Monday, September 11, 2006

P for ....

Those following the debate over the proposed amendment to the Copyright Act to create a three year right to exclude for fashion may be reminded of the 1941 Supreme Court decision in Fashion Originators Guild v FTC.  In that the case, the Court upheld a decision by the FTC to enjoin practices in the fashion industry that amounted to self-regulation and "private copyright."   Members of the industry had set up a private system of adjudication that allowed manufacturers of fashion to go after retailers caught selling knock-offs and counterfeits.  The Supreme Court upheld the FTC finding that this practice was anti-competitive.

It should not be surprising that we see this move again, but this time in the Congressional arena.  The proposed bill would parallel provisions of the Copyright Act that protect boat hull design to create copyright protection for fashion design.  Interestingly,  that boat hull provisions were partially a response to the Supreme Court decision in Bonito Boats v. Thundercraft, in which the Court held that Florida legislation that prohibited certain means of copying boat hull designs was preempted by the Copyright Act.  In its Bonito Boats decision, the Supreme Court famously stated that intellectual property was an exception to the norm of competition.

There is an argument for the amendment of course, made well by Professor Scafidi in various parts of her blog.   After all, if the boating industry gets protection, why not fashion.  (Currently boat hulls get 10 years of protection, more than triple the three years proposed for fashion.)  Furthermore, the Supreme Court has made a royal mess of trademark protection for trade dress, perhaps the better place for this sort of subject matter.   In its 2000 decision in Wal-Mart v. Samara, the Court did address trademark protection for clothing design (at least the patterns imprinted on clothing) and said it can get protected if it has secondary meaning but secondary meaning need not be shown if it is packaging and not configuation.  Okay, the bad sentence construction is mine, but it is meant to convey the confusion from that case. 

But there is a case that competition should just play its course.  The case is made by Professors Raustila and Sprigman in a forthcoming Virginia Law Review article.   Today's Wall Street Journal cirtes the article and seems to concur that protection, even if only for three years, will upset the dynamic of the marketplace and process of innovation that has shaped the industry for over one hundred years.  Recall the famous property chestnut Doris v Cheney Brothers in which the Second Circuit through an opinion written  by Learned Hand rejected a misappropriation claim brought in fact pattern similar to what is being complained about today.   With all the concern made over piracy, we need to be equally concerned with the other "p," for protection.

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Thanks for the props, Shubha. As you know, one of the most interesting things to me about the pending legislation is that it proposes exactly the sort of limited, short-term protection (a small "p," perhaps?) that fellow IP profs have been suggesting as ideal for years -- not true copyright.

And BTW, the Cheney Bros. case doesn't deal with clothing designs but with printed textiles (silks, to be exact) -- a category which *is* now protected by copyright. Essentially the Copyright Office and courts quietly realized that protecting prints on paper isn't really distinguishable from protecting prints on fabric.

Of course, from an academic perspective the best effect of the bill is that it has drawn the attention of fine IP minds like your own to the issue. You might also be interested in longtime Wall Street Journal fashion writer Teri Agin's own views on knockoffs and the difficulties that they pose for creative African-American designeres and other newcomers to the business (on the Black America Web, linked on Counterfeit Chic).

Posted by: Susan Scafidi | Sep 11, 2006 9:29:12 AM

Susan is absolutely right that printed textiles are protected under copyright. The Cheney Brothers case arose in a context where the delays of meeting copyright formalities and dynamics of the industry did not make copyright protection practically available, even though theoretically possible. Hence, the plaintiffs' appeal to misappropriation, which Judge Hand denied. I should also point out that Wal Mart v Samara Brothers also had to do with printed textiles, but the Court does talk about the issue as one of design.

These clarifications aside, I think the problems the fashion industry has had in obtaining protection stems from a reluctance by courts and the legislatures to intervene in a competitive process that seems to be working well within its own rules.

Susan's comments about African-American designers and other newcomers are well taken. As I have started to argue in some articles, and others have already made the case, there may be a distributive or even corrective justice argument for intellectual property protection. But the law does not distinguish entrants from incumbents or minority voices from the establish majority. So even if there is a case for structuring intellectual property laws for the ends of distributive or corrective justice (and I think there certainly is), the proposed legislation works against that case.

Posted by: Shubha Ghosh | Sep 11, 2006 10:49:46 AM

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