Intellectual property and fashion. Practical case studies and salutions.

 

Fashion business is one of the industries in the modern world, behind which hundreds of billions of dollars of money come from the global economy. Statistics show that some of the richest companies in the world are fashion giants such as ZARA (valued at 66 billion dollars), Luxottica Group (the largest glass-making company under the brands Hut, Ray -Ban "and" Oakley "," Burberry "," Chanel "," Prada " and " Versace "- estimated at $ 30 billion), LVMH (70 luxury brands like Louis Vuitton and Hennessy, - estimated at $ 28 billion), H & M (estimated at $ 26 billion), and so on. Behind the commercial success of these companies naturally stands the protection afforded by their intellectual property, which is strictly defended all over the world. The way this protection is structured as a legislative basis and practice is the subject of this article.

1.Copyright Law and Fashion. In accordance with the principles of the Berne Convention, any original work of art is automatically protected by copyright worldwide, and this also applies to the works of fashion design under Article 2, paragraph 7, of the Convention. Obviously, the copyright object of protection that concerns fashion is the artistic design of any garment, shoe, hat or belt, and parts of it. Copyright laws worldwide, including the Bulgarian Copyright and Related Rights Act, protect original prints and patterns, unique colors and new combinations of graphic elements used for clothing and accessories. Each legislation builds in this context certain specific rules. 

1.1. Copyright Law on Fashion in the United States. US Copyright Act advocates that fashion design can be protected only if and only to the extent that the protected design includes identifiable picture, graphic, or sculptural elements or exist separately and are capable of being perceived independently by the utilitarian aspects of the article itself - such as a belt. The American courts accept in this context that an element of the design is virtually separable in two cases:

- when the design itself can be removed from the garments and sold separately (e.g. belt buckle);

- where the design as such is a conceptually separable part, consisting of artistic and artistic features which do not contribute to the immaterial aspect of clothing and entail its different functionality (for example, a Halloween costume).

In 2006, The US Congress was introduced to discuss the "Innovative Design Protection Act", better known as the "Fashion Bill". Until 2012 He underwent six changes as soon as his final version is expected. 

1.2. Copyright Law on Fashion in England. In 2006, the UK government formally adopted the term "creative economy" to allow broader participation of creative industries in economic and social life. Since then, the importance of creative industries, in particular the fashion industry, has been increasingly recognized as a generator of jobs, wealth and cultural added value on the island. Still, despite its current and future importance to the economy, fashion is not protected in England from a copyright standpoint as other creative industries. In order to be protected by copyright in the United Kingdom, a work of fashion design should fall within the legal definition of the eight copyright objects, in the context of Chapter Three of the 1988 Copyright and Designs and Patents Act. Copyright, Designs and Patents Act 1988 ("CDPA") The requirement in this context is that the work of fashion design should be an original work of art. English jurisprudence, which is by its nature a precedent, does not favor the existence of this argument on clothing and other works of fashion, and they do not fall into any of the eight subcategories pertaining to the objects of Attorney law, in particular artworks.

The meaning of the term "artistic work" has been dealt with in a number of cases in England. In one of them, Hensher VS Rest While, the House of Lords unanimously accepted that the prototype of a ballet costume that was intended for mass production was not a work of art. Although these costumes have been shown in the Victoria Albert Museum, the Lords accept that they were exhibited as exhibits pointing to developments in fashion, not as works of art. More recently, the Supreme Court of England ruled that Star Wars Star Commander helmets were not "artistic fashion design," because their goal was not aesthetic. In this context, the Supreme Court motivated its decision with the view that commented helmets cannot be considered as sculptural works and therefore cannot be protected as a subject of copyright. The two cases mentioned show that English case law is not inclined to accept that fashionable works may be "artistic" in order to be protected by copyright - a legal conclusion which, in my view, is very contradictory, I would say, and hence illogical, given the radically opposite view of continental European doctrine. The reason for this is the fact that, in general, the threshold of legal judgment as to whether a work is subject to artistic creativity is too high in England, which leads to the fact that clothing and fashion design are not protected by the copyright of the island. On the other hand, other European countries, such as France and Germany, and even the United States, enjoy a wider range of protection with respect to the fashion industry, which favors the rapid development of fashion as a business in these territories.

1.3. Copyright Law on Fashion in Bulgaria. In the Bulgarian Law on Copyright and Related Rights, fashion design is regulated in Article 3, paragraph 1, point 5, which enshrines the rule that the subject of copyright protection is the works of art, including works of art Of applied art, design and folk art crafts. Here I find all the sketches of models in the field of fashion design, which embellish the shape and color combinations in a garment, boot, belt, hat, etc. These works arise from the moment of their creation (Art. One such work of fashion design may arise within the framework of an employment relationship or by order of a fashion designer. 

In the former case, the copyright on a work of a design that is created in the course of an employment or service relationship will belong to the author, unless otherwise provided - that is to say, unless the copyright on the design of the design comes directly for the employer. This must be expressly agreed as an exception in the designer's employment contract - Art. 41, para 1, proposal 2 of the Law on the Protection of Competition. The Employer has the exclusive right without the permission of the Designer and without payment of remuneration, insofar as it is not otherwise agreed in the employment contract or the act of appointment, to use the work of the fashion design thus created for its own purposes. The Employer is entitled to use the acquired rights in the fashion design in a manner and to an extent consistent with his / her normal commercial activity. 

An interesting point in the practice is the fact that when the remuneration of the designer's designer at the time he created the work turns out to be disproportionate to the revenue generated by the use of a fashion design-that is, he is the most successful model in the collection of one A fashion house that sells successfully for years on the market, then the fashion designer can ask for additional reward from his employer. If no agreement is reached between the parties on the amount of additional royalties the employer will owe to the fashion designer, the dispute will be settled by the court in fairness. 

Fashionable design as a work of art may also arise in the case of a contract of a contract concluded between a contracting authority, such as a fashion house and the designer. The Bulgarian Copyright and Related Rights Act in Article 42 (1) enshrines the rule that the copyright on a work of a custom-made design belongs to the author of the work, unless the contract of award is otherwise provided. As it has become clear, this "other" may be a clause in which the copyright on the design of the design, which is the subject of the contract, is made directly to the ordering party. Unless otherwise agreed, the ordering party is entitled to use the work without permission of the designer for the purpose for which it was commissioned - for example, for the work to be included in a particular fashion collection as a model. 

2.Industrial Designs in Fashion. Foundations of the fashion industry are new and original designs like 3D images. This view is legally enshrined in both the basic principles of patent law, which advocate that, in order to be the object of protection, a design must be new and original (see Art.11 and Art.12 of the Industrial Design Act or Article 5 and Article 6 of Regulation 6/2002 on Community Designs). 

Fashion business is increasingly requiring adequate protection of models from a particular collection as one of them becomes a long-term tangible asset of a company. In this context, the registration of industrial designs helps to prevent the use or copying by third parties of unreasonable new and original decorative and aesthetic elements, sometimes even complete compositions, which refer to a three-dimensional image in fashion - for example the shape of a hat, garment or two-dimensional Such as a textile print on a fabric. As I have already mentioned in some countries, fashion designs can be adequately protected by local copyright law as well as applied art. However, the very common reason for not proceeding to parallel protection, consisting in registering a design of a particular product, is its short life cycle - in most cases not more than six to twelve months (one fashion season), which does not justify the significant financial costs that the corporation would have to protect each collection. That is why, in practice, the subject of registration as industrial designs are only specific models that have proved to be "top" market demand, that is, they have become classic. The story knows many such designs as Levi’s jeans pocket, the Hermes fashion bag, by the classic Kelly model, which has gained fame after As Princess of Monaco - Grace Kelly appears with such a bag on the cover of LIFE Magazine Press 1956. Another classic of fashion design is the Chanel Suit (by Chanel), designed by Coco Chanel in 1930. Today, one such suit is sold for $ 5,000. The duration of registration of industrial designs varies from one country to another, with Bulgaria and the EU reaching 25 years. (See Art. 15 of the Industrial Design Law and Article 12 of Regulation 6/2002).

For the sake of greater flexibility and compliance with market realities, the so-called "unregistered design" institute, which offers protection to its holders for a relatively short period of time, has been legislatively imposed in some countries such as the United Kingdom and the European Union (EU). This legal institute proved to be particularly useful for fashion designers, individuals or small budget fashion companies who want to test the market for new fashion products before deciding who is the leading model in their collection that is worth it Be registered. Under Article 11 (1) of Regulation 6/2002 on the Community design, an unregistered design proposes protection for a maximum period of three years from the date on which the design was first made available to the public in the Community, that is to say Has been published, exhibited, used in trade or disclosed in such a way that, in the normal course of business, such events can reasonably be known to the specialized sector of the relevant sector operating within the Community. This effect is usually achieved through reviews, fashion magazine publications, or catalogs where a particular fashion design is shown in one of the 28 EU countries. An example in this direction is the case caused by the business model of the Bulgarian fashion designer Iskren Lozanov, which in 2009, Won the first prize at the Triumph Inspiration Award. This buzz, as an unregistered Community design, was used by the American singer Beyoncé in her stage performances, which triggered a legal dispute over Intellectual Property between her and the German underwear company Triumph. The dispute ended with an out-of-court settlement and payment of substantial compensation from Beyoncé’s management to the German firm. 

Another effective remedy in relation to a design that is the object of protection of a three-dimensional image of fashion is the so-called "postponed registration publication". It is a legal institute that exists in Bulgarian law in Art. 48a of the Industrial Design Act. This legal mechanism creates an option for the applicant for industrial design to request, even with the filing of the application, postponement of the publication of the registration of the design, if registered, for a period of 30 months from the filing date of the application or the priority date. This is a particularly useful feature offered by numerous national legal systems, The Hague Agreement on the International Deposit of Designs and the Community Design Regulation 6/2002, which aims to keep the design process of a design (in this case) secret from the rest Competitors on the market, to its real, postponed positioning on the market.

3.Patents and fashion. The portfolio of patents that develop and hold some fashion giants reflects their technological superiority in the invention of new, non-crunching or softening fabrics, anti-allergenic, have a specific color, or are more weather-resistant. Such patent portfolio serves both for legal protection and for attracting partners or investors for the realization of a project in the fashion business. 

The Danish biotechnology company Novozymes, specialized in the development of enzymes and micro-organisms, is a pioneer in the use of enzymes in fabric processing. Although she has not previously been involved in the fashion industry, The company also develops a patent technology for processing jeans through the so-called "stone wash". The invention is a chemical patent based on an enzyme called & quot; cellulose & quot; which removes a portion of indigo dye in the denim color so as to give the fabric a worn appearance. Over the last 20 years, a large part of the textiles finishing industry, working with denim fabrics, has been using Novosibes' pulp. Nowadays, the Novozyms Patent for Improvement of Production Methods in Finishing Works is licensed globally, with more than 4200 active patents and patent applications, aiming at a proactive licensing strategy to increase royalties (licensing In 2007, the Federal Court of Justice in Delaware ordered the US company Danisco to pay $ 5 million in damages for US patent infringement No. 6867031 And Novozymes, which is distributed in the US under the trademark "SPEZYME" and is an enzyme used to produce bioethanol, and the Delaware Federal Court also found that Danish had deliberately breached the Novozymes patent, The result of which the court has doubled the damages awarded and lawyers' fees in favor of Novozymes.

Another example is the Italian company "Grindi" (from "Grindi" Srl.), Which is based on the Italian island of Sardinia. In the late 1990s, she developed an innovative fabric under the name Suberis made of cork, claiming she was smooth, silky-like, easy to wash, does not scratch, is scratchy, waterproof and fire resistant. After laboratory testing, Grindy filed an international patent application under the Patent Cooperation Treaty (PCT) in 1998 to protect its unique product in a large number of countries. The Subseries fabric (the patent number PCT / IT98 / 00133) is used in the manufacture of apparel, footwear and sportswear, as well as in many other applications The Subseries fabric is protected by a patent from the European patent an office for 17 countries and a national patent in the Republic of K While the cork production processes of the same company are patented by the European Patent Office for 20 countries, allowing the company to expand with confidence in new markets. "The annual turnover of Grindi is currently between $ 5 million and $ 10 million. A combination of creativity, technology and nature, as well as the profound use of intellectual property, have brought Griddies a global expansion from the Italian island to the markets of Australia, East Asia, the EU, North and South America. Over the years, the company has received various international awards, including the Jury at the International Convention Hall, the Jury at the International Convention Hall, and the "Program for the Certification of Forest Certification" The "Endorsement of Forest Certification" (PEFC) - the world's largest forest certification organization.

4.Trademarks and fashion. The big fashion houses are constantly investing in trademarks. The world practice has imposed trademark registration as a protective and marketing model for attracting customers, and one can say that fashion branding policy is equally important for both large market players and small, boutique startup companies. An example of what they say is the emblematic two letters "C" in Chanel's trademark, "Chanel", the famous Hermes horse ride, unforgettable verbally intertwining letters of "Yves Saint Laurent" - all examples of top fashion brands. Recently, the fashion trend is becoming more and more abstract and does not mean anything but at the same time leads to a high degree of distinctiveness and an option to purchase an identical, easy-to-remember domain - an example of this is the brand "MiuMiu", owned by the Italian fashion giant "PRADA". I pay attention to fashion brands as domains, because in my opinion, in the 21st century, online processes are crucial for every business, including fashion.

Case law abounds in lawsuits concerning trademark infringement, so I will mention a recent, interesting case study on the topic of selling fashion brands online. Nearly five years ago, the European Court of Justice ruled on a reference for a preliminary ruling on the case "L'Oreal" vs. "eBay". The inquiry was made in 2009. By the Supreme Court of England and Wales, in Case C-324/09 of the Court of Justice of the European Union (Case C-324/09). This reference for a preliminary ruling concerns the interpretation of Articles 5 and 7 of First Council Directive 89/104 / EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of ​​2 May 1992 (3) ('Directive 89/104'), Articles 9 and 13 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, Of Article 14 of Directive 2000/31 / EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects (Directive on electronic commerce) and Article 11 of Directive 2004/48 / EC of the European Parliament and of the Council of 29 April 2004 on the exercise of implementing powers conferred on the Commission Intellectual Property Rights (the so-called IPRED Directive). The reference has been made in the context of a dispute between L'Oréal SA and its subsidiaries Lancom France ("Lancôme parfums et beauté & Cie SNC"), the laboratory "Garnier" Laboratoire Garnier & Cie) and L'Oréal (UK) Ltd. (collectively, L'Oréal) and three subsidiaries of "eBay Inc." ", Namely eBay International AG, eBay Europe SARL and eBay (UK) Ltd (hereafter referred to as eBay in general), as well as Mr Potts, Mrs Rachord, Mrs Ormsby, Mr Clark, Ms Clark, Mr Fox and Mrs B ('the defendants - natural persons'), on the occasion of the without the consent of L'Oréal, of goods produced by that company through an eBay e-commerce market (auction), the Court of Justice of the European Union, having regard to the factual background to the dispute, stated as follows:

Where goods in a third country protected by a mark registered in a Member State of the Union or a Community trade mark which were previously not marketed in the European Economic area or, where that is a Community trade mark, which were not previously registered are sold by an economic operator in an electronic market without the consent of the proprietor of that mark to a consumer located on the territory covered by that trade mark or are the subject of an offer to sell or advertise on that market for that proprietor may oppose that sale, that offer for sale or that advertising under the provisions contained in Article 5 of First Council Directive 89/104 / EEC of 21 December 1988 on the approximation of the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of ​​2 May 1992 or Article 9 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark. It is for the national courts to assess on a case-by-case basis whether there are relevant data on the basis of which it can be concluded that an offer for sale or advertising displayed in an electronic market accessible in that territory is directed at this territory users.

The supply by the proprietor of a mark to his authorized distributors of articles bearing that mark designed to demonstrate to consumers at approved outlets and bottles of that brand from which small quantities can be taken in order to be Given in the absence of evidence to the contrary, does not constitute marketing within the meaning of Directive 89/104 or Regulation No 40/94.

Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94 must be interpreted as meaning that the proprietor of a trade mark may, by virtue of the exclusive right which it confers, be able to oppose the sale of goods such as those covered by Of the case in the main proceedings because the seller has removed the outer packaging of those goods when such unpacking leads to a lack of basic information such as the identity of the manufacturer or of the person responsible for the marketing of the cosmetic product. Where the removal of the outer packaging does not lead to such a lack of information, the trade mark proprietor may nonetheless oppose a perfume or a cosmetic product bearing its mark being sold unpackaged if it finds that the removal of the packaging has affected the image of the product Thus also the reputation of the mark.

Article 5 (1) (a) of Directive 89/104 and Article 9 (1) (a) of Regulation No 40/94 must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an electronic market operator To advertise the goods marketed on that electronic market by using a keyword identical to that mark which that operator has chosen in the context of a cataloging service on the Internet where that advertising does not enable or allows only the normally informed and reasonable Careful internet user difficult to write Whether those goods originate from the proprietor of the trade mark or an undertaking economically linked to it or, on the contrary, from a third party.

An electronic market operator does not 'use', within the meaning of Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94, identical or similar marks with signs appearing in sales offers displayed on its website. 

Article 14 (1) of Directive 2000/31 / EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (Directive on electronic commerce) Be interpreted as applying to an electronic market operator where he did not have an active role to enable him to acquaint himself with or control the data stored.

The designated operator has such a role when providing assistance in optimizing the presentation of the relevant sales proposals or in their advertising. Where an electronic market operator has not played an active role in the meaning referred to in the preceding paragraph and, therefore, the service supplied by it falls within the scope of Article 14 (1) of Directive 2000/31, it cannot, however, benefit from the provision In that provision, a waiver in a case which may culminate in a judgment ordering damages and loss of profits if it was aware of facts or circumstances on the basis of which the diligent economic operator should have established The consistency of the relevant sales proposals and, in the event of such introduction, did not act expeditiously in accordance with Article 14 (1) (b).

The third sentence of Article 11 of Directive 2004/48 / EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as requiring Member States to ensure that those competent in the field of intellectual property rights The protection of intellectual property rights in national jurisdictions may oblige an electronic market operator to take measures which contribute not only to the suspension of infringements of those rights by consumers in that market but also to the prevention New breaches of this type. The orders imposing this obligation must be effective, proportionate, dissuasive and should not create obstacles to legitimate trade.

  

Author: Mr. Atanas Kostov – trademark and patent attorney