A Fashionist’s Guide to Intellectual Property: Understanding Fashion Copyrights, Trademarks and Patents PDF Free Download
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A Fashionist’s Guide to Intellectual Property
Theodore C. Max
Nick Barnhorst
Adrienne T. Montes
Maja Szumarska
Understanding Fashion Copyrights, Trademarks and Patents
Our Panelists
Nick Barnhorst, Fresh, Inc., General Counsel Adrienne T. Montes, Sr. Director, IP & Marketing
Counsel, Kendra Scott LLC
Intellectual Property Rights Available to
Protect Fashion Designs
Copyrights
Trademarks and Trade Dress
Patents/Design Patents
Copyright – Scope of Protection
▪Original works, independently created and fixed in
a medium (Pictorial, Graphic, Sculptural,
Audiovisual and Sound Recording)
▪Minimal creativity needed
▪Protection against substantially similar copies
▪Copyright duration is generally life of author plus 70
years:
-For works made for hire, duration is 95 years
from first publication or 120 years from
creation, whichever is shorter
▪Useful articles not protected unless:
-They contain physically separable visual or
sculptural features, and
-Those features are separable from their useful
function
▪Physical separability
-Creative features can be physically removed
▪Conceptual separability
-Creative features invoke a concept separate
and apart from the article’s function
Fashion Designs Protected by Copyright
Original patterns and prints
Fashion Designs Protected by Copyright
Jewelry Designs as a "Sculptural Work”
▪
Van Cleef & Arpels Logistics, S.A. v. Landau Jewelry, 547 F. Supp. 2d 356
(S.D.N.Y. 2008), holding original jewelry design protected by copyright.
Audiovisual Works Protected by Copyright
▪Social media content (the video and choreography) is protected by
copyright. For example, the “Official Kendra Scott song & dance.”
Copyright Protection – Best Practices
1. File for copyright protection for
original prints and patterns, including
lace and sculptural works
(Application Filing Fee: Single
Application: $45; Standard
Application: $65; and Special
Handling Fee for A Claim: $800)
2. Consider filing for design elements
that can be physically or conceptually
separated from the functional aspects
3. Include notice on labels:
© 2023 Jane Doe Fashions, LLC
4. Consider registering photographs
from runway or advertising materials.
5. Seek copyright registration
before marketing fashion designs to
receive statutory damages, costs and
attorney’s fees for infringements
6. Make sure the source of the
design is known to prove
independent creation
7. Keep documentation if work-
made-for-hire or independent
contractor and consider
indemnification agreement
8. Obtain assignment of rights from
independent contractors
9. Be cautious when using inspiration
boards like Pinterest
Star Athletica LLC v. Varsity Brands, Inc.,
Supreme Court Defines Separability in Fashion
The Supreme Court set forth a new two-part separability test, resolving a split between circuit courts and
upholding the previous Sixth Circuit holding that the stripes, chevrons and other visual elements of Varsity
Brands’ cheerleading uniform are eligible for copyright protection.
1) Separate Identification:
“The decision maker need only be able to look at the useful article and spot some two- or three-
dimensional element that appears to have pictorial, graphic, or sculptural qualities.”
2) Independent Existence:
“The feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in §101
once it is imagined apart from the useful article.” (i.e., on some other non-useful medium like a canvas.)
Star Athletica v. Varsity Brands,
(U.S. Supreme Court, decided March 22, 2017)
Applying this new two-part test to the facts of
the case, Justice Thomas concluded:
•The decorations are separable from the
uniforms and therefore eligible for copyright
protection because:
•(1) one can identify the decorations
as features having pictorial, graphic,
or sculptural qualities; and
•(2) the surface decorations would
qualify as two-dimensional works of
art if separated from the uniform and
applied in another medium, for
example, a painter’s canvas.
For the purposes of this analysis, it does
not matter that applying such designs
onto a canvas will result in creating
“pictures of cheerleader uniforms” and
would retain the outline of a
cheerleading uniform.
Recent Trends: Using Copyrights to Stop False
Advertising and Association
▪By registering photographs, marketing
materials, and audiovisual works,
brands are able to add copyright
infringement, false advertising and false
association claims to trademark
infringement and counterfeiting claims;
▪Even if the copyrights are held by a non-
US parent, an exclusive US licensee has
the right to sue for the exclusive
licensed copyright rights;
▪This also means that a paparazzi’s
photograph cannot be used without
first licensing the image.
▪For example, Photographer Michael
Stewart is suing Project 1920 d/b/a
Senreve for posting his copyright-
protected image of Angelina Jolie on
social media and its e-commerce site to
promote its brand. Stewart v. Project
1920, Inc.,5:24-cv-00884 (N.D. Cal.).
Recent Trends: Using Copyrights to Stop False
Advertising and Association
▪Even if a product’s design or
branding may be difficult to
protect under trade dress or
trademark law, copyright
protection of advertising photos
offers another tool to combat
infringement.
▪Having a copyright registration
signals that the brand is
prepared to act, which can
discourage copycats from
misusing photos in advertising
or product sales.
Trademarks and Trade Dress
What is Protected
Trademarks:
➢ Words, Names, Letters
➢ Slogans
➢ Domain Names
➢ Symbols and logos
➢ Prints and patterns
➢ Color
Trade Dress:
➢ Product design, configuration,
shape, color and appearance
➢ Product packaging
➢ Business décor
Trademarks and Trade Dress
Scope of Protection
▪Distinguish the source of goods and services of one person or
entity from another
Source Identifier + Source Distinguisher= Distinctiveness
-inherently distinctive, or
-acquired distinctiveness through use/secondary meaning
▪Protection against marks that are likely to cause confusion or
dilution
▪Need to establish secondary meaning for color trademarks and
product configuration trade dress
▪Trademark and trade dress rights last for as long as they are in use
Trademarks and Trade Dress
Fashion Limitations
▪Functionality
-No protection for designs that are essential to the use or
purpose of the article or affects the cost or quality of the article
▪Merely Ornamental
-No protection for marks and designs that are merely decorative
features on the goods and not used as a trademark to indicate
the source of the goods
▪Distinctiveness
-Must prove that your mark or design is inherently distinctive or
has achieved a certain level of consumers-source recognition
(called “secondary meaning”).
Protected Fashion Trade Dress
Product shape or configuration
▪Must be not merely functional
▪Must acquire distinctiveness through secondary meaning for registration on the
Principal Register
How Do You Prove Secondary Meaning for
Trade Dress
▪“To prevail on a trade dress claim, the
plaintiff must demonstrate that the
product's appearance has acquired
‘secondary meaning’ -- the consuming
public immediately identifies the
product with its maker -- and that
purchasers are likely to confuse the
imitating goods with the originals.”
Coach Leatherware Co., Inc. v.
AnnTaylor, Inc., 933 F.2d 162, 168 (2d
Cir. 1991).
▪“Factors that are relevant in determining
secondary meaning include “(1) advertising
expenditures, (2) consumer studies linking
the mark to a source, (3) unsolicited media
coverage of the product, (4) sales success,
(5) attempts to plagiarize the mark, and, (6)
length and exclusivity of the mark's use.”
Christian Louboutin S.A. et al. v. Yves Saint
Laurent America Holding, Inc. et al., 696
F.3d 206, 226 (2d Cir. 2012), quoting
Genesee Brewing Co., Inc. v. Stroh Brewing
Co., 124 F.3d 137, 143 n. 4 (2d Cir. 1997).
Example: Red lacquered soles on
Christian Louboutin shoes
“Best Evidence” of Secondary Meaning
Is “Defendants’ Own Direct Copying”
▪Attempts to plagiarize alone are
sufficient to establish secondary
meaning. Centaur Communications v.
A/S/M Communications, 830 F.2d 1217,
1222 (2d Cir. 1987) (“The most
persuasive Thompson Medical factor is
the finding that A/S/M had intentionally
copied Centaur’s mark.”); and
▪The Ninth Circuit in Jason Scott
Collection, Inc. (“JSC”) v. Trendily
Furniture, LLC, Trendily Home Collection,
and Raul Malhotra, 68 F.4th 1203 (9th
Cir. Decided May 30, 2023), affirmed the
district court’s conclusion that, in this
instance, Defendants’ copying was proof
that JSC’s designs had acquired
secondary meaning because Trendily
intentional attempted to exploit JSC’s
goodwill in the furniture industry.
Federal Circuit Reverses ITC on Chuck Taylor
Sneakers on Secondary Meaning for Trade Dress
Converse v. ITC and Sketchers,
New Balance, et al. (Fed. Cir.
2018):
Federal Circuit set forth the following test for
secondary meaning regarding Converse sneaker
trade dress:
Today we clarify that the considerations to be assessed in
determining whether a mark has acquired secondary meaning
can be described by the following six factors: (1) association of
the trade dress with a particular source by actual purchasers
(typically measured by customer surveys); (2) length, degree,
and exclusivity of use; (3) amount and manner of advertising; (4)
amount of sales and number of customers; (5) intentional
copying; and (6) unsolicited media coverage of the product
embodying the mark. . . . All six factors are to be
weighed together in determining the existence of secondary
meaning.
▪The Federal Circuit held that product design trade
dress can only infringe if an ordinary observer
would perceive that that “the two designs are
substantially the same.”
Trademarks and Trade Dress
Protection
Best Practices
1. If practical, file an application to register your trade dress and file for
incontestability after 5-years of continuous use;
2. Use “look for” advertising;
3. Do not file for a utility patent for your trade dress;
4. Consider filing for design patent protection for trade dress;
5. Avoid touting the utilitarian advantages of your design;
6. Avoid common shapes or colors that serve functions other than brand
identify;
7. Clear your trademarks and designs in advance of use; and
8. Use trademark notices (® when registered or when not) on your
products, packaging and/or marketing materials
Design Patents
What is the scope of protection?
•The right to exclude others from making, using and selling designs that closely
resemble the design;
•The test for infringement is based upon an ordinary observer and whether they
would be “non-obvious” to “the ordinary intelligent man”; and
•Protection lasts for 14 years from the date of the grant, except for design
patents issued from applications filed on or after May 13, 2015 , which affords
15-years of protection.
What is protected?
•Designs that are: Novel, Non-obvious and Ornamental
Fashion Designs Protected by
Design Patents
HANDBAGS
Fashion Designs Protected by
Design Patents
SHOES
Fashion Designs Protected by
Design Patents
CLOTHING
Design Patent
Fashion Limitations
▪Functional elements in fashion design are generally not protected
-Clasps on jewelry or handbags, etc. are difficult to protect without
design element;
▪Design patents may take as long as 1 to 2 years to issue
-Can sometimes exceed the lifespan of a seasonal fashion design
-Experienced practitioners can sometimes obtain design patents
within a year or less;
▪There is no patent protection while your patent is pending (damages
limited to period after issuance of patent), until the registration is
issued; and
▪Design patent protection is generally limited to the drawing and claims
of the patent
-A clever infringer can make certain changes to avoid liability.
Design Patent
Fashion Limitations
▪File a design patent application before
fashion design is on the market or
runway;
▪Provide notice of your patent on your
products
-“Patent Pending” if your application
is pending
-“Design Patent No. _____” if your
patent has issued; and
▪Don’t delay in bringing your claim.
Cutting Edge Cases to Consider
Copyright Fair Use: Are There Supreme
Consequences for Warhol?
Fair Use and Trademark: When Do Parody
and Artistic Expression Justify
Commercial Exploitation Beyond Rogers v.
Grimaldi?
How Does Artificial Intelligence Impact
Protection of Fashion Intellectual
Property?
Customization
Schedule A
Customs
Andy Warhol Foundation v. Goldsmith
•On May 18, 2023, the U.S. Supreme Court
ruled in favor of photographer Lynn Goldsmith
against the Andy Warhol Foundation for the
Visual Arts, Inc.’s (“AWF”);
• The Supreme Court held that the “purpose
and character” of AWF’s commercial use of
Warhol’s portraits of Prince shared the same
commercial purpose of the original
photograph taken by Ms. Goldsmith and, as a
result, did not constitute fair use;
• The Supreme Court’s decision affirmed the
ruling of the Second Circuit Court of Appeals,
which held that the Warhol work was
derivative of the original, and noted that “the
new expression may be relevant to whether a
copying use has a sufficiently distinct purpose
or character” but that factor was not
dispositive by itself; and
• The Court found that the Warhol Foundation’s
licensing of the Orange Prince to Conde Nast
did not have a sufficiently different purpose as
the Goldsmith photograph because both were
“portraits of Prince used in magazines to
illustrate stories about Prince.”
Jack Daniel’s Properties v. VIP Products
▪On June 8, 2023, the Supreme Court in a
unanimous decision held that a
trademark infringement claim concerning
“a squeaky, chewable dog toy designed
to look like a bottle of Jack Daniels
whiskey” which, as a play on words,
turns the words “Jack Daniels” into “Bad
Spaniels” does not receive special First
Amendment treatment where the
accused infringer used the trademark
and trade dress at issue as a source
identifier for its own goods. With respect
to the Lanham Act dilution by tarnishment
claim, the Court ruled the parody defense
does not apply where the trademark use
was commercial in nature: “The use of a
mark does not count as noncommercial
just because it parodies, or otherwise
comments on, another’s products.”
“Fair Use” and Protected Expression or Infringing
MSCHF?
▪In 2022, Vans, Inc. and its parent VF Corp.
brought an action against MSHCF Product
Studio, Inc. (“MSCHF”) for trademark
infringement with respect to its trademark
and trade dress to its OLD SKOOL shoe;
▪The Eastern District of New York issued an
injunction and held that the art
collective’s shoe infringed Vans trademark
and trade dress. The District Court held
that the parody defense did not apply
because the shoes failed to convey a
satirical message; and
▪Vans obtained a temporary restraining
order and preliminary injunction against
art collective MSCHF, promoting and
selling its WAVY BABY shoes.
Second Circuit in Van’s, Inc. v. MSCHF Prod.
Studio, Inc. Applied Jack Daniel’s Decision
▪On appeal, MSCHF contended that the
OLD SKOOL shoes were an artistic
expression rather than footwear. MSCHF
argued on appeal that the First
Amendment protects the MSCHF
collaboration which purports to make
social comments on the shoe industry
because it is “artistically expressive.”
▪At oral argument, MSCHF’s counsel
argued: “Judges are not the ones who
should decide, ‘Is it good art or not?’”
▪The Second Circuit held that:
“MSCHF used Van’s trademarks in a
source-identifying manner” and that
MSCHF is not entitled to protection
under Rogers.
▪The Second Circuit concluded that
MSCHF’s “Wavy Baby” creates a
likelihood of confusion and that the
District Court did not exceed its
discretion by enjoining MSCHF’s
marketing and sale of the “Wavy
Baby’s” footwear.
How to Deal with Dupes?
▪“Dupe culture” continues to grow on
TikTok, YouTube, and Instagram, and
spur counterfeit sales, users market
lookalikes of popular famous and
iconic branded designs. Reddit saw
a 50% rise in views of “dupe-focused
communities”; and
▪Some dupes are sold openly with
disclaimers while others arrive with
counterfeit receipts, dust bags, and
packaging, making it difficult to
distinguish between the authentic
item and the dupe.
▪Be careful of: Benefit Cosmetics LLC
v. e.l.f. Cosmetics Inc., case number
3:23-cv-00861 (N.D. Cal)
Protecting Three-Dimensional Trademarks
In re Audemars Piguet Holding SA
▪In response to “dupe culture”,
brands are seeking to protect trade
dress and design patents, however
this type of protection may be
difficult to obtain; and
▪For example, on January 2, 2025,
the US Trademark Trial and
Appeals Board affirmed the
rejection of two applications for
trade dress protection for two
watches by Audemars Piguet
because: (1) “product design is
inherently nondistinctive and
neither application claimed
acquired distinctiveness”; (2) the
drawings were held to be deficient
because they failed to portray
several functional elements in
dotted or broken lines.
How to Keep Resellers from Falsely Advertising
Authenticity and Claims of Authentication Expertise?
▪Chanel, Inc. v. What Goes Around Comes
Around, LLC
▪Advertising and selling a counterfeit item as
genuine is per se false advertising;
▪Resellers need to be able to support
authenticity guarantees and claims of
authentication expertise (“meticulously
trained expert authenticators” and “100%
genuine”);
▪In a June 26, 2025 opinion and order, the court
denied WGACA’s bid to overturn a $4 million
jury verdict for willful trademark infringement
and false advertising, upheld a permanent
injunction restricting the use of Chanel branding
by WGACA, and awarded Chanel over half a
million dollars in litigation costs; and
▪Case is on appeal to Second Circuit.
Artificial Intelligence and IP protection
▪Authenticators/Platforms/Resellers
advertise and promote AI-powered
product verification to strengthen
resale buyer confidence;
▪Companies such as Entrupy provide
a “Certificate of Authenticity” and
every authenticated item is 100%
financially-backed for a full year;
and
▪Companies such as Chanel and Nike
have challenged claims relating to
authentication.
Recent Trends: Customization & Fake
Collabs
▪Reuse and customization of products from famous
brands is widespread and involves all types of
brands;
▪First sale doctrine and Champion Spark Plug Co. v.
Sanders and progeny are key;
▪Nike v. S2 Inc. (S.D.N.Y.)
- On June 25, 2025, Nike settled a trademark lawsuit brought
against The Sneaker Surgeon for direct and contributory
infringement, with defendants agreeing to pay an undisclosed
sum and a consent judgment;
- Defendants agreed to stop making their customized shoes or
engaging in any conduct that is likely to cause confusion with
Nike’s brand; and
-However, the Shoe Surgeon can “provide certain ‘one on one’
services detailed in the confidential settlement agreement” as
long as there is a disclaimer that there is no affiliation with or
authorization by Nike, and that the services are personal and
noncommercial; and
▪Levi Strauss & Co. v. NotSoNormal (N.D. Cal. Filed Aug.
8, 2025)
- Levi Strauss & Co. has launched a trademark infringement action
against a Los Angeles-based retailer it accuses of selling
reworked versions of its apparel products for hundreds of dollars.
36
Judge Kness Creates A Schedule A Flux
Eicher Motors Limited v. The Individuals, Corporations, Limited Liability
Companies, Partnerships, and Unincorporated Associations Identified on
Schedule A Hereto:
▪U.S. District Court Judge John F. Kness has challenged how the Schedule A
cases have been handled in the Northern District of Illinois:
Having imposed an across-the-board stay in all newly-filed Schedule A
cases on its docket, this Court has taken a fresh and close look at the
propriety of the Schedule A mechanism. That review has not been
flattering: as explained below, the routine granting of preliminary
injunctive relief in the absence of adversarial proceedings; the
widespread sealing of judicial documents from public scrutiny; the pell-
mell prejudgment freezing of defendants’ assets to ensure the practical
availability of a legal remedy; and the mass joinder of multiple
defendants is unjustified under the procedural rules and should not
continue. Although the scourge of intellectual property theft and abuse is
real, persistent, and highly damaging, the remedy for that problem must
be sought by other means. Accordingly, Plaintiff’s motion for a temporary
restraining order is denied.
▪He invited the plaintiff to appeal the decision and for the Seventh Circuit to
provide guidance.
Best Practices –
Protecting And Enforcing Your Intellectual Property
▪Take steps to protect your brand by registering copyrights,
trademarks and design patents, where possible to build
your brand equity;
▪Balance the needs of brand protection with the possible
risks of being called an “IP Bully”, especially if you consider
the risks of consumer pushback and “going viral” in social
media;
▪When will a cease and desist letter work and when is
litigation necessary? Consider your adversary and the
possible ways in which your enforcement effort will be
perceived;
▪What is the difference between “vigilant protection” and
“a brand that takes itself too seriously”? Or is it really a
matter of perspective?;
▪Make sure your IP protection strategy comports with your
business model and communication and marketing
strategy;
▪Be mindful of respecting the intellectual property rights of
others, including respecting other cultures and indigenous
peoples to avoid claims of copying or cultural
appropriation; and
▪Protect your brand and its intellectual property and be
sensitive to trends and changes in the legal landscape.
Best Practices –
Recording IP With U.S. Customs
▪US Customs will detain and seize imported goods for intellectual
property violations;
▪US Customs enforces trademarks, trade names, trade dress and
copyrights that are recorded with Customs;
▪Record your federally-registered trademarks, trade dress, and
copyrights with US Customs:
- You cannot record registered patents with US Customs;
▪Train US Customs about your brand through Product
Identification Guides and webinars;
▪In July, President Trump signed an Executive Order that ends
the "de minimis" exception that allowed low-value shipments
(under $800) to enter the U.S. duty-free effective August 29,
2025;
▪This loophole has been exploited to smuggle counterfeit goods
and drugs, bypassing tariffs and U.S. businesses;
▪The Trump Administration said, "Between 2015 and 2024, the
volume of de minimis shipments entering the U.S. increased
from 134 million shipments to over 1.36 billion shipments,"
adding that in FY24, 98% of narcotics seizures and 97% of
intellectual property seizures were linked to these shipments;
and
▪Officials cite that 90% of all cargo seizures by U.S. Customs and
Border Protection (CBP) in fiscal year 2024 originated as de
minimis shipments.
Enforcement Tips –
Thoughts to Consider
▪When enforcing rights on the
Internet consider using all IP and
branding materials;
▪Consider economies of scale and
cost/benefits;
▪What works for a major brand
might not work for an emerging
brand;
▪What makes a brand? How does
law enforcement view a brand?;
and
▪Strategies for anti-counterfeiting
versus infringements and
knockoffs
