While design patents have protected products that are both functional and decorative for over a hundred years, there is a persistent and incorrect belief that they cannot protect fashion designs.
Design patents protect any innovative three-dimensional product that is not entirely functional: automobile fenders, hats, gloves, containers, tires, and yes, clothing. A design patent gives the owner the right to prevent copying of the patented design for 14 years. It covers any design that could be confused with the patented design, not just exact copies. Any product that a knowledgeable person would confuse with that depicted in the design patent cannot be made, used, sold or offered for sale in the U.S. by others while the patent is valid and enforceable. And although images alone cannot be protected with a design patent, articles bearing that image can. Thus, a simple tee shirt (or computer screen) with a novel and unobvious image is covered under a design patent, as is a designer dress that includes known elements arranged in a new and innovative way.
Based on recent reports, it is clear that the concepts of "novelty" and "unobviousness," both critical terms in design patent law, are not well understood.
Clothing designs "cannot be patented because the elements are not novel" is one such assertion. Using that reasoning, Michelangelo's David was never "novel," just an arrangement of known elements. For a patent, the elements need not be novel. But their combination or arrangement must be. Most patents, whether they are directed to technology or designs, protect new combinations of known elements. The combination of copper and tin has been known since the Bronze Age, yet patents issue with those elements in new and unobvious forms.
Similarly, some say clothing designs are not patentable because the elements are not "unobvious." Again, even if the individual elements of a clothing design are obvious, their combination may not be. To assert that nothing new or unique can be created from existing fabrics, colors, textures, shapes, and decoration trivializes the design process. A designer literally has millions of elements and combinations that can be used. Some combinations may be pleasing, some may be old, and some obvious. But to assert that no novel or unobvious designs can be created from millions of elements because those elements are old is like asserting the patent office should be closed because everything has been invented.
"Design patents are too expensive and they take too long to obtain" is another myth. While it may be prohibitively expensive to get a design patent on every item in a large product line, about $6,000 is not too much to protect an important design against copying. Design patents issue about a year after filing and, with some planning and additional fees, they can issue within months. In more than 90 percent of design patent applications the administrative review is primarily directed to the form of the graphics, to ensure that they are clear, complete and consistent. Rarely does that review focus on the relationship of the design to other existing designs, i.e. the issues of novelty and unobviousness.
Another myth: "Design patents are easily avoided." Ask Samsung if the Apple iPhone design patents were easily avoided. Certainly, some cases hold design patents invalid or not infringed. But in many other cases, the infringer either took a license, stopped production, or redesigned the product rather than litigate. In addition, knowledgeable and prudent manufacturers assess the risk of litigation before introducing a new product by considering existing patents related to their new product. Where such an assessment results in a private decision not to copy a patented design, and avoid the risk of design patent litigation, the existence of the patent alone has stopped infringement, without any action by its owner besides obtaining the patent.
Enough of the myths: how you can protect clothing designs
There are problems with protecting clothing designs, but they are not difficult to overcome.
One of the elements of a design is its proportions. A size 2 dress has different proportions than a size 14 dress of the same design. One way to address that is to direct the patent to the combination of elements that make the design distinctive, not to the entire dress design, which would include the size relationships of the elements. In the current Lululemon v. Calvin Klein litigation, that is exactly what the Lululemon patents cover: the distinctive waist detail.
If color is an important part of the design, it can be one element of the patented design, as can texture, surface finish, opaqueness, and any other visual effect. The patent can be directed to the basic design concept, not the exact product the designer sells. Or each can be covered in separate patents.
By patenting key designs and important parts of clothing designs, and enforcing them against the most egregious copyists, a designer can develop a reputation of intolerance to copying. When deciding whose clothing designs to knock off, knowledgeable and prudent competitors seeking to avoid the expense of controversy and litigation, will more likely copy the unprotected designs of others.
Design patents can be mere prizes - decorative wall hangings memorializing new designs - or they can be significant market barriers that inhibit copying. Designers that use the patent system as it is intended to protect innovative designs can induce competitors to either copy the clothing designs of others who believe the myths set out above, or design a new product. In either event, designers who use the patent system have protected their designs and gained a distinct market advantage.
Stephen Peterson is partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
Editor's Note: Lululemon withdrew its high-profile lawsuit against Calvin Klein, which alleged infringement of its distinctive yoga-pant waistband detail, and the two brands agreed to a confidential settlement in late November.