A DISCUSSION OF LAW AND JOURNALISM

Stella Got One, Every Designer Wants One

Stella McCartney

By Nicole Rowlands

New York City’s Fashion Week just ended and, headlines notwithstanding, the biggest topic this season may not be the buzz surrounding last week’s Oscar de la Renta Fashion Show.

The newest, wildest, item sashaying down the runway? A design patent.

Just weeks before Fashion Week began Stella McCartney was granted a design patent for a bestselling Lucia mesh polka dot dress from her Fall 2012 collection.

Can any fashion designer now claim a patent and thereby protect her brand from copycats?  Will Zara have to go out of business?

LASIS explains why Stella got so much good press for her patent, and why having a design patent may sound cool, but could prove not to be all that helpful.

A utility patent protects the way a product is used and works (for example, a machine or method of production). A design patent protects the way a useful product looks and requires that the patented article be “new, original, and ornamental.”

Rights like trademarks and copyrights have traditionally been granted for limited fashion products (UGG Boots, Rolex watches, and Louis Vuitton handbags and accessories), but most designers have not been successful in patenting articles of clothing.

True Religion Brand Jeans successfully overcame the obstacles to obtain a design patent in July 2007. The company filed a patent in which it claimed protection for, “the ornamental stich pattern applied to pants.” The stitch on the pants met the design patent requirements.

Having a design patent doesn’t mean that a designer won’t have to fight to protect her design. In 2008 Katherine Plew, a Long Island paralegal, sued Victoria’s Secret over the company’s “Very Sexy 100-Way Strapless Convertible Bra.” Ms. Plew alleged that the bra was her intellectual property and that she had a registered design patent to prove it. Victoria’s Secret fought back but the court denied Victoria’s Secret’s Motion for Summary Judgment. It recognized that even though the loops on the two bras were not placed in exactly the same locations, the result of arranging the straps was effectively the same. And a reasonable juror might find that the structures of the bras are equivalent, thus proving Victoria’s Secret infringed. The case was settled for an undisclosed amount right before trial. Probably because Victoria’s Secret didn’t have a shot at a win, and had the money to settle.

More recently, in August 2012, LuLu Lemon brought Calvin Klein to court and claimed that Calvin Klein was selling a pair of yoga pants that “have infringed and are still infringing” on three of the yoga line’s patents. The three design patents covered the “Astro Style” yoga pant – one for the waistband, and the other two for specific styles of the pant. The two companies settled in November (terms of the settlement were kept confidential), but my guess is that LuLu Lemon had a pretty good shot at winning this battle in court. The waistband of the yoga pants are no less “ornamental” to the design of the pant than the stitching on True Religion jeans.

In Stella McCartney’s case, an Oklahoma University College of Law professor claims: “The dotted portion of the dress (including the dots themselves) are claimed; the rest is not. So, if someone else made a dress with the same dotted portions, Stella McCartney could claim infringement—no matter what the rest of the dress looked like. It could be patterned, cut-out, have some crazy kick-pleat, etc.”  Sounds like a pretty strong patent.

“But”, the professor continues, “to be clearly infringing, the dotted portions would have to have be in the same shape and have the same pattern. If someone used huge polka dots, stripes, etc. in that same configuration, he would have a good non-infringement argument. So, this patent is actually pretty narrow.”

Design patents are difficult to obtain and even the celebrated patented dress by Ms. McCartney offers rather slim protection. The process for patenting is timely and expensive, too. Ms. McCartney filed for a patent in November 2011 and the patent wasn’t approved for a full year.

So you’d need both the money and a design that will be relevant a year or so after filing for a patent — because of the economy and the lightning-quick changes in fashion trends, these are, today, not easy to come by.

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