The fashion industry is characterized not only by its high capital intensity, but also by the fierce competition between its creative participants. As we know, one of the forms of unfair competition is the infringement of intellectual property rights, which can lead to the production of counterfeit products. A well-known example is the lawsuit filed by the fashion house Fendi against the retail chain ZARA. The plaintiff claimed that the defendant had illegally used Fendi's photographs in the production of their products (t-shirts). The Milan Court ruled that such use constitutes an «act of unfair competition and a violation of copyright»1.
The protection of intellectual property in the fashion industry dates back several centuries — as early as the 15th century, the King of France granted exclusive privileges to fabric manufacturers, and a government ordinance in 1711 in Lyon was the first to declare the forgery of woven patterns a crime. In England and Scotland, the first design protection statute was driven by the needs of textile manufacturers2.
The fashion world is often the scene of high-profile lawsuits between fashion houses and well-known brands over the right to use certain intellectual property. In 2020 alone, observers highlighted the top 5 most high-profile disputes, including legal ones, in this area: Christian Siriano vs. his former licensee M&A Imports, photographer Carlos Vila vs. the Monse brand, French fashion company Longchamp vs. retailers BedBath&Beyond and LailaRowe, and Nam Khan vs. retailer J.Crew. In the same vein, there is the conflict between Michael Kors and Twitter users over the designer's use of «jerga» hoodies, which are popular among Mexican youth and young Latin Americans living in the United States, in his collection3.
The current national legislation of various countries provides for various legal protection options for the results of intellectual activity in the fashion industry, including the most severe form of legal liability — criminal liability.
Thus, the Italian Criminal Code contains Articles 473 and 474: the first establishes the responsibility of someone who, alone (without accomplices), falsifies a national or foreign trade mark or distinctive mark, and of someone who fraudulently uses these marks alone, while the second punishes the importation into the country, possession for the purpose of sale, marketing, or introduction into circulation of products bearing falsified trade marks or distinctive marks (national or foreign). Article 474-ter provides for a more severe punishment for crimes under Articles 473 and 474 if the offenses are committed on a systematic basis or through organized means or actions. The perpetrator may be sentenced to up to six years in prison. Article 517 establishes liability for offenses against industrial property. According to the first, the sale or other introduction into circulation of industrial products with signs that mislead as to the quality or origin of the product is punishable, for example, the use of distinctive marks that are similar to the point of confusion; unregistered distinctive marks. Article 623 of the Italian Criminal Code provides for liability for the disclosure (for the purpose of benefiting oneself or third parties) of commercial or scientific secrets by those who have acquired such information through their employment or work. It also provides for the responsibility of the person who, having obtained such information in any unlawful manner, discloses or uses it for their own benefit or the benefit of third parties.
The Brazilian Copyright Law (Brazilian Copyright Law No. 9.610/98) provides in a special section for measures of civil liability (civil sanction) "without prejudice" to the application of criminal penalties, and the latter are applied within the framework of the norms of Chapter I "Crimes against intellectual property", Section III "Crimes against intangible property" of the Criminal Code of Brazil. Article 184 of the Code provides for liability for infringement of copyright and related rights (punishment — imprisonment from two to four years and a fine). A new term has even appeared in the Western legal literature — "Crimes of fashion"4. In addition to the Brazilian Criminal Code, criminal infringements of copyright and patent rights in this country are provided for by the Law on Industrial Property and the Law on Copyright5.
But what results of intellectual activity in the world of fashion industry are legally protected today? And how? We often hear about the "theft" of ideas in this area and the inability to protect these ideas on their own. Is it so?
Ideas can be materialized or not materialized. For example, in the German legal lexicon, the former are called verkörperte Form ("embodied form"), and the latter are called reine Idee ("pure idea")6. It is the latter who, for some reason, are denied legal protection. It is believed that an idea can be protected by intellectual property rights only when it takes on some objectified, material form, such as a new fabric or an element of clothing7. If we are talking about a "pure" or "naked" idea (reine Idee, blöße Idee), there will be no legal protection ("Die Ideen sind frei" — "Ideas are free")8.
Of course, from a legal standpoint, it is impossible to steal an idea because it is non-material. As for the results of intellectual activity, the institution of trade marks (means of individualization of goods and services) — trade mark protection, the institution of copyright law, the institution of patent law, and the institution of commercial/trade secret and know-how are used to protect them. There is even a new institution called "design law" (Designrecht9, design law). Its creation was legalized by Directive 98/71 of the European Union in all EU countries, which provides protection for a registered clothing design for up to five years, which can be extended up to 25 years. To obtain protection, the product must be novel and have individual features that create a fundamentally new perception of the garment among informed consumers, unlike any previously created similar products10.
However, it is unlikely that we can agree with the statement made by Georges Joffre, Brand Protection Manager at LVMH Moët Hennessy — Louis Vuitton (LVMH), who claims that the chemical formula of a perfume fragrance cannot be protected11. However, it can be protected through the use of the institution of trade secret or know-how, which are used to protect intellectual property that cannot be protected by copyright or patent law.
The same tools can be applied in the fashion industry, and if we are talking about design solutions or ideas that have been materialized, they can be protected by copyright, patent law, and trade mark law. For example, the design of an item and its appearance (known as "trade dress"), as well as non-functional design elements, distinctive seams, and even colors (such as the famous red soles of Christian Louboutin's women's shoes)12. The appearance of a fashion product can also be protected by a design patent, and a sound or scent can be registered as a trade mark13.
If we are talking about unimplemented ideas, concepts, or solutions that arise in the fashion industry, we can use the institution of trade secrets, albeit with some limitations. Many people know the ancient romantic story of how the Chinese secret of silk production became public knowledge in the 15th century: a Chinese princess wearing a hat made of fresh flowers went to her lover, and the hat contained silkworms. For example, commercial secrets can include information about the content and results of business or production meetings between designers and fashion designers. These meetings can be a place where interesting creative ideas are shared, which can then be transformed into valuable products or services. After all, Russian legislation guarantees creative workers the right to intellectual property and the protection of trade secrets14. Moreover, the results of intellectual activity in the fashion industry can be protected in several ways. For example, during the preparation of a collection for a show, information about it may be protected as a trade secret, but after the show (public demonstration), it will no longer be a trade secret, but the same copyright rules will still apply.
The protection of intellectual property in the fashion industry dates back several centuries — as early as the 15th century, the King of France granted exclusive privileges to fabric manufacturers, and a government ordinance in 1711 in Lyon was the first to declare the forgery of woven patterns a crime. In England and Scotland, the first design protection statute was driven by the needs of textile manufacturers2.
The fashion world is often the scene of high-profile lawsuits between fashion houses and well-known brands over the right to use certain intellectual property. In 2020 alone, observers highlighted the top 5 most high-profile disputes, including legal ones, in this area: Christian Siriano vs. his former licensee M&A Imports, photographer Carlos Vila vs. the Monse brand, French fashion company Longchamp vs. retailers BedBath&Beyond and LailaRowe, and Nam Khan vs. retailer J.Crew. In the same vein, there is the conflict between Michael Kors and Twitter users over the designer's use of «jerga» hoodies, which are popular among Mexican youth and young Latin Americans living in the United States, in his collection3.
The current national legislation of various countries provides for various legal protection options for the results of intellectual activity in the fashion industry, including the most severe form of legal liability — criminal liability.
Thus, the Italian Criminal Code contains Articles 473 and 474: the first establishes the responsibility of someone who, alone (without accomplices), falsifies a national or foreign trade mark or distinctive mark, and of someone who fraudulently uses these marks alone, while the second punishes the importation into the country, possession for the purpose of sale, marketing, or introduction into circulation of products bearing falsified trade marks or distinctive marks (national or foreign). Article 474-ter provides for a more severe punishment for crimes under Articles 473 and 474 if the offenses are committed on a systematic basis or through organized means or actions. The perpetrator may be sentenced to up to six years in prison. Article 517 establishes liability for offenses against industrial property. According to the first, the sale or other introduction into circulation of industrial products with signs that mislead as to the quality or origin of the product is punishable, for example, the use of distinctive marks that are similar to the point of confusion; unregistered distinctive marks. Article 623 of the Italian Criminal Code provides for liability for the disclosure (for the purpose of benefiting oneself or third parties) of commercial or scientific secrets by those who have acquired such information through their employment or work. It also provides for the responsibility of the person who, having obtained such information in any unlawful manner, discloses or uses it for their own benefit or the benefit of third parties.
The Brazilian Copyright Law (Brazilian Copyright Law No. 9.610/98) provides in a special section for measures of civil liability (civil sanction) "without prejudice" to the application of criminal penalties, and the latter are applied within the framework of the norms of Chapter I "Crimes against intellectual property", Section III "Crimes against intangible property" of the Criminal Code of Brazil. Article 184 of the Code provides for liability for infringement of copyright and related rights (punishment — imprisonment from two to four years and a fine). A new term has even appeared in the Western legal literature — "Crimes of fashion"4. In addition to the Brazilian Criminal Code, criminal infringements of copyright and patent rights in this country are provided for by the Law on Industrial Property and the Law on Copyright5.
But what results of intellectual activity in the world of fashion industry are legally protected today? And how? We often hear about the "theft" of ideas in this area and the inability to protect these ideas on their own. Is it so?
Ideas can be materialized or not materialized. For example, in the German legal lexicon, the former are called verkörperte Form ("embodied form"), and the latter are called reine Idee ("pure idea")6. It is the latter who, for some reason, are denied legal protection. It is believed that an idea can be protected by intellectual property rights only when it takes on some objectified, material form, such as a new fabric or an element of clothing7. If we are talking about a "pure" or "naked" idea (reine Idee, blöße Idee), there will be no legal protection ("Die Ideen sind frei" — "Ideas are free")8.
Of course, from a legal standpoint, it is impossible to steal an idea because it is non-material. As for the results of intellectual activity, the institution of trade marks (means of individualization of goods and services) — trade mark protection, the institution of copyright law, the institution of patent law, and the institution of commercial/trade secret and know-how are used to protect them. There is even a new institution called "design law" (Designrecht9, design law). Its creation was legalized by Directive 98/71 of the European Union in all EU countries, which provides protection for a registered clothing design for up to five years, which can be extended up to 25 years. To obtain protection, the product must be novel and have individual features that create a fundamentally new perception of the garment among informed consumers, unlike any previously created similar products10.
However, it is unlikely that we can agree with the statement made by Georges Joffre, Brand Protection Manager at LVMH Moët Hennessy — Louis Vuitton (LVMH), who claims that the chemical formula of a perfume fragrance cannot be protected11. However, it can be protected through the use of the institution of trade secret or know-how, which are used to protect intellectual property that cannot be protected by copyright or patent law.
The same tools can be applied in the fashion industry, and if we are talking about design solutions or ideas that have been materialized, they can be protected by copyright, patent law, and trade mark law. For example, the design of an item and its appearance (known as "trade dress"), as well as non-functional design elements, distinctive seams, and even colors (such as the famous red soles of Christian Louboutin's women's shoes)12. The appearance of a fashion product can also be protected by a design patent, and a sound or scent can be registered as a trade mark13.
If we are talking about unimplemented ideas, concepts, or solutions that arise in the fashion industry, we can use the institution of trade secrets, albeit with some limitations. Many people know the ancient romantic story of how the Chinese secret of silk production became public knowledge in the 15th century: a Chinese princess wearing a hat made of fresh flowers went to her lover, and the hat contained silkworms. For example, commercial secrets can include information about the content and results of business or production meetings between designers and fashion designers. These meetings can be a place where interesting creative ideas are shared, which can then be transformed into valuable products or services. After all, Russian legislation guarantees creative workers the right to intellectual property and the protection of trade secrets14. Moreover, the results of intellectual activity in the fashion industry can be protected in several ways. For example, during the preparation of a collection for a show, information about it may be protected as a trade secret, but after the show (public demonstration), it will no longer be a trade secret, but the same copyright rules will still apply.
Footnotes:
1. Francesca Maculan and Silvia Laitila “Unfair competition and copyrightinfringement: the Court of Milan decides on the case of Fendi vs. Zara” // https://martinimanna.com/unfair-competition-copyright-court-milan-fendi-zara
2. Dr. Friodolin Fischer “DesignLaw in the European Fashion sector // https://www.wipo.int/wipo_magazine/en/2008/01/article_0006.html
3. Natasha Reed “The Top 5 Most Fashionable Intellectual Property DisputesTo Walk This Yearיs Runways at New York Fashion Week” // https://www.mondaq.com/unitedstates/trademark/892928/the-top-5-most-fashionable-intellectual-property-disputes-to-walk-this-year39s-runways-at-new-york-fashion-week
4. Carolyn Marcelo The Crimes of Fashion. The Effects ofTrademark and Copyright Infringement in the Fashion Industry. A Senior Thesis// https://digitalcommons.liberty.edu/honors/246/
5. Julia Davet Pazos “Brazil: Parasitic Explotation: Unfair Practice amongNon-Competitors” // https://www.mondaq.com/brazil/trade-regulation-practices/414426/parasitic-exploitation-unfair-practice-among-non-competitors
6. Ideen schützen: Welche Optionen existieren? // https://www.urheberrecht.de/ideen-schuetzen/
7. Dr.Friodolin Fischer “Design Law in the European Fashion sector // https://www.wipo.int/wipo_magazine/en/2008/01/article_0006.html
8. Ideenschützen: Welche Optionen existieren? // https://www.urheberrecht.de/ideen-schuetzen/
9. Designschutz– Wie können Sie Ihr design schützen lassen? // https://www. urheberrechtI.de/designschutz,Ideen schützen: Welche Optionen existieren? //https://www.urheberrecht.de/ideen-schuetzen/
10. Shebanova, N.A. "Fashion" law. Moscow: NORMA INFRA-M, 2018. pp. 107-108.
11. Bakhtiozina, A. Experience in combating counterfeit goods in Russia: an interview with Georges Geoffroy // https://www.fashion-law.ru/post/opyt-borby-s-kontrafaktom-v-rossii-intervyu-s-zhorzhem-zhofrua
12. NatashaReed “The Top 5 Most Fashionable Intellectual Property Disputes To Walk ThisYearיs Runways at New York FashionWeek” // https://www.mondaq.com/unitedstates/trademark/892928/the-top-5-most-fashionable-intellectual-property-disputes-to-walk-this-year39s-runways-at-new-york-fashion-week
13. Shebanova, N.A. "Fashion" law. pp. 106, 99-100.
14. "Fundamentals of the legislation of the Russian Federation on culture" (approved by the Supreme Court of the Russian Federation on 09.10.1992 No. 3612-1)(as amended on 30.04.2021) // Rossiyskaya Gazeta, No. 248, 17.11.1992.
2. Dr. Friodolin Fischer “DesignLaw in the European Fashion sector // https://www.wipo.int/wipo_magazine/en/2008/01/article_0006.html
3. Natasha Reed “The Top 5 Most Fashionable Intellectual Property DisputesTo Walk This Yearיs Runways at New York Fashion Week” // https://www.mondaq.com/unitedstates/trademark/892928/the-top-5-most-fashionable-intellectual-property-disputes-to-walk-this-year39s-runways-at-new-york-fashion-week
4. Carolyn Marcelo The Crimes of Fashion. The Effects ofTrademark and Copyright Infringement in the Fashion Industry. A Senior Thesis// https://digitalcommons.liberty.edu/honors/246/
5. Julia Davet Pazos “Brazil: Parasitic Explotation: Unfair Practice amongNon-Competitors” // https://www.mondaq.com/brazil/trade-regulation-practices/414426/parasitic-exploitation-unfair-practice-among-non-competitors
6. Ideen schützen: Welche Optionen existieren? // https://www.urheberrecht.de/ideen-schuetzen/
7. Dr.Friodolin Fischer “Design Law in the European Fashion sector // https://www.wipo.int/wipo_magazine/en/2008/01/article_0006.html
8. Ideenschützen: Welche Optionen existieren? // https://www.urheberrecht.de/ideen-schuetzen/
9. Designschutz– Wie können Sie Ihr design schützen lassen? // https://www. urheberrechtI.de/designschutz,Ideen schützen: Welche Optionen existieren? //https://www.urheberrecht.de/ideen-schuetzen/
10. Shebanova, N.A. "Fashion" law. Moscow: NORMA INFRA-M, 2018. pp. 107-108.
11. Bakhtiozina, A. Experience in combating counterfeit goods in Russia: an interview with Georges Geoffroy // https://www.fashion-law.ru/post/opyt-borby-s-kontrafaktom-v-rossii-intervyu-s-zhorzhem-zhofrua
12. NatashaReed “The Top 5 Most Fashionable Intellectual Property Disputes To Walk ThisYearיs Runways at New York FashionWeek” // https://www.mondaq.com/unitedstates/trademark/892928/the-top-5-most-fashionable-intellectual-property-disputes-to-walk-this-year39s-runways-at-new-york-fashion-week
13. Shebanova, N.A. "Fashion" law. pp. 106, 99-100.
14. "Fundamentals of the legislation of the Russian Federation on culture" (approved by the Supreme Court of the Russian Federation on 09.10.1992 No. 3612-1)(as amended on 30.04.2021) // Rossiyskaya Gazeta, No. 248, 17.11.1992.