Watch Your Back

Litigation surrounds denim back-pocket designs

It is a situation familiar to every designer: Someone says they saw a garment in a store that looks exactly like yours.

It happened to Eric Kim, owner of Los Angeles–based, 15-month-old premium-denim label Monarchy. Recently, Kim received a call from Pulse, one of his key New York retail accounts. The retailer had seen a pair of jeans with Monarchy’s distinctive Union Jack back-pocket design, made by a manufacturer that Kim says is known for offering inexpensive knockoffs of premium jeans.

Kim has requested that his lawyer send the company a cease and desist letter but admits that being copied “is just part of the business.” Sending the letter, he says, “is more a matter of pride and ego.” While he believes knockoffs should be discouraged, “I don’t feel it would affect my brand. There’s a difference between being a price-point garment which people buy because it’s a status symbol and buying a jean because it’s a copy. I think it’s two different consumers.”

As the premium-denim market continues to thrive—and with embroideries and embellishments the chief way brands seek to establish an identity—back-pocket designs are becoming an increasing source of litigation for copyright and trademark infringement.Drawing a fine line

Not only is it important to distinguish counterfeit (in which a company’s label is pirated) from copyright, it is also necessary to differentiate trademark from copyright, notes Marya Yee, a New York–based attorney in the office of Donovan & Yee, who specializes in fashion and jewelry brands. Copyright is intended to protect works of authorship and artistic creation, while trademark is a distinctive sign or symbol used by a business to identify itself and its products. A back-pocket embroidery that changes from season to season would fall into the copyright category, while a design element such as the Nike swoosh would be considered a form of trademark because it remains consistent on Nike products.

Trademark is easier to protect, says Yee. Copyright is subject to examiners, and it is possible for a copyright petition to be rejected. Moreover, infringement is not an exact science: In a legal dispute, it comes down to a question of human judgment as to whether two designs look similar, or whether a reasonable person would be confused by similar trademarks.

Though creative works are automatically protected by copyright as soon as they are put down on paper (or on denim), in most cases registration with the U.S. Copyright Office is required in order to sue or even threaten to sue. “And registration is a hassle that distracts you from your everyday work,” says Yee. Still, “if your design is sufficiently distinctive you might want to register it.”

The copyright procedure is intended to be user-friendly and only costs $30. Registering a trademark, on the other hand, costs $350 and usually requires the assistance of an attorney, which raises the cost considerably.

Premium-denim giant Seven for All Mankind has registered the copyright of several of its back-pocket designs, says senior vice president and general counsel Barbara Kolsun. The company watches the market closely, and like most designer houses, receives tips about possible imitators from its retail accounts. If Kolsun believes a design is too close to a Seven product, she sends a letter to the manufacturer requesting it to cease and desist, “and depending on how much product was sold, we’ll ask for money. We try to do it as gracefully as possible, but we’re also very firm about what’s ours is ours.”

If the party cooperates, Seven asks for a percentage of profits on the infringing product, “almost like a license,” says Kolsun. If the party does not cooperate and Seven is forced to sue, the law allows for the copyright holder to seek statutory damages.

Many of Seven’s pending lawsuits have been filed in Europe, where the brand is often copied but where Seven virtually always prevails. “In Europe, intellectual property is taken a lot more seriously,” says Kolsun. And Seven’s disputes are almost always with cheap imitators, not other premium brands. “Good designers do their own thing,” explains Kolsun. “Really creative designers don’t copy.”

A trademarked design needn’t be elaborate. For Levi’s, it’s the simple arcuate (double-arc) design on all its back pockets. “It’s copied a lot,” says Tom Onda, chief brand protection counsel. “We currently have over 500 infringement matters pending worldwide, with the majority happening in the U.S.”

Recently, British jeans brand Lee Cooper attempted to register a skewed but similar stitching design at the U.S. Patent and Trademark Office, says Onda. Levi’s successfully opposed the registration. “That case really showed the broad scope of protection in our arcuate, in that it’s not limited to identical reproduction but variations as well. It was a very strong case for us.”

Most cases, adds Onda, “settle without our having to file suit.”

Levi’s has also trademarked its red tab, protecting the company from any other manufacturer using a rectangular piece of fabric to identify the brand. “The protection is quite broad and is not limited to color or placement,” says Onda. “It’s basically a fabric marker placed on a seam. Our rights are quite strong with respect to the red tab. And we’ve had hundreds of cases where people have tried to adopt a tab in a different color or position on the pocket, and we were successful in those cases.” Making the exception the rule

Protecting designs—not just trademarks—may become easier for manufacturers thanks to Alain Coblence, a New York–based attorney who represents the Council of Fashion Designers of America, the Federation de la Couture in France, and Camera de la Moda in Italy. Coblence has introduced a bill in Congress that would give designers three-year copyright protection over their creations.

Most of the industrialized world provides that the design of an article of clothing is protected by copyright law, Coblence explains. But in the United States, an article of clothing—even an elaborate couture gown—is considered a “useful item” that belongs in the public domain.

The first exception to the “useful item” law was made in 1998 when Congress passed a law decreeing that the design of ship hulls—a useful item if there ever was one—could be copyrighted. “It was a major breakthrough in making other exceptions to the rule,” says Coblence.

Coblence is using the boat hull–design exception as the precedent in the law he is backing, but instead of asking for 10-year copyright protection as with marine vessels, he is only asking for three, “recognizing that there are fashion trends, and when a design becomes a trend it should belong to everybody.”

Called the Design Piracy Prohibition Act (HR 5055) and introduced March 30, 2006, the bill was received “quite well” by both Republicans and Democrats in the House of Representatives. It faces the Senate next, and Coblence hopes to pass it before the November elections. It would take effect immediately.

“Design piracy is counterfeiting without the label,” says Coblence. “In fact, if counterfeiters didn’t pirate the designs, there would be no counterfeit. If you put a Gucci label on a bag that doesn’t look like Gucci, there would not be any counterfeiting. So the design element is crucial in counterfeiting, and it was pretty easy to explain to Congress that you can’t be against counterfeiting and not be against design piracy.”