Top publications from the members of the international entertainment law association ialci
This is where we curate and set out the publications made by the members of the top international entertainment law association ialci.
Indeed, the members of ialci publish many articles, in the international or national press, or simply on their blogs, relating to the law and rules applicable to the creative industries, which the international entertainment law association ialci curates on this page.
Moreover, the international entertainment law association ialci is currently editing and drafting a book on fashion law and luxury law.
If you are a member of the international entertainment law association ialci, and would like to publish your articles, essays, etc. on ialci members publications’ page, please fill out the form to contact ialci, and we will get back to you as soon as possible.
If you would like to join ialci in order to take part in the publication of your articles on this webpage dedicated to members’ publications, or if you would like to take part in the drafting and editing of ialci’s future book on fashion law and luxury law, please fill out the form to join ialci, and we will get back to you as soon as possible.
With millions to be made, Oscars to be won and a ready-made audience of superfans desperate to see their hero portrayed on the big screen, films based on true stories are having a moment. But as the controversial Amy opens in cinemas, capturing the life of a star on screen is fraught with family dramas and legal wranglings, finds Stephen Armstrong. ialci member Annabelle Gauberti was interviewed for this article.
Read this article on the legal aspects of creating biopics. This article was published in the Evening Standard on 2 July 2015.
Annabelle Gauberti, member of ialci was interviewed for, and quote in, this article.
Tel: +33 1 78 76 52 23
The single most valuable intangible asset in a fashion business is the brand. It comprises between 50 – 60% of the company’s value (WIPO, 2013). The best method to capitalize on this value is to create unique images and define clear brand strategies. This is important both from a consumer point of view as well as the fashion house’s perspective.
Fashionistas invest in brands. They want to be aligned with an image. How can brands garner consumer esteem? Copyright law would need to be extended to include fashion. Trademarks may not be enough protection. Guernsey’s Image Rights Ordinance and Registry may be able to solve this dilemma.
“This ‘stuff’? Oh, ok. I see, you think this has nothing to do with you. You go to your closet and you select out, oh I don’t know, that lumpy blue sweater, for instance, because you’re trying to tell the world that you take yourself too seriously to care about what you put on your back. But what you don’t know is that that sweater is not just blue, it’s not turquoise; it’s not lapis; it’s actually cerulean. You’re also blindly unaware of the fact that in 2002, Oscar De La Renta did a collection of cerulean gowns. And then I think it was Yves Saint Laurent, wasn’t it, who showed cerulean military jackets? And then cerulean quickly showed up in the collections of eight different designers. And then it filtered down through the department stores and then trickled on down into some tragic Casual Corner where you, no doubt, fished it out of some clearance bin. However, that blue represents millions of dollars and countless jobs and it’s sort of comical how you think that you’ve made a choice that exempts you from the fashion industry when, in fact, you’re wearing the sweater that was selected for you by the people in this room, from a pile of ‘stuff.’”
This memorable quote from The Devil Wears Prada (2006) implies two major themes of the fashion design industry: the fashion design industry affects everyone, even if indirectly, and it exists in an environment of constant copying and counterfeiting (Day, 2007). Designers have long sought intellectual property protection. Copyright has been denied because fashion designs have been viewed as more closely related to useful articles – clothing – than to creative works. Further it was deemed that copying was actually economically beneficial to designers. When this avenue failed designers, trademark became their only option. The Guernsey Image Rights Ordinance may be able to solve this dilemma.
The single most valuable intangible asset in a fashion business is the brand. It comprises between 50 – 60% of the company’s value (WIPO, 2013). The best method to capitalize on this value is to create unique images and define clear brand strategies. This is important both from a customer point of view as well as a fashion house’s perspective. Brands help consumers to exercise their preferences in the marketplace. Shoppers have strong preferences for which smart phones offer the best functionality, which telecommunications companies offer the best service, which fashion accessories garner the most attention from friends and colleagues, and which boutiques provide the best experience. Brands come with a reputation for quality, functionality, reliability and other attributes, ultimately enabling consumers to exercise choice in their decision-making.
Equally important, they come with a certain image – whether for luxury, trendiness or social responsibility. Customers care about these things. They influence which goods and services are purchased. For fashion houses, brands are valuable strategic assets and a source of competitive advantage. Accordingly, companies have gained rich experience in determining how their branding choices affect their sales and profits. There are many competitive advantages to having a distinctive brand in the market. Choosing the right brand for a fashion label is crucial.
Remember when Andre Agassi told the world: “Image is Everything”? Image means the public perception, not just a snapshot. That is why image means: ““…the voice, signature, likeness, appearance, silhouette, feature, face, expressions (verbal or facial), gestures, mannerisms, and any other distinctive characteristic or personal attribute of a personage, or . . . any photograph, illustration, image, picture, moving image or electronic of other representation (‘picture’) of a personage and of no other person . . .” (The Image Rights (Bailiwick of Guernsey) Ordinance 2012, s3(1)(b) and (c))
Your image should be properly protected and managed. A brand without an image is worthless.
There is an underlying assumption that fashion designs deserve copyright protection because they seem to meet the definition for protection. Prof. Sacker (2007) confirmed that it is “well understood that the chief value of a ‘quality’ of dress lies not so much in the quality of the materials as in the smartness and originality of design.” Each design has a unique ‘character,’ and expresses a point of view. Prof. Gelhar (2008) instructed that a “designer needs a signature point of view to differentiate his line from others and make it special.” Combine these original expressions with the fact that clothing is a tangible form, and it seems obvious that fashion designs are copyrightable material (Faux, 2009).
The current debate over design protection revolves around the Design Piracy Prohibition Act (DPPA) which is currently in committee in the United States Senate. If passed, it will give copyright protection to designs for three years after first made public (H.R. 2196, 111th Cong. s2(d)(2009)). This should be enough time to conceive, develop, produce, market, and sell a design, perhaps with time left over for brief subsidiary licensing (Gelhlar, 2008). The Act also allows for substantial damages by allowing ‘$250,000 or $5 per copy’ as recovery for adjudicated infringement (Id s2(g)). This is a prime incentive for a layer to take the case on contingency.
There is much controversy surrounding the DPPA. Most is concentrated on the definitions of ‘fashion design’ and ‘apparel.’ ‘Fashion design’ is defined as “the appearance as a whole of an article of apparel, including its ornamentation.” (Id s2(a)) ‘Apparel’ is defined as “(A) an article of men’s, women’s, or children’s clothing, including undergarments, outerwear, gloves, footwear, and headgear; (B) handbags, purses, and tote bags; (C) belts; and (D) eyeglass frames.” (Id)
Profs. Raustiala and Sprigman (2006) believe that there is no need for further intellectual property protection. “Free appropriation in fashion does not stifle innovation, but may actually promote innovation and benefit originators.” (Id) This is accomplished through two theories: ‘induced obsolescence’ and ‘anchoring.’ ‘Induced obsolescence’ is when “free appropriation speeds diffusion and induces more rapid obsolescence of fashion designs,” causing a need for more frequent innovation.” (Id) ‘Anchoring” is the process whereby rampant copying within a season helps to define that season’s trends. Consumers follow the trends until another innovation occurs. At this point, rampant copying takes place and a new trend is born (Id).
These theories of ‘induced obsolescence’ and ‘anchoring’ have been roundly criticized as missing some very important aspects of a fashion design. First, there is the false assumption that “all fashion designs are ‘status goods’ whose brand name is commonly recognized.” (Day, 2007) Second false assumption: “the designers themselves could not generate the same economic benefits through intellectual property protection and their own production of ‘copies’ through the use of lower-priced bridge lines.”(Id) Third, counterfeits and knockoffs of clearly inferior quality do not benefit the economy (Id). Nor are these inferior quality knockoffs of elite-house designs qualitatively the same as the design theft by more established, ‘legitimate’ corporations against beginning designers (Faux, 2009). Not all infringement is by ‘outsiders’. Blatant rip-offs occur amongst fashion houses too. This implies a focus wherein fashion design protection should not rest on cheap knockoffs of established brands. Like in the DPPA, protection should address quality knockoffs of designs stolen from the anonymous hopefuls, the nascent designers (Faux, 2009). The Guernsey Image Rights Ordinance would be ideal in these situations.
The function of trademarks in society has evolved as business and society has changed (Grant, 2006). Originally, trademarks indicated the source of origin for manufactured goods which had passed through many middlemen before their ultimate purchase by a consumer. This later developed into a general source of origin indicator for consumers. Today, a trademark’s name conveys its philosophy, visual identity, and personality. It represents the most memorable single connection with the customer. Naming a brand is particularly important in fashion. The name must:
- Communicate its origins
- Describe its characteristics
- Communicate an attitude or lifestyle.
- Appeal to a certain kind of audience.
- Create a unique experience.
With the development of licensing and franchising the ‘origin’ function of trademarks declined (Obhrai, 2001). Trademarks now perform a variety of economic functions. They fulfill both a product-identifying function and a communication function (Strasser, 2000). Some trademarks have an intrinsic reputation, especially in fashion where the use of the designer’s name is a widespread practice, especially among luxury brands in order to underline their exclusivity, quality and status (e.g. Christian Dior). Following this trend are non-luxury brands.
Registration of a trademark will provide the owner with the exclusive right to use the mark in the goods and services in which it has been protected. Traditional trademark doctrine protects mark owners only against the use of the same or a similar mark as a brand, generally by competitors, in circumstances likely to confuse the consuming public (Brown, 1948). The rationale for such protection is straightforward. Trademarks allow companies to build goodwill in their products, reduce the searching cost to consumers and reward manufacturers with a return on investments in product quality (Dogan & Lemley, 2004). Brands and trademarks are an important aspect of everyday life.
Because of this proliferation, questions are being asked at an international level about the extent to which trademark offices should seek to limit the possible “cluttering” of their trademark registers. A “cluttered” register runs the risk of reducing the space for names and other signs available to new trademarks. While the precise extent of cluttered registers and their costs are uncertain, there is some evidence that they negatively affect at least some market participants (WIPO, 2013).
Some trademarks evolve in the marketplace, without actually returning to the register to clutter it up. This devalues the original trademark as it can be lost to lack of use or become genericized. A trademark is said to become genericized when it began as a distinctive product identifier but has changed in meaning to become generic. This occurs when it has acquired substantial market dominance or ‘mind share’ such that the primary meaning becomes the product or service itself rather than an indication of source for the product or service (Ingram, 2004). The travails of the House of Gucci® provide internationally contradictory insight into this issue.
Gucci® has been struggling with maintaining its brand images vis-à-vis its trademarks (Richardson, 2014). There have been claims that the ‘G’® logo is generic as well as having fallen out of use. Gucci® first filed a lawsuit against Guess® in 2009 – in both New York and Milan – accusing the brand of counterfeiting, unfair competition and trademark infringement, with particular reference to the use of a similar ‘G’ stamp appearing on shoes and accessories. Gucci® lost a four-year legal battle against Guess® in Milan. Not only did Guess® ask the Tribunale di Milano dismiss Gucci’s® claims, but also declare its trademarks invalid on absolute grounds of non-registrability or, alternatively, loss of distinctive character. The Italian court agreed by not only confirming that Guess® copied none of Gucci’s® trademarks, but also declaring some of Gucci’s® trademarks invalid for lack of distinctive character, including the Gucci® Flora-related trademarks (national trademark no 971291, and Community trademarks 4462735 and 5172218) invalid. (Guccio Gucci Spa v Guess? Inc, and Guess Italia Srl, Tribunale di Milano, Sezione specializzata in materia di impresa (Sez A), Sentenza no. 6095/2013, RG 36857/2009, Judgment of 10 January 2013.)
The case in New York proceeded to a bench trial before Judge Shira A. Scheindlin (Gucci v. Guess?, 2012 U.S. Dist. LEXIS 70833 (S.D.N.Y. May 21, 2012)), where Gucci® largely won its claims against Guess® based on trademark infringement and dilution claims, obtained a permanent injunction against Guess® and its licensees, and the cancellation of one of Guess’ ® marks. “Gucci® firmly believes that the decision of the court of Milan is extremely incorrect, in particular because, in Gucci’s® view, such decision does not take into account that Guess’® use of trademarks similar to Gucci’s® ones – famous, well-known and appreciated around the world – displays an unlawful and parasitic free-riding on Gucci’s® trademarks and, in general, on its brand image,” read a release from the fashion house (Karmali, (2013).
Nonetheless, in a decision by the UK Intellectual Property office of 5 November 2013, Gucci’s® trademark for its interlocking GG® logo has been revoked in certain classes on the grounds of non-use. The mark was registered in 1984 for goods in classes 3 (broadly for cosmetics, perfumes and toiletries), 14 (jewelry), 18 (bags and purses etc.) and 25 (for various items of clothing in addition to scarves, socks, belts and shoes)(Richardson, 2014). The applicant was fashion brand Gerry Weber, who made their application on the basis that there had been no use of the mark during a five year period. Trademarks Act 1994, s46(1)(b): a trademark registration can be revoked if use has been suspended for an uninterrupted period of five years, without proper reason.
How can Gucci® regain consumer esteem? Copyright protection was never an option in this case. Trademark protection was either not enough or has been lost. Perhaps, a Guernsey Image Right could have assisted?
V Guernsey Image Rights and Registry
Once a brand becomes successful it must continually transform and re-invent itself in the ever-changing fashion world. As we have seen with Gucci®, brands have changed their appearance over the years without changing their trademark registrations. Nonetheless, they have maintained their core ideals and continue to be relevant to their consumers. How is this possible without major expense?
- Brand equity. Make the brand recognizable in the eyes of your clients, which, in turn, creates loyalty.
- Enduring & timeless. Design your brand to be more than just a seasonal thing.
- Seasonal & trendy. Fashion has a very short and changing nature that only lasts for a season and in certain products. Distinguish between the product and the brand without losing inter-connectivity between them.
- Supra-nationality. Be recognizable outside your own national borders. Cater to different tastes in different countries.
- Tech-savvy. Use social media. A digital presence can make or break a brand. Have presence.
- Incessant Innovation. Fashion changes continuously. Transform and protect the brand holistically.
All of the factors outlined above contribute to the successful creation and maintenance of a brand. However, never forget to keep a realistic and coherent strategy through the whole process of creation, protection and transformation of a brand in order to achieve your goals and maintain your position in the market.
Guernsey Image Rights Ordinance (IRO) and Registry (IRR) protects “[a] registered personality [which] is a property right obtained by the registration of a personality in the Register in accordance with the provisions of this Ordinance.” (IRO s2(1)) Personality refers to the personality of the following types of person or subject which is described in the Image Rights Ordinance as the ‘personnage.’ For this discussion, s1(1)(b) ‘a legal person’ would be the designated personnage. ‘Personality’ is defined as “the personality of the person, two or more persons or character referred to in subsections (1) (a) to (e).” A ‘legal person’ is a body corporate or other body having legal personality that – (a) is currently in existence, registered or incorporated, or (b) has ceased to be in existence, registered or incorporated, for example by reason of having been liquidated, dissolved, wound up or struck off, within the period of 100 years preceding the date of filing the application for the registration of the personality (IRO s1(6)).
‘Image rights’ are defined in s5(1) as “exclusive rights in the images associated with or registered against the registered personality.” ‘Image’ is defined in s3(1) as:
(a) the name of a personnage or any other name by which a personnage is known,
(b) the voice, signature, likeness, appearance, silhouette, feature, face, expressions (verbal or facial), gestures, mannerisms, and any other distinctive characteristic or personal attribute of a personnage, or
(c) any photograph, illustration, image, picture, moving image or electronic or other representation (‘picture’) of a personnage and of no other person, except to the extent that the other person is not identified or singled out in or in connection with the use of the picture.
Note that there is no requirement to register specific images associated with the registered personality beyond the personality’s name itself. However, for there to be a benefit in registering and for easier enforcement, specific images are useful. In this case, each season’s show would need a corresponding image to be represented. This could be a photo of the entire collection or a graphic representation of the collection. Or perhaps, each individual piece would be registered as a discrete image.
The fashion house, set up as a protected cell company (PCC) on Guernsey, would be the personnage (core) protecting separate personalities in separate cells of the company. The personnage is the legal person whose personality will be registered. Each collection or division (i.e., handbags) that is produced by the fashion house would be a distinct personality of that personage in need of distinct protection via a protected cell within the company.
A PCC is a limited liability company with a board of directors. A PCC may create one or more cells, the assets and liabilities of which are segregated from the assets of the PCC itself (the core) and from the assets and liabilities of other cells. Reference to the “core” is to the non-cellular assets of a PCC. A cell is established by a board resolution. A PCC may, in respect of its cells, create and issue cell shares, the proceeds of which will form part of the “cellular assets” attributable to that cell (Adrian, 2014).
The key advantage of a PCC is that a distinction is made between the core assets and the cellular assets. As such, when a cell incurs liabilities in respect of the business it carries out, those liabilities will only be attributed to the assets of that cell. Creditors of a cell are not able to have recourse against the assets attributable to other cells or to the core assets and thus the assets of another cell or the core are referred to as protected assets. This enables a number of portfolios to be established in the same company but with fewer risks attaching to contagion of claims between asset classes or lines of business or collections (Id).
The extra corporate structure is a convenience for the personnage when establishing multiple registered personalities. This convenience is not obvious when applying for a simple registration of a personality as all that is required is a name and photograph of the personality. Individual registered images are presumed to be distinctive and of value, as these are requirements for infringement. These qualities must be specifically proven in order to enforce rights in an unregistered image. Further, infringement damages or an account of profits will not be awarded where the defendant proves that at the date of infringement he did not know and had no reasonable grounds for knowing that the image was a registered personality’s image. These conditions do not apply where the image infringed is registered.
The Gucci® case is a very important case as it is relevant to the on-going international battle over what will constitute genericide or lack of distinction (Ingram, 2004). Likewise, this will have huge ramifications on counterfeiting. If a major label like Guess® can copy Gucci®, so can anyone else. A Registered Image becomes the last bastion once trademarks have failed through generification. Generification presents difficulties for the Image Rights Registry with regards to the difficulty in implementing s6(h). This is why registering before one enjoys universal recognition is so important. Guess is heading towards a major come-uppance because they are obliterating clothing brand cache. People buy cheap ‘G’s to give the impression of buying a Gucci® ‘G’ ®. This is exactly the same as driving a Shaunghuan Sceo instead of an actual BMW X5. (See, http://www.carscoops.com/2007/07/shuanghuan-sceo-chinese-bmw-x5-copy-cat.html) While waiting for the Italian appeal, it is worth noting that parallel lawsuits have also been filed by Gucci in Paris and Nanjing. The Guernsey Registry would be in a difficult position determining which images would be acceptable representations of the Gucci® personage.
Fashion houses are called after their designers because they are a reflection of their designer and creator. Designers have distinctive personalities as do their creations. The best strategy to capitalize on these personalities is to create unique images and define clear brand strategies. This is value. This is property. Fashionistas invest in brands. They want value for money no matter what demographic they represent. They want to be aligned with a particular image – even when they pick and choose amongst personalities and images. How can brands garner consumer loyalty and esteem? Copyright law does not currently extend to fashion. Trademarks only protect in a limited and static manner. Guernsey’s Image Rights Ordinance and Registry may be able to solve this dilemma. This is important both from a consumer point of view as well as the fashion house’s perspective.
- Adrian, A (2014) Reality Television has a Personality All of its Own, available at http://www.icondia.com/library/reality-television-personality/
- Brown, R (1948) Advertising and the Public Interest: Legal Protection of Trade Symbols, 57 Yale L.J. 1165
- Day, E (2007) Double-Edged Scissor: Legal Protection for Fashion Design, 86 N.C.L. Rev. 237
- Dogan, S & Lemley, M (2004) Trademarks and Consumer Search Costs on the Internet, 41 Hous. L. Rev. 777
- Faux, D (2009) Elite Knockoffs and Nascent Designers, 1 N.Y.U. Intell. Prop. & Ent. Law Ledger 6
- Gelhlar, M (2008) The Fashion Designer Survival Guide (New York: Kaplan Publishing)
- Grant, E (2006) The Right of Publicity: Recovering Stolen Identities under International Law, 7 San Diego Int’l L. J. 559
- Karmali, S (2013) Gucci Loses Legal Battle Against Guess, Vogue News available at http://www.vogue.co.uk/news/2013/05/07/gucci-loses-guess-lawsuit—logo-copyright-case
- Ingram, J D (2004) The Genericide of Trademarks 2 Buffalo IP Law Journal 154
- Obhrai, R (2001) Traditional and Contemporary Functions of Trademarks, 12 J. Contemp. Legal Issues 16
- Raustiala, K & Sprigman, C (2006) The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1687
- Richardson, C (2014) Gucci Loses GG Trademark: An important lesson in keeping records and evidence, available at http://www.mondaq.com/x/287386/Trademark/Gucci+loses+GG+trade+mark&email_access=on
- Sacker, S (2007) Art Is In the Eye of the Beholder: A Recommendation for Tailoring Design Piracy Legislation to Protect Fashion Design and the Public Domain, 35 AIPLA Q.J. 473
- Strasser, M (2000) The Rational Basis of Trademark Protection Revisited: Putting the Dilution Doctrine into Context, 10 Fordham Intell. Prop., Media & Ent, L.J. 375
- The Devil Wears Prada (20th Century Fox 2006)
- WIPO (2013) World Intellectual Property Report: Brands – Reputation and Image in the Global Marketplace (Geneva: WIPO)
 The following list contains marks which were originally legally protected trademarks, but which have subsequently lost legal protection as trademarks by becoming the common name of the relevant product or service, as used both by the consuming public and commercial competitors. Some marks retain trademark protection in certain countries despite being declared generic in others.
- App Store: Trademark claimed by Apple Inc. for their digital distribution platform. Apple filed a lawsuit against Amazon.com over Appstore for Amazon, but abandoned the trademark and the lawsuit after an early rejection of Apple’s false advertising claim in the lawsuit by the judge.
- Aspirin: Still a Bayer trademark name for acetylsalicylic acid in about 80 countries, including Canada and many countries in Europe, but declared generic in the US.
- Escalator: Originally a trademark of Otis Elevator Company.
- Heroin: Trademarked by Friedrich Bayer & Co in 1898.
- Lanolin: Trademarked as the term for a preparation of water and the wax from sheep’s wool.
- Laundromat: Coin laundry shop. Westinghouse trademark, registered in the US in the 1940s (automatic washing machine) and 1950’s (coin laundry) but now expired.
- Linoleum: Floor covering, originally coined by Frederick Walton in 1864, and ruled as generic following a lawsuit for trademark infringement in 1878; probably the first product name to become a generic term.
- Sellotape: A British brand of transparent, cellulose-based, pressure-sensitive adhesive tape, and is the leading brand in the United Kingdom. Sellotape is generally used for joining, sealing, attaching and mending. The term has become a genericized trademark in Britain, Ireland, Australia, the Netherlands, New Zealand, Israel, India, Serbia, Japan, Croatia, Greece, Turkey, Macedonia, and Zimbabwe, and is used much in the same way that Scotch Tape came to be used in Canada and the United States, in referring to any brand of clear adhesive tape.
- Thermos: Originally a Thermos GmbH trademark name for a vacuum flask; declared generic in the US in 1963.
- Videotape: Originally trademarked by Ampex Corporation, an early manufacturer of audio and video tape recorders.
- Weibo: 微博，which means microblog in Chinese, is a microblog service provided by Sina.
– Angela Adrian, Chief Knowledge Officer – Icondia Ltd and member of the International Association of Lawyers for Creative Industries – ialci.
Tel: +33 1 78 76 52 23
The possibility to recover costs in IP cases can be an important consideration in your litigation strategy, correspondents in Germany, Brazil, Canada, China, France, India, the UK and the United States answer six questions about their jurisdictions. ialci member Holger Alt wrote the German section of this article.
Read this article on the rules on recovering costs. This article was published in Managing Intellectual Property on 23 March 2015.
Holger Alt, member of ialci wrote the section about German law.
Tel: +33 1 78 76 52 23
A critical external risk that all managers of luxury goods and fashion companies are eager to protect themselves from is the infringement of their intellectual property rights, and in particular, brand dilution and the weakening of brand image. Lawyers are the best weapon luxury goods companies can use to enforce intellectual property in fashion and luxury, and to fight against counterfeiting, especially now that so many counterfeited products are sold on the Internet.
We, at ialci and Crefovi, had a great time on Tuesday 10 February 2015, discussing these issues and challenges during our law of luxury goods series seminar on “intellectual property: how to protect, manage & monetize the know-how, intangible capital, brand image and reputation of luxury maisons & fashion brands“.
We first heard the view of General Counsel Catherine Palmer, who looks after all intellectual property matters at the Joseph Group. She explained how to strike a delicate balance, between the impulses as well as creative drive of in-house fashion designers on the one hand, and legal and regulatory restrictions on the other hand, in order to contain the paradox of fashion.
We then looked at some pragmatic examples of the challenges faced by fashion and luxury brands in the intellectual property field, by analysing the recent English design law case Kaldor v Lee Ann and the American trademark law and trade dress case Converse v 31 of its competitors. What transpired from these two presentations is that the courts have ample powers to assess the merits of each case, on a case-by-case basis, looking at the specific facts and applicable laws and case-law in relation to those facts. While English courts have previously used “objective similarities” between designs to decide on copying, this may no longer be enough as the case Kaldor v Lee Ann illustrates.
As far as the Converse case is concerned, it is telling that some of its most high-profile fashion competitors, such as Ralph Lauren, have already decided to settle, while the parallel cases, lodged with the US district court from the Eastern district of New York and the US International Trade Commission, are ongoing. But legal solutions are not enough, as Netnames explained in the following presentation: lawyers and internet companies such as Netnames must work together, in order to implement the wide spectrum of legal and non-legal solutions offered to fashion and luxury brands to fight against brand dilution, counterfeiting and reputational risks online.
We kept a very “down-to-earth” approach to our seminar, by showcasing three talks on the enforcement of intellectual property rights in the three largest countries of the European Union, namely, Germany, France and Great-Britain. While full-blown litigation seems widely discouraged in England & Wales, in view of its prohibitively high costs and strict obligation to attempt to settle by sending a letter prior to court action, France and Germany seem much more IP right owners-friendly, with France probably being the worldwide champion in terms of almost inexistent court costs, extremely protective legislation and case-law towards talent creators and no procedural rules applying to any pre-trial obligation to attempt to settle any legal issues out-of-court.
We were then graced with the presence and contribution from Michael Skrein, an expert on the protection of image and publicity rights of celebrities in England and Wales. What is the state of play to efficiently protect celebrities’ personality and images rights in the UK? What previous case law was used, in order to use the tort of passing off in relation to the facts opposing Rihanna to Topshop? What is the piece of advice to celebrities and to fashion brands? These were some of the questions that Michael tacked during his talk, which was then complimented by Icondia’s view on the subject.
Icondia gave an enlightening description of the new legal framework which has been created in Guernsey, further to the entering into force of the Image Rights Ordinance 2012: it is now possible to record on a public register, in Guernsey, the personality rights of celebrities in order to protect these rights adequately in case of infringement.
To conclude, getting appropriate advice from top practitioners in this sector, such as specialised intellectual property lawyers, patent and trademark attorneys and online providers such as Netnames and Icondia, is an integral element of the success of a well thought-out and carefully-planned intellectual property and brand enforcement strategy. We were also delighted to read that our seminar was found entertaining albeit rich in content and information, by members of the press. Indeed, Suleman Ali, an eminent blogger for the IPKat, commented on our event in his piece “IP in luxury goods and fashion: a patent Kat investigates“. Read article here
You can also watch the videos of some of the presentations done at this seminar here: Highlight trailer of ialci and Crefovi seminar on “Intellectual property: how to protect, manage & monetize the know-how, intangible capital, brand image and reputation of luxury maisons & fashion brands” in London – 10 February 2015 Alexander Rozycki, Barrister, 4-5 Gray’s Inns Square, at ialci and Crefovi seminar on “Intellectual property: how to protect, manage & monetize the know-how, intangible capital, brand image and reputation of luxury maisons & fashion brands” in London – 10 February 2015 Annabelle Gauberti, Founding partner, Crefovi, at ialci and Crefovi seminar on “Intellectual property: how to protect, manage & monetize the know-how, intangible capital, brand image and reputation of luxury maisons & fashion brands” in London – 10 February 2015 Stuart Durham, General Manager UK, NetNames, at ialci and Crefovi seminar on “Intellectual property: how to protect, manage & monetize the know-how, intangible capital, brand image and reputation of luxury maisons & fashion brands” in London – 10 February 2015 Holger Alt, Partner, von Boetticher, at ialci and Crefovi seminar on “Intellectual property: how to protect, manage & monetize the know-how, intangible capital, brand image and reputation of luxury maisons & fashion brands” in London – 10 February 2015 Jane Lambert, Barrister, 4-5 Gray’s Inn Square, at ialci and Crefovi seminar on “Intellectual property: how to protect, manage & monetize the know-how, intangible capital, brand image and reputation of luxury maisons & fashion brands” in London – 10 February 2015 Annabelle Gauberti, Founding Partner, Crefovi, at ialci and Crefovi seminar on “Intellectual property: how to protect, manage & monetize the know-how, intangible capital, brand image and reputation of luxury maisons & fashion brands” in London – 10 February 2015 Keith Laker, Partner, Icondia, at ialci and Crefovi seminar on “Intellectual property: how to protect, manage & monetize the know-how, intangible capital, brand image and reputation of luxury maisons & fashion brands” in London – 10 February 2015
Tel: +33 1 78 76 52 23
In the legal field, craftsmanship is usually referred to as “know-how” or “trade secrets”.
Unlike trademarks, copyright, designs and patents, trade secrets – which are an integral part of the creative strategy of 75% of companies in the European Union (“EU”) – do not currently benefit from strong protection granted by a harmonised and set framework of rules.
As a result, at the end of 2013, the European Commission proposed a new directive to harmonise the protection of trade secrets in the 28 member-states of the EU.
The directive on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure, will protect trade secrets, being information that:
– is secret, in that it is not generally known or readily accessible to relevant persons in the field ;
– has commercial value because it is secret; and
– has been subject to reasonable steps to keep it secret.
The acquisition of a trade secret will be unlawful in a range of circumstances where it is a result of breach of a confidentiality agreement or other practice “contrary to honest commercial practices”.
A common set of remedies where there has been unlawful acquisition, disclosure and use of trade secrets, such as interim and permanent injunctions, seizure and destruction of goods which result from the misuse of trade secrets and damages to compensate the trade secrets holders for losses suffered, will be implemented by the new directive. Another key change introduced is that some procedures will be in place to ensure the confidentiality of trade secrets during legal proceedings.
Many legal practitioners hope that the new directive will come into force in 2015, and then implemented by each member-state by 2016.
The directive is good news for businesses, especially those focusing on craftsmanship. The new minimum level of protection for trade secrets will give them greater certainty that their trade secrets are safe and may facilitate cross-border investment and innovation. However, these changes will not remove the need for confidentiality agreements, especially as a pre-requisite to the exchange of valuable confidential information.
Annabelle Gauberti, ialci president and founding partner of London and Paris luxury and fashion law firm Crefovi.
Tel: +33 1 78 76 52 23
What does 2015 hold in store for the art world? As 2014 draws to a close, Private Art Investor spoke to 15 key figures in the art world to discover their predictions and preoccupations for the coming year.
Annabelle Gauberti, president of ialci, was interviewed by the Private Art Investor, to give her predictions for the art world in 2015.
Here is an extract from Annabelle’s interview and below the link to the full article from the Private Art Investor.
“A trend that I am seeing a lot, these days, is that art entrepreneurs are approaching me to launch some art-tech websites, in the same vein as The Art Stack, Articheck, Paddle8, Saatchi Art and Vastari.
I am advising some entrepreneurs who want to replicate the success of fashion/tech startups, such as Gilt (flash sale website), Net-a-porter, my-wardrobe.com, etc.
I am under the impression that my clients and prospects, all art entrepreneurs, have not really understood what is at stake here, and are sometimes willing to take large legal risk without even understanding those risks and legal exposure they are subjecting themselves to.
For example, many art entrepreneurs want to do away with setting out some strong terms and conditions of sale on their art websites, without realising that this is in total breach with the Consumer Contracts (Information, Cancellation and Additional Charges) Regulations 2013.
You can read more about this point in paragraph C (Practical applications of the new EU consumer contracts regulations for the art sector) in my article below:
I therefore expect some rising litigation in respect of all these art websites in 2015, because, to put it bluntly, they do not know what they are doing and they do not seek appropriate prior legal advice to remedy to these breaches.
– Annabelle Gauberti, founding partner of the London and Paris art law firm Crefovi, and president of the International Association of Lawyers for Creative Industries – ialci.
Tel: +33 1 78 76 52 23
Before being a victim of counterfeiters, France has for a long time been the specialist of copying products … from China! Le Capital journalist, Frédéric Brillet, interviews and quotes ialci president Annabelle Gauberti about the counterfeiting business now and then.
Read this article on the exponential growth of the counterfeiting business, in the fashion and luxury sectors. This article was published in the special supplement on luxury, published by Le Capital every December.
Annabelle Gauberti, president of ialci was interviewed for this article and quoted in it.
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ialci president Annabelle Gauberti is quoted several times in this gritty article published by Agence France Press – AFP – in Business Insider and other publications, on the development and ascent of fashion law as a driving force in both the legal and luxury industries.
Here is the article in its entirety, drafted by Eric Randolph from AFP:
Long considered “too fluffy” for serious lawyers, fashion law has emerged in recent years as one of the most lucrative -– and occasionally absurd -– new battlegrounds for the legal profession.
For example, a blink-and-you-miss-it shot of a basketball with what looked like Louis Vuitton symbols on it appeared for just one second in a Hyundai commercial shown during the 2010 Superbowl in the United States. But that was enough for the French luxury label to take Hyundai to court, claiming its trademark had been “diluted”.
To the amazement of many, the court agreed. One expert -– lawyer and New York University lecturer Charles Colman -– calls it “probably the most unfortunate legal decision of the past five years.” Louis Vuitton followed up with a similar suit against the makers of Hollywood comedy “The Hangover Part 2” because a character played by Zach Galifianakis at one point carries a fake LV handbag and mispronounces their name “Lewis Vee-ton”. That case was thrown out -– on the grounds that artistic expression is protected by the US constitution –- but an appeal is ongoing. Such lawsuits are the more extreme by-products of a burgeoning love affair between the fashion and legal industries.
Other high-profile cases include: The ongoing litigation by Converse against 31 competitors for allegedly ripping off its iconic sneaker; pop star Rihanna’s successful action against Topman for putting her face on one of its T-shirts; and the landmark 2012 case in which Christian Louboutin won the exclusive right to make shoes with a red sole. With the global luxury market valued at $985 billion (730 billion euros) by Boston Consulting Group — and set to grow to $1.18 trillion by 2020 — the only surprise is that lawyers have taken so long to take a direct interest.
“Entertainment law and sports law have become accepted terms with their own specialist courses in most law schools,” says Colman. “But there are still only five courses in fashion law in the United States, even though the amount of money involved dwarfs that of entertainment. “There’s no defensible reason except that fashion is perceived as a frivolous subject,” he adds. Across the globe, that is changing as lawyers recognise the vital role they can play in protecting the fashion sector’s fragile illusion of exclusivity from the reality of mass marketing.
“Haute couture is brand-building. The real money is made selling 40-euro nail varnish and 100-euro perfumes,” says Annabelle Gauberti, who left one of the biggest law firms in London to set up her own practice specialising in luxury law (“droit du luxe”). “In the early 2000s, my old bosses used to tell me there’s no money in fashion -– stick to banking or energy,” she says. “They thought fashion was too fluffy, but they were wrong. The time is ripe for the luxury industry. It is making monstrous fortunes.” A major driver has been the explosion in demand for luxury goods from the Middle East, South America and Asia -– forcing fashion houses to seek new investors, manage intricate overseas deals and battle the vast wave of cheap knock-offs flooding the market.
“The industry became much more international and much more complex. That meant a lot more work for lawyers,” says Gauberti, adding that the 2008 financial crash also left a lot of lawyers out of work and looking for new opportunities. The seeds of the current luxury boom go back to the 1980s when a new generation of ruthless businessmen muscled their way into the stuffy, closeted world of French haute couture. The pampered dynasties that ran fashion houses were ill-prepared for men like Bernard Arnault, the engineering tycoon who exploited a family feud in the Louis Vuitton Moet Hennessy (LVMH) group to seize a controlling stake and purge the original owners. People like Arnault and Francois Pinault -– whose Kering conglomerate used a construction fortune to buy up Gucci and other designer labels -– transformed the industry into retailing behemoths. “Arnault and Kering shifted the emphasis of high-end labels from couture to merchandising,” says Colman.
“They dramatically increased the amount of money at stake. That’s why these companies now take such an aggressive stance on their trademark rights.” But the emerging field of fashion law is not just about suing competitors. The advent of e-commerce, social media and smartphones has raised important new legal issues for fashion companies, says Lois Herzeca, who set up the fashion retail and consumer products practice group at the Gibson-Dunn law firm in New York and teaches at the University of Pennsylvania. “For the millennial generation of law students, it’s all about the merging of entertainment, fashion and technology,” she says. “That implicates many areas of evolving law. Fashion retailers suddenly have to worry about things like data privacy.” Rapid changes are testing the law. Mergers become a lot more complex when you buy online companies rather than bricks-and-mortar stores. New technologies like 3D printing threaten to up-end questions of intellectual property. All of which is underpinned by the seemingly unlimited piles of cash involved.
“The fashion houses have managed to create an image that they are super selective -– that you are buying into a dream,” says Gauberti. “It’s a myth of course, but that’s why there’s no limit to its growth.”
Tel: +33 1 78 76 52 23
Many people want to collect street art, but there are issues with taking it directly from the street. Annabelle Gauberti, president of ialci, explains the issues you need to be aware of. Read it in Private Art Investor.
Works of street art can be found and bought in reputable art galleries, which legitimately represent famous street artists such as C215, Banksy and Invader.
This type of works of street art, which were purposefully created and then placed on consignment by the street artists in selected galleries, each comes with a certificate of authenticity.
However, some works of street art are found – and collected – directly in the streets, as a result of the illegal activities that these same street artists perform. For example, French street artist Invader is famous for circulating in Paris and other cities at night, then gluing his famous mosaic graffiti representing colourful space invaders on buildings and walls .
If a collector, who found the work of art in the streets, decides to sell that piece of street art either through a gallery or a broker, how can he make sure that such sale is lawful?
Before we answer this question, we need to check who owns the work of street art, which was gathered from the streets.
Unfortunately, there is no clear-cut answer to this question.
Before putting the work of street art in the public domain, on a wall, concrete sidewalk, etc. the artwork, and any copyright in such artwork, belonged to the street artist, of course.
However, by adding this work of street art on a wall, sidewalk, door, without asking for prior authorisation from the owner of such wall, sidewalk or door, then the street artist commits a crime.
In France, for example, the author of an unauthorised graffiti may be liable to a fine of Eu3,750 as well as community service if the damage caused to walls, vehicles, public alleys or urban assets is “light”. When it is not, the author may be sentenced to seven years of jail time as well as a Eu100,000 fine.
Therefore, pursuant to article L112-1 of the French intellectual property code and the most recent French case law, when the creative work is illicit, it will not benefit from the protection of copyright afforded by the French intellectual property code.
Moreover, the author of a criminal act consisting in degrading a wall or pieces of urban furniture (trains, letter boxes, etc.) does not have any incentive to come forward and be recognised as the author of such degradations (since the police and criminal courts could come after him if he admits that he is responsible).
There is therefore a “legal void”, in this situation, because the street artist, who puts the work of street art in the streets without obtaining prior authorisation, “looses” his ownership rights in the art object as well as his copyright in such art object.
Is the person who collects this illegal work of street art, in the streets, the new owner of this piece of street art, then?
De facto, yes, because this collector of the illegal work of street art has the physical possession of the art object.
However, this “gatherer” of the work of street art is definitely not the owner of the copyright in the work of street art. Indeed, this copyright was lost when the work of street art was put illegally in the streets, by the street artist.
This “legal void” creates a lot of complications and potentially, high risks of litigation should a sale of a work of street art gathered from the streets, be contested by the creator of this work – the street artist.
I therefore recommend sellers of works of street art collected in the streets to ask for prior written authorisation and agreement from the street artist, or his or her heirs if the street artist is no longer alive. If possible, it would be also very useful to obtain a certificate of authenticity from the artist, in relation to this work of art.
Such agreement with the street artist would most definitely entail money changing hands, between the “gatherer” of the work of art in the streets and the street artist, upon the completion of the sale with a buyer.
However, I advise my clients to reach such an agreement before the sale of the art work, since any early financial arrangement made between the “gatherer” of the work of street art and the street artist is better than long, costly and stressful litigation post-sale of the work of street art.
From the viewpoint of the buyer of the work of street art, I believe that he will want to do some due diligence on the art work, before committing to any sale contract.
The common standards, in relation to due diligence applicable to the trade of an art work, are as follows:
– Checking the vendor’s title. Where doubt arises, a specific check into the Art Loss Register, the ICOM red lists and the database of Interpol might be necessary.
– Checking the goods’ authenticity. Where necessary, request an expert’s certificate.
Street art is becoming an increasingly larger part of the contemporary art market, with sky-rocketing sales at auctions and in the secondary market. However, because of the illegal nature of “putting” a work of street art in the streets, it is more complex now to complete successful and lawful sales transactions of works of street art.
Tel: +33 1 78 76 52 23
Yes! It happens more & more frequently that celebrities & entertainers market fashion & luxury products. And stars love it, as it compliments nicely their revenues from their entertainment activities & allow them to reach a wider audience. What are the advantages & pitfalls of marketing through celebrities & music bands? How do you strike such deals, in practice?
We, at ialci and Crefovi, had a great time on Tuesday 22 July 2014, discussing these issues and challenges during our law of luxury goods series seminar on “how to market through celebrities & music bands: endorsement deals, product placement & publicity rights“.
While publicity rights (in the US) and image rights (in Europe) of celebrities are fiercely protected on both sides of the pond, partnerships between brands and top entertainers are becoming more and more frequent.
By way of endorsements, active or passive product placements, targeted film stars, music stars and sports stars are muting themselves in the brands’ most fervent advocates and ambassadors. Ideally, these agreements should generate a win-win situation for all involved: the brand, the artist or sports person and members of the public.
However, there are situations where endorsement deals turn sour, and parties to the agreements prefer to part or terminate their relationships, sometimes even clawback some of the revenues which changed hands during the ad campaigns.
While it is not always a walk in the prairie, to manage and monitor endorsers’ behaviour (good or bad), it should be highlighted that product collaborations between consumer goods brands and fashion designers generally bring a “je ne sais quoi” that retail customers adore. Products born under such collaborations are usually immediately snatched-up, as best-sellers and/or limited editions.
Sometimes, entertainers want to go it alone and launch their own fashion or luxury labels (following the footsteps of Sean Combs – P Diddy, Jay Z and Victoria Beckham).
In this case, they may well need to value their intellectual property assets, in particular in order to obtain a bank loan against them. This working capital will be much needed to launch the fashion or luxury business of the star, if external equity capital is neither available nor an option.
Certain brands, such as Audemars Piguet, that have made wise choices and picked their brands ambassadors and product placement deals with great care and skill, will fully rip the benefits of such partnerships in the long term.
Other brands tend to have a bit more of a “hit-and-miss” track record and therefore need to really implement a systematic approach to the selection of their endorsers and product placement projects, without falling for the “stars in your eyes” ‘ syndrome.
Getting appropriate advice from top practitioners in this sector, such as specialised entertainment lawyers, intermediaries between music bands and brands, agents of film stars, etc. is an integral element of the success of a well thought-out and implemented endorsement deal or product placement.
We were also delighted to read that our seminar was found entertaining albeit rich in content and information, by members of the press. Indeed, James Nurton, managing editor of Managing IP, graced us with a high profile review “a tale of rappers, sports stars and lawyers“.
You can also watch the videos of some of the presentations done at this seminar here: Highlight trailer of ialci and Crefovi seminar on “How to market through celebrities and music bands: endorsement contracts, product placement and publicity rights” in London – July 2014 Amy Goldsmith at ialci and Crefovi seminar on “How to market through celebrities and music bands: endorsement contracts, product placement and publicity rights” in London – July 2014 Richard Kirstein at ialci and Crefovi seminar on “How to market through celebrities and music bands: endorsement contracts, product placement and publicity rights” in London – July 2014 Austin Jacobs at ialci and Crefovi seminar on “How to market through celebrities and music bands: endorsement contracts, product placement and publicity rights” in London – July 2014 Matthew Drinkwater at ialci and Crefovi seminar on “How to market through celebrities and music bands: endorsement contracts, product placement and publicity rights” in London – July 2014 Annabelle Gauberti at ialci and Crefovi seminar on “How to market through celebrities and music bands: endorsement contracts, product placement and publicity rights” in London – July 2014 Malcolm Gaskin at ialci and Crefovi seminar on “How to market through celebrities and music bands: endorsement contracts, product placement and publicity rights” in London – July 2014
Tel: +33 1 78 76 52 23