, in the

House of Representatives.

202

The DPPA seeks to amend Title 17

195

Id.

196

Amy Odell, Trovata’s Suit Against Forever 21 Ultimately Has No

Effect on Knockoff Regulations, N.Y. M

AG., Oct. 13, 2009, http://nymag.

com/daily/fashion/2009/10/trovatas_suit_against_forever.html#ixzz0YkYYXx

9z.

197

Id.

198

See MCCARTHY, supra note 92.

199

In contrast, Jason Wu’s dress is a ball gown worn on national

television by a prominent figure in society. Salamone, supra note 4.

200

Trovata: Label Overview, supra note 159.

201

H.R. 5055, 109th Cong. (2d Sess. 2007). H.R. 5055 is substantively

identical to H.R. 2033. Adler, supra note 5, at 381, n.45.

202

Id. (as introduced to the H.R., Mar. 30, 2006).

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922 JOURNAL OF LAW AND POLICY

to extend copyright protection for fashion designs.

203

The bill

defines a “fashion design” as “the appearance as a whole of an

article of apparel, including its ornamentation.”

204

Additionally,

the bill defines an “article of apparel” as “an article of men’s,

women’s, or children’s clothing, including undergarments,

outerwear, gloves, footwear, and headgear, handbags, purses,

and tote bags, belts, and eyeglass frames.”

205

Under the Act, the

designer must register the fashion design within three months of

being made public.

206

The Act would grant a fashion design three

years copyright protection.

207

On July 27, 2006, the House held subcommittee hearings in

the House Subcommittee on the Courts, Internet and Intellectual

Property.

208

The hearing featured expert testimonies from

attorneys, designers, and industry experts attesting to the

benefits and dangers of extending copyright protection to fashion

design.

209

Ultimately, the bill was rejected.

210

B. The Act Revisited

On April 30, 2009, the 111th Congress reexamined the

203

Id.

204

Id. § 1(a)(2)(B).

205

Id.

206

Id. § 1(b)(3).

207

Id. § 1(c).

Proponents of the legislation have explained that the purpose of the

legislation is to protect designs of haute couture during the period of

time in which such high-end clothing is sold at premium prices of

thousands of dollars and to prevent others from marketing clothing

with those designs at substantially lower prices during that initial

period, thereby undercutting the market for a hot new fashion

design. Because the peak demand for such designs is relatively short-

lived, a 3-year term is considered adequate to satisfy the designer’s

reasonable expectation of exclusivity.

Hearing on H.R. 5055, supra note 12, at 210 (prepared statement of U.S.

208

Hearing on H.R. 5055, supra note 12.

209

Id.

210

H.R. 5055, supra note 12.

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DPPA.

211

H.R. 2196 defines a “fashion design” as “the

appearance as a whole of an article of apparel, including its

ornamentation; and []includes original elements of the article of

apparel or the original arrangement or placement of original or

non-original elements as incorporated in the overall appearance

of the article of apparel.”

212

The bill defines “apparel” as “an

article of men’s, women’s or children’s clothing, including

undergarments, outerwear, gloves, footwear, and headgear,

handbags, purses, wallets, duffel bags, suitcases, tote bags, and

belts, and eyeglass frames.”

213

Notably, the major distinction

between H.R. 5055 and H.R. 2196 is the refined definition of

fashion design. Under H.R. 2196, copyright protection is

extended to “original elements of the article of apparel or the

original arrangement or placement of original or non-original

elements as incorporated in the overall appearance of the article

of apparel.”

214

In other words, if H.R. 2196 is passed, fashion

designers would receive protection for a wider array of work

including the elements, placement and overall appearance of a

piece of clothing.

Currently, the bill is still pending in Congress.

215

The DPPA

should be passed because copyright protection is the most viable

solution to addressing design piracy. Furthermore, “it would

promote and protect our nation’s entrepreneurs by ensuring a

just and fair marketplace at home, and a level playing field

abroad.”

216

V. CONCLUSION

Fashion designers need some form of legal protection for

their work and trade dress is not the solution. Only an

established designer would have a viable trade dress argument

211

Design Piracy Prohibition Act, H.R. 2196, 111th Cong. (1st Sess.

2009).

212

Id. § 2(a)(2)(B).

213

Id.

214

Id.

215

Id.

216

Nadler Press Release, supra note 32.

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924 JOURNAL OF LAW AND POLICY

because of the difficult secondary meaning requirement for

product design trade dresses.

217

However, established designers

are not the ones that need protection from design piracy.

Instead, emerging young designers are the group of individuals

that need to be protected from being “knocked off” because they

do not have any legally protected trademarks to which they can

resort.

218

Furthermore, emerging designers are less likely to

succeed on trade dress “because they are relatively unknown and

their designs are unfamiliar to the public.”

219

Therefore, trade

dress does not provide adequate recourse for designers against

design piracy.

Congress should pass the DPPA instead of forcing fashion

designers to turn to alternative theories, like trade dress, to

protect their work against design piracy. While the purpose of

the American intellectual property scheme is to encourage and

reward individuals, the current regulatory policy for fashion

designs clearly fails to protect many designers from design

piracy. Until Congress adopts the DPPA, fashion designers must

fend for themselves while fast-fashion retailers profit at their

expense. The result is contradictory to the foundation of our

intellectual property regime and should be amended to ensure

the prosperity of the American fashion industry.

217

Scafidi, supra note 125.

218

Id.

219

Id.