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Monday, 24 September 2012

Handbags at Dawn 1: fashion, copyright and trade marks

Today's Intellectual Property and Fashion conference, informally called Handbags at Dawn, kicked off with Iona Harding (Baker & McKenzie) talking on the relevance of copyright to the fashion sector. Iona started off with a review of copyright subject matter, starting with artistic works and works of artistic craftsmanship. It's relatively difficult to persuade a court that a fashion work is a work of artistic copyright, she said, after looking at British case law leading to the Star Wars Helmets decision in LucasFilm v Ainsworth (noted by the IPKat here). It might be even more difficult to persuade a court that a mass-produced product is such a work. Photographs, drawings, sculptures and collages might prove more promising bases for asserting copyright.

Where copyright governs a fashion work, ownership must be borne in mind. Employees' works generally belong initially to their employers, while commissioned works do not.  Duration of copyright should also be kept well in mind.

Iona then mentioned a couple of instances in which surface designs had been the subject of recent dispute.  In one, the surface design of one of Rachael Taylor's garments was apparently reproduced in an identical product sold by retail giants Marks & Spencer. After Rachael invoked the social media, Marks & Spencer withdrew their product.  She next referred to a recent and ongoing US dispute between Vera Neumann and Kate Spade over poppy designs, in which a US$ 1 million damages claim has been made.

Flagging international issues, while only eight categories of work are copyright-protected, in many other countries there are no categories at all -- the potential subject-matter of copyright is open-ended. Iona gave the flavour of the different philosophies of copyright protection in France and Germany, as contrasted with common law jurisdictions.

In response to a question from the chairman, Iona then considered how the recent string of rulings of the Court of Justice of the European Union might affect copyright protection for fashion works in the United Kingdom.  Iona was not so certain that British judges would automatically apply the court's broad notion of all works being protected by virtue of their authorial creativity alone. This generated a fair degree of discussion, leading to agreement that the Court of Justice's harmonisation of copyright by stealth could not be stopped.

Next to speak were the dynamic duo of Melanie McGuirk (Pannone) and Heather Lawrence (11 South Square).  Melanie gave a historical account of the growth of trade mark protection in the fashion sector since the 1980s, when Marks & Spencer was sued by Unidoor for use of its "Coast to Coast" slogan as an item of decoration on the front of its t-shirts.  Refusing interim protection, the judge considered that the words "Coast to Coast" were only being used as decoration since no steps had been taken to educate consumers as to the slogan indicating the goods' origin. Significantly, although the law has changed since then, the basic principles of trade mark use, and the nature of the relevant evidence (such as evidence of advertising by relation to trade mark use), have not. By the late 1990s, the Wild Child decision of Geoffrey Hobbs QC, which underlined the importance of position: if marks are used on swing-tags, for example, their use on the garment itself might still be regarded as a trade mark use.

Heather then took over, summarising the current statutory bases for trade mark infringement. The term "trade mark use" is not actually contained in the Trade Mark Directive, but the concept was confirmed to exist in EU law following the ruling of the Court of Justice of the European Union (CJEU) in Case C-206/01 Arsenal v Reed. The CJEU  considered that the "essential function" of the Arsenal trade marks had been usurped by the sale of unlicensed products even though the use was as a badge of loyalty and not as an indication of the unlicensed goods' origin.  In short, there was no reason why a trade mark could not simultaneously serve as a badge of allegiance and as an indication of origin. This decision was contrasted with the House of Lords ruling in criminal proceedings, R v Johnstone, indicated that a descriptive use of another's mark did not infringe (as where the appearance of the trade mark-protected name of an artiste on a CD tells the consumer what is on the CD, not what its provenance it).

Heather next turned to the trade mark status of "embellishments" and "decorations".  In Case C-408/01 Adidas-Salomon v Fitnessworld the CJEU and Case C-102/07 Adidas v Marca Mode -- two decisions involving the much-challenged Adidas three-stripe motif -- the CJEU agreed that the public perception of a sign as an embellishment and not as an indication of source would suggest that there is no infringement -- but the fact that a decoration is so similar to another's trade mark as to cause confusion or lead the consumer to think it comes from the trade mark owner will lead to liability for infringement.

Melanie then returned to the fray, reviewing D. Jacobson v Globe Ltd (noted here by the IPKat).  This decision was the first in which, using "Coast to Coast" terminology, a trial judge held that the public had indeed been educated to recognise that the decoration on the side of a sports shoe served as a sign of its origin. Heather then drew together the various points raised in this presentation.  "Education, education, education" was the key: the consumer -- who is always right -- must be educated, if the trade mark owner is to protect his interests.

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