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“Copyright law’s grip on film, music and software barely touches the fashion industry … and fashion benefits in both innovation and sales, says Johanna Blakley. In her talk, she talks about what all creative industries can learn from fashion’s free culture”

Everything you need to know about Copyright Law and the fashion industry.

Watch the video here.

Writing a thesis is more work than I ever imagined it would be. Fortunately, I got to choose my topic and I spent a great deal of time researching (and writing about 36 pages on) copyright protection for fashion design. About a month before I was meant to turn in a finished draft I was lucky enough to use a personal connection to reach out and interview the world-renowned fashion designer, Helmut Lang. Mr. Lang offered me his insight into the relationship between innovation, copying, and success in the fashion industry and I was so fortunate to be able to incorporate his perspective in my analysis of why the fashion industry will continue to thrive without copyright protection. Not only was I lucky to contact such a successful and respected designer, innovator and artist, but he’s also a personal icon. There aren’t many high-end designs that I could see myself wearing right off the runway (for practicality mostly), but I can confidently say that I would wear anything and everything that walks down a Helmut Lang runway, and I just hope he knows how thankful I am that he took the time to answer my questions. (free clothes not even necessary)

Looking back to when I first launched this blog, when I realized that fashion design was an area of creative art not protected under copyright law, my first instinct of course was, “that’s insane, fashion is an incredibly significant form of art that deserves the same protection as any other!” But on a closer look and after all too much research, it became clear to me that fashion innovation thrives, for designers, producers, manufacturers, and consumers, despite the lack of protection, and may in fact depend on it. It will take a lot of posts to explain, but this is the position I’ve taken on the issue. My study was based on an international comparison, and an in-depth look at the nature of innovation and fashion trends. Some may be aware that fashion design is offered the protection of a “Community Design” in the European Union, which those lobbying for a sui generis “copyright” regime in the U.S. often attribute the “superior” fashion industries of Europe to. However, my studies have shown me that this is an easy misconception. The U.S. is considered one of the top five fashion hubs of the world, along with Italy, the UK, France, and Japan. The study I’ve cited to contains a variety of factors that contribute to a successful fashion industry, and copyright protection was never referenced. Furthermore, the E.U. Community Design is incredibly underutilized in the E.U., which would not be the case if copyright protection was necessary for the survival of a fashion industry.

These points are being made in a very small and generalized nutshell. I’ve come across a lot of fascinating information which I plan to use in jolting this blog back to life. Hopefully those interested in this area of law or in fashion will take the time to consider why copyright protection is likely to harm the fashion industry, because I too once believed otherwise.

Helmut Lang
Image Courtesy of Vogue.com

Just three weeks ago, after seven long months, the US Court of Appeals has finally rendered its decision in the case of the Red-Lacquered Sole.

In case you haven’t been following, last year the high-end footwear designer, Christian Louboutin filed a claim against Yves Saint Laurent for infringing a registered trademark, after they manufactured monochromatic shoes that incorporated a red lacquered sole, which has been the signature mark of the Louboutin brand for the last 20 years. The District Court that heard the case attempted to tackle the question of whether a single color can serve as a trademark in the fashion industry and went so far as to implement a per se rule, that all such marks are invalid and thus not protected by trademark law.

Louboutin, having his “Red Sole Mark” registered with the USPTO for the last four years, filed to appeal the decision that would deem it invalid, and the appeal was held back in January. After months of waiting, the Appellate Court finally came down with their decision on September 5th, (I’ve been busy) and I think both sides have walked away with a win.

The Court found that the district court erred in interpreting the doctrine of aesthetic functionality by implementing a per se rule, and found that it would be inconsistent with the 1995 Qualitex Co. v. Jacobsen Products Co., (514 U.S. 159) decision, to deny a single color mark protection if it met the requirements for a valid mark set out under the Lanham Act. The debate comes down to whether granting trademark protection to a single color monopolizes a design element that inhibits competition in the marketplace, which is based on the theory that color has what’s called “aesthetic functionality”. But the Court reasoned that, ”distinctive and arbitrary arrangements of predominantly ornamental features that do not hinder potential competitors from entering the same market with differently dressed versions of the product are non-functional, and [are] hence eligible for [trademark protection].”‘ Fabrication Enters., Inc., 64 F.3d at 59.

With this in mind, the Court dove into the necessary factual analysis to determine whether the Red Sole Mark has acquired “secondary meaning” and warrants the protection Louboutin has been fighting for. The secondary meaning of a trademark is present when the mark identifies the source without performing any other significant function. The evidence offered in the case included records of advertising expenditures, media coverage and sales success over the last 20 years. After review, the Court found that Louboutin had in fact established a “limited secondary meaning,” meaning that through the company’s longstanding effort and success, they have established a worldwide association with the color red on the sole of a shoe, when in contrast with the upper sole, which does not extend to instances when it is the same color as the rest of the shoe. The Court found, as I previously expected it should, that it’s the “pop” of contrasting color in the design that consumers have come to recognize as the Louboutin signature. In fact the opinion references a study done in which consumers did not associate a monochromatic red shoe with Louboutin as often as they associated a contrasting-color design.

This factual finding is the basis for the new limitation on the very valid Louboutin “Red Sole Mark” and as such, the Court further held that YSL’s monochromatic red shoes did not fit the description of a “red lacquered outsole that contrasts with the color of the adjoining upper“, thus there was no need to analyze whether infringement occurred, and the injunction was thrown out.

So in the end, the Louboutin got to keep their trademark and YSL was free to make their monochromatic ruby slippers. Hopefully the decision will keep both sides happy in the years to come, and offer Louboutin more concrete protection against the more suspect infringers that produce cheap imitation Louboutins.

Case Closed.

]]> http://haute-law.com/2012/09/24/and-so-clears-the-red-cloud/feed/ 0 tngampel louss pop case closed http://haute-law.com/2012/05/03/gone-studying/ http://haute-law.com/2012/05/03/gone-studying/#comments Thu, 03 May 2012 23:49:11 +0000 Tara http://haute-law.com/?p=441 ]]>

Finals have taken over my life and all my free time… new posts are coming soon, I promise.

In the meantime, check out these interesting articles…

• Charles Coleman, founder of LawofFashion Blog, publishes article in Intellectual Property Magazine about LV’s cease and desist letter to PennLaw. Awesome, Charles! Jealous…
• An interesting article from the Harvard Berkman Center‘s Citizen Media Law Project wrote, about another LV trademark action against Hyundai. …Definitely not bitter at all about not getting that internship. It’s fine.
• Old Navy Trademark Infringement article from the LexisNexis Copyright and Trademark Law Community

Recently, in Israel, a new law has been passed that bans models with a BMI of 18.5 or less from appearing in print ads. The new legislation, entitled the “Photoshop Law,” also requires ads to disclose whether or not they’ve photoshopped the subjects.

This has been a longstanding effort by lobbyists concerned about the health of young women across the world. The fashion industry is one where it seems models continue to shrink every year and Israel has decided enough is enough. The new law wouldn’t impose any criminal sanctions but would allow say, the family of a young girl suffering or having died from anorexia, to pursue legal action against an advertiser in a civil suit. (With a heavy burden of proof, I’m sure)

For now, it seems it will hold fashion companies responsible for displaying the standard for beauty so many women are influenced by, old and young alike. The new law is meant to deter the display of an unhealthy body image as “the gold standard of beauty”, and I can’t say it’s a terrible idea. But I don’t think it’s being met with much enthusiasm by fashion designers or modeling agencies.

Some claim the BMI index isn’t a perfect fit for every body, and that certain models are naturally skinny and incapable of gaining weight, thus the new law would discriminate against them and prevent them from finding work.

And others, like Donatella Versace, just plain do not want “real women” modeling their designs. The designer rejected a photo shoot proposed by New York Daily News that wanted to do a pictorial featuring real women of New York (around size 6) modeling her Versace for H&M line. Apparently, the high-end designer rejected all but one of the proposed models, saying they just didn’t “fit Versace’s branding.” Hey, it’s your line, Donatella.

Versace for H&M ad

Whitney Thompson, cycle 10 winner of America's Next Top Model, and the first winner to meet the industry standard for "Plus Size"

Do you think it’s the legislature’s job to moderate on this issue?  Leave your thoughts below…

Exhibit A:

The above photo, in a blog post dated February 17th, 2012, is accompanied by the title: “She’s A Pro,” and the commentary: “I mean, there is really only one thing to say. …How much?”

This is just one of the numerous posts that caught the eye of Forever21 owners, Do Wan Chang and Jin Sook, who took time out of their busy schedules to send the blogger a cease-and-desist letter in April of 2011. The letter alleged trademark infringement, trademark dilution, unfair competition and copyright infringement, based on the domain name’s use of an “abbreviation of a colloquial expression” in conjunction with their trademarked name. Their registered trademarks are the names, “FOREVER21,” and “XXIFOREVER”.  You can see a copy of the actual letter at Jezebel.com.

The company claimed that the blog’s use of a “colloquial expression” (WTF), that offends the public, in conjunction with their name dilutes the value of their trademark; that the blog creates a likelihood of confusion among consumers; and infringement of their copyrights due to unauthorized use of images from the company’s website.

Kane sent two written responses back to the company which went unanswered. The blog remains live to this day. Because of the clause in her response which deems silence permission to remain live, if Forever21 tried to sue now, Kane would be able to defend on the doctrine of estoppel and the court would likely find that since Forever21 had a reasonable opportunity to respond and did not, that they abandoned their claim. (Which was pretty much meritless to begin with)

Let’s look at all the reasons why Forever21 is may be wrong…

Before the claim brought so much attention to the blog, use of the trademarked name was certainly for noncommercial purposes, if not a form of parody. Both of which are good defenses for Kane against infringement (trademark and copyright).

The trademark dilution claim is not exactly fitting either. If a company wants to claim that a defendant diluted their trademark, it is based on the fact that the defendant’s use of the mark creates a likelihood of confusion between their product and the plaintiff’s, based on a similar nature and lesser quality which leads consumers to believe the plaintiff’s trademark embodies a lesser quality.  For too many reasons this is just a baseless claim. Forever21′s products are known for being poor in quality, and there is no chance a consumer would mistake Kane’s blog for an actual Forever21 website. This also goes to rebut the unfair competition claim, which would require a similar showing of consumer confusion.

Furthermore, the position taken by the company is just a bit ironic in light of all their prior encounters with intellectual property law. Forever21 has been the subject of over 50 lawsuits from fashion designers who claim they stole their designs. They seem to have a history of stealing from smaller labels, and avoiding the larger ones, like Chanel and Louis Vuitton, who have proven a bit more aggressive with policing their rights. Such designers include the likes of Anna Sui, Dianne Von Furstenburg, Anthropologie, Gwen Stefani, Alexander Wang, and more.

In fact, the company is so prone to designer legal threats, they apparently have a policy in effect to automatically offer 10% of all units sold to a designer that claims the item infringed on their IP rights.  Forever21 denies the existence of such a policy, but more information can be found in a great article written about the company’s business model on Bloomberg Businessweek.

Another area of the law that Forever21 seems to have trouble with is labor and employment law, which is closely intertwined with IP law. An Emmy Award-winning documentary went public some years back that depicted the story of three immigrant employees working far under the minimum wage standards in California. The documentary spawned a three year boycott of the company and resulted in the successful legal battle of an employee who sued for fair wages on behalf of herself and 19 other employees. Truly an amazing story of an individual asserting her rights!

Furthermore, there is the question of the First Amendment right to free speech. Fortunately, intellectual property has numerous safeguards built into doctrines and provisions like fair use, which protect defendants against violations of such rights. Regardless, everyone is entitled to his/her opinion, no matter how big a temper-tantrum Forever21 decides to throw. No threats to the bloggers of the world here!

T-Shirt designed by Anna Sui, depicting owners, Chang & Sook, which references the designers reputation for theft as well as the ironic bible reference ("John 3:16") that appears on their shopping bags.

Read More:

WTForever21 Press Links

Forbes

NYMag

Louis Vuitton caught a look at this, and immediately had their attorney, Michael Pantaloney send a cease-and-desist letter to Penn Law Dean Michael Fitts. The letter claims that the student group misappropriated and modified their trademarked monogram design. They are alleging serious willful infringement, trademark dilution by the school, and a resulting strong likelihood of confusion, particularly on the issues of what constitutes fair use, which is an important issue emerging from the new rights offered by the IDPPPA for fashion design. They are worried that because this is a group of educated professionals, that the public will believe copying their trademark in a similar way is also fair use, and that Louis Vuitton is an official sponsor of the symposium, which they are not.

Penn Law is standing behind its students, and responded by invoking the defenses of fair use and parody exception as provided by 15 U.S.C. 1125(c)(3) which allows the use of trademarks for noncommercial and parody purposes, and immunizes them from claims of dilution. They also assert that there is no legal basis for the claim that they violated 15 U.S.C. 1125(a) and created a likelihood of confusion. A copy of Penn Law’s response is below.

The school’s response was sent to LV counsel on March 2nd. No word yet on a response to either the claim or the Dean’s invitation to the symposium. Seems to me that this is a good example of fair use. It’s for noncommercial purposes and is a bit of a parody, as it contains the copyright symbol – (c) – as well as a “TM” emblazoned in the flyer’s monogram. It’s unlikely in my opinion that anyone might confuse Louis Vuitton as a sponsor, when the sponsor’s are listed right under the design, and consist mostly of law firms and organizations. However, it is an obvious use for decorative purposes, which I find to be different from say, Haute-Law.com’s use of a photo of the pattern to illustrate a point in one of our educational posts. It’s a big chance for the group to test the language of the new legislation, so we’re excited to see what happens.

Do YOU think it’s fair for the student group to use this mark?

Stay tuned for updates!

For those of you into fashion law in the Philly area, the symposium is set to discuss trademarks, copyrights and the new IDPPPA regarding fashion design. Wish we could be there!

Read More:

Law of Fashion

Above The Law

Although there are several outlets for infringed-upon fashion designers to explore, we often focus on trademark rights. Why, you might ask? Intellectual Property law encompasses trademark, as well as copyright, patent and trade dress protections. When selecting an avenue for recourse, a scorned designer/artist/author will strategically choose the best avenue for success on its specific claim. For fashion designers, this is usually trademark-affiliated, for reasons Haute-Law will continue to explore. But for now, I’d like to briefly explain copyright law and why it doesn’t always work for fashion.

The US Copyright Act (title 17 of the USC), offers an exclusive bundle of rights  to the owners of a copyright. This is a broad scope of protection that gives the original “author” (encompasses all artists, writers, computer programmers, designers, etc.) rights on their work as soon as it is fixed in a tangible medium. These rights can be sold (transferred) to someone other than the original author. Basically, this means the owner has the exclusive right to reproduce the work (make copies); adapt the work (prepare derivatives); distribute copies to the public; perform the work in public; and display the work in public. These rights are a part of US law to provide incentives for all to create.

In order for a work to qualify for copyright protection it must be sufficiently original. Now, there are many limitations and exceptions to copyright protection, so keep in mind this is all “in a nutshell.” For example, facts and unoriginal material and are not protected. If someone wrote a book containing an exorbitant amount of research and factual information, it may not be protected, but could if it contains expressive elements that are sufficiently original. This is a very low and easy standard to meet. An arrangement of facts and chapters in a novel is a form of expression that may qualify as “original,” so long as it’s doesn’t contain a functional purpose, necessary for another to copy in order to compete. However, if the work is infringing on another’s copyright, it is unoriginal and not protected.

This is where fashion design begins to encounter it’s resistance from copyright protection. The very nature of the fashion business is that it evolves and changes with the ebbs and flows of trends and eras. Not only is it difficult to show evidently that a design is sufficiently original, but it is easy to disprove that it was not independently created. Every design takes its inspiration from another.

An even larger hurdle is trying to argue that a garment is exempt from a specific category of “work” that is explicitly excluded from enjoying copyright protection. This is the “useful articles” category, which includes graphic, pictorial and sculptural works that contain creative aesthetic features as well as utilitarian features. These elements have “intrinsic utilitarian functions, that is not merely to portray it’s appearance.” Clothing is deemed to be a part of this category. However, if you can separate an object’s utilitarian features from the aesthetic features, the creative elements may qualify for protection.

Trying to separate the aesthetic features of a garment from a functional purpose is like trying to win at the stairmaster. You’re going to be working really hard, but in the end you’re not going to get very far. I’m thinking unless your design resembles more of a limited pictorial that is completely separate from the garment, it’s not going to be protected (with plenty of shades of gray of course). Picture a t-shirt with a framed-painting centered on the front. The “painting” is likely to qualify for protection as a separate creative element of the t-shirt. The t-shirt as a whole however, not so much, for the reason that it is too functional, and would grant a single designer the monopoly on t-shirts as a result. Different courts apply tests of varying degrees of stringency for the “separability” analysis for “useful articles”, thus strategy depends greatly on jurisdiction.

Now it wouldn’t be law without a million exceptions. I’ll try not to get too carried away, but take the case of Kieselstein Cord v. Accessories by Pearl (632 F.2d 989), in which the Second Circuit held that under its “conceptual separability” test, a belt buckle qualified for protection because it was shown to be appreciated for its aesthetic appeal. It was a belt buckle so magnificent that it made all the other belt buckles seem dull (sic), but mainly because it was placed on display in a museum. It contained features that were not essential to its life’s purpose as a belt, but so significant to the art world that the Court couldn’t deny it some copyrights.

Famous Kieselstein-Cord Belts

This reasoning wont work for all garments. It’s very difficult to show that your design choices (consisting of different lengths, shapes, hemlines, arrangements, and cuts) do not serve utilitarian functions. They serve generally to clothe, and more specifically to keep warm, to cover, to provide convenience, style, and more. (Color’s utilitarian purpose is something I need to spend more time understanding, so until I do, I’m leaving it out)

Costume design brings up a good point for discussion. Since costumes function (outside of the law) primarily to portray an appearance, they may be arguable as outside the “useful articles” exception and subject to copyright law. The Copyright Office has held costume design to the same separability standards, but it’s much easier to surpass than average garment design. Masks however, are held to portray solely an appearance and are not included in the “useful article” category, so they qualify for protection. (Somewhere, Lady Gaga is smiling. Love her, but she’s so much more costume than fashion)

For fashion design, creativity and function are so closely related that the “useful articles” exception generally bars copyright protection for garments. But is copyright protection something we would want for fashion design? Some might say the free-flow of inspiration is what keeps fashion dynamic. A designer’s success should be based on his/her reputation for creativity, which requires as much inspiration as possible. So legal protection that other works of art might rely on, might hinder fashion, which thrives on constant change.

Stay tuned for more coverage on legal alternatives for fashion design in the intellectual property arena.

When counterfeit goods are sold online, trademark and/or copyright infringement is certainly being committed by the manufacturing company, but what about the company that provides the web hosting services for that company? Tiffany v. eBay was a good example of a fair use exception for the online auction house, but there is a distinction to be made between common-carriers like eBay, in which the fair use doctrine provides an exception, and actual service providers.

Internet service providers (ISP’s) are used by nearly every business and person with a website (outside of the web-hosting industry). Website authors buy their domain names and internet access from companies that monitor and control their internet access. Haute-Law.com, for example, uses a great website for blogs, WordPress.com. We pay a small annual fee for our domain name and the WP user face (which makes blogging insanely simple). Louis Vuitton v. Akanoc Solutions answers a very important question for ISP’s that provide service to websites that sell counterfeits.

Just last year, Louis Vuitton successfully sued Akanoc for nearly $11 MILLION dollars.   Akanoc was providing web-hosting services to numerous websites that were selling counterfeit Louis Vuitton goods. In 2006-2007, LV sent 18 notices of trademark/copyright infringement to the service provider, and when Akanoc failed to remove the websites or cut off their service, LV sued them for contributory trademark and copyright infringement and counterfeiting.

The trial Judge ruled in favor of Louis Vuitton, and the 9th Circuit affirmed the decision, remanding only for calculation of damages under 17 USC 1117 (it was originally calculated at $30.5 million). It was reasoned that because Akanoc was in direct and monitoring control of the websites, and directed internet users to those websites, it was in fact liable, even if they weren’t materially liable for infringement. Damages were awarded on liability for contributory infringement.

We can distinguish this case from the eBay case, because eBay was more of a common carrier that connected buyers and sellers, and didn’t provide actual domain hosting services to sellers. Although they did provide the counterfeit sellers access to buyers, they had no means to investigate beyond the measures already in practice. Also, it’s important to note that when eBay was put on notice that counterfeit items were present on their website, they did in fact take action to take those items down, which is key in a contributory infringement claim. Furthermore, if eBay were found liable for infringement, the ISP that they purchase their domain name from could be liable for contributory infringement.

Christian Louboutin & Dianne Von Furstenberg, who "who swooped into the courtroom wearing gold-rimmed aviators and a long black sparkly knit sweater over an off-white turtleneck and black skirt." (WWD)

YSL created a legitimate and reasonable hurdle for Louboutin to overcome.    Reiterating the fact that the original claim called for an injunction against entirely-red shoes, and arguing for the importance of access to a full color palette for fair competition, YSL claimed that Louboutin was trying to create a “monopoly” on the color red, and that a monochromatic shoe is the “DNA of [their] brand.” They have in fact created red-soled shoes (monochromatic or otherwise) before Louboutin stepped onto the scene.

It seemed as though Judge Marrero agreed. When denying the injunction he administered a “blanket rule” which called for the prohibition of all color trademarks, reasoning that color serves an aesthetic function, and can’t be used as a source identifier.

This was accompanied by the disheartening comments of Judge Cabranes to Louboutin,

“The whole shoe is red. …You’re trying to block red shoes altogether.”

Additional Resources:

• Christian Louboutin
• The Red-Soled Case (Wall Street Journal)
• The Louboutin v. YSL Battle Heated Up Yesterday In Court (Racked NY)
• Louboutin Defends Red Sole Trademark (New York Post)
• Louboutin Challenges Ruling That Lets YSL Sell Red Soled Shoes (Businessweek)