The Curious, Yet Conceivable, Case for 'Common-Law Copyright' in Clothing Creations

Abstract:     
Statutory codification of robust intellectual property protection for apparel designs has been a major policy objective of high-end fashion houses for over a century. Hundreds of bills have been introduced in the U.S. Congress to rectify the perceived wrongful omission of clothing designs from the federal U.S. Copyright Act (via its “useful article” exclusion, 17 U.S.C. § 101.) With the early momentum of the recent “Innovative Design Protection and Piracy Prevention Act,” advocates of copyright – or at least copyright-like – protection for apparel came closer than ever before to achieving their goal. However, it now appears that the IDPPPA, which would have amended the so-called “Vessel Hull Design Protection Act” (17 U.S.C. § 1301 et seq.) to provide quasi-copyright protection to unique fashion designs, is effectively “dead in the water.” It thus seems an appropriate time go back to the drawing board, so to speak, and examine historical sources to determine whether there is, in fact, another source of IP protection for fashion designs that has been overlooked.

There is reason to believe that this may indeed be the case. But the inquiry is not a simple one: it requires examining, as an initial matter, whether clothing designs were subject to common-law copyright protection in England prior to the American Revolution. This question is crucial, as “[t]he first New York State Constitution in 1777 permitted the continuation of colonial common law, derived from English common law [and provided that a work’s creator] was entitled to perpetual common-law copyright protection in the absence of abrogation by statute.” Capitol Records, Inc. v Naxos of Am., Inc., 4 N.Y.3d 540, 558-59 (2005). (Many states, in turn, borrowed New York’s law wholesale, and any design protection along with it.) The federal Copyright Act has never expressly abrogated state common-law copyright protection in apparel design; while there are indeed judicial decisions finding such protection preempted, arguably controlling New York state-court precedent holds that the Copyright Act’s “preemption provision does not … apply to ‘useful articles’” such as “clothing style[s]” (as distinguished from images on apparel, which the court in question conceded fell within the scope of the federal Copyright Act.) See H20 Swimwear, Ltd. v. Lomas, 560 N.Y.S.2d 19 (App. Div., 1st Dep’t 1990) (emphasis added).

This Article will argue that one can connect the dots from English common law to New York common law, and that there is a plausible argument that design protection available thereunder has not been preempted by the U.S. Copyright Act. Further, it will review historical evidence showing that legislators living during the Revolutionary Period would have expected state, and not federal, law to provide such protection – the U.S. Copyright Act of 1790 notwithstanding. The paper's close examination of the early Supreme Court case of Wheaton v. Peters, 33 U.S. 591 (1834), which purported to relegate copyright protection to strictly statutory status, will reveal that the Court did so only in dicta – and in any event, will demonstrate that such dicta has been disregarded (as evidenced by, inter alia, the U.S. Second Circuit Court of Appeals’ certification of the common-law copyright question to the New York Court of Appeals in Capitol Records, and the federal court’s deference to the state high court’s answer.) While this paper cannot, of course, serve as a substitute for a comprehensive investigation of “IP history” – an area sorely neglected in legal scholarship – it will at least attempt to begin to fill in the gaps, using the timely subject of fashion design as a vehicle.

working papers series