By Douglas Hand, Jr. and Marc S. Reiner
Englishman Charles Frederick Worth is credited as the father of the modern fashion industry in the nineteenth century. Through his brand – House of Worth – he was the first designer to create a catalogue of designs to be worn by models in his store from which his clients could choose. This move away from a bespoke business model was the first prominent example of what we know now as a fashion line.
Today, the United States fashion industry generates over $250 billion per year. Despite the great value that must be placed upon the fashion designs that are generating this enormous revenue, most commentators and academics agree that United States law offers little intellectual property rights for fashion designs. Putting aside whether protection for fashion designs is advisable, one of the few areas of intellectual property law that offers protection to fashion designs is trademark law, provided that the design is non-functional and has acquired “secondary meaning” – i.e., it has achieved renown that is associated with a particular source through longstanding use and widespread sales. Due to the short half-life of most fashion styles and the relatively limited market for any particular high-fashion design, very few fashion designs therefore endure long enough to become eligible for trademark protection.
This article discusses a potential way that this hurdle may be overcome. One limited way that certain trademarks can gain secondary meaning, and therefore protection, is through the use of those trademarks in popular works of fiction. As discussed below, certain trademarks have been deemed protectable based on the renown they have achieved through their use in television programs or movies even though they have not been used in actual commerce. Due to the much broader reach of these types of media, a particular design may achieve the type of renown and secondary meaning that would be sufficient to provide trademark protection. This article discusses the potential likelihood of such protection and the issues that may arise in trying to extend protection in those circumstances.
II. Current United States Intellectual Property Regime
The current intellectual property regime in the United States offers three basic areas of protection: copyright, patent, and trademark. In each of these areas, fashion designs are granted scant protection.
In the United States, Copyright protection for fashion designs is limited. The Copyright Act provides that the design of a useful article, like a piece of clothing or handbag, is protected under copyright “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” The seminal case of Kieselstein-Cord v. Accessories by Pearl, Inc., established that a predominantly ornamental component of an otherwise useful article may be entitled to copyright protection under a “conceptual separability” theory. Because the Copyright Act does not protect “useful articles,” clothing is exempted from protection because it is considered “useful” insofar as it covers the body for reasons of warmth or social norms. Therefore clothing designs generally receive no protection under copyright law.
Certain aspects of a design, like original prints, patterns, unique color arrangements, however, have been eligible for protection. The current legal landscape provides copyright protection for only certain categories or characteristics of fashion design, which can be summed up as follows: fabric patterns of sufficient originality; images affixed to garments; some embroidery, beading, and lace; some sculptural components of fashion; original jewelry; and certain elements of “fanciful” costumes.
B. Design Patent
Design patents protect the look or ornamental nature of a design, so long as it is novel, non-functional, and non-obvious. It is not uncommon for the designs of handbags, shoes, and jewelry designs to be the subject matter of design patents. “While the article may be useful in nature, design patent protection is unavailable where ‘functional features dominate the design’ of the article.” Because clothing designs have generally been considered predominantly useful, clothing designs typically do not fall within the protections afforded by design patents. Additionally, many original designs that seemingly provide a distinguishable and appealing variation on a trend or prior design will fail to meet the novelty and non-obviousness standards required for a design patent.
For most articles of apparel, and even some accessories, design patents are not a feasible option because of the resources required to prosecute the patent before the US Patent and Trademark Office. The process of applying for a design patent can take several years, which exceeds the life expectancy of the market for most designs. Most commonly, a particular clothing design will no longer have marketing appeal by the time patent protection takes effect.
Trademark law provides protection for names, logos, slogans, or even product designs that serve as source identifiers. Protection of fashion design fits under the product-design category of trademarks. In order to acquire trademark protection for a product design, the design must not be functional and the design itself must be what indicates its source in the minds of consumers. The design seeking protection cannot be influenced by its function. For this latter reason primarily, most clothing designs fail to meet the standards required for trade dress protection.
Additionally, the design must have acquired such a level of distinctiveness that a consumer could identify its source simply based on the design. In other words, the design must have acquired what is known as secondary meaning. One of the more prominent examples of trade dress protection for fashion designs was at issue in the famous case Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc. In that case, the renowned designer Christian Louboutin sought to protect its signature red sole. In the minds of consumers, a contrasting “red-bottom” was a sure-fire indicator of a Christian Louboutin shoe.
Secondary meaning can be acquired but the burden is a heavy one for product design trademarks and secondary meaning must often be acquired over a considerable period of time. As a result, the fast-paced and ever-changing seasonal nature of the fashion industry makes it difficult for any particular design to acquire the renown and secondary meaning necessary for trademark protection.
III. Actual Protection for Fictional Trademarks
It is a fundamental tenet of United States trademark law that trademark rights derive from actual use of that trademark in commerce. If a designation is not used in actual commerce to identify a particular source of goods or services, it cannot be considered a trademark and there can be no claim of infringement. Not only is use in commerce a prerequisite for trademark rights, but those trademark rights are made stronger by the extent that the term is used in commerce. That is, the more that goods bearing the trademark are marketed and sold, the stronger the trademark rights become. Few tenets of trademark law are as fundamental as this one.
But even a bedrock principle like the requirement of use in commerce for trademark rights is subject to certain exceptions. The most prominent exception is the “well known marks” or “famous marks” doctrine. Pursuant to that doctrine, if a trademark used only on products or services sold overseas is so famous that its reputation is widely known in the United States, then that trademark is protectable in the United States even if its owner has not used the mark commercially in the United States. The origins of this doctrine dated back to 1936 when the owners of the well-known Prunier restaurants in Paris and London obtained a preliminary injunction against a restaurant named Prunier in New York.
Another exception to the use-in-commerce requirement for trademark rights has emerged more recently. Rather than involve trademarks used in geographically distant commerce, these trademarks are used in commerce that is entirely fictional. That is, trademarks that are used only in fictional worlds have been protected from infringements in the real world. For example, the newspaper at which Superman’s alter ego Clark Kent works – the DAILY PLANET – has been protected as a trademark even though no such newspaper exists in any metropolis other than Metropolis. Similarly, the fictional substance Kryptonite that originated from Superman’s fictional home planet of Krypton was also given trademark protection sufficient to prevent the registration of the trademark KRIPTONIA for packaged alcoholic fruit cocktail. As with conventional trademark protection, the courts deciding these cases were concerned that consumers would be confused, albeit with a product that, though highly familiar, had not been offered for sale in actual commerce.
These courts relied upon the underlying motivation of United States trademark law: the goal of minimizing consumer confusion. As the Supreme Court has held:
In principle, trademark law, by preventing others from copying a source-identifying mark, reduces the customer’s costs of shopping and making purchasing decisions for it quickly and easily assures a potential customer that this item – the item with the mark – is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past.
Furthermore, trademark rights are granted as a matter of priority of use. The party that is first to continuously use a particular trademark has superior rights to all others who seek to use that trademark if confusion is likely to occur.
Based on these rationales for trademark law, why should companies that have made no effort to use a particular trademark in actual commerce be allowed to prevent others from using that trademark in commerce? Furthermore, why do courts believe that consumers will believe that products that are in actual commerce are either from the same source or under common control as purely fictional products? The answer to these questions seems to lie in the extremely fluid relationship between movies and television programs and the products that are sold in connection with those copyrighted works.
Product tie-ins for movies and television programs are by now a long established trend. It is no surprise, in fact, that the examples cited above deal with a media property that originated in comic books targeted at children, as that is where most such tie-ins began. Toys, lunchboxes, and other paraphernalia depicting copyrighted works from children’s programming have been a mainstay for over half a century, with the same products that were once avidly collected by children now being sought after by adults as collectors’ items. Although the trend originally was products being sold based on established television programs and movies, the next step was television programs or movies being created based upon existing products. For example, television programs were made to feature existing games and toys such as Pac Man, Care Bears, and others.
Aside from products that depicted the characters featured in these programs and movies, product tie-ins in movies also featured actual products that were sold in the marketplace. Perhaps the most prominent example of this phenomenon was the use of Reese’s Pieces in the blockbuster movie E.T., which led to an explosion of awareness for that brand. Since that time, product placement in television programs and movies has turned into a cottage industry with those forms of media becoming, in part, another commercial for those products. Memorable product placements have included Ray Ban sunglasses in the movie Risky Business, Junior Mints in the television program Seinfeld, FedEx in the movie Cast Away, and Omega watches in the movie GoldenEye. The manufacturers of the products often engage in cross-promotion advertisements advising moviegoers to look out for their products in the movies. Similarly, music videos, such as “Hotline Bling” by Drake, and viral videos, such as “Damn Daniel,” have been responsible for remarkable increases in sales of the products that are featured in those videos.
From this perspective, it is no surprise that consumers would view a television program, movie, or video as just another advertisement that would be the equivalent of the use in commerce that is required under trademark law. Even items that are clearly fictional can be seen as genuine products. For example, the self-lacing sneakers worn by Marty McFly in Back to the Future II were the subject of a grassroots campaign by consumers who very much wanted to buy these products. Nike eventually relented and sold a limited run of the shoes in 2016. Similarly, the movie Forrest Gump featured a shrimping company named “Bubba Gump Shrimp Co.” After the great success of that film, Viacom (the parent company of the film’s studio Paramount Pictures) was able to open a chain of restaurants under that same name. In other words, the producers of the film first created a fictional brand and then were able to use that brand in real life due to the success of the film. Because of this decades-long history of commercialism in television and movies, consumers seem to essentially equate brands in those media with brands in real life. Perhaps as a result, courts have also begun equating the use of brands in fictional commerce with their use in actual commerce.
IV. Fictional Trademarks and Fashion
In the sections above we have seen that: (1) fashion designs are eligible, to a certain extent, for trademark protection; and (2) trademarks that are used in fictional settings are eligible for trademark protection. The question then becomes: Can a fashion design that is only used in a fictional setting achieve trademark protection?
A. Trademark of an Actual Product Design From a Fictional Setting
Take the instance of a potentially trademarkable fashion item such as the iconic body suit worn by Milla Jovovich in 1997’s science fiction film, The Fifth Element. This novel garment consisted of little more than white bands arranged horizontally on the wearer with one vertical band holding the garment together and was designed by John Paul Gaultier who in the same year of the movie’s release formed his eponymous haute couture label.
The band body suit itself very likely evokes the movie for many viewers and arguably coveys any goodwill associated with it. So is there potential trademark protection generated by the design? And if there are trademark rights, who holds them: the producers of the film or Gaultier? Very likely there is a work-for-hire agreement that Gaultier entered into in connection with designing costumes for the film which would convey any intellectual property rights to the producers. But the questions nevertheless remain and are, appropriately enough, quite provocative.
These same questions might have also come up as far back as 1939 with Dorothy’s unique ruby slippers in The Wizard of Oz or the stunning black dress worn by Anita Ekberg in that fashionable Fellini classic from 1960, La Dolce Vita.
Less stylishly but no less acutely, these questions also arise when considering the thong “mankini” featured in Borat. That is, the innovative design of the “mankini” as a trademark and who might own it. But what about the no less innovative name “mankini”?
B. Trademark of a Fictional Brand or Designer
Yes, the “mankini” would seem like a trademarkable product name. Its origins are, however, unclear and neither Sacha Baron Cohen nor the film’s other producers, have yet applied for trademark registration. But fictional brands and characters that portray fashion designers are also presented in film and television. Consider the fictional designer “Cinna” played by a subdued Lenny Kravitz in the films The Hunger Games and Catching Fire. In the films Cinna is credited with creating the famous (or at least famous in the fictional dystopia of Panem) flaming designs worn by the protagonist of the films Katniss Everdeen.
Applying the concept of fictional trademarks here, we would be considering an actual fictional brand name rather than a fashion item. So more clearly, one could imagine the Cinna name affixed to more mundane garments in the real world conveying the goodwill of the films. It seems reasonable to assume that the purchaser of such a Cinna branded product would think that they were buying an item associated with the films themselves. Indeed, as noted above, film and television producers have cut deals with actual retailers in order to allow the use of a film or program’s goodwill to sell fashion items. Take for example The Great Gatsby collection from Brooks Brothers or Banana Republic’s Mad Men collection. So there is every reason to believe that “Cinna” would be a trademark in the actual universe, not just the dystopian future presented by the Hunger Games.
Again, there would be legitimate questions regarding who might own such a trademark, the producers of the film or, in this case, the author of the book upon which it was based. Alternatively, the owners of the trademark might be the actual designers of the clothes that appeared on screen. After all, a trademark’s primary purpose is to associate a name, logo, or other signifier with a particular product. If the designs of the products are owned by their designers, a strong argument can be made that the associated trademark would be as well. Knowledgeable legal counsel representing each party here would, most likely, have sorted out this issue in contracts, but, given the novelty of the concept, perhaps not.
Due to the great financial importance that fashion designs represent, it is more than understandable that fashion designers seek to increase the limited protections that United States intellectual property currently affords to those designs. Trademark protection achieved through the renown that comes with being featured in popular entertainment may provide one avenue to do so. But designers will need to make clear, both in their agreements with the producers of those works and also in branding in the works themselves, that they are the owners of all renown and goodwill that is associated with those designs. Otherwise, they might find that those rights belong to the producers of the works, which may very well be more painful than there being no protection at all.
 Partners at Hand Baldachin & Amburgey LLP. The authors want to thank their associates Ashley Valdes and Chana Ben-Zacharia for their invaluable contributions to this article.
 See Jessa Krick, Charles Frederick Worth (1825-1895) and The House of Worth, The Metropolitan Museum of Art (June 8, 2016), http://www.metmuseum.org/toah/hd/wrth/hd_wrth.htm.
 See Olivier Courteaux, Charles Frederick Worth, The Empress Eugénie and the Invention of Haute-Couture, Napoleon (June 8, 2016), http://www.napoleon.org/en/history-of-the-two-empires/articles/charles-frederick-worth-the-empress-eugenie-and-the-invention-of-haute-couture/.
 See H. Shayne Adler, Pirating the Runway: The Potential Impact of the Design Piracy Prohibition Act on Fashion Retail, 5 Hastings Bus. L.J. 381, 382 (2009).
 Report of Joint Economic Committee of U.S. Congress, The Economic Impact of the Fashion Industry (Feb. 6, 2015), http://www.jec.senate.gov/public/_cache/files/2523ae10-9f05-4b8a-8954-631192dcd77f/jec-fashion-industry-report—-sept-2015-update.pdf.
 See, e.g., Alexandra Manfredi, Haute Copyright: Tailoring Copyright Protection to High-Profile Fashion Designs, 21 Cardozo J. Int’l & Comp. L. 111, 113 (2012); Brittany West, A New Look for the Fashion Industry: Redesigning Copyright Law with the Innovative Design Protection and Piracy Protection Act (IDPPPA), 5 J. Bus. Entrepreneurship & L. Iss. 57, 58 (2011).
 Mitchell M. Wong, The Aesthetic Functionality Doctrine and the Law of Trade-Dress Protection, 83 Cornell L. Rev. 1116, 1131-32 (1997-1998).
 17 U.S.C. § 101.
 632 F.2d 989, 993 (2d Cir. 1980).
 See Charles E. Colman, An Overview of Intellectual Property Issues Relevant to the Fashion Industry, in NAVIGATING FASHION LAW: LEADING LAWYERS ON EXPLORING THE TRENDS, CASES, AND STRATEGIES OF FASHION LAW (Aspatore 2012), 2012 WL 167352, at *3.
 Id. at *6.
 Id. at *21.
 See, e.g., Handbag, U.S. Patent No. D609,468 (issued Feb. 9, 2010); Single-Sole Shoe with Red Stripe and Red Sole, U.S. Patent No. D757,407 (issued May 31, 2016); Shoe Heel, U.S. Patent No. D748,388 (issued Feb. 2, 2016); Jewelry Design, U.S. Patent No. D758,240 (issued June 7, 2016).
 Id. (quoting Tough Traveler v. Outbound Prods., 60 F.3d 964, 971 (2d Cir. 1995) (Jacobs, J., concurring in the result)).
 Henry Petroski, Invention by Design 16 (1996).
 Id. at *22.
 See Law of Merchandise and Character Licensing § 8:2.
 See, e.g., Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494, 503 (6th Cir. 2013).
 See, e.g., id. at 506.
 See, e.g., id. at 504.
 696 F.3d 206 (2d Cir. 2012).
 See id. at 226-27.
 See, e.g., Kaufman & Fisher Wish Co., Ltd. v. F.A.O. Schwarz, 184 F. Supp. 2d 311, 318 (S.D.N.Y. 2001), as amended (Oct. 22, 2001), aff’d sub nom., Kaufman & Fisher Wish Co. v. F.A.O. Schwarz, 51 F. App’x 335 (2d Cir. 2002).
 3 McCarthy on Trademarks and Unfair Competition § 19:108 (4th ed.) (“As required by the Lanham Act § 45, 15 U.S.C.A. § 1127, definition of use in commerce quoted above in this section, a trademark must be appear in connection with a ‘bona fide’ use in connection with goods ‘sold or transported’ in commerce in the ‘ordinary course of trade.’”)
 4 McCarthy on Trademarks and Unfair Competition §25:54 (4th ed.)
 4 McCarthy on Trademarks and Unfair Competition §23:40.50 (4th ed.). Relatedly, the more that a trademark is used and promoted, the greater the secondary meaning that is associated with the trademark, as discussed in the previous section.
 5 McCarthy on Trademarks and Unfair Competition § 29:4 (4th ed.)
 More specifically, such a well-known trademark may be protectable under federal unfair competition law, but it still would not be eligible for registration under U.S. law. Id.
 Maison Prunier v. Prunier’s Restaurant & Cafe, 159 Misc. 551, 288 N.Y.S. 529 (Sup. Ct. 1936); see also Vaudable v. Montmartre, Inc., 20 Misc. 2d 757, 193 N.Y.S.2d 332, 123 U.S.P.Q. 357 (Sup. Ct. 1959) (The famous MAXIM’S restaurant in Paris obtained an injunction against a MAXIM’S restaurant in New York City.)
 See DC Comics, Inc. v. Powers, 465 F. Supp. 843, 847 (S.D.N.Y. 1978).
 See DC Comics v. Pan American Grain Mfg. Co. Inc., 77 U.S.P.Q.2d 1220 (T.T.A.B. 2005).
 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163-64 (1995) (quoting McCarthy on Trademarks and Unfair Competition § 2.01, at 2-3 (3d ed. 1994)) (internal quotation marks omitted).
 4 McCarthy on Trademarks and Unfair Competition §16:1.50 (4th ed.).
 See DC Comics, Inc. v. Powers, 465 F. Supp. 843, 848 (S.D.N.Y. 1978) (stating that DC Comics’ extensive licensing of the Superman story, which included several references to the Daily Planet, was enough to create a likelihood of confusion on the consumer level).
 See Pac-Man and the Ghostly Adventures, Common Sense Media (June 8, 2016), https://www.commonsensemedia.org/tv-reviews/pac-man-and-the-ghostly-adventures#.
 See Care Bears, Wikipedia, https://en.wikipedia.org/wiki/Care_Bears.
 Bryan Gardiner, The Gear That Made E.T. the Pinnacle of Product Placement, Wired (Mar. 3, 2015), http://www.wired.com/2015/03/et-gadgets-and-gear/.
 Stacy Conradt, The Stories Behind 10 Famous Product Placements, Mental_Floss (Apr. 6, 2008), http://mentalfloss.com/article/18383/stories-behind-10-famous-product-placements. This phenomenon is not limited to movies or television programs.
 Erica Tempesta, How Hotline Bling became a fashion hit: Rapper Drake DOUBLES Moncler’s sales after donning the luxury brand’s $1,150 ‘Maya’ jacket for his latest music video, DailyMail.com (Oct. 23, 2015, http://www.dailymail.co.uk/femail/article-3286632/How-Hotline-Bling-fashion-hit-Rapper-Drake-DOUBLES-Moncler-s-sales-donning-luxury-outerwear-brand-s-red-Maya-jacket-latest-music-video.html; Vans Sees Meteoric Rise in Sales All Thanks to “Damn Daniel,” .Mic (May 2, 2016), http://mic.com/articles/142344/vans-sees-meteoric-rise-in-sales-all-thanks-to-damn-daniel#.MMrXFjFjO
 The 2015 Nike Mag, Nike News (Oct. 21, 2015), http://news.nike.com/news/nike-mag-2015.
 The Fifth Element (Columbia Pictures 1997).
 Mason Cusack, Throwback: The Fifth Element, Redbrick (June 8, 2016), http://www.redbrick.me/film/throwback-the-fifth-element/.
 The company is co-owned by Hermes which has a 45% stake.
 Or the producers of the film A Clockwork Orange which Jean Paul Gaultier listed among his influences?
 The Wizard of Oz (Metro-Goldwyn-Mayer 1939).
 La Dolce Vita (Pathé 1960). These questions, and perhaps more, would come up in the context of the company Rodarte’s designs in the film The Black Swan, as there was some debate regarding who had more input in to some of the iconic dresses from the movie; the film’s costume designer Amy Westcott or the designing sisters/founders of Rodarte Kate and Laura Mulleavy.
 Borat: Cultural Leanings of America for Make Benefit Glorious Nation of Kazakhstan (20th Century Fox 2006).
 The Hunger Games (Lionsgate 2012).
 The Hunger Games: Catching Fire (Lionsgate 2013).
 Mad Men Clothing, Banana Republic (June 8, 2016), http://www.bananarepublic.com/products/mad-men-collection.jsp.
 These questions would also come up in the context of the fictional designer James Holt, from the film The Devil Wears Prada, the Pixar animated designer Edna Mode from the film The Incredibles and the fictional designers from televisions Gossip Girl Eleanor Waldorf as well as Jenny Humphrey.