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Gibson Dunn - The Fashion Law and Business Report > Posts > New Jersey Senator Raises the Specter of Government Action to Combat Counterfeit Prom Dresses
10.20.14
New Jersey Senator Raises the Specter of Government Action to Combat Counterfeit Prom Dresses

It appears that the United States Congress may once again becoming interested in the subject of IP protections for fashion designs.

Because U.S. Copyright Law does not protect “useful articles,” there have been several attempts in Congress over the years to introduce specialized protections for fashion designs, comparable to mechanisms that exist in other industrialized countries.  For example, in 2010, Senator Charles Schumer of New York introduced the Innovative Design Protection and Piracy Prevention Act in the U.S. Senate.   In 2011, Representative Bob Goodlatte of Virginia introduced the identical bill to the House.   And then, in 2012, Senator Schumer introduced a slightly modified version of the bill, the proposed “Innovative Design Protection Act.”  The bills would have amended Section 1301 of the Copyright Act to extend protection to fashion designs.   None of these bills were passed into law.

More recently, Senator Bob Menendez of New Jersey has sent a letter to the Director of the Intellectual Property Rights Center stating that “the domestic prom and bridal dress industry is increasingly under threat from Chinese dress manufacturers and websites that sell counterfeit goods directly to U.S. consumers.”  The letter continues, “American companies that invest in the design, marketing, and manufacturing, and distribution of prom and bridal dresses are losing sales to Chinese firms that flagrantly violate U.S. law.”  Senator Menendez asked the IP Rights Center to focus its enforcement efforts on combatting this threat. 

Designers of prom dresses, however, have faced difficulties in enforcing their rights in the U.S. courts.  For example, in Jovani Fashion, Ltd. v. Fiesta Fashions, Docket No. 12-598- cv, 2012 WL 4856412 (2d Cir. Oct. 15, 2012), cert. denied 133 S.Ct. 1596 (2013), the U.S. Court of Appeals for the Second Circuit concluded that the ornamental elements of the plaintiffs’ prom dresses could not be separated from the utilitarian function of the dresses, and therefore could not be protected as a matter of copyright law.  In other cases, wedding dress designers have had more luck, however.  For example in Mon Cheri Bridals Inc. v. Wen Wu, 383 F. App’x 228, 2010 WL 2222497, at *1 (3d Cir. June 4, 2010), the U.S. Court of Appeals for the Third Circuit affirmed a jury’s verdict against a company that had sold imitation wedding and special occasion dresses.

Time will tell whether this issue—and the differences in the way U.S. courts treat this issue—gains traction and makes it back onto the legislative agenda.

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