Intellectual property and fashion: the rise of Fashion Law

Image: Carsten Frenzl

In the last decades, fashion is emerging as one of the most important social and economic phenomena of contemporary societies. Spread by the new medias of the “information era”, the appeal of trends and fashion news stimulates a market that, in 2014, moved over US$ 1.4 trillion worldwide; in Brazil, fashion is the fastest growing sector, earning about R$ 126 billion and being responsible for more than 726,000 jobs.

As a result of fast development, this sector has captured the interest of lawyers all over the world, beginning to sketch the first traces of a new study field in law – the so-called Fashion Law.

Fashion Law has as object the legal relationships established in the fashion field and it seeks to present answers and solutions to the demands involving the entire production chain of the fashion business, such as questions about image rights of models on the catwalks and fashion catalogs, and even problems as slave labor in the textile industries. However, the dilemmas related to the legal protection of fashion creation demand special concern of researchers.

In fashion consumption, exclusivity is a desire element that adds value to fashion articles. For this reason, the counterfeit models – either through piracy or through unfair competition arising from designs copies – causes to brands huge financial and moral damage by the depreciation of its products; it is estimated that in Brazil, the industry suffers annual losses of R$ 1.8 billion due to the sale of pirated fashion items.

In this context, the study of the applicability of intellectual property in fashion is taking priority space in the Fashion Law discussions, by analyzing the feasibility of the protection of designs and brands through industrial property and/or copyright. Moreover, as will be discussed below, new ways of protection of fashion designs have been developed, in addition to the classical institutes of intellectual property.

Intellectual Property

According to the World Intellectual Property Organization (WIPO) Convention, intellectual property is the set of rights inherent to intellectual production in the industrial, scientific, literary and artistic fields. Classically, intellectual property is divided between Copyright and Industrial Property Rights.

The copyright’s purpose human scientific, artistic or intellectual creations, which a priori do not have an industrial utility or character. In Brazil, copyright is governed by the Law No. 9,610/98, and it guarantees moral and patrimonial character prerogatives to the copyright owners.

Industrial property, in turn, “has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition” (Article I, 2, of Paris Convention). Nowadays, industrial property is governed by Law No. 9,279/96, and gives holders the exclusive exercise of creation of industrial or commercial applicability, but this exercise is conditioned.

In the fashion field, copyright and industrial property rights have been the main mechanisms for the protection of fashion creations, as a way to deter unauthorized reproduction of the products and brands they protect.

Coprights for Chanel, Industrial Property for Louboutin

Since the early twentieth century, the counterfeit of fashion creations was already a designers’ concern. Along with designers like Jeanne Paquin and Madeleine Vionnet, Chanel sought to preserve their models from copies made by the “maisons de belles copies”, barring the display of her designs in fashion magazines. In addition, they brought lawsuits on the grounds of Loi du 14 juillet 1909 sur les dessins et modèles, the French law which gave legal protection to fashion products through the copyright system.

However, only in the 2000s the discussion about fashion protection by the law really caught the attention of the attorneys, when the French shoe designer Christian Louboutin sued the also French Yves Saint Laurent in the Federal Court of New York, because of the production of red monochromatic shoes. According to the designer, those shoes had violated his industrial property rights. This case has assigned the advent of the Fashion Law as a legal discipline.

Louboutin holds at the USPTO (Unites States Patent and Trademark Office), since 2008, the registration of trademark of red outsoles of women’s shoes, characteristic for which he became known worldwide. The brand Yves Saint Laurent, however, had developed since the 1970s the design of red monochromatic shoes – which inevitably included the red color of the outsoles of shoes. Before the relaunching of monochromatic shoes in the spring-summer 2011 collection, the designer of the “Red Sole Mark” sued the US judiciary, on the grounds that the mark infringed its patent.

The US Federal Court initially refused Louboutin’s claim, on the grounds of the impossibility of a color appropriation as trademark, and determined the deregistration of his registration with the USPTO. However, after appeal, the designer’s thesis that color could be registrable element was accepted, so it was maintained the legal protection afforded to the red soles produced by the eponymous brand.

As for Yves Saint Laurent, the Court upheld the right of sale of shoes, as long as they were monochromatic, not highlighting the red soles, Louboutin’s trademark.

Despite the large time gap between the two disputes, it is observed that both legal systems brought to the Intellectual Property field solutions that were able to protect the creation of fashion: while Chanel was based on the protection by way of copyright, the Louboutin case was solved based on the right of Industrial Property.

Intellectual property and protections of fashion design in Brazilian law

In Brazil, there is no consensus about which Intellectual Property institutions could protect fashion designs.

In terms of industrial property, industrial design has been pointed out as one of the most effective and compatible mechanisms for design protection. Through the granting of the registration by the National Institute of Industrial Property (INPI), the industrial design protects the creation of original, new and distinctive forms of products that are applicable to industrial or commercial field, giving the holders the right to prevent reproduction of the appearance of these objects.

The protection of fashion designs via the industrial design has been accepted by the Institute, and it is possible to verify the deposit and the granting of sketches protection to a range of clothing products, especially in the footwear field. Nevertheless, a number of requests has been rejected on grounds of non-compliance to the requirements for registration, such as distinctiveness, originality and novelty.

However, it has been disseminated among scholars the possibility of protection for fashion design by way of copyright. According to this understanding, although there is no express mention of fashion designs in article 7 of Law No. 9.610/98 (that explains which creations can be protected by copyright), its list is not exhaustive, so utilitarian works of art (pieces whose nature is artistic, but could have some utility), as fashion pieces, could be subject of protection by copyright.

This view was upheld by the São Paulo Court of Justice in litigation caught between Hèrmes and brand Village 284, relating to the discussion of copyright violation and unfair competition for the production of bags that would refer to a Hèrmes classic piece.

According to the French brand, Hèrmes would be the holder of the copyrights relating to the Birkin bag, purse created in 1984 by the then creative director, Jean-Louis Dumas, whose production process is completely handmade and unique. Thus, said bag would not have a merely utilitarian purpose, but it would have the nature of true work of art, therefore a good protected by copyright. Hence, since the Brazilian company has used the design to manufacture its purses, although in different material (the Birkin bag is made of leather, while 284 bags were made of fleece), it has violated Hermès’ copyrights.

Based on these fundaments, the claims of the plaintiff company were accepted, condemning Village 284 for unfair competition and breach of copyright. Ironically, “I am not the original” was the name of the collection that launched the “Bolsas 284” bags.

Other protection mechanisms: the trade dress

Despite the lack of foresight in the Brazilian system, the “trade dress” has been named as one of the new mechanism of protection of fashion creations. It is distinct from the classical intellectual property rights, and applied under the rules of the Industrial Property Law, which prohibits unfair competition.

“Trade dress” is the concept of a particular brand or product, i.e., the visual identity that makes them different from other competitors. In order to avoid confusion between brands of the same niche, the institute has been especially used in Brazil to protect the layout and design of packaging and stores (see case Mr. Cat vs. Mr. Foot), but the design protection through the trade dress has been given to a production of children’s clothing, as the reading of the Recurso Especial No. 1498106/SP.

Action has recently been filed in the Federal Court of New York from Aquazzura against Ivanka Trump’s eponymous brand, on grounds of infringement of trade dress and unfair competition due to the reproduction of the design of famous Italian brand shoes by the daughter of Donald Trump.

Conclusion

For all the above, it seems that the union between intellectual property and fashion has risen a study not completely new, but quite effervescent (and even controversial) in the field of law. Such studies can provide the protection of the creative industry from unauthorized reproductions of brands, products and design. Therefore, lawyers must understand the relationship between those phenomena and decide the best solutions in the fight against counterfeiting of fashion creations.