Milton Springut is a partner at Springut Law PC
Copyrights are a premier tool for fashion and luxury goods companies to protect their designs.
From jewelry to fabric designs and even to separable artistic elements of clothing and accessories, copyright is an inexpensive and long-lasting legal protection that is probably underused by many fashion houses.
By the book and ...
Copyright does not require a registration to be owned, but a registration is required to bring suit, and registration prior to infringement confers a number of advantages.
Not surprisingly, many companies regularly file copyright registrations on their new designs.
But that can get expensive – each registration costs at least $55, plus whatever fees an attorney would charge. Not a big deal if you have only a few designs to register, but for companies with many new ones, it can quickly become very expensive.
One way around this is to register a “collection” of works, using one registration and one fee for a number of works in the collection.
Unfortunately, U.S. Copyright Office regulations are restrictive about when this is allowed. In many situations a collection of “unpublished” works can be registered as a unit, which generally cannot be done for “published” works.
But a recent decision of a federal appeals court, Urban Textile, Inc. v. Rue 21, Inc. (9th Circuit, 2019), highlights a trap for the unwary.
That court’s decision held that inclusion of the claimed copyrighted fabric designs in a look book of fabrics used by the manufacturer to solicit orders from its customers constituted publication of the designs. That invalidated the registration and led to dismissal of the infringement claims on summary judgment.
... by design
So, when is a copyrighted design considered published?
Under the Copyright Act, one way is to distribute the design for sale or other transfer of ownership. But a second way publication is defined in the Copyright Act is to offer to distribute the design to others for purpose of further distribution.
The Copyright Office offers the following examples:
[P]ublication occurs when one or more copies . . . are offered to a wholesaler, a retailer . . . or similar intermediaries for the purpose of distributing the work to the public, and when, for example, fabric, carpet, or wallpaper samples are offered to sales representatives for the purpose of selling those works to wholesalers and retailers.
This implicates a common practice in the fashion and luxury goods industry: showing next season’s line to buyers well in advance of making them available for sale to the public.
The hope, of course, is that the buyers will be impressed and place an order for some of the items in the line. But this will constitute a publication of the designs under Copyright law, precluding registration of the collection.
The copyright owner learned that the hard way in the Urban Textile case.
POTENTIAL COPYRIGHT owners should be aware that such early showing may cause the product – and any copyrightable designs in them – to be deemed published, which can affect registration issues.
If a company routinely engages in such showings, then the better practice is to file copyright registrations before the showing.
Milton Springut is a partner at Springut Law PC, New York. Reach him at ms@springutlaw.com. Mr. Springut's opinions are solely his.