At some point in every designer’s career, he (or she) may run the risk of dealing with trademark, copyright or patent infringement. Knock-offs are any product intended to look like another brand, by the use of protected logos, designs or other distinguishing characteristics.
Most commonly, knock-offs are copies of luxury brands like Gucci or Versace, and can most frequently be found online. Alibaba, China’s biggest eCommerce retailer, recently came under fire for selling numerous knockoffs on its platform. It has since ceased sales, and ramped up efforts to combat counterfeit. Whether you’ve been accused of copying another design, or if you yourself are knocked off, the issue is a serious one, and may even lead to expensive legal action.
The implications can not only be legal, but personal. You worked hard on those designs. To see another artist using your ideas can be heartbreaking and angering. Being accused of counterfeit can also be damaging to your reputation as a designer.
So what can you do to prevent the theft of your designs? How can you avoid legal action if you yourself have been accused? Douglas Hand is a fashion law expert from New York City. Here’s what he had to say about handling “knock offs”.
Understanding The 3 Types Of Knock-Offs
To begin, know the difference between trademark, copyright and patent protection. These are three different legal concepts. Knowing the difference will help you protect your design and your reputation.
Trademark laws protect your name, your logo, your slogan and sometimes even your product designs. Anything that identifies your specific brand or product. For example, no other designer or organization may use the Nike “swoosh” without a license. Adidas, as another example, uses the three stripes on its products. No other organization may use that logo, but an apparel company could possibly use four stripes.
Should a person or entity choose to use a trademarked logo on its product, they will be counterfeiting those products. Regardless of whether the end consumer knows that the product is a fake version of the original, the seller can face litigation. It is interesting to note, however, that in order to be guilty of counterfeit, a seller must place the logo on a brand that is carried by the original manufacturer. For example, it is not trademark infringement to place a Nike “swoosh” on a living room couch, for example, because this is not a product manufactured by Nike.
In 1999, the case of Playboy Enterprises Inc. v. Universal Tel-A-Talk Inc assessed a $10,000 fine to Universal Tel-A-Talk Inc for using the Playboy bunny logo on its adult services website. Similarly, a Chinese company, 3N, lost a lawsuit filed by 3M company. The Chinese company was selling products similar to 3M’s, using a logo very alike to the 3M logo.
Design patents are protections of the look of a design. However, the patent must be on an attribute that is “novel, functional and non-obvious”. Clothing designs rarely carry a design patent because they are utilitarian. That is to say, no one designer can carry a patent on a shirt with sleeves. Usually, shoes, bags and jewelry carry design patents, because they carry an element of design.
Design patents in the apparel industry are uncommon. The process of applying for and gaining a design patent throughout the US Patent and Trademark Office can take several years. Because of the constantly changing trends in the fashion industry, the style may be outdated by the time it’s approved. A famous example of design patent infringement is the case Apple brought against Samsung in 2013. Apple was awarded $290 million after allegations that Samsung had copied several features of its design, including the pinch and zoom features.
A design patent is usually a protection of the appearance of a product. For example, the shape of a Coke bottle is a patented design. Generally, a case of design patent infringement will involve the replication of an original product to the extent that a consumer might think the knock off is just as good as the original.
Finally, copyright law covers a few limited aspects of design. Fabric patterns, some beading and embroidery, and some elements of costumes can be copyrighted. Copyright protection laws may soon be changed through the court system. Currently, the Supreme Court is hearing the case of Star Athletica v Varsity Brands. The case seeks to determine what is deemed a useful component of a fashion product. This particular case deals with cheerleading uniforms. Cheerleading uniforms carry a distinct design by nature.
The particular uniform copyright in question refers to a chevron design. The court is to determine if this pattern is, because of the design or cheerleading uniforms as a whole, necessary to the function and utility of the product.
Elizabeth Kurpis, attorney from the law firm Mintz Levin, states that, “Here, Varsity is arguing that the chevron designs on their uniforms fall more in line with a fabric print or design, rather than a utilitarian and non-copyrightable aspect of the uniform. And because these chevron designs were actually copyrighted already, a ruling in favor of Star Athletica would undermine such rights.”
What To Do If You’ve Been Knocked Off
So what should you do if your design has been knocked off by another manufacturer? The first thing you should do is hire an attorney. Your attorney can help you make sure that all trademarks, copyrights and patents are in order and filed properly. If your design was improperly filed, you may not be a victim of infringement. In order to avoid improperly filed protection measures, it’s best to consult with an attorney at the beginning of the process.
Second, you’ll need to provide evidence that the counterfeiter could have found your work. Is your work already on the market, in stores or online? Have you appeared at a trade show where your concept or design could have been seen and copied? Perhaps you shared your sketches with another designer, and she copied them. Let’s put it this way. If you spent hours designing a product in your own space, drawing pictures and recording your ideas, and never shared your ideas with anyone, it’s possible that your counterfeiter simply had a similar idea. Establish by what method the other party might have received the idea from you. If your case goes to court, you’ll need this evidence.
Third, you’ll need to establish that this is actually a copy, which may prove difficult in some cases. Is the counterfeited design utilitarian and necessary to the product? While you may be able to patent a certain style of zipper on a boot, it’s less likely that you’ll be able to “own” the concept of a zippered boot in general. There may be obvious cases of infringement. If you’ve spotted your logo on another skirt, for example, you likely have a good case.
Once you’ve determined that your design has been knocked-off, have your attorney draft and send a cease and desist letter. This letter is the first action necessary to let your counterfeiter know that you’re serious, and that he must immediately stop using your design. Depending on the nature of the infringement, your lawyer may recommend that you give a 30 day period in which to cease use of a design.
In some cases, you may be able to file a temporary restraining order against the infringer. This will mandate the designer to immediately cease using the design, pending a formal legal decision. You’ve established that your design was stolen, you’ve gathered evidence to this effect, and you’ve asked the counterfeiter to stop using your design. Now, you’ll need to decide if it’s worth it to pursue litigation.
How much money would you have made from the design? For example, if your concept was an original brand or collection, you likely would have profited more than from a simple fabric pattern. Litigation is extremely expensive. Attorneys fees alone can cost tens of thousands of dollars, and you’d be wise to weigh the cost against the benefit. Trying a case in court can also be a very lengthy process, and you’d possibly fare better to use your time and resources elsewhere.
If you win your court case, the infringer will likely be forced to pay for court costs and attorney’s fees. But if you don’t win, you could bear some of that cost. If you feel that you’d benefit greater from litigation, then consult your attorney to determine the next steps. You may pursue court litigation, or it may be possible to settle the matter out of court.
What To Do If You’ve Been Accused
It could happen. Not long after you’ve celebrated the release of your original fall line, another designer confronts you, claiming that you’ve stolen her design. You know that your idea was original; you’re an honest designer with great ideas. But your product does look quite similar to hers. Your first instinct is probably to hire an attorney, and that would be a wise idea. But before you and your attorney engage in a lengthy court process, talk to the designer and her attorney. Many times, litigation can be avoided with conversation in the presence of legal representatives.
Through conversation, get specific information about what the designer feels you’ve done. Was there a misunderstanding? Did you have a similar design concept? Is your product an exact replica of hers? Just as you would, this designer will have to provide evidence that her original design had been trademarked, copyrighted or patented through the appropriate channels. Once she produces this proof, she’ll need to determine where you saw her idea.
You, conversely, will need to submit your own proof. Do you still have the sketches? Do you have photographs of any products or art which were the inspiration for your idea? These could be useful in proving that your design was original. In the same way that your accuser must decide if the cost is worth the court battle, once again, so must you. Are you willing to pay court and attorney fees, or would if be more beneficial to take your product off the market and comply with her cease and desist?
What Happens Next?
Regardless of whether you’ve been accused of infringement or if someone else has stolen your design, the penalties can be severe. If a person or entity is found guilty of infringement, they will be responsible for the actual dollar amount of damages and profits. The dollar amount can range from $200 to $150,000 for each work copied. The infringer is also responsible for all attorney fees and court costs.
If there is tangible work, the court can impound any goods that are deemed in violation, and the infringer, in some cases, may be ordered to serve jail time. Because of the harsh penalties placed on counterfeiters, it may be in your best interest to settle matters out of court. Only an attorney can help you make this decision, and to weigh the benefits versus the costs.
Knock offs are no small matter. Even the most reputable companies have been ordered to pay millions of dollars in lawsuits dealing with copyright infringements. The best way to protect yourself from involvement with lawsuits is to have a basic understanding of the protections available to designers. Research existing copyrights, trademarks and patents before you file. And if you find yourself in a questionable situation, seek legal advice immediately.