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Friday, 17 October 2014

French Designer Sonia Rykiel Did Not Copy Shoes, Says Paris Court

Readers of this blog already know that U.S. shoe maker Converse has filed a trademark infringement and trade mark dilution suit against K Mart in the Eastern District of New York and also requested the U.S. International Trade Commission to institute an investigation under Section 337 of the Tariff Act of 1930 based on the unlawful importation to the U.S. of such allegedly infringing shoes.

U.S. shoe designers have to rely on trade mark, trade dress, or design patent to protect their creations, as shoes cannot be protected by copyright in the U.S., because copyright does not protect “useful articles.” Only elements which can be separated from the design can be protected, such as, say, the buckle of the shoe.

A Work Must Be Original to be Protected by French IP Law
The law is different in France, and shoes can be protected by French “copyright,” le droit de la propriété littéraire et artistique, if they are original. However, French law does not define what is original, and so courts have decided that a particular work is original if it is the imprint or the reflection of the personality of its author. Similarly, the European Court of Justice held in 2009 in Infopaq that “the various parts of a work… enjoy protection under Article 2(a) of Directive 2001/29, provided that they contain elements which are the expression of the intellectual creation of the author of the work.”

One may wonder how a mundane shoe can reflect the personality of its author, but under the theory of the unité de l’art (art unity), as stated by article L. 112-1 of the French Intellectual Property (IP) Code, the French IP Code “protects the rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose.” As such, the French IP Code protects sculptures, symphonies, or shoes, as long as they are original.

The Paris court of first instance, the Tribunal de Grande Instance de Paris, recently had to decide whether a shoe indeed reflected the personality of its author as French fashion house Sonia Rykiel was recently sued in this court by French shoe manufacturer Apple Shoes for copyright infringement. Plaintiff alleged that some shoes sold by Sonia Rykiel were copies of its own “Rock Perfecto” and other similar models.

Plaintiff’s Shoe is Original

This particular ROCK PERFECTO model, was first sold by Plaintiff in 2004, which described it as “combining an opening system with a zip on a boot with a pointed toe and a one centimeter height heel, thus closing the front portion of the interior of the shoe and finishing on the outside of the ankle through the top of the shoe.”
Plaintiff's ROCK PERFECTO 


Plaintiff claimed that, as such, “the imprint of the personality of its author derives from the combination of elements that make up this boot, and even more so as these items are not in themselves necessary to the composition of a boot.”

Plaintiff argued that the combination of these different elements, “which are not necessary for the creation of a boot, denoted a aesthetic choice, in particular as they reveal the arbitrary choice of associating the inside curve of the boot to the curved side of its outer sides, the heel in the shape of a horseshoe, with the effect of triangle sides and the very sharp tip,” and argued that the combination of these different elements were done by choice, and, as such, is original.

Plaintiff also argued that the patent leather used for the shoe, along with the thinness of the its heel, were original elements and explained further that it had wanted “to transfer by association of these components the shape of the “Perfecto” jacket in boots,” thus revealing further a creative input.
Defendant Sonia Rykiel argued that this particular way to close a boot was not original and that Plaintiff had not produced any evidence about the creative process leading to this particular model of shoes. Sonia Rykiel argued further that “the mere combination of previously known elements cannot establish the originality of a work, as it fails to reveal the existence of a creative process” and that the arbitrary choice made by Plaintiffs are not enough to characterize the originality “which could not derive from a simple variation, adaptation to fashion trends or a transposition from one genre to another.”

As an aside, this shows that designers, whether they are famous or not, would be well inspired to keep some records of the creative process which led to a particular idea. When I was a fashion intern in Paris, the design team kept a mood board and a tableau de collection it used to record every change and source of inspiration. I was in charge of cutting and gluing the new silhouettes. [Am I THAT old?]. Now, this is, of course, done digitally.
Ah Non, Zeez Shoes Are Not Ze Same! 

But for the Tribunal de Grande Instance, the boots were original, as “that the combination of the elements constituting the shoe ROCK PERFECTO results from an arbitrary choice of collecting specific items, none of which appear to be dictated by the function of a shoe, which gives it, in an overall assessment, a particular shape which reflects an aesthetic bias bearing the imprint of the personality of its author” (p. 8). The Court concluded, therefore,  that the ROCK PERFECTO boot model is protectable by copyright.

No Counterfeiting

The Court examined Plaintiff’s and Defendant’s shoes side by side and noted that there were enough differences to decide that Defendant had not copied Plaintiff’s shoes. For instance, the heel of the shoe sold by Defendant was higher, the closing by zip was somewhat different, and “if these two shoes have common features, [Defendant’s] shoe does not include the original combination claimed by Plaintiff.

The Court concluded that the defendants had not infringed the plaintiff’s shoes. 

1 comment:

Emanuel Meyer said...

On a side note: Rock Perfecto's "original creation" is also suspiciously reminiscent of an early eighties Swiss design
http://www.stefitalman.ch/zip/

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