GUEST POST: "Is the IDPA a Trojan Horse?" by Sarah Burstein (Associate Professor, University of Oklahoma College of Law)

Posted by Sarah Burstein

I’d like to thank Chuck [Ed. who has added some hyperlinks to this post, and, incidentally, wants to thank our esteemed guest in return] for inviting me to comment on S. 3523,  the Innovative Design Protection Act of 2012 (“IDPA”).  The IDPA is the latest in a string of recent attempts to amend Title 17 of the U.S. Code to provide greater protection for fashion designs. (For LOF's coverage of the last attempt, see here, here and here).


The IDPA would amend the Vessel Hull Design Protection Act (“VHDPA”) (Pub. L. No. 105-304, codified at 17 U.S.C. § 1301 et seq.).  Specifically, the IDPA would allow designers of certain designs for “article[s] of apparel” to prevent copying of those designs for three years.


Frankly, I have a lot of concerns about the IDPA.  But the worst part of the IDPA might be what it doesn’t change in the VHDPA—namely, the VHDPA’s express preservation of overlapping trademark claims.


The VHDPA provides that:  “Nothing in this chapter shall annul or limit . . . any right under the trademark laws or any right protected against unfair competition.” 17 U.S.C. § 1330(2).  Nothing in the IDPA changes this provision.  And, of course, “the trademark laws” of the United States allow a plaintiff to claim that a product design constitutes protectable “trade dress”i.e., that the product design itself is acting as (and, therefore, should be protected as) a trademark. Thus, the IDPA would allow a designer to claim both IDPA protection and trade dress rights in the exact same design.


Why is this a problem?  First of all, trade dress law is a mess.  It’s bloated, incoherent and long-untethered from the consumer confusion rationale that is supposed to undergird trademark law.  Second, there is no time limit on trade dress protection—once established, it can (potentially) last forever. Third, because trade dress cases are expensive to litigate, even ridiculously weak claims can have significant anti-competitive effects.  For just one example of how bad things have gotten, check out this complaint, in which BCBG claims that it owns trade dress rights in, essentially, the idea of a bandage dress.


It's supposed to be difficult to get trade dress protection for product designs. For example, the party claiming protection is supposed prove that the design has acquired “secondary meaning”i.e., that consumers view the design primarily as an indicator of source.  In theory, this is a difficult burden.  But in practice, it’s distressingly easy for plaintiffs to satisfy the tests that are supposed to evaluate secondary meaning.


Under these tests, one important factor is whether or not the plaintiff’s use of the claimed trade dress has been “exclusive.”  The IDPA would give designers three years of artificial exclusivity, making it easier for them to claim that their designs have developed secondary meaning. 


This isn’t just idle speculation.  Design patents also give their owners a short period of artificial exclusivity.  And plaintiffs frequently claim trade dress rights in the designs covered by expired—or soon-to-expire—design patents.  Unfortunately, courts have allowed these types of claims.  (Here’s one example.)  There’s no reason to think that parties would refrain from making similar claims after the expiration of IDPA rights.


In this respect, the IDPA is something of a Trojan Horse—hiding an increased potential for perpetual protection beneath a veneer of short-term protection.


To be clear, I’m not accusing any of the IDPA’s drafters or supporters of acting in bad faith; I don’t know if they intend, or even anticipate, these trademark consequences.  But the problem is still very real.


Of course, some might argue that overlapping protection is not a problem because trade dress law has a different purpose than copyright law—namely, to prevent consumer confusion.  But let’s be honest: no one asserts product design trade dress claims because they are worried that consumers might be confused.  They do it because they want to prevent copying.


The bottom line is this: if, as proponents of the IDPA (and its predecessors) have suggested, what designers really need is three years’ worth of copyright-like protection, then they should be willing to give up potential trade dress claims.  Unless and until they are willing to do so, the IDPA (and bills like it) should be rejected.


[Like everything on LAW OF FASHION, this post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities.  Any views expressed in this post or at the linked web pages are those of the relevant writer(s) on a particular date, and should not necessarily be attributed to Charles Colman, his law firm, or its agents or clients.  Neither the writer of this post nor LAW OF FASHION (or any person or entity associated with it) can or will warrant the thoroughness or accuracy of the content here or at the cited sources.]