IP in Luxury Goods and Fashion: a patent Kat investigates

This Kat had a great time at ialci’s recent conference on ‘Intellectual Property: how to protect, manage and & monetise the know-how, intangible capital, brand image and reputation of luxury maisons & fashion brands’. Coming from a ‘staid’ patents background, it was fascinating to see the different concepts at play in protecting fashion: IP rights being used in an environment where what is ‘in fashion’ is always changing, where the subtleties of aesthetics and subconscious copying are important and where the internet is creating new ways of infringing and new ways to protect celebrity rights (see Katpost here on the Rihanna T-shirt case). What struck me is that, compared to patents, evolution of soft IP case law seems more intimately tied to specific commercial situations and disputes, and certainly practitioners in this area seem to have much exposure to enforcing the rights. I also felt that soft IP rights have a very 'practical' perspective. These rights are used and evolve as per the need, which is constantly changing, particularly in the digital age. I wondered whether we in the patent world could learn from that, so that Patent Office practices and the way that Courts looked at cases could evolve to reflect changing technologies and commercial needs.

Kaldor v Lee Ann: are ‘objective similarities’ no longer enough to show copying of a design?

The ladies of the court were always in fashion

Alexander Rozycki discussed Kaldor v Lee, a case which is about copying a design (see copies of the ‘tribal print’ designs here). It was found that copying had not occurred despite the close similarities of the designs. This seems to represent a shift in the position of the courts, which have previously used ‘objective similarities’ between designs to decide on copying. This may no longer be enough, and further evidence will be required. The discussion after the talk touched on the relevance of ‘subconscious copying’ and the extent to which one could copy things which were ‘common place’. This Kat was reminded of the recusal situation in the patent action of Resolution v Lundbeck, where Mr Justice Arnold assured us that he was not swayed by his subconscious (see Katpost here).

Nike and the Chuck Taylor sneaker: an epic billion dollar dispute (see Katpost here)

Annabelle Gauberti spoke about how trade marks are being used in the US to protect the appearance of the Converse ‘Chuck Taylor’ sneaker. No other form of protection is available there for fashion designs. Nike now owns Converse and the sales of the sneaker were $1.7 billion in 2014. We seem to be at the beginning of this dispute. Nike has sent 189 cease and desist letters to competitors, and in October 2014 filed 31 lawsuits against competitors for trade mark infringement. Ralph Lauren has already settled, probably to protect its reputation.

Internet infringing: more gTLDs have made it easier

Did it infringe Nike's trade marks?

Stuart Durham spoke about how to tackle IP infringement that happens via the internet without resorting to legal means. The creation of more gTLDs allows many more internet domains to be possible. As described in a Katpost here, that means many more ‘strings’ will be possible after the ‘dot’ in the domain name, greatly expanding the possible domain names beyond the few, such as ‘.com’, that were previously available. Infringers are setting up copycat sites using new gTLDs. Detecting such infringements is a huge task and realistically only the bigger infringers can be chased. That can be done by such extrajudicial means as registrars of domain names being asked to deactivate them. When that happens it is often the end of the matter, with the infringing party seldom taking any action to persuade registrars to change their mind. Not all registrars in all countries are that obliging. Social media companies can also be asked to take down infringing content from their sites. Search engines and companies such as eBay will also tend to cooperate (see Katpost here about L’Oréal v eBay).

‘Image rights’ in Guernsey: a new right for the internet age (see Katpost here)

Keith Laker spoke about this distinct right which Guernsey provides. Essentially the right seems to rely on the fact that images placed on the internet would be available, and thus infringe, in Guernsey. One must register the ‘image right’, which is linked to a ‘personality’, e.g. Rihanna. The ‘image’ must be a definable characteristic that is distinctive of the personality, such as a name, voice, likeness, mannerism, etc. Infringement requires an economic loss caused by use of the image, which needs be accessible in Guernsey (i.e. over the internet). According to the speaker, this right is potentially enforceable in the UK and also perhaps in some US states which provide similar rights. The audience was sceptical about whether this right would have global reach, and there were views that it was simply a money-making exercise for Guernsey, building on its ‘haven’ activities (see a news story here about Manuel Pellegrini registering his image).

Enforcing IP rights

Guernsey's Ministry of Image Rights

There were talks by Holger Alt, Annabelle Gauberti (see her talking here on similar issues) and Jane Lambert (see here) about enforcing IP rights in Germany, France and the UK. This Kat will not attempt a summary here as the talks were very procedural. However, Germany and France seem to have very IP right-holder friendly enforcement procedures.