JURIST Guest Columnist Cory Howard, Wake Forest School of Law Class of 2014, argues that the recent suit filed by Lululemon concerning Calvin Klein’s alleged infringement of design patents represents a potential turning point for the industry…

Design patents, which protect manufactured article’s non-functional, ornamental features, have long been an underutilized source of protection for patentable goods. However, recent high-profile cases, such as Apple v. Samsung, Inc., have brought design patents back to the forefront of intellectual property law. Although the Cupertino technology giant’s design patent battles have taken center-stage, another highly contested design patent war is being fought between Lululemon Athletica, a high-end athletic clothing designer, and Calvin Klein. What is especially notable about this case is that design patents are becoming a litigious issue in the fashion industry, where fickle consumer tastes usually make protecting clothing with patents an unwise business decision. In Lululemon Athletica Canada, Inc., v. Calvin Klein, Inc. [PDF], three design patents are at issue, specifically one protecting the distinctive waistband around Lululemon’s best-selling Astro Pant. The waistband at issue features an overlapping compression design that makes wearers look slimmer and enhances athletic performance — this overlapping design has come to serve as a brand-identifier for Lululemon.

Design patents are federally registered patents and the protection of items registered with the US Patent and Trademark Office (USPTO) is guaranteed by 35 USC § 171-173. This collection of statutes gives “whoever invents any new, original and ornamental design for an article of manufacture” patentable rights to the design of the item. Typically, to file for and gain the protection of a design patent, the manufacturer must prove five elements:

1. That the item is an “article of manufacture,”
2. Originality,
3. Novelty,
4. Non-obviousness, and
5. Ornamentality.

To determine whether one company’s product has infringed on a design patent of another, the courts have traditionally applied a two-part test. This two-prong examination required that the owners of a design patent show that the challenged design violated

1. The “ordinary observer test” espoused by Gorham v. White, and
2. The “point of novelty test” established by Litton Systems, Inc. v. Whirlpool Corp.

However, in its 2008 decision Egyptian Goddess v. Swisa, the US Court of Appeals for the Federal Circuit clarified that owners of a design patent are no longer required to satisfy the point of novelty test and need only to fulfill the ordinary observer test. The circuit court implemented one minor change to the ordinary observer test when it held that the observer is now considered to compare the two designs with an assumed knowledge of the prior art. Therefore, cases of infringement can now turn on small differences between the two products that would otherwise be unnoticeable in the abstract.

What is unique about Lululemon’s claims is that the lawsuit was initiated not over the name or logo on the yoga-pants but the design of the waistband. Therefore, to prove their allegations, Lululemon must demonstrate that Calvin Klein’s designs appear substantially similar to the average observer, in light of their knowledge of previous designs. Although Lululemon has patents and alleges infringement on multiple design aspects of their skin-tight yoga pants, the strongest claim that it makes is that the waistband of Calvin Klein’s yoga pants is substantially similar to their own overlapping waistband. A side-by-side comparison of the items does show a strikingly similar waistband design but legal experts are unable to come to a general consensus as to whether Lululemon will win. Instead, industry leaders and intellectual property attorneys are focused on the case for the potential implications a successful suit, or even a favorable settlement, could mean for the fashion industry.

Traditionally, shapes and colors of apparel have not been patentable material and, in fact, have been broadly copied and modified by other designers in what many designers believe is part of the industry practice. It is this type of attitude towards intellectual property that makes Lululemon’s suits against Calvin Klein a potential turning point for the industry. In addition to an industry tradition of copying designs, there are two significant obstacles to patenting apparel that has come to define the industry’s unique approach to intellectual property:

1. The cost of the patent, and
2. The failure of apparel to meet the novelty requirement for a patent application.

First, design patents, which are extremely rare, are often too expensive to obtain for a product unless the item will be sold in mass for multiple seasons. Companies often do not possess the requisite foresight and are too susceptible to the subtle shifts in consumer tastes to accurately predict which newly released items will earn enough over several seasons to be worthy of the time and cost of a patent application.

Second, many pieces of apparel are simply not original enough to satisfy the novelty requirement. For an item to be novel, 35 USC § 102 requires that the apparel pass the average observer test, which means that the appearance of the design in the eyes of an observer must be different from the appearance of any other single prior design. While novelty may not be an issue in fields where designs are protected from corporate espionage or that have strong traditions of intellectual property rights, the fashion industry derives its success and innovation from the free flow of ideas from designer to designer without the fear of legal reprisal. As a result of design limitations and widespread borrowing, it has been hard for companies to imagine a new piece of apparel “that has not yet become a part of the design vernacular.”

This case is especially important for an industry that is plagued by copycats and possesses few legal mechanisms to protect apparel design. A successful suit by Lululemon will provide “valuable ammunition for for an industry to wield against copycats” and allow Lululemon to secure its position as a designer of high-end yoga apparel. While the concept of intellectual property has often been loosely interpreted by the fashion industry, a successful suit could lead to an increased interest from designers to pursue patent and copyright protections for their designs. However, a widespread movement toward copyright protection for fashion merchandise could radically change the industry and stall innovation, which is similar to what has happened to Silicon Valley during the most recent rounds of patent litigation.

Although there are doubts within the industry that this legal battle will significantly alter the way in which fashion rights are protected, it may instead provide the needed push to enact legislative protections for the industry. Recent efforts in the House of Representatives to pass statutory protections for fashion designers have hit major stumbling blocks and have seen important pieces of legislation, such as the Fashion Design Prohibition Piracy Act [PDF] (FDPPA), fail. However, if the fashion design industry sees that design patent suits can be successfully initiated to protect the design of apparel or other traditionally non-patented materials, industry leaders could push for the reconsideration of legislation, such as the FDPPA, which would make bringing suit against other designers easier.

Lululemon’s aggressive protection of its Astro Pant defies industry traditions and threatens to radically change the industry’s lax attitude towards intellectual property. In order to do so, Lululemon must show that Calvin Klein’s waistband is substantially similar to the yoga pants that have generated a tremendous amount of revenue for the company and have made Lululemon a top brand for yoga and other athletic wear. While this may be a difficult task to do, and many legal experts in the industry are split as to whether the designs are similar enough to warrant a finding of infringement, companies throughout the fashion design business are on notice that design borrowing, once thought to be a driving force of innovation in the industry, may become a legal liability.

Cory Howard is a staff member of the Wake Forest Journal of Business and Intellectual Property Law.

Suggested citation: Cory Howard, Lululemon’s Yoga-Pant Waistband Stretches the Limits of Design Patent Protection, JURIST – Dateline, Oct. 25, 2012, http://jurist.org/dateline/2012/10/cory-howard-patent-law.php.