Design Protection Bill Sent On for Senate Vote

by Morgan Lewis

[authors: Karen A. Butcher, Henry Z. Horbaczewski, and Jordana S. Rubel]

Bill allowing owners of innovative fashion designs to enforce their rights against "substantially identical" designs includes notice requirement and 21-day grace period.

On September 20, the Innovative Design Protection Act of 2012 (S. 3523) (IDPA) was reported favorably out of the Senate Judiciary Committee. IDPA is a successor to the Innovative Design Protection and Piracy Prevention Act of 2010 (S. 3728), a bill also introduced by Senator Charles Schumer (D-NY), which failed to advance. Now out of committee, the bill will be placed on the Senate's legislative calendar.

IDPA would provide three years of protection for fashion designs that "(i) are the result of a designer's own creative endeavor; and (ii) provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles." IDPA would protect designs for clothing, including undergarments, outerwear, gloves, footwear, and headgear; handbags, purses, wallets, tote bags, and belts; and eyeglass frames.

The owner of a protected design would be able to enforce its rights only with respect to a "substantially identical" design that is "so similar in appearance as to be likely to be mistaken for the protected design, and contains only those differences in construction or design which are merely trivial."

The principal changes from the 2010 bill consist of limitations on enforcement—a notice requirement and a 21-day grace period. In order to commence an enforcement action, the owner of a protected design is required to provide the alleged infringer with at least 21 days' written notice containing a description of the protected design, including an explanation of how it is unique compared to prior designs; a description of the allegedly infringing design and how it infringes upon the protected design; and the date on which the protected design was available such that it can be reasonably inferred that the alleged infringer saw or otherwise had knowledge of the protected design.

Once notified, the alleged infringer can avoid liability by curing the infringement before an action is commenced. Even if a cure is not effected, the owner of the protected design would only be able to recover damages that accrue after the infringement action is commenced.

While the revised bill is designed to provide narrow protection for the creative efforts of designers who make innovative contributions to their fields, the bill has significant opposition from manufacturers and retailers. The objections of the bill's opponents include that the bill will make it more difficult and more costly to manufacture and sell fashionable clothing to average consumers.

The bill's restrictions on enforcement actions would reduce the monetary damages available to design owners in comparison to the prior bill. That said, manufacturers and retailers may face additional costs and litigation exposure under the current version. Ultimately, both manufacturers and retailers may be forced to decide whether to pull inventory during the 21-day notice period to avoid being embroiled in litigation.

The companion House bill (H.R. 2511, the Innovative Design Protection and Piracy Prevention Act) was referred to the House Subcommittee on Intellectual Property, Competition, and the Internet in the summer of 2011, but the Subcommittee has taken no action to advance the legislation. Both Houses of Congress have adjourned until after the November elections, so no further action can occur on either S. 3523 or H.R. 2511. However, Congress will return for a so-called "lame duck" session following the election. While both manufacturers and retailers have opposed this legislation in the past, lame-duck sessions can be unpredictable and consequently both bills bear tracking and consideration by those in the fashion industry who are concerned about how the bills may impact their businesses.

The full text of the bill can be found here.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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