This blog post has been written by Akanksha Sudhakar
1. INTRODUCTION
As long as there have been fashion houses-and almost as long as there have been people making clothes- there are countless occasions where there has been a need to consult lawyers. Some years ago, the words “fashion” and “law” were not linked, and fashion law wasn’t a specialised area of law practice. Today, a few short years later, there is a legal field made to measure for the business of fashion. Many law students [and even practicing lawyers] equate fashion law with intellectual property laws. One might reasonably consider intellectual property to be at the core of fashion law, since the value of fashion-as opposed to clothing-rests in large part on the fascination of a brand, and that fascination is protected primarily by intellectual property law.
The term intellectual property, conventionally understood, includes, on a federal level, utility and design patents and copyrights; on a federal and state level, trademark and trade dress protection; and on a state level, trade secret protection, the right of publicity, the right against misappropriation, and other causes of action that vary by state.[1]
This article discusses in detail, the role played by intellectual property in fashion industry.
2. TRADE MARK PROTECTION
Intellectual property, especially in the form of trademark protection is often one of the most valuable assets owned by a fashion enterprise. Indeed, in today’s fashion world, many companies are little more than vendors of licenses to use well-known brand names in connection with particular categories of apparel and accessories.[2] Trade marks do not directly protect textiles or fashion garments but the way in which designers can use their trade marks in their designs can enable their creations to come under the remit of trade mark law. This central emphasis on trademark protection is arguably the result of the fashion’s function as an indicator of social status[3] and the lack of copyright protection for fashion design which largely shifts the emphasis from what is being sold to who is selling it. Whatever the explanation, trademark protection tends to eclipse other forms of intellectual property protection in the fashion world.
To learn more about Fashion Law, enrol for Diploma in Fashion Law.
3. COPYRIGHT PROTECTION
On the other hand, the laws of copyright is often described as “bundle of rights” that are granted to the creator of an original work of authorship that is fixed in tangible form.[4] The Supreme Court of the United States has explained that the word “original” has a special meaning in the context of copyright; a work may be “original”, even if it is not entirely novel, provided that it was “independently created by the authors opposed to copied from other works- and that it possesses at least some minimal degree of creativity”.[5] This is a low threshold, however, while evaluating protection for the copyright-eligible categories of fashion design, we might reasonable come to an inference that the otherwise lax originality requirement may have more “teeth” when it comes to clothing and jewellery.
A lot of such instances in the fashion law not only has determined whether a party has infringed on one’s copyright, but it must first assess the validity of the copyright and then evaluates whether ‘substantial similarity’ exists between the plaintiff’s work to that of the defendant’s. The validity of one’s copyright in a fashion article relies on a number of factors, including the “idea/expression dichotomy” and, particularly important for fashion design, the “separability” test. In determining whether substantial similarity exists between the plaintiff’s and the defendant’s works that could potentially give rise to a copyright infringement, federal courts typically ask whether
- a non-trivial amount of the original work was used[6], and if the amount used was more than de minimis
- whether the ordinary observer [unless is set out to detect the disparities] would be disposed to overlook them, and regard their aesthetic appeal as the same.[7]
Even where drawings or photographs of garments are protected by copyright, the garments themselves have long been considered ‘useful articles. Since, majority of the copyright legislations around the world excludes ‘useful articles’ from federally copyrightable subject matter, clothing generally receives no protection under the copyright law. Newcomers and many long-established designers are also surprised by this situation and many have argued that ‘useful article’ bar to protection makes little sense in an age where much of fashion is more ornamental than functional.[8] However, garments along with other types of fashion accessories, are eligible for copyright protection to the extent that their design “incorporates pictorial, graphic, or sculpture features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article”.[9]
The common case of infringement that takes place in the fashion industry is that of the large high-street chain copying a smaller fashion designer. The way that Issa is copied is indicative of this. Issa deals with copycats and takes action, but many designers do not have access to advice, nor funds to deal with copycats in the same way. It is true that to an extent the designers accept that being copied is recognition for success; however, this does not mean that they are flattered by it, nor does it stop them from taking action where action is available. Today, copying is easier than ever, with the ease of access of information and liberalised trade in textiles and clothing, the often-cheaper copies being imported from a low-wage developing country especially now that the trade has been liberalised.
The rampant copying has caused high fashion designers to accept that being copied is part of the process and there is too much copying and different degrees of it to stop it all. Thus the only way to deal with this as designers is to keep innovating. As Miuccia Prada puts it, “The highstreet, actually is a kind of good. The only thing is that you’re always forced to do something new, something more. You are never allowed to enjoy anything because it’s always everywhere and then it’s over, over, over in a very short time.”[10]
In this context, copyright does not play that much of a role, as it only bites when copying has taken place and the rightful owner chooses to take action. This does not support the Piracy Paradox but highlights the reality of the industry and how IP protection is not just about action taken afterwards but equally about protection before as well as innovation and creativity. Taking action is not always seen as an option for designers not only for cost and time expenses but also for lack of information and availability of IP services.
4. TRADE SECRET PROTECTION
On the other hand, protecting valuable information as a trade secret always comes into play when one discloses information on a new project, novel technologies or solutions in the context of potential research or business collaborations. One might share sensitive information, expertise, and specific plans on how a project should be carried out during meetings with possible business, research, or financial partners. To safeguard all confidential information shared during the meeting, one needs to make sure that they have their partners sign a non-disclosure agreement (NDA), either one-way or mutual. This gives a legal foundation on which one can defend their rights if one of the prospective partners violates its confidentiality.
But one thing that needs to be taken in account is that trade secret protection is only useful for inventions that rivals won’t be able to deduce from looking at your product and company’s public elements which is another difficulty that is face while protecting their inventions. This is because one the information comes in the public knowledge, the trade secret protection automatically ceases to exist.
To learn more about Fashion Law, enrol for Diploma in Fashion Law.
5. PATENT PROTECTION
The inventive component of a design in the fashion business can also be protected under the patent law. But, in order to do so, there are two considerations that must be taken in order for a design to be patented. They are novelty and originality. A design needs to be novel and Original. It should have been made for the first time because of its nature. The design must also be feasible from a scientific standpoint. However, the fashion business does not use patent law very frequently. The technical sector has a greater prevalence of them. A patent registration is an expensive and time-consuming process. The fashion industry has little value in this sector because it is so dynamic.[11]
6. LANDMARK CASE LAWS
Louis Vuitton Malletier, S.A. v. My Other Bag, Inc.,[12]
This case of copyright violation is very well-known. In this instance, the company ‘My Other Bag’ created a parody tote bag with a print of a Louis Vuitton image. My other bag was the target of a lawsuit by Louis Vuitton for its design and copyright theft. In this case, the hon’ble court ruled that the parody accounts could convey two concurrent, and contradictory meanings. Louis Vuitton, the petitioner, complained that the defendant had attempted to imitate their copyrighted design. The petitioner added that it is attempting to defend its IP rights in its defence. The court rejected the accusations since the defendant’s offering was a parody.
Puma SE v. Forever 21, Inc.[13]
Infringement of copyright and design were issues in this case. Puma filed a lawsuit against forever 21 for allegedly copying the limited-edition shoes that the well-known singer Rihanna created for the company known as puma. The singer Rihanna personally developed the Creeper Sneaker, Fur Slide, and Bow Slide for the Fenty line. The court in this case decided that a product does not automatically fall under the umbrella of copyright production merely because a particular celebrity is associated with it or has supported it. Copyright is issued based on the originality and novelty of a particular design as well as the design’s individuality. The lawsuit and this case made no mention of Rihanna.
To learn more about Fashion Law, enrol for Diploma in Fashion Law.
7. MEASURES TO EFFECTIVELY PROTECT THE BRAND ONLINE
First of all, the consumers need to be informed and made aware that the sale of fake goods not only damages the brand but can also directly harm them, such as when it comes to the quality and safety of the products they buy or the absence of warranties. In addition to the negative effects fake fashion has on the economy and the environment (mass production, low-quality chemicals used, annual disposal of tonnes of clothing), this uncontrolled sector frequently uses sweatshops, with all the negative effects and ramifications these have on people. Additionally, it is well known that many counterfeit businesses are linked to organised crime, and fake currency has also emerged as a go-to source of funding for terrorist organisations.
Competing with counterfeiters may be difficult, discouraging, and dangerous for a brand. However, the majority of internet players are developing tools to help brand owners efficiently combat counterfeits online. For instance, Amazon recently debuted “Project Zero.” Automated protections will continuously monitor the website and proactively delete suspected counterfeits after receiving from the brand the logo, trademark, and other essential information from Amazon. Additionally, without having to first get in touch with Amazon, this solution enables marketers to easily regulate and remove listings from the Amazon shop.
8. CONCLUSION
Technology can therefore, be your best ally when it comes to safeguarding a fashion brand’s intellectual property online. Artificial intelligence (AI), like Project Zero and other such programmes, has demonstrated effectiveness in the fight against counterfeits, cutting down on the time that businesses must devote to a manual search for prospective infringers. One can now rely on software and AI to attempt to remove counterfeiters effectively because there are so many platforms and counterfeiters. But keep in mind that any IPR asset must be successfully protected through the use of conventional methods like customs or legal procedures in the battle against counterfeits. This is because IP and fashion are interconnected. They both co-exist, and neither can survive without the other. IP law is required to increase any fashion design’s monopoly and serves as a shield against the ills of duplication and plagiarism.
To learn more about Fashion Law, enrol for Diploma in Fashion Law.
[1] Charles E. Coleman, ‘An Overview of Intellectual Property Issues Relevant to Fashion Industry’ (Navigating Fashion Law), Aspatore (2012).
[2] Vicki M. Young, ‘JA Apparel Said to Favor Licensing Model’ (Women’s Wear Daily, 21 July 2011), < https://wwd.com/business-news/financial/ja-apparel-said-to-favor-licensing-model-3728944/> accessed on 30 August 2022.
[3] Barton Beebe, ‘Intellectual Property and the Sumptuary Code’ 123 Harvard Law Review (2010) at p. 809.
[4] Feist Pubs v. Rural Telephone Service Co., 499 US 340, 355 (1991).
[5] Ibid.
[6] Ringgold v. Black Entertainment TV, 126 F.3d 70 (2nd Circuit).
[7] Peter Pan Fabrics Inc. v. Martin Weiner Corp., 274 F.2d 487 (2nd Circuit).
[8] Amy M. Spindler, ‘COMPANY NEWS; A Ruling by French Court Finds Copyright in a Design’ (The New York Times, 19 May 1994), < https://www.nytimes.com/1994/05/19/business/company-news-a-ruling-by-french-court-finds-copyright-in-a-design.html> accessed on 30 August 2022.
[9] Section 101, US Copyright Act.
[10] D Llewelyn, Invisible Gold in Asia: Creating Wealth Through Intellectual Property (Marshall Cavendish Business 2010) at p. 36.
[11] Beebe, B. (2010). INTELLECTUAL PROPERTY LAW AND THE SUMPTUARY CODE. Harvard Law Review, 123(4), 810–889.
[12] 18-293-cv (2d Cir. Mar. 15, 2019).
[13] No. CV17-2523 PSG Ex, 2017 U.S. Dist. LEXIS 211140 (C.D. Cal. June 29, 2017).