Fashion's 'Apple Vs. Samsung': Spanx Patent War Could Change How Brands Fight CopycatsSusan Scafidi in Forbes , April 10, 2013
When Apple won a $1 billion lawsuit against rival Samsung last year, the victory was tantamount to an edict to every smartphone manufacturer: get your own design, guys, and stop copying the look of the iPhone.
What the judgment also did was bring attention to a lesser known weapon against consumer copycats: the design patent, “the red-headed stepchild of the intellectual property world,” as lawyer Christopher V. Carani calls it.
“Utility patents get all the play,” said Carani, chair of the industrial design committee at the American Intellectual Property Law Association. “They’re used more in pharmaceuticals and electronics. Attorneys have not really understood what design patents are about.”
In layman’s terms, a design patent deals with how a product looks versus how it works. You’d think, then, that the fashion industry would be rife with designers suing each other for, say, an identical-looking t-shirt. Not so.
“The standards for a design patent are hard to meet,” said Kal Raustiala, a UCLA law professor and author of The Knockoff Economy: How Imitation Sparks Innovation. “You have to prove originality. With virtually everything we wear, it’s difficult to claim it’s original.”
Then there’s the question of timing. Until December, when President Obama signed the Hague Agreement to speed up patent legislation, it took 12 months between filing a claim and getting a ruling. “For that year, knock-offs could operate in a safe harbor,” said Carani.
With the fashion industry’s seasonal rotation it made no sense, financial or otherwise, for a designer to sue in spring if that t-shirt would be obsolete three months later when the new stock hit stores.
For clothes and accessories with longer shelf lives like handbags, sunglasses and lingerie, though, the design patent is a useful tool.
Enter Heather Thomson, CEO of shapewear brand Yummie Tummie (and star of reality hit The Real Housewives of New York), who is engaged in a battle of lawsuits with the industry’s Goliath, Spanx.
Thomson has come out swinging against Spanx’s billionaire founder Sara Blakely, telling trade title Women’s Wear Daily that she hopes the shapewear mogul is “ready for war.” She claims three of Spanx’s slimming tank tops are Yummie Tummie knock-offs, and wrote a letter to Blakely in January asking for the company to cease and desist production.
There began a back and forth: Spanx filed a declaratory judgment action, essentially asking a judge to step in and decide whether they’ve infringed on any patents. Thomson has since filed her own complaint (in early April, for patent infringement).
“I will not lie down,” said Thomson, who started Yummie Tummie in 2008 and started filming the Bravo network’s hit franchise three years later.
Patent lawyer Michael Lasky, who works out of Spanx’s hometown of Atlanta, concedes that the dispute is “a bit of a grudge match”, with Thomson’s ego driving the case. Still, he sees the volley of lawsuits as a preview of what’s to come in the fashion industry, especially for brands like these two, selling products (in this case shapewear) with longevity beyond one Autumn/Winter fashion season.
“This is high margin stuff,” said Lasky. “You don’t want it to be ripped off. It’s called waking up to reality. So few in the fashion industry realize the tools they have.” He adds that a design patent is cheap to procure and lasts 14 years.
Brands like Spanx can now ask not just for a judge to step into their design patent dispute, but the U.S. Patent Office, thanks to November’s America Invents Act. “They can ask the Patent Office whether patents in dispute are valid,” said Cheryl Milone, CEO at Article One Partners, a patent research company. “This has increased the power of the U.S.P.O. People are pretty excited about the potential.”
The Spanx case may also serve as a reminder to the fashion industry that patents are part of their litigation arsenal rather than the more common tools like trademark, often used to fight counterfeiters. “Patents as an asset class aren’t limited to traditional industries,” said Milone, referencing the Apple versus Samsung decision.
The Spanx and Yummie Tummie dispute isn’t the first high-profile design patent case in the fashion world. In November, cult fitness clothing company Lululemon and Calvin Klein settled out of court for an undisclosed sum. Lululemon claimed Calvin Klein was infringing on design patents for its $98 “Astro” yoga pants — again, a high-margin product that transcends fashion’s fickle calendar.
“I think the most important thing about Lululemon vs. Calvin Klein is the industry’s realization that design patents exist and can protect ornamental aspects of clothing — if a company is willing to invest substantial time and money,” said Susan Scafidi, professor at Fordham Law School’s Fashion Law Institute.
“Design patents are not a panacea for fashion, and some patent lawyers may be overenthusiastic, but they definitely are an underutilized weapon in the legal arsenal,” said Scafidi. “With Yummie Tummie vs. Spanx, we may find out just how supportive they really are.”