[Guest post] Archival Authenticity or Iconic Copies? Some IP Thoughts on Dolce & Gabbana’s SS23 Collection Curated by Kim

The IPKat is delighted to host the contribution below by Katfriend Felicia Caponigri (IMT Alti Studi Lucca and Fashion by Felicia) on the IP implications of the recent and seemingly already iconic Dolce&Gabbana fashion show at the recent Milan Fashion Week. 

Here’s what Felicia writes:

Archival Authenticity or Iconic Copies?

Some IP Thoughts on Dolce & Gabbana’s SS23 Collection Curated by Kim Kardashian, and other Fashion Heritage at Fashion Week

By Felicia Caponigri

During Milan Fashion Week held last week, the Italian fashion brand Dolce & Gabbana debuted their Spring/Summer 2023 ready-to-wear collection. A collaboration with the American reality show star, entrepreneur, and influencer Kim Kardashian, the hashtag and moniker of the collection “Ciao, Kim” seemed to say it all. According to The Business of Fashion, Kardashian “tweaked Dolce & Gabbana styles from the 1990s and early 2000s” creating “finished looks” with Domenico Dolce and Stefano Gabbana “that were, the designers said, about 20 percent different from the originals.” Each item in the collection, which included corsets, crystal-embellished dresses, sheer materials, slinky skirts and pants that communicated a SKIMS-vibe, and more tailored looks (a full catalog of the collection can be found on VOGUE here) carried a label noting the year of the season the original design walked the runway. To track the evolution of these runway looks, VOGUE has happily created a side by side then and now visual mood board, described as “a memory match game with the extensive Vogue Runway archive.”

Fashion and luxury archives are certainly having a moment. Whether it’s Balenciaga’s recent announcement of a “RESELL” program, Tiffany & Co.’s search for a Director of the Tiffany Archives, or a consistent conversation about the reinterpretation of house codes and a brand’s heritage and DNA by new Creative Directors (and we could go on and on- see here), mining the past for the present is a key part of fashion and luxury’s value proposition today. For IP enthusiasts, an increased presence of the past in contemporary designs raises questions about the scope of IP rights. A focus on the past, and the success of heritage-focused events, collaborations and products, also raises the possibility that heritage can at times act as an extra-legal norm in negatives spaces of IP or even low-IP regimes. The “Ciao, Kim” Dolce & Gabbana collection provides the most recent example of the power of what we might term archival authenticity. It also suggests that copying might have some effect on our understanding of what is and is not iconic.

Under U.S. copyright law or European copyright law, most of the designs in the “Ciao, Kim” collection might be hard-pressed to be copyrighted. Consider the corset teddy dress inspired by a Spring 1992 original.

Image from VOGUE, showing Dolce & Gabbana Spring 1992 Ready-to-Wear on the left, and the Ciao, Kim archival inspired design from Spring/Summer 2023 on the right

As the design of a useful article, we would have to find some conceptually separable elements as a first matter under U.S. copyright law. Perhaps we could argue that the triangular textured overlays of the dress are sufficiently separable. But then we would have to address originality.

Two inverted black triangles of varying sizes in a larger curved almost oval shape might not overcome this low bar, much as the Tommy Hilfiger flag did not satisfy it. Combinations of elements unprotectable by copyright that are not “selected or combined in a distinctive manner indicating some ingenuity” are not sufficiently original. Symbolic meanings of works or the author’s intent have been deemed irrelevant to the evaluation of originality (as outlined in the U.S. Copyright Office Review Board’s affirmation of the U.S. Copyright Office’s refusal to register the Tommy Hilfiger flag).

In this negative space of copyright law in the U.S., the archival authenticity embodied in the “1992” tag on the corset teddy dress may do the heavy lifting. Assuredly, Dolce & Gabbana may not be able to prevent copies on the U.S. market of the dress, but, without the tag and its associated stamp of historical authenticity, a knockoff teddy corset dress does not support a consumer’s participation in the Dolce & Gabbana story. A consumer may buy a teddy corset dress, but they cannot, under those circumstances, buy an archival piece of Dolce & Gabbana’s heritage.

In EU law, archival authenticity might also make a legal difference for luxury and fashion brands in the face of a low standard of originality designs may be hard-pressed to overcome. In the Cofemel case the Court of Justice of the European Union (CJEU) held that designs can be copyrightable, provided that they satisfy the notion of a work by being original objects (i.e. the intellectual creation of an author that is not dictated by technical considerations, rules, or constraints but exhibits creative freedom) and provided their expressions are objectively identifiable [see IPKat here].

While artistic intention and aesthetic beauty are no longer relevant for a determination of originality, archival authenticity of designs might indicate connections to considerations that are not technical, a connection to a level of creativity, and might potentially support objective evaluations of designs’ originality by indicating a part of the creative process that is not based on whether a design is aesthetically pleasing or not.

Moreover, if the original design from the archive itself is an original work under copyright law, the archival editions of the “Ciao, Kim” Dolce & Gabbana Spring/Summer 23 collection might be thought of as derivative works, already within the scope of the designers’ rights. As in the U.S., if originality were not to be found, especially for designs like the original teddy corset dress which seem marked by technical functionality and not creativity, archival authenticity can fill this negative space of copyright, giving Dolce & Gabbana, and Kim Kardashian, a norm of authenticity to drive sales of its product, earn a return on its creative expenditure, cater to their loyal consumers, and, outside of utilitarian justifications for copyright, also emphasize their own authorial contributions in a process of curation and creation.

At a national level, archival authenticity of designs might help to interpret requirements of artistic value for designs under copyright law (as in the Italian case) conceptualized as placeholders for cultural value and historical rupture. A court in Milan has already applied such a reading to the Moon Boots [see IPKat here], finding the Moon Boots design copyrightable by citing to a collective perception of the design, in particular to its reception in cultural circles which indicated an appreciation of the design’s iconic value.

And here we see a word that is increasingly relevant in marketing campaigns for fashion and luxury goods, especially those of heritage brands: iconic. Most recently on display in announcements about Fendi’s 25th anniversary celebration of the Baguette during New York Fashion Week, the legal value of describing a design as iconic might be conceptualized in copyright but, perhaps more importantly, in trademark terms.

Image of different iterations of the iconic Fendi baguette in Fendi’s recent 25th anniversary show during New York Fashion Week

Iconic as an adjective is defined as “very famous or popular, especially being considered to represent particular opinions or a particular time” and as “showing a relationship between the form of a sign, such as a word or a symbol, and its meaning.”

Does this mean that an iconic design is more or less able to be distinctive?

We’ve seen the EUIPO deem the Moon Boots design with iconic value under Italian copyright law as not distinctive enough, as unable to indicate the commercial origin of the Moon Boots as products [see IPKat here].

More recently the EUIPO deemed the iconic Dior Saddle bag to not be a “significant departure” from the designs of other bags and, as a result, lacking in distinctiveness [see IPKat here]. In the U.S., as reported by The Fashion Law, Dior abandoned an application to register the shape of the Saddle bag as a 3D mark but has a pending application for the shape of the flap of the bag. As product design trade dress, Dior would have likely had to show secondary meaning – that a relevant group of consumers would indeed recognize Dior as the source of the Saddle bag as a tangible product. Functional elements would, of course, not be protectable in any event. (For more on the challenges posed by product design/product configuration under trademark law in the U.S. see this chapter.)

Marketing a design as iconic might support as much as undermine secondary meaning. A design as applied to a specific category of goods might be iconic within the story of a brand, indicating its fame for a relevant group of consumers. The design might also be iconic for a wider public, standing in for the object itself, potentially undermining the design’s ability to indicate source. Pulling from an archive and remixing iconic products, as the “Ciao, Kim” Dolce & Gabbana collection has done, might emphasize brand heritage over other associations.

Complicating matters further, however, is that for a design to become iconic it must, paradoxically, be copied- by the designer or brand certainly but also, potentially, by other members of the public. Images of certain designs can contribute to its fame or popularity, its ability to provide meaning both within the brand universe and outside of it, in the cultural universe.

Carveouts to trademark rights like those given to parodies might therefore counterintuitively support the iconic nature of certain designs, allowing luxury and fashion brands to get a proverbial second bite at an apple of legal rights, even in circumstances of infringement. Retaking the copy, as its been termed, might provide both an alternative to infringement suits and give designers and brands alternative routes to capitalize on recognized designs in a grey area of the law- after these designs become iconic but before that iconic nature potentially gives rise to a trademark right by communicating secondary meaning or otherwise indicating distinctiveness.

As brands and designers continue to leverage their archives and emphasize the iconic nature of their products in marketing campaigns, IP enthusiasts might continue to watch Fashion Week with enthusiasm – for the future fashion law issues as much as for the fashion itself.