throbber
No. 15-777
`
`
`
`IN THE
`Supreme Court of the United States
`__________
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., SAMSUNG
`TELECOMMUNICATIONS AMERICA, LLC,
`Petitioners,
`
`Respondent.
`
`v.
`
`APPLE INC.,
`__________
`
`On Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`__________
`
`BRIEF OF TIFFANY AND COMPANY, ADIDAS
`AG, AND JENNY YOO COLLECTION, INC., AS
`AMICI CURIAE IN SUPPORT OF RESPONDENT
`__________
`
`MICHAEL J. GOTTLIEB
` Counsel of Record
`JESSICA E. PHILLIPS
`CAIN M. NORRIS
`BOIES, SCHILLER & FLEXNER LLP
`5301 Wisconsin Ave., N.W.
`Washington, D.C. 20015
`(202) 237-2727
`MGottlieb@bsfllp.com
`
`Counsel for Amici Curiae
`
`
`
`
`
`
`
`

`
`
`
`i
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES .................................... iii 
`INTEREST OF AMICI CURIAE ............................. 1 
`SUMMARY OF ARGUMENT .................................. 1 
`ARGUMENT ............................................................. 3 
`PATENTS
`PROVIDE
`IMPORTANT
`I.  DESIGN
`INTELLECTUAL PROPERTY PROTECTION
`FOR
`ESTABLISHED AND EMERGING DESIGNERS IN THE
`FASHION INDUSTRY .............................................. 3 
`A.  The Fashion Industry is an Important Driver
`of U.S. Economic Growth ............................... 3 
`B.  Innovative Design is Critical to the Fashion
`Industry .......................................................... 5 
`C.  Design Pirates Cause Substantial Economic
`and Creative Harm to both Established and
`Emerging Fashion Designers ........................ 7 
`D.  Design Patents are an Important Tool for
`Designers to Protect Their Designs ............ 11 
`II.  FURTHER LIMITING THE TOTAL PROFITS DAMAGES
`REMEDY WOULD HARM THE FASHION INDUSTRY
`AND THE U.S. ECONOMY ..................................... 14 
`A.  The Total Profits Remedy Effectively
`Dissuades Design Pirates ............................ 15 
`B.  Without a Meaningful Remedy, Design
`Patents Cannot Create
`the
`Incentives
`Necessary to “Promote the Progress of …
`Useful Arts” .................................................. 17 
`
`
`
`

`
`ii
`
`
`C.  This Court Should Not Ignore the Plain
`Language of § 289 and Congress’s Plain
`Intent in Passing It Based on Hypothetical
`Policy Concerns ............................................ 20 
`CONCLUSION ....................................................... 21 
`
`
`
`

`
`
`
`iii
`
`TABLE OF AUTHORITIES
`
`Cases 
`Birdsall v. Coolidge,
`93 U.S. 64 (1876) ............................................... 17
`
`Fashion Originators Guild of Am., Inc., v. Fed.
`Trade Comm’n,
`114 F.2d 80 (2d Cir. 1940) ................................ 12
`Fruit of the Loom, Inc. v. Girouard,
`994 F.2d 1359 (9th Cir. 1993) ............................. 6
`
`Fun-Damental Too, Ltd. v. Gemmy Indus.
`Corp.,
`111 F.3d 993 (2d Cir. 1997)............................... 13
`Jay Franco & Sons, Inc. v. Franek,
`615 F.3d 855 (7th Cir. 2010) ............................. 14
`
`Octane Fitness, LLC v. Icon Health & Fitness,
`Inc.,
`572 U.S. __ (2014) ............................................. 18
`
`Soptra Fabrics Corp. v. Stafford Knitting
`Mills, Inc.,
`490 F.2d 1092 (2d Cir. 1974) ............................. 13
`Wal-Mart Stores Inc. v. Samara Brothers, Inc.,
`529 U.S. 205 (2000) ..................................... 14, 16
`Constitutional Provisions 
`U.S. CONST. art. I, § 8, cl. 8 .................................... 19
`Statutes 
`15 U.S.C. § 1127 ..................................................... 13
`
`
`
`

`
`iv
`
`
`17 U.S.C. § 1302 ..................................................... 12
`35 U.S.C § 171 ........................................................ 11
`35 U.S.C. § 173 ....................................................... 11
`35 U.S.C. § 283 ................................................. 15, 16
`35 U.S.C. § 284 ........................................... 15, 16, 17
`35 U.S.C. § 285 ....................................................... 18
`35 U.S.C. § 289 ............................................... passim
`Regulations 
`80 Fed. Reg. 17,918 (Apr. 2, 2015) ......................... 11
`Other Authorities 
`Biana Borukhovich, Fashion Design: The Work
`Of Art That Is Still Unrecognized In The
`United States, 9 WAKE FOREST INTELL.
`PROP. L.J. 155 (2009) ................................... 7, 8, 9
`Bureau of Labor Statistics, U.S. Dep’t Of
`Labor, Occupational Outlook Handbook:
`Fashion Designers (2014-2015 ed.) ..................... 6
`Council of Fashion Designers of Am., CFDA
`Applauds Design Prohibition Act (Dec. 31,
`2009) .................................................................... 7
`Diane von Furstenberg, Fashion Deserves
`Copyright Protection, L.A. Times, Aug. 24,
`2007 ................................................................... 10
`
`
`
`

`
`v
`
`
`Econ. Info. & Research Dep’t of L.A. Cty. Econ.
`Dev. Corp., Los Angeles Area Fashion
`Industry Profile (2004) ........................................ 4
`Elizabeth Ferrill & Tina Tanhehco, Protecting
`the Material World, 12 N.C. J. L. & TECH.
`251 (2011) ........................................................ 7, 8
`H.R. Rep. No. 49-1966 (1886) ....................... 5, 17, 20
`Joint Econ. Comm., U.S. Cong., The Economic
`Impact of the Fashion Industry
`(Sept. 2015) ...................................................... 4, 5
`Karl T. Ulrich & Steven D. Eppinger, Product
`Design and Development (5th ed. 2012) ............. 5
`Laura C. Marshall, Catwalk Copycats: Why
`Congress Should Adopt a Modified Version
`of the Design Piracy Prohibition Act, 14 J.
`INTELL. PROP. L. 305 (2007) ................................ 6
`N.Y.C. Econ. Dev. Corp., Fashion.NYC.2020
`(2012) ................................................................... 4
`OECD & EUIPO, Trade in Counterfeit and
`Pirated Goods: Mapping the Economic
`Impact (2016) ....................................................... 9
`S. Rep. No. 49-206 (1886) ................................. 17, 19
`Susan Scafidi, Intellectual Property and
`Fashion Design, in 1 Intellectual Property
`and Information Wealth 115 (Peter K. Yu
`ed., 2006) ........................................................... 12
`
`
`
`

`
`vi
`
`
`Susan Scafidi, Written Statement on H.R.
`5055, The Design Piracy Prohibition Act 2
`(July 27, 2006) ..................................................... 6
`U.S. Patent & Trademark Office, Design
`Patents, January 1, 1991—December 31,
`2015 (Mar. 2016) ............................................... 12
`U.S. Patent & Trademark Office, Manual of
`Patent Examining Procedure (2015) ................ 11
`
`
`
`

`
`1
`
`
`
`INTEREST OF AMICI CURIAE1
`Amici curiae are members of the fashion
`industry who have secured design patents to help
`protect their innovative designs.
`For almost 180 years, amicus Tiffany & Co. has
`been one of the most iconic luxury brands in
`American fashion. Amicus Adidas AG is one of the
`largest sportswear manufacturers in the world.
`Amicus Jenny Yoo Collection, Inc., is an American
`innovator in bridal fashion. Amici make substantial
`investments in developing novel designs, and have
`been securing design patents since the nineteenth,
`twentieth, and twenty-first centuries respectively to
`protect their innovations from design pirates.
`Amici have an interest in highlighting the
`unique function of design patents in the fashion
`industry, which differs in various ways from the
`technology industry highlighted in the parties’
`briefs. Moreover, the Court’s decision in this case
`will directly affect the value of amici’s design
`patents and by extension the distinctive designs
`that those patents protect.
`SUMMARY OF ARGUMENT
`fashion
`industry
`is of critical social,
`The
`cultural, and economic significance. It is a $1.2
`trillion global industry based on the constant
`creation of fresh and groundbreaking designs.
`
`
`1 Pursuant to Supreme Court Rule 37.3(a), all parties have
`consented to the filing of this brief. Pursuant to Rule 37.6,
`amici certify that no counsel for a party authored this brief in
`whole or in part, and no persons other than amici curiae or
`their counsel made a monetary contribution to its preparation
`or submission.
`
`
`
`

`
`2
`
`
`Fashion designers invest enormous amounts of
`capital, time, and sweat equity
`in creating
`innovative designs
`that
`capture
`consumers’
`attention and drive consumption. Design pirates
`capitalize on the huge investments made by fashion
`designers by copying only popular and successful
`designs. They operate swiftly and anonymously
`from off-shore havens, producing low-cost, high-
`volume knockoff goods that saturate the market
`and prevent legitimate designers from reaping the
`rewards of their investments. In doing so, design
`pirates create a disincentive to invest in future
`designs and inhibit creativity.
`Enforcing intellectual property rights against
`design pirates is notoriously difficult. Although
`trademark
`law and
`copyright
`law provide
`protection for some design elements—trademark
`protects a recognizable logo, name, or mark while
`copyrights protect specific aspects of a garment
`such as the fabric design or individual pattern—
`they do not protect the overall appearance of most
`fashion designs. Design patents do provide
`protection to fashion designers for new, original,
`and ornamental designs for articles of manufacture
`but it is still extremely difficult to enforce design
`patent rights against design pirates, who often are
`anonymous, fly-by-night, off-shore entities. Because
`the
`inherent
`limitations of these
`intellectual
`property regimes leave fashion designers open to
`encroachment of design pirates, the total profits
`regime enshrined in § 289 of the Patent Act (35
`U.S.C. § 289) is critical to address the harm caused
`by design piracy. The total profits rule helps to
`ensure
`that designers have
`the appropriate
`incentives and rewards to make investments in
`
`
`
`

`
`3
`
`
`innovative designs. By ensuring that a design
`pirate
`cannot
`profit
`from
`design
`patent
`infringement, § 289 discourages many would-be
`design pirates and, consequently, encourages
`investment in creative designs.
`Rewriting § 289 to limit a design patentee’s
`remedy to the portion of the infringer’s profits that
`the patentee can prove is due to the patented
`design elements, rather than the infringer’s total
`profits on the article of manufacture, would
`significantly reduce the protection provided by
`design patents. Other measures of damages cannot
`provide
`the same
`level of deterrence. And
`engrafting an apportionment damages scheme onto
`design patents would increase the costs of enforcing
`design patents while decreasing the efficiency of
`litigation and
`the
`likelihood of settlement.
`Moreover, the Court should not ignore the original
`intent of § 289, which applies to any article of
`manufacture to which a patented design is applied,
`by prioritizing hypothetical and
`speculative
`concerns over the very real concerns of the fashion
`industry.
`
`ARGUMENT
`I. DESIGN PATENTS PROVIDE
`IMPORTANT
`INTELLECTUAL PROPERTY PROTECTION FOR
`ESTABLISHED AND EMERGING DESIGNERS IN
`THE FASHION INDUSTRY
`A. The Fashion Industry is an Important
`Driver of U.S. Economic Growth
`The fashion industry represents one of the
`largest drivers of economic growth in the United
`States, with nearly $370 billion spent annually on
`
`
`
`

`
`4
`
`
`apparel and footwear in America. Joint Econ.
`Comm., U.S. Cong., The Economic Impact of the
`Fashion Industry at 1 (Sept. 2015), available at
`http://www.jec.senate.gov/public/_cache/files/2523ae
`10-9f05-4b8a-8954-631192dcd77f/jec-fashion-
`industry-report----sept-2015-update.pdf. New York,
`which is the largest retail market in the country
`and the fashion capitol of the United States,
`generates more than $18 billion in annual retail
`sales. Id. at 3. New York Fashion Week’s yearly
`economic
`impact
`includes approximately $532
`million in direct visitor spending and $865 million
`in total economic impact each year. N.Y.C. Econ.
`Dev. Corp., Fashion.NYC.2020 10 (2012), available
`at http://www.nycedc.com/resource/fashionnyc2020.
`The fashion industry employs more than 1.8
`million workers across the country in a wide range
`of occupations, including computer programmers,
`lawyers, accountants, copywriters, social media
`directors, project managers, sewing machine
`operators,
`tailors,
`fabric
`and
`apparel
`patternmakers, and, of course, fashion designers.
`Joint Econ. Comm., supra, at 1-2. There are
`roughly 18,000 fashion designers working in the
`United States—a figure that has grown by over 50
`percent in the past ten years. Id. at 2.
`The
`fashion
`industry
`is structurally and
`organizationally diverse. See Econ.
`Info. &
`Research Dep’t, L.A. Cty. Econ. Dev. Corp., Los
`Angeles Area Fashion Industry Profile (2003),
`available at http://www.laedc.org/reports/fashion-
`2003.pdf
`(noting
`that
`fashion
`“is a highly
`sophisticated industry involving fashion & market
`research, brand
`licensing/intellectual property
`rights, design, materials engineering …, product
`
`
`
`

`
`and
`
`finally
`
`5
`
`marketing,
`
`
`manufacturing,
`distribution”).
`It includes large design houses, independent
`one-person design shops, wholesalers, and major
`international retailers. Although
`the
`fashion
`industry in the United States is concentrated in
`New York and California, “fashion is now having a
`big economic impact not only in fashion centers on
`the coasts, but also in smaller cities around the
`country.” Joint Econ. Comm., supra, at 1. Dallas,
`Kansas City, Columbus, and Nashville are
`emerging as fashion centers and are producing
`designers that are impacting trends in the industry.
`Id. at 4.
`B. Innovative Design is Critical to the
`Fashion Industry
`Fashion designers are “the profession at the
`heart of the industry’s creative process.” Id. at 2. It
`is a designer’s inventive and fresh designs that
`inspire consumers, capture the attention of the
`fashion media, and allow fashion designers to
`compete with one another for sales. As Congress
`recognized more than a century ago, “it is the
`design that sells the article.” H.R. Rep. No. 49-
`1966, at 3 (1886).
`Fashion designs serve as a form of self-
`expression for consumers who purchase clothing,
`shoes, or accessories from their preferred designers.
`“An attractive product may be associated with high
`fashion and image and will likely create a strong
`sense of pride among its owners.” Karl T. Ulrich &
`Steven D. Eppinger, Product Design and
`Development 213 (5th ed. 2012). Indeed, consumers
`purchase fashion not only for utilitarian reasons
`
`
`
`

`
`6
`
`
`but also to make a fashion statement. Fruit of the
`Loom, Inc. v. Girouard, 994 F.2d 1359, 1361 (9th
`Cir. 1993)
`(noting
`that allegedly
`infringing
`underwear was purchased “for a fashion statement”
`and not for “utilitarian purposes” and that they
`were “chosen with care”); see also Susan Scafidi,
`Written Statement on H.R. 5055, The Design Piracy
`Prohibition Act 2
`(July 27, 2006)
`(“Fashion,
`however, is not just about covering the body—it is
`about creative expression.”). Participating in trends
`and being “in-fashion”
`is one way
`in which
`individuals engage
`in social
`life. Promoting
`innovation in fashion by protecting fashion designs
`therefore has an inherent social and cultural
`benefit.
`Because innovative design is so important in the
`fashion industry, designers invest substantial time,
`effort, and resources in designs that are original,
`groundbreaking, and that have consumer appeal. A
`designer typically spends eighteen to twenty-four
`months from the time the design is first sketched to
`the manufacture of the final product. Laura C.
`Marshall, Catwalk Copycats: Why Congress Should
`Adopt a Modified Version of the Design Piracy
`Prohibition Act, 14 J. INTELL. PROP. L. 305, 311
`(2007); see also Bureau of Labor Statistics, U.S.
`Dep’t Of Labor, Occupational Outlook Handbook:
`Fashion Designers (2014-2015 ed.), available at
`http://www.bls.gov/ooh/arts-and-design/fashion-
`designers.htm#tab-3 (2007) (noting that “fashion
`designers work many hours to meet production
`deadlines or prepare for fashion shows”). After a
`design debuts on the runway, it may still take
`another four months for the product to reach a
`retail store. Elizabeth Ferrill & Tina Tanhehco,
`
`
`
`

`
`7
`
`
`Protecting the Material World, 12 N.C. J. L. & TECH.
`251, 264 (2011). Just one season for a fashion
`design can cost millions of dollars. Id.
`Given the substantial economic stakes, ensuring
`effective and thorough protection of original designs
`from knockoff artists is a high priority for fashion
`designers. A total profits damages regime helps to
`ensure that investments in innovative designs are
`properly incentivized and rewarded.
`C. Design Pirates Cause Substantial
`Economic and Creative Harm to both
`Established and Emerging Fashion
`Designers
`Fashion designers and the fashion industry are
`under siege from legions of design pirates and
`knockoff artists. Often these design pirates are
`anonymous, off-shore entities that strategically
`produce low-cost, high volume copies of popular and
`successful designs, thereby capitalizing on the
`investments made by fashion designers at great
`economic and creative harm to those designers and
`the industry as a whole.
`increasingly
`the
`Design piracy
`“describes
`prevalent practice of enterprises that seek to profit
`from the invention of others by producing copies of
`original designs under a different label.” Council of
`Fashion Designers of Am., CFDA Applauds Design
`Prohibition Act (Dec. 31, 2009), http://cfda.com/the-
`latest/cfda-applauds-design-prohibition-act. Design
`piracy is distinct from counterfeiting, which is “the
`practice of imitating fashion designs with the intent
`to deceive buyers of the apparel’s true content or
`origin by mimicking the details of the design and
`the name brand logo.” Biana Borukhovich, Fashion
`
`
`
`

`
`8
`
`
`Design: The Work Of Art That Is Still Unrecognized
`In The United States, 9 WAKE FOREST INTELL. PROP.
`L.J. 155, 156 (2009). Counterfeiting is a type of
`design piracy because “[o]ne has to copy the design
`first before attaching the counterfeit label. Design
`piracy is counterfeiting without the label.” Id.
`(citing
`Laura Goldman,
`Fashion
`Piracy,
`BPCOUNCIL (2007)).
`Although design piracy is not new, it has been
`exacerbated
`by
`technology
`and
`increased
`information dissemination, the sum of which allows
`copying to occur faster, on a larger scale, and at a
`lower cost than ever before. When design piracy
`thrives, the investment of capital, time, and effort
`designers make to produce their original designs is
`eviscerated. In contrast to the two-year time-frame
`high-end designers invest in their designs, design
`pirates take as few as four to six weeks to get their
`products to the market. Ferrill & Tanhehco, supra,
`at 264. High-end designs are available on the
`internet within hours of debuting on the runway or
`the red carpet. Id. at 266. Fashion websites and
`celebrity blogs display photographs of the designs
`from every angle, and often include close up images
`of design details with accompanying editorial
`descriptions of the designs. Id. Technology thus
`ensures that design pirates not only do not need to
`wait for the originals to hit the showroom floors,
`but they need not incur the expense of traveling to
`the runway shows or the red carpet events to copy
`designs for mass production. Id. Indeed, a pattern
`based on a website photograph or Internet
`broadcast of a runway show can be transmitted
`electronically to a low-cost contract manufacturer
`who can produce products in high volumes. And
`
`
`
`

`
`9
`
`
`electronic communications and express shipping
`ensure that finished products are brought to
`market on an express timeframe.
`Design piracy causes substantial economic
`harms. Earlier this year, the European Union (EU)
`and the Organisation for Economic Co-operation
`and Development (OECD) issued a report that
`found that the value of imported fake goods
`worldwide was $461 billion in 2013.2 See OECD &
`EUIPO, Trade in Counterfeit and Pirated Goods:
`Mapping the Economic Impact 11 (2016), available
`at www.oecd.org/governance/trade-in-counterfeit-
`and-pirated-goods-9789264252653-en.htm.
`The
`report noted that U.S., Italian, and French brands
`were the hardest hit. Id. at 50. The report also
`found that the United States was “[t]he top
`countr[y] whose companies had their intellectual
`property
`rights
`infringed” and
`that
`those
`companies’ “brands or patents were affected by 20%
`of the knock-offs….” Id. A similar report from 2008
`found that counterfeiting and design piracy cost the
`U.S. economy between $200-$250 billion per year,
`and that knockoff merchandise was responsible for
`the loss of 750,000 American jobs. Borukhovich,
`supra, at 157 (citing Int’l Anticounterfeiting Coal.,
`GET REAL – The Truth About Counterfeiting
`(2008)).
`
`
`2 The report includes figures on counterfeit and knockoff
`goods. Because design piracy is not a criminal offense in the
`United States, it is difficult to find figures for knockoffs apart
`from counterfeits. However, because counterfeiting is a type of
`design piracy (see supra at 8), these figures serve as a
`meaningful proxy for the economic consequences caused by
`knockoffs.
`
`
`
`

`
`10
`
`
`Knockoffs affect established designers through
`the loss of substantial revenue and exclusive
`control over the use of original designs, but fashion
`piracy has an especially devastating impact on
`emerging designers. While established fashion
`designers and couture houses have the resources to
`survive copycat designs, knockoffs can and have
`stalled the rise of emerging designers, who “remain
`vulnerable to knockoff artists” who “can effectively
`put young designers out of business before they
`even have a chance.” Diane von Furstenberg,
`Fashion Deserves Copyright Protection, L.A. Times,
`Aug. 24, 2007, http://www.latimes.com/opinion/la-
`oew-furstenberg24aug24-story.html. Design piracy
`devalues the designer’s creation before he or she
`can reap any return on the investment.
`Knockoffs
`further harm
`established and
`emerging designers alike by disincentivizing
`creative design efforts. Developing fashion designs
`is neither easy nor inexpensive. As described above,
`it is a time-intensive, iterative process that may or
`may not result in a commercial success. It is not
`easy for fashion designers to predict what will
`resonate with the consuming public given how
`swiftly the fashion winds shift. And many fashion
`designs never make it to the runway or the
`showroom. Design pirates avoid
`the
`costs
`associated with creating original designs through
`that trial and error process and capitalize on the
`investments made by the fashion designers at a
`fraction of the cost by only copying popular and
`successful designs. If efforts by knockoff artists are
`not dissuaded by the threat of an intellectual
`property regime with appropriate remedies, there is
`far less of an incentive for fashion designers to
`
`
`
`

`
`11
`
`
`continue to invest the time, effort, and funds to
`produce goods that will resonate with consumers.
`D. Design Patents are an Important Tool
`for Designers to Protect Their Designs
`Design patents are an important tool for fashion
`designers because they offer protection for original
`designs where other intellectual property regimes
`fall short.
`Design patents provide patent protection to
`inventors of “new, original, and ornamental design
`for an article of manufacture.” 35 U.S.C § 171.
`These patents protect the way something looks, as
`opposed to more commonly known utility patents,
`which protect the way something is used and
`works. U.S. Patent & Trademark Office, Manual of
`Patent Examining Procedure §1502.01
`(2015),
`available at https://mpep.uspto.gov/RDMS/MPEP/
`current#/current/d0e150114.html (noting as a point
`of contrast that “a utility patent protects the way
`an article is used and works, while a design patent
`protects the way an article looks”). The design for
`an article consists of the visual characteristics
`embodied in or applied to an article. Id. at § 1502.
`The subject matter of a design patent application
`may relate to the configuration or shape of an
`article, to the surface ornamentation applied to an
`article, or to the combination of configuration and
`surface ornamentation. Id. Design patents grant
`the patent owner a statutory limited monopoly for
`15 years from the date of grant (or 14 years for
`applications filed before May 13, 2015), and are not
`renewable. 35 U.S.C. § 173; 80 Fed. Reg. 17,918,
`17,918 (Apr. 2, 2015).
`
`
`
`

`
`12
`
`
`Fashion designers have increasingly turned to
`design patents to protect their original creations.3
`In part, this is because fashion design lacks
`protection against copying under other intellectual
`property regimes in the United States. While
`certain design elements may be protected through
`the application of copyright, trademark, or trade
`dress law, the overall appearance of most fashion
`designs is still vulnerable to the encroachment of
`design pirates. See Susan Scafidi, Intellectual
`Property and Fashion Design, in 1 Intellectual
`Property and Information Wealth 115, 121 (Peter
`K. Yu ed., 2006).
`For example, copyright laws provide minimal
`protection for fashion designs. A fashion design
`does not receive copyright protection if it is
`“embodied in a useful article that was made public
`by the designer or owner in the United States or a
`foreign country more than 2 years before the date of
`the application
`for
`registration” under
`the
`Copyright Act. 17 U.S.C. § 1302. Courts have held
`that articles of clothing are “useful articles” not
`generally granted copyright protection. See, e.g.,
`Fashion Originators Guild of Am., Inc., v. Fed.
`Trade Comm’n, 114 F.2d 80, 84 (2d Cir. 1940)
`(stating that dress designs are not copyrightable
`and “fall into the public demesne without reserve”),
`aff’d 312 U.S. 457 (1941). Copyrights are thus only
`available to protect specific parts of a garment or
`accessory such as the fabric design or individual
`
`3 Although statistics are not available for all fashion-related
`design patents specifically, design patent applications have
`increased overall each year since 2009. See generally U.S.
`Patent & Trademark Office, Design Patents, January 1,
`1991‒December 31, 2015 (Mar. 2016).
`
`
`
`

`
`13
`
`
`patterns for each garment, but not the entire design
`of the item. See, e.g., Soptra Fabrics Corp. v.
`Stafford Knitting Mills, Inc., 490 F.2d 1092, 1094
`(2d Cir. 1974).
`Trademark law is limited in its protection of
`fashion designs because
`it protects only a
`recognizable logo, name, or mark. To achieve
`trademark protection under the Lanham Act, the
`name or logo must distinguish it from other goods
`in commerce. 15 U.S.C. § 1127. Thus, if a designer
`as a matter of taste or marketing chooses not to
`have a visible logo on a design, then trademark
`laws will not provide any protection for that design.
`In addition, established and prominent fashion
`houses are more
`likely to be protected by
`trademark law because their famous brands have
`acquired distinctiveness. Emerging designs, by
`contrast, do not yet have the benefit of name
`recognition.
`Trade-dress law is a subset of trademark law,
`and it also provides only limited protection for
`fashion designs. Trade dress is the totality of
`elements in which a product or service is packaged
`or presented. The elements combined create a
`whole visual image for a consumer and may be
`protected if it becomes a type of identifier or symbol
`of the source of origin. See Fun-Damental Too, Ltd.
`v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir.
`1997) (holding that trade dress “encompasses the
`design and appearance of the product together with
`all the elements making up the overall image that
`serves to identify the product presented to the
`consumer”). This Court has held that product
`designs
`like garments are never “inherently
`distinctive” or
`intrinsically capable of source
`
`
`
`

`
`14
`
`
`identification. Wal-Mart Stores Inc. v. Samara
`Brothers, Inc., 529 U.S. 205, 209-215 (2000).
`Because U.S. copyright, trademark, and trade-
`dress laws offer incomplete protection for fashion
`designs, designers need the protection afforded by
`patent designs—and
`its total profits remedy
`provision—to protect clothing and accessories from
`design pirates and knockoff artists.
`II. FURTHER LIMITING THE TOTAL PROFITS
`DAMAGES REMEDY WOULD HARM THE FASHION
`INDUSTRY AND THE U.S. ECONOMY
`The efficacy of design patents will be
`significantly reduced if this Court rewrites § 289 to
`limit a design patentee’s remedy to the portion of
`the infringer’s profits that the patentee can prove is
`attributable to the patented design elements,
`rather than the infringer’s total profits on the
`article of manufacture. As discussed, the remedy for
`design patent infringement is generally the only
`remedy available to fashion designers for piracy of
`their creative works. Jay Franco & Sons, Inc. v.
`Franek, 615 F.3d 855, 860
`(7th Cir. 2010).
`Weakening that remedy therefore weakens fashion
`designers’ right to their designs and by extension
`weakens the incentive for designers to innovate—
`both by reducing the likely gains from innovation
`and by increasing the likely gains from design
`piracy. With less protection from knockoffs and
`copycats,
`fashion designers, as well as
`the
`American fashion industry and the U.S. economy as
`a whole, will suffer.
`
`
`
`

`
`15
`
`
`A. The Total Profits Remedy Effectively
`Dissuades Design Pirates
`Section 289 ensures that a design pirate cannot
`profit from design patent infringement and thus
`discourages most would-be infringers—particularly
`large, high-volume infringers who have little hope
`of avoiding detection. Importantly, § 289 is in many
`cases the only effective deterrent available to
`fashion designers.
`total profits remedy, design
`Without
`the
`innovators would be forced to rely on the general
`measure of patent damages found in § 284. Under
`that provision, design infringers could expect that
`even
`if their
`infringement was detected and
`litigated, they would pay only a “reasonable
`royalty” for the
`infringing design. Given the
`investments required to bring fashion products to
`market, such a royalty award might well leave the
`infringer better off for having infringed the design
`patent. Consequently, the threat of such an award
`will have little to no deterrent effect. Likewise, the
`other measure of damages in § 284, damages
`sufficient to compensate the patentee for their
`losses, is unlikely to deter design pirates. Design
`patentees face intense challenges proving causation
`and damages from infringement, especially where,
`as in the fashion industry, the patentee primarily
`sells its original designs into a different market
`segment than the ones in which infringers sell their
`knockoffs.
`Other remedies, such as injunctions from the
`International Trade Commission or the courts
`under § 283 are also unlikely to deter infringement
`in fast-moving industries like fashion. It takes time
`
`
`
`

`
`16
`
`
`for design patentees to detect infringement, identify
`the infringing entity, send cease-and-desist letters,
`and eventually institute litigation (assuming the
`infringing party can be identified and located); it
`takes longer still to secure an injunction. Obtaining
`an exclusion order to enable Customs enforcement
`of a design patent is no faster. Given the speed of
`the fashion trend cycle, and the fly-by-night
`character of many overseas infringers, design
`pirates would likely conclude in many cases that
`infringement would likely be profitable despite the
`risk of an injunction—an assessment they are less
`likely to make when the design patent owner is
`backed by a plausible threat of disgorging the
`infringer’s total profits. Cf. Wal-Mart Stores, 529
`U.S. at 214 (noting the deterrence effect from “the
`plausible threat of successful suit”). The time,
`expense, and difficulty of even identifying and
`locating design pirates, along with the time and
`expense of litigation, already make effective design
`patent enforcement unusually difficult. A new
`interpretation of § 289, significantly reducing a
`design pirate’s expected losses in litigation, would
`make it harder still, rendering the patent right
`functionally worthless in many cases.
`Given the inability of §§ 283 & 28

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