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Thursday, September 21, 2006

When is a shoe not a shoe? Some more thoughts on the DPPA

So there was no Project Runway last night (or at least my TiVo didn’t record it), much to my disappointment. So as a very weak substitute I instead read Eliya, Inc. v. Kohl’s Dep’t Stores, 2006 WL 2645196, a recent SDNY opinion that reflects on an issue I blogged about earlier: the intersection of fashion and copyright. (Hat tip: William Patry.) The plaintiff created a shoe design, memorialized in a two-dimensional drawing, and the defendant used the written design to make and sell its own shoes. Straightforward case for infringement, right?

The court didn't think so, giving two reasons for its finding in favor of the defendant. First, the plaintiff’s copyright was for an etching, not a three-dimensional object, so the defendant’s creation of shoe in three-space can’t be a copy of the two-dimensional original. A shoe, in other words, is not a drawing of a shoe. This is obviously true as a descriptive matter, but doesn't seem to resolve the issue because the Copyright Act also protects derivative works, which almost always involve a translation from one medium to another. If I made a movie based on a novel without getting the author’s permission, I’d be liable for infringement regardless of the fact that a film doesn’t fall into the same category of creative work as a book.

More convincingly, the court pointed out that even if the shoe were a derivative work, it’s still not infringing because shoes—or any clothes—are useful objects, and as such aren’t subject to copyright protection. This part seems clearly right, and as the court points out, it imports a sensible limiting principle, preventing designers from claiming copyright in utilitarian objects by virtue of their exclusive rights in two-dimensional plans for those objects. Of course, the court’s holding would be different if the Design Piracy Prohibition Act passed, creating an exception to the useful objects doctrine for fashion. And this twist made me think a little more about the practical implications of the DPPA.

As it stands now, fashionistas can copyright their patterns but not the clothes that are made based on them. This means that you can’t copy another designer’s patterns and sell them in stores, but you can create and sell clothing based on those designs with impunity. Additionally, if you see an article of clothing you like in a store, on the street, or during fashion week, you’re free to copy it as well. The DPPA aims at the second problem, seeking to prevent low-end makers from reproducing couture based on eyeballing it alone. But as Eliya suggests, the legislation would have broader effects on the industry than its drafters seem to have intended.

By carving out an implied exception for fashion designs from the useful articles doctrine, the DPPA extends the scope of protection to patterns or any other written work on which clothing may be based. Under current law, clothes based on copyrightable drawings are unprotectable, but if the DPPA changes that, then they would likely be considered protected derivative works.

But is this a problem? There might be a few concerning wrinkles. The first is that this development increases the bases for possible fashion infringement suits. We’re no longer talking only about claims that a sweatshop in Asia is turning out knockoffs of the hottest designs from fashion week. Now any pattern or drawing that might have inspired a designer could form the basis for an infringement action. The possibilities for opportunistic strike suits become clear. Imagine that a hot new designer quits her job at a major fashion house, creates her own line, and hits it big at fashion week.

In order to state a plausible claim for infringement, the previous employer need only comb through its backfiles and produce a few images or patterns that were available when the designer was in its employ, and that bear some similarity to the new work. In light of the fact that fashion is, to a greater extent than most creative industries, constrained in its medium of expression and characterized by a high degree of reincorporation of and references to past eras and regnant styles, the likelihood of such scenarios proliferates.

This implication of the DPPA has effects beyond the world of high fashion. Under current law, publishers of patterns sell them rather cheaply because they have no intellectual property in the clothes people make based on them. But if those clothes did become proprietary, new vistas of price discrimination would open up to pattern designers, who could now use licensing to extract profit from the derivative works as well. The patterns could come with licenses that permitted purchasers to make only a single dress (cheapest) to an unlimited number (most expensive). I’m not sure whether this is an unalloyed good, but it may well make the pattern-design industry more lively by creating the possibility for greater profits and inviting more competition.

As I indicated in my previous post, I’m skeptical of the DPPA simply because I doubt it will actually make designers better off. Reading Eliya makes me no more a fan of the legislation, but it does make me think that it raises practical and doctrinal issues far beyond what its drafters intended.

Posted by Dave_Fagundes on September 21, 2006 at 05:48 PM in Culture, Intellectual Property | Permalink


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Yes, I remember Sturdza (the UAE embassy case) well, because my judge worked on that opinion while I was clerking (though another clerk worked on it). So I'm obviously biased when I say it's a great opinion, but it also seems to illustrate the point you suggest. Sturdza's claim was that the final UAE embassy (not the plans for it) infringed her original design (which was submitted to a contest but not ultimately built). The original design would have been protected by copyright before the 1992 revision, but the resulting work wouldn't have been, so Sturdza would have been out of luck, even on a derivative-work theory. Empirical work would give a better sense how the 1992 revisions changed the character of litigation over this issue, but I don't know of any.

Fwiw, there was a post on this site about copyright for architectural works by Ed Lee earlier this year:


Posted by: Dave | Sep 22, 2006 11:14:43 AM

Maybe we can learn something from architectural works. Any cites to empirical articles would be helpful and please send them to me. But the treatment offers a parallel. Before 1992 or so, copyright protection was given only to the 2 dimensional representations of a building, namely the plans and sketches. Much of the caselaw dealt with the scope of protection for these plans under copyright's version of the functionality doctrine. After 1992 or so, architectural work, meaning the three dimensional buildings, was added to the list of protected works. The caselaw that this addition produced started appearing in the late 1990's and is very instructive. Many of the disputes are brought by developers of planned communities who claim that a competitor's cathedral ceilings, French bedrooms, Victorian manses, etc. are infringing. My favorite case involved the UAE Embassy building in DC in which the court does a nice job of separating out protectible from non-protectible elements of the work. I am skeptical about the DPPA too.

Posted by: Shubha Ghosh | Sep 22, 2006 10:16:43 AM

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