An Uphill Battle: 3D-Printed Clothing and its Related IP Issues
Technology has disrupted the way many industries function, including a gradual disruption throughout the fashion industry. Over the years, we have seen brands adopting novel technologies in minor ways to test out how they can be an advantage to their businesses.[1] Looking back at the history of fashion, we see the emergence of technological innovation in fashion as early as 1998 where Helmut Lang presented his Fall 1998 collection via CD-ROM and the internet.[2] A recent example is Tommy Hilfiger’s partnership with IBM and the Fashion Institute of Technology on a project called ‘Runway Retail’.[3] The project used IBM’s artificial intelligence software to forecast trends, enhance their product design, and enhance product development.[4] Another example is the Virtual Fit Technology which allows users to make better-informed decisions while shopping online.[5] The virtual fit technology provides data-driven style, fit & size recommendation and also consumers to try on outfits by uploading photos of themselves.[6]
Most of the advances in technology involved streamlining the dispersion of clothing, but were not used to produce the garments themselves.[7] It was only a matter of time that technology would be used to create garments. And then we saw the rise of 3D printed dresses.
3D printing is the creation of physical three-dimensional objects from a digital file.[8] In the case of the fashion industry, designs of creators are written in the form of codes, are fed into a machine and then turned into reality using 3D printers giving the world ‘3D printed product’.
There have been some instances of 3D printed dresses in the past but it was Zac Posen’s Met Gala 2019 dresses that made 3D dresses the talk of the town.[9] He dressed celebrities like Jourdan Dunn and Nina Dobrev, to name a few, in 3D printed dresses.[10] Jourdan Dunn’s dress was modelled after a rose and consisted of 21 3D printed petals.[11]
3D printing is going to change the way the fashion industry moves forward. It is going to give designers the flexibility to experiment and innovate in their designs. 3D printing may also turn out to be the road-map to sustainability because of its unique style of production. It will be able to solve the major concern of the industry: cloth wastage.[12]
A new technology always comes with its own set of legal intricacies. The fashion industry already faces a tricky situation as to protecting its products under intellectual property laws and the addition of new technology like 3D printing is going to add a completely new set of complexities.
In the case of 3D printing in the fashion industry, a designer would give the sketch of the design, as well as a sample garment, to a 3D designer who would then use an array of software to create a digital file of the design called a computer aided design (‘CAD’) file. [13] The 3D designer will then use the CAD file to print a garment using a 3D printer.[14]
Designers can seek to protect their designs under copyright law or patent law. Currently, designers are experimenting using 3D printing for mass production as opposed to one-off dresses.[15]
The chances of obtaining copyright protection for clothing designs are very slim because copyright law does not grant protection to useful articles i.e. articles which perform some function in contrast to merely portraying the appearance of the articles.[16] In the eyes of law, clothes are considered useful articles and thus not granted copyright protection.[17] However, courts have carved out an exception to provide copyright protection to fashion designs if they can satisfy the separability test as laid out in the case of Star Athletica v. Varsity Brands.[18] According to the separability test, a useful article such as clothing, could receive copyright protection if the design feature incorporated in the useful article (like the stripes on a cheerleading outfit) can be identified separately from and is capable of existing independently of the useful article (say, as a painting).[19] Though the court carved out an exception, the high eligibility threshold makes it difficult for fashion industry to meet them and seek copyright protection.
Because of the restricted nature of copyright protection, the fashion industry opts for patent protection most of the time.[20]
Fashion designers have used patents for some time to protect their work, iconic design elements such as zippers, Velcro, and astronaut suits.[21] The industry could take help of either utility or design patents to protect their designs but they are faced with difficulty of determining the ownership of the patent rights. The ownership issues most often arise in situations where the original designer engages the services of a freelance or independent 3D designer as opposed to a 3D designer hired by original designer or the brand in a manner that clearly addresses ownership.
Utility patents are granted to anyone who invents a new and useful process, machine or improvement thereof.[22] Utility Patents protect the functional aspect of an article.[23] The wrap dress by Diane Von Fürstenberg is one example of an article in fashion protected by a utility patent.[24]
Design Patents are granted to anyone who invents a new, original and ornamental design for an article for manufacture.[25] Design patents protect the unique look of the clothing. Brands like Louis Vuitton[26] and Bottega Veneta[27] have resorted to design patents to protect their designs.
While design and utility patents are helpful, the inclusion of a 3D printer designer in the creation of the patented design could pose an issue of ownership. Under patent law, the inventor who can apply for a patent is defined as an individual who invented the subject matter, in our case the clothing design.[28] In the process of making 3D printed dresses, designers first sketch the designs and make a sample garment and then 3D designers creates a digital file. If we go by the statutory definition of an inventor, the 3D designer would own the rights to the 3D garment, not the original sketch designer as he/she is the one who invented the 3D design, not the produced garment. A patent grants the owner the right to exclude others from making, selling, offering for sale or using the invention.[29] This can create a difficult situation as the patent rights would lie with the 3D designer to the exclusion of others, even the original designer whose designs formed the base for the designs of the 3D designer. A solution could be the inclusion of the name of the original designer in the patent application as co-inventor as it his/her design that formed the base for the 3D design. Alternatively, designers could resort to contracts or licensing agreement.
Contracts and licensing agreements are strong tools in the hands of designers. For example, patent law allows for the assignment of patent rights via contract, such as the 3D Designer transferring any patent rights to the hiring/original designer. Assignment of rights means transferring the ownership of property to another, here patent’s exclusionary rights.[30] This is important for brands or fashion houses to do in order to exclusively use those designs as in the absence of such contracts, the 3D designer would be able to freely use this design, and could even license them to a third party and this would harm the brand.
Another way of tackling this issue is entering into a licensing agreement with a 3D designer. As compared to assignment, licensing of patent rights means transferring a bundle of rights which are both less than ownership rights, and may be restricted in their use based on time, geographical area, or field of use.[31] This option is one where the 3D designer would be in the position of power, as they would own the patent right to exclude, but could still license the underlying design to others without a problem. For brands/designers to benefit from licensing agreement, it is crucial to add an exclusive license clause by which only the brand/designer would be able to use the 3D design for a stipulated time. This will give brands a chance to capitalize on the design to the maximum in the market by using the exclusion right grated by a patent without the fear of competition in respect to the exact copy, and the designer can ultimately keep the overall patent right for its full term.
Every new change is welcomed with some resistances and challenges but once it overcomes these challenges, there is no stopping it. 3D printing technology is one such change. It’s about to change the fashion industry forward.
Footnotes
