The Laws that Afford Fashion Designers Protection-Part 1: The Introduction

This is the start of a series on the various types of law that fashion designers have to protect their work/designs. This first post will be a brief overview of what legal protections are currently available and the required legal standards. I will briefly introduce trademark, patent and copyright as the major sources of law that governs the fashion world.


Trademark protection is what many designers will use to protect a word, symbol or phrase used to identify their merchandise. Courts have even extended, in some circumstances, protection beyond the word/symbol/phrase to that of aspects of a product, such as color. This is more commonly known as trade dress. So for example, Christian Louboutin is known for their red soles on the bottom of their shoes/heels and has recently acquired trademark protection for that aspect.

clHowever, trademark law only protects a designer’s mark from infringement if another company were to create a similar mark. The similarity would have to cause a likelihood of consumer confusion. Further, in order to bring an infringement suit, the designer would have to claim a valid common law right by being the first to use in commerce, or would have to be the first to register their mark with the U.S. Patent and Trademark Office. Many designers face the issue of their designs being replicated, but trademark law would not cover this area. However, trademark law does assist with one major area, counterfeiting. The problem with counterfeiting litigation is ensuring that counterfeit production and sales actually cease. Its not to say a victory is not possible, but a fashion designer or house seeking protection needs to be able to name the company sending the shipments of counterfeit goods to be most effective.

Another major area of law that affords some protection to fashion designers is that of patent, more specifically design patents. A design patent protects the way a useful product looks, but does require that the article be “new, original and ornamental.” The legal standard is not an easy one to meet or else every designer could acquire one. There is also the issue of the timing involved in acquiring a patent as it could take up to a year or more. Fashion is all about what is in demand or trendy for a given season, so a designer would have to ask about the longevity of a given design and is the cost and time worth it? There is also an issue of actively protecting what has been patented. A court would have to find similarity in the product allegedly infringing a patented design. All in all, a design patent can be quite difficult to acquire and is not an automatic guarantee of protection depending on the scope of the issued patent.

Stella McCartney's recent design patent on this sheered cut-out polka dot dress

Stella McCartney‘s recent design patent on this sheered cut-out polka dot dress

Finally, there is the area of copyright law. Currently, copyright law does not afford the best protection for designers to disallow others to replicate their designs. There are 2 main reasons for this. One, is that copyright law requires originality; with fashion, it is difficult to create a design that is sufficiently original to prevent others from creating one that is strikingly similar. Generally in fashion, one is being derivative of a concept or design that has come before. The second copyright limitation is that a design would fall under the copyright category of a pictorial, graphic or sculptural work. Copyright protection is only granted for this area when a design incorporates features that can be identified separately from and are capable of existing independently from the utilitarian aspects of the article. Generally, when courts analyze cases involving copyright over clothing, its found that the garments are utilitarian by covering a wearer’s body. If however, the design can exist separately and does not lend to the utilitarian aspect of clothing then a grant of copyright protection is possible.

Recent accusation of Alice & Olivia (on right) copying design of Vena Cava (left)-likely would not qualify as copyright infringement

Recent accusation of Alice & Olivia (on right) copying design of Vena Cava (left)-likely would not qualify as copyright infringement

Successful copyright infringement for L.A. Printex (on right) against Aeropostale (on left)

Successful copyright infringement for L.A. Printex (on right) against Aeropostale (on left)

Just as in other areas, a designer would have to take necessary actions in order to protect their copyrighted works. Generally, making sure the work has been registered with the Copyright Office is of the utmost important. If there is a claim of infringement, then upon any cease and desist letters not working, legal action would have to be pursued.

There are a lot of possibilities that have been discussed for how fashion designers and the like can protect themselves and their work. My final piece in this series is to find out what current designers in the industry feel about the laws-are they sufficient, what more could be offered, or how would they like to see a law written to best protect their hard work? I am going to be reaching out to attain and analyze these responses, but in the meantime I will address each of these areas a bit more depth by looking at recent cases and discussing the application of the law and any issues that remain. So keep an eye out for the next piece in this series and that will be on trademark law!

From Bryant Park to Lincoln Center-Will Mercedes Benz Fashion Week (“MBFW”) Have to Move Again?

mbfwIn September 2010, MBFW was hosted in Damrosch Park, at the Lincoln Center for the Performing Arts, for the first time. This came from increasing pressure at the time from Bryant Park Management to relocate. It may be that in the near future another move could occur.

About a month ago, NYC Parks Advocates, the Committee for Environmentally Sound Development and Damrosch family members filed a lawsuit. The suit is against NYC and Lincoln Center. The claim alleges illegal usage of public land for private purposes for a significant about of time during a 12-month calendar year, more specifically 10 out of 12 months. The 10 months is comprised of events such as MBFW (twice a year) and the Big Apple Circus.

Damrosch Park

Damrosch Park

Further, there is a claim that approximately $32 million of Damrosch Park revenue is being diverted to Lincoln Center instead of going to public parks.  The complaint cites to the NY State Public Trust Doctrine for its basis, which cites that “legislative approval is required for the alienation of or change in parkland usage.” Also, as a part of this claim, is a demand that a license agreement between the city’s park department and Lincoln Center be terminated, and that any concession revenue be paid to the city’s general fund. (From NY Times)

From NY Press, Kate Ahlers, of the NYC Law Department commented that “Fashion Week is an important part of the City’s cultural and economic fabric, generating $865 million each year while also creating fashion-related jobs…..And Lincoln Center maintains a close relationship with the City, presenting hundreds of free events each year.”

I did reach out to Lincoln Center, which declined to make any official comment at this time. This is just the start of this lawsuit and it is one I plan to track and post about upon new updates. At this time, I do not see any likelihood that fashion week, for the Fall of 2013, would be affected, unless some quick movement can be made with a motion and then an issuance of an injunction. However, formal suit has yet to be served upon the co-defendants, which means there answer has also not been filed. Being that June is almost over and fashion week starts in September, the timeline would have to pick up quite a bit of speed.

Lincoln Center

Lincoln Center


The Kardashians’ Cosmetic Battle Updates: Chroma v Khroma v Kroma

The standard for trademark infringement is consumer confusion, so you be the judge?

Chroma-Makeup-Studio-black2-e1351694269693-150x150                                  kromamakeup1

The Kardashians launched a cosmetic brand, KHROMA, in November 2012. Almost immediately, two legal actions were commenced and are still ongoing. There are a lot of details involved with both of these cases, which can be further read about by clicking here.

The first lawsuit was commenced by CHROMA, a Beverly Hills make-up studio, and was for trademark infringement due to the likelihood of consumer confusion in the marketplace. The suit is actually against Boldface, which is the licensing and branding company that holds the rights to the Kardashians’ names and likenesses. CHROMA made a motion for a preliminary injunction soon after commencement. The district court denied this motion and held that significant harm to Boldface tips the balance of equities against issuing an injunction. A trial date has been set for April 22, 2014.

The second lawsuit was commenced by the Kardashians, who filed for declaratory judgment that the use of KHROMA did not infringe the trademark rights of the cosmetic line KROMA, owned by Lee Tillett. Tillett then filed a counterclaim for trademark infringement alleging that Boldface’s intentional conduct, with using KHROMA, has caused actual confusion in the marketplace. Tillett also filed for a preliminary injunction, which was granted. However, Boldface filed for a stay on the injunction so this has not taken place and will not until a final decision is made. There has been no final decision, but a trial date has been set for April 22, 2014.

A recent update for these cases is that various media outlets, LA Times, Huffington Post, Daily Mail, etc, have reported that the brand name was being changed to KARDASHIAN BEAUTY. I contacted all of the parties, and Chroma and Boldface declined to make any comment at this time. However, Kroma Makeup made the following statement:

“Ms.Tillett is unaware of any name change having taken place. If reports prove to be true, she will be relieved to return her focus to her business, Kroma Makeup, the company she created 12 years ago. As a small business owner, this issue has been challenging. Ending the market confusion created by the Kardashian-sponsored Khroma brand will allow Ms. Tillett to move forward.”

I then visited the USPTO website to find that on May 6, 2013, a new trademark application was filed for KARDASHIAN BEAUTY. However, it is not certain how this change will impact the ongoing lawsuits. The fact that the mark is being changed does not mean the lawsuits just vanish.


My personal thoughts on this matter are that the legal team for Boldface and the Kardashians should have been more effective with their role in counseling their clients. The media and general public might point the finger at the Kardashians, but I would point it more towards the attorneys. It was evident that legal action was likely to ensue. The client’s best interest would have been to use a different mark and avoid costly litigation. While Boldface and the Kardashians wanted to maintain their initial investments, I am certain that the costs and time exhausted to date far outweigh what the costs would have been to go ahead and change the mark last year. As it stands now, allegedly the mark is being changed, but costs are still unknown as legal expenses will continue, and damages or settlements still might occur.

All in all, it just seems like a long road to continue to use KHROMA, all to end up changing it anyways. Poor business decisions and the like could be blamed, but one can’t ignore ineffective or questionable legal counsel as well.