Under current law, fashion designs and patterns are not protected from infringement by the Copyright Act. Instead, they are considered “useful designs” that are beyond the scope of the current Act. Recent legislation proposed in the House, however, seeks to change this by amending Chapter 13 of the Copyright Act and extend copyright protection for limited purposes and a limited term. Design Piracy Prohibition Act, H.R. 2196, 111th Congr. (proposed April 30, 2009).
Provisions of H.R. 2196
H.R. 2196 was proposed by Rep. William D. Delahunt (D-MA), and co-sponsored by 23 other members of the House. It proposes to amend 17 U.S.C. § 1301 (and following), and to extend limited protection to all clothing, including “undergarments, outerwear, gloves, footwear and headgear” as well as various accessories and luggage (namely “handbags, purses, wallets, duffel bags, suitcases, tote bags and belts”) and frames for eyeglasses. H.R. 2196 § 2(a)(2)(B).
Rather than providing blanket copyright protection as you might find for an original literary work (e.g., a book), this bill proposes that copyright protection would only last for three years beginning on the date of publication of the registration or the date on which the design is first made public, whichever is earlier. Id. § 2(d); 17 U.S.C. § 1304 (determining when protection begins). The bill defines an “infringing article” as one for which “the design . . . has been copied from a design protected under this chapter, or from an image thereof, without the consent of the owner of the protected design.” H.R. 2196 § 2(e). Importantly, however, the bill excludes the following from this definition: “an illustration or picture of a protected design in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture or similar medium.” Id. 2(e)(2). Presumably, these “copies” are permitted, at the least, for advertising or marketing purposes.
There is also a carve-out for designs that are independently created, reflect a “trend” or if they are “not closely and substantially similar in overall visual appearance to a protected design.” Id. A “trend” is further defined as “a newly popular concept, idea or principle expressed in, or as part of, a wide variety of designs of articles of appear that create an immediate amplified demand for articles of apparel embodying that concept, idea or principle.” Id. § 2(a)(2)(B).
Unlike other provisions in the Copyright Act, in order to obtain copyright protection for fashion designs, this bill requires an owner to apply for registration within six (6) months of making the design available to the public either in the U.S. or another country. Id. § 2(f)(1). Failure to apply for registration within that narrow window of time will eliminate the designer’s ability to sue under copyright law relating to copies of that specific design. Id.
The bill also anticipates that the Copyright Office would provide free public access to a database cataloging all of the fashion designs that have been registered under this provision. Id. § 2 (j); id. § 2(j)(a)(3). In order for this to be effective, owners must provide a “brief description of the design for purposes of matching the search criteria of the searchable database . . . [but this description] shall in no way limit the protection granted to the design or the subject matter of the registration.” Id. § (f)(3). The database will also contain a “substantially complete visual representation of all fashion designs submitted for registration under this chapter” as well as certain objective information. Id. § 2(j).
This bill also increase certain penalties for filing for protection inappropriately, so that the current statute would be revised to read: “Whoever knowingly makes a false representation materially affecting the rights obtainable under this chapter for the purpose of obtaining registration of a design under this chapter shall pay a penalty of not less than $5,000 [current amount is $500] and not more than $10,000 [current amount is $1,000], and any rights or privileges that individual may have in the design under this chapter shall be forfeited.” Id. § 2(h); see also 17 U.S.C. § 1327 (emphasis added).
If enacted, this bill would have immediate effect. Id. § 3.
In 2006, the Copyright Office presented a written statement to the House Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary, explaining why the limitations proposed in the then-current bill (H.R. 5055, 109th Congr., 2d Sess., introduced March 30, 2006) might be acceptable. Statement, July 27, 2006. (“The Office believes that if Congress concludes that fashion design protection legislation should be enacted, H.R. 5055 provides a sound basis for balancing competing interests.”). For instance, the Copyright Office applauded the 3-year limitation to protection proposed by the bill:
“Because the peak demand for such [high-fashion] designs is relatively short-lived, a 3-year term is considered adequate to satisfy the designer’s reasonable expectation of exclusivity. . . . The Office applauds the proponents of fashion design legislation for seeking a modest term of protection that appears to be calibrated to address the period of time during which fashion designs are most at risk of being infringed and during which fashion designers are most likely be harmed by the sale of infringing goods. The Office would find it difficult to support fashion design legislation that offered such protection for the 10-year term enjoyed by vessel hull designs, but considers the 3-year term to be reasonable, assuming that the proponents of the legislation are able to make the case for protection.” Id.
The Statement outlines in detail prior proposals seeking protection for fashion and industrial designs, dating back to 1914. Id. Hearings were held about H.R. 5055 on July 27, 2006, but the bill was not enacted before the end of the session.
Current Status of H.R. 2196
Upon introduction on April 30, 2009, the bill was referred to the House Committee on the Judiciary.