By Tony Dutra
The U.S. Senate's latest attempt to extend intellectual property protection to fashion design includes provisions requiring the designer to provide notice to alleged infringers prior to initiating enforcement proceedings.
S. 3523, the Innovative Design Protection Act of 2012, introduced into the Senate Sept. 10 by Sen. Charles E. Schumer (D-N.Y.), also contains a section exempting internet service providers and search tools from infringement liability.
As “Fashion Week” in New York and elsewhere wound now, a scheduled Sept. 13 markup in the Senate Judiciary Committee was postponed.
Fashion design protection has been debated in Congress since 2006.
In general, the bills have aimed to revise design protection under the Copyright Act, in 17 U.S.C. 1301 et seq., by creating a three-year term of protection for original articles of apparel. “Substantially identical” articles of apparel--“so similar in appearance as to be likely to be mistaken for the protected design, and contain[ing] only those differences in construction or design which are merely trivial”--would be liable for infringement.
In the last Congress, the Senate Judiciary Committee approved such a bill, S. 3728, unanimously (230 PTD, 12/2/10), but the Senate did not consider the bill in its lame-duck session. A House version of the measure was introduced in 2009 but it was not considered.
The House went first in the current Congress. H.R. 2511, the Innovation Design Protection and Piracy Prevention Act, was introduced July 13, 2011, by Rep. Robert W. Goodlatte (R-Va.), who had been a sponsor of the earliest bill. Representatives of both the fashion design industry and the retail industry testified two days later before the House Judiciary Committee's subcommittee for IP issues and expressed support for this latest effort (138 PTD, 7/19/11).
However, some participants in a March 29 American Bar Association panel discussion said that such protection is unnecessary and undesirable (67 PTD, 4/9/12).
Today, for the most part, fashion designers rely on trademark protection and anticounterfeiting law to enforce their rights. Designers can obtain a design patent on some fashion designs, but given the life cycle of a typical design and the time it takes to receive a patent, such protection is of limited if any value.
Nevertheless, even creative designers speaking at the ABA session expressed concern that the “substantially similar” standard in the proposed bills would be difficult to enforce.
S. 3523 does not address that issue, but, as with each successive bill since 2006, it seeks to eliminate fashion community concerns about the potential overreach of the legislation.
The bill would add subsection (d) to 17 U.S.C. §1306 requiring that “the owner of the design shall provide written notice of the design protection to any person the design owner has reason to believe has violated or will violate this chapter.”
The designer would then have to wait 21 days to initiate an infringement action, and damages and profits would be confined to infringement beginning on the date the action is filed.
A newly inserted Section 1309(e)--borrowing definitions in the Communications Decency Act--would then exempt from infringement liability certain “acts of third parties”:
“(1) the provision of a telecommunications service, or of an Internet access service or Internet information location tool (as those terms are defined in section 231 the Communications Act of 1934 (47 U.S.C. 231); or
“(2) the transmission, storage, retrieval, hosting, formatting, or translation (or any combination thereof) of a communication, without selection or alteration of the content of the communication, except that deletion of a particular communication or material made by another person in a manner consistent with section 230(c) of the Communications Act of 1934 (47 U.S.C. 230(c)).”
S. 3523 at http://pub.bna.com/ptcj/S3523intro12Sep10.pdf
H.R. 2511 at http://pub.bna.com/ptcj/HR2511Jul15.pdf
Comparison at http://pub.bna.com/ptcj/HR2511vS3523_12Sep10.pdf