By Jennifer Carter, Web Editor
Designers are fighting an increasing number of battles against copyright, trademark, and patent infringers both in-store and online, while also revolutionizing their battle tactics to respond to a new wave of invasions by knock-off manufacturers. In recent years, the United States Supreme Court, the World Intellectual Property Organization (WIPO), and the United Kingdom High Court of Justice have each hosted skirmishes from which fashion designers emerged victorious.
The most notable recent case in the United States, Star Athletica v. Varsity Brands, expanded the protection that designers possess under U.S. copyright law. Designers have struggled to obtain protection for their copyrights because pieces of clothing are generally seen as “useful articles,” which are excluded from copyright protection. The basis behind the refusal to copyright a useful article like an item of clothing is that the utilitarian function of a shirt, for example, precludes allowing production of such a shirt by just one copyright holder. Copyright protection does exist, however, for a creative and unique design that is printed on such a shirt.
The Star Athletica decision clarifies that a feature or design element of a useful article can be afforded copyright protection if the feature is separable from the article. The Court established a two-part test to determine separability of a feature that requires two conditions be met: “1) [the feature] can be perceived as a two- or three- dimensional work of art separate from the useful article and 2) [it] would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.” This decision provided a new style of ammunition for designers to use against knock-off manufacturers in copyright cases.
Mimicking the frontal attack launched by Star Athletica, athletic apparel giant Puma filed suit against fast-fashion retailer Forever 21 claiming infringement upon its copyrighted slide sandals and two other designs of shoes, created for Puma’s Fenty line by celebrity Rihanna. Puma used the test established in Star Athletica in its initial complaint, alleging that the Fenty designs passed muster under this recently articulated separability test. Ultimately, the copyright infringement claim was dismissed under stipulation, so the Star Athletica test remains to be discussed in an opinion.
Contemporaneously, designers declared war on the electronic battlefield in the Richemont Internet Cases and Fendi’s case against a knock-off website grouping. These cases test the important defenses designers have created in response to an increasingly wireless marketplace.
The Richemont cases targeted internet service providers (ISPs) hosting domains selling knock-off Cartier, Chloé, Montblanc, Van Cleef & Arpels, and Piaget branded watches and other jewelry items. The owner company, Compagnie Financière Richemont, successfully obtained judgments against the ISP to shut down access to five websites selling imposter goods, marking the first time a design house has done so in London courts.
Additionally, Fendi defended its brand’s honor in the 2018 court battle against a grouping of imposter websites selling fake handbags registered with the ISP GoDaddy.com. Fendi brought its claim in federal court because Fendi, an Italian company, brought suit against United States-based defendants. However, the case was ultimately heard at the WIPO Arbitration and Mediation Center. WIPO is an international organization that offers mediation as an alternative dispute resolution method for technical intellectual property disputes that parties may opt to engage in while the parties’ case is pending in national courts of various countries. Fendi was ultimately successful in its action because it was able to show
- “the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interest in respect of the disputed domain names; and
- the disputed domain names have been registered and are being used in bad faith.”
Regulation of online knock-off retailers is a battle of attrition for designers because as soon as five websites are shut down, a defendant imposter manufacturer can create a new website almost instantly. While the ease of access to information online has the potential to exponentially increase legitimate sales in a way that brick-and-mortar stores could never accomplish, it also opens doors for cyber-squatters to ramp up sales of their imposter goods as well. Another untested tactic is to order ISPs to prevent the flow of payment to knock-off websites.
The outcome of these legal confrontations bolstered the arsenal of precedent in designers’ favor. While skirmishes like Puma’s occur in brick-and-mortar stores, designers must seek legal recourse to online imposter sales in new-fashioned ways to spurn the overwhelming increase in website shopping traffic. Star Athletica was a move in the right direction to afford designers appropriate protection in the United States; however, it has yet to be seen how courts will utilize the separability test.
Outside of the United States, designers have begun to fend off the copyright, trademark, and patent invaders in UK courts and through international arbitration, as in Fendi. It remains clear that the battle continues to rage in physical retail shops where illegitimate goods are sold, and an additional fight has exploded in the realm of the internet. As these intellectual property invaders find new ways to undermine protected design, fashion industry giants must evolve with them to obtain precedential protection and recourse on a global scale.
 Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).
 See 17 U.S.C. § 101.
 Harshini Tippareddy, Rights in the Fashion Industry, Chi.-Kent J. Intell. Prop. (March 26, 2017), http://studentorgs.kentlaw.iit.edu/ckjip/intellectual-property-rights-fashion-industry/.
 17 U.S.C. § 101.
 Star Athletica, 137 S. Ct. at 1016.
 Puma SE v. Forever 21, Inc., 2017 WL 1193694 (C.D.Cal. March 31, 2017).
 Puma SE v. Forever 21, Inc., 2018 WL 4352338 (C.D.Cal. Aug. 22, 2018).
 The Fashion Law, 5 Lawsuits that Stand to Impact the Fashion Industry, TheFashionLaw.com (Sept. 8, 2017), http://www.thefashionlaw.com/home/5-lawsuits-that-stand-to-impact-the-fashion-industry.
 Id.; Richemont, About Richemont, Richemont.com, https://www.richemont.com (last visited Dec. 1, 2018).
 The Fashion Law, supra note 10.
 Fendi S.R.L. v. Mou Zeghloul, et. al., 2018 WL 3105671.
 World Intell. Prop. Org., Referring Intellectual Property and Technology Court Cases to WIPO ADR, WIPO.int, http://www.wipo.int/amc/en/clauses/national_court.html (last visited Dec. 1, 2018).
 Mou Zeghloul at 4.