Designers Face Uphill Battle When It Comes to Knock-offs

It made headlines recently after it came to light that Target had knocked off Proenza Schouler’s best-selling “it” bag, the PS1. The PS1 retails for $1,595, while Target’s version is a mere $34.99. Knock offs are nothing new, but the Proenza Schouler bag situation hit a nerve — after all, the design duo has a history of partnering with Target. If they aren't off limits, who is?
So what exactly are the laws that protect the Proenza Schoulers of the world from this kind of thing? We talked with Fordham School of Law’s Susan Scafidi to find out. Scafidi is the first US law professor to ever offer a fashion law class, is an intellectual property expert and recently formed the Fashion Law Institute at Fordham, which offers education, research and assistance on all the points in the life of a garment where the law comes into play.
What is the difference between counterfeiting and knocking something off?
Counterfeits are unauthorized, close copies of labels, logos, or other distinctive markings -- like that "Prado" bag or "Vuiton" scarf for sale on Canal Street, or red-soled Loubie lookalikes available online. These are illegal, and manufacturing or selling them can mean having to pay damages to the trademark owner or even criminal sanctions.
Most fashion designs, however, are legally vulnerable to copying that doesn't include the label or other types of designer signature, at least in the US. Other countries, including all of Europe and Japan, do give fashion designs legal protection against knockoffs. In other words, it's legal for an American knockoff artist to copy Chelsea Clinton's wedding gown, but illegal for a British high street chain to copy Kate Middleton's.  
Congress came close to passing a new law last year protecting fashion designs -- what happened? 
Congress came very close to passing a US law protecting fashion designs late last year. Time ran out in the last session of Congress, though, and the Innovative Design Protection and Piracy Prevention Act championed by both the Council of Fashion Designers of America (CFDA) and the American Apparel and Footwear Association (AAFA) will have to be reintroduced this term. If passed, the bill will give a short, three-year term of protection against copies that are "substantially identical" to original designs and have only trivial differences from the original.  
Having even this little bit of intellectual property protection will change the game for emerging designers, since they can't just rely on consumer recognition of their trademarks. Established companies with recognizable logos have an uphill battle against the many counterfeiters out there, but at least they have the law on their side. The work of indie designers is often copied without the label or logo, which leaves them with no legal protection at all -- and design pirates know this. Once a new law is in place, copyists will have to think twice before making near-exact replicas from the runway.  
Why has intellectual property law been wary of engaging with fashion?
American fashion designers have been asking for protection for a hundred years, to no avail. I've spent years researching the reasons why, and it comes down to two things: historical opposition from domestic manufacturers and fashion's frivolous reputation. Today, neither of those obstacles to protection exist. Most manufacturing, especially of cheap knockoffs, has moved overseas. And fashion is definitely having a cultural moment, with the creative contributions of designers finally recognized alongside those of artists who work in other media.  
What leg does Proenza Schouler have to stand on?
Unfortunately Target isn't the first to knock off the PS1 bag, but this action is particularly egregious because Target has tried to build fashion cred by partnering with emerging designers for capsule collections -- including a very successful collaboration with Proenza Schouler a few years back.  
Jack McCollough and Lazaro Hernandez could try to claim that the PS1 is so recognizable that the design itself is like a trademark, making consumers think that the look-a-likes are actually Proenza Schouler bags. Convincing a court to recognize this kind of "trade dress" protection isn't easy, legally speaking, but it has been successful for truly iconic designs like the Hermès Birkin.  
Who is most impacted by the knock-off economy?
As in the case of Jack and Lazaro, it's the little guys who take the worst hit in the pocketbook when they're knocked off. If there were a law against slavish copying in place, Proenza Schouler would have much greater legal leverage in asking Target to share the profits on its version of the bag, or better still, getting the company to make a deal in advance. 
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