Within the realm of intellectual property, design patents are a bit like suspenders or cocktail hats.  They always appeal to a core of independent-minded and devoted individuals, but only occasionally does everyone else sit up and pay attention.  The recent en banc decision of the U.S. Court of Appeals for the Federal Circuit in Egyptian Goddess v. Swisa, a case involving a patented mani/pedi nail buffer design, is one of those moments. 

Design patents differ from their better known relatives, utility patents or simply "patents," in that they can protect a "new, original, and ornamental design for an article of manufacture."  In other words, they apply to the appearance of an invention rather than its useful aspects. 

This might sound perfect for new fashion designs -- but for the fact that it's not always easy for a design to qualify as "new," it's fairly expensive to get a design patent and almost always requires legal assistance, and it takes too long to be useful for most fashion designs.  (As of today, the U.S. Patent Office reports that the average pendency of a patent application is 24.6 months.  Even if design patent applications might be a bit quicker, over 2 years is an interminable wait in a seasonal industry.) 

Still, shoes, handbags, decorative closures, and other accessories and portable design elements have a longer lifespan than clothing designs, making design patents more plausible as a route to protection.  And with the Federal Circuit's new ruling, which simplifies the process of proving infringement, a trickle could become a trend.

Continue reading "Egyptian Goddess Rules" »

Posted by Susan Scafidi at 03:45 PM | Permalink

Ever wonder why vintage clothing has very few external logos, and then starting around the 1970s everyone seemed to slap initials all over everything?  (Well, with at least one exception:  Bottega Veneta bucked the trend with its signature intrecciato leather and the sly motto, "When your own initials are enough.")

A new biography, Being Armani, offers a reason for logomania -- the very one that Counterfeit Chic has long surmised.  In a passage from the book, the Italian designer describes his decision in the early 1980s to use his initials on designs for the Emporio Armani line:

I liked the eagle just fine, but I wasn't sure about my monogram on it, since I had always been a little finicky about the excessive use of monograms in the world of fashion, for instance, the craze for initials everywhere, from belt buckles to overcoat linings, and then taking them from the lining to the exterior, using it as a decoration on the clothing itself.  The problem was the growing phenomenon of copies, which were increasingly common.  The imitators were really good at it.  Sometimes I fall for it myself, and I would really have to look closely to see whether something was by me.  We needed a logo, even if it did not constitute a foolproof deterrent. 

In other words, absent protection for actual clothing and accessory designs, a clever lawyer somewhere realized that liberally deployed trademarks could serve as a stopgap measure, and the word spread.  Even Giorgio Armani, the most elegant of minimalists but also a clever businessman, succumbed to the lure of trademark protection. 

Of course, there are other reasons for using prominently displayed logos, including social signaling and aesthetic preference.  And emerging designers whose logos are not particularly recognizable or valuable can't deter copyists whose target is their designs, not their trademarks.  Still, it seems that logomania is what you get when the law has a lacuna -- and fashion designers cede their authority to trademark lawyers.

Posted by Susan Scafidi at 12:59 PM | Permalink

Summer's hottest trend is here!  No, it's not gladiator sandals or splashes of superhero-worthy primary color -- it's lawsuits claiming 3rd-party liability for copyright and trademark infringement. 

Today a French court ordered eBay to pay Hermes 20,000 euros after the internet auction site allowed a user to sell 3 Hermes handbags, 2 of which turned out to be counterfeit.  The court's decision is also supposed to appear on eBay's French homepage, but no sign of it yet.  The site does have an extensive anti-counterfeiting page, though.  (Thanks to Counterfeit Chic reader Deb Mason for the tip!)

The ruling in favor of Hermes could be just the tip of the iceberg for eBay's French operations.  20,000 euros may cover a couple of basic Birkins, but, in a separate pending case against eBay, luxury giant LVMH has demanded damages of €20 million.  According to Le Monde, a decision is due by the end of the month.

Meanwhile, on this side of the Atlantic, the U.S. Supreme Court has let stand a 9th Circuit decision in Perfect 10 v. Visa, absolving the credit card company of liability for facilitating sales of infringing goods.  As WWD's Liza Casabona notes, however, questions of contributory and vicarious liability will continue to occupy the legal landscape, with a decision in Tiffany v. eBay still undecided.  (Thanks for the quote, Liza!)

Seems that the lawyers pursuing 3rd-party liability claims on behalf of their fashion clients have come up with not only a legal strategy, but a lifestyle mantra:  After the law shows up at one party, move on to the next.  Not a bad way to spend a hot summer night.

Continue reading "Party Time" »

Posted by Susan Scafidi at 11:15 PM | Permalink

For an oenophile, champagne comes only from Champagne.  According last week's ECJ opinion, parmesan cheese comes only from Parma.  And now kiltmaker Howie Nicholsby would like official assurance that Scottish kilts can only come from Scotland.

The Edinburgh-based designer, disgusted by cheap imported kilts that he describes as like "wearing a dishcloth," has asked a member of the European Parliament to pursue protected designation of origin (PDO) status for Scottish kilts.  In order to be described as Scottish, kilts would have to be hand sewn in Scotland of pure wool. 

While this request will no doubt cause a few chuckles -- not least because very few male IP lawyers or non-Scottish MPs would wear something so closely resembling a skirt -- it's actually part of a trend toward a more inclusive understanding of protected geographical indications, at least outside the U.S.  International IP law recognizes two basic categories of GIs:  (1) wine and spirits, and (2) other -- with "other" usually considered in terms of agricultural products.  There's nothing in the definition of GIs, however, that prevents the protection of other things, like regional handicrafts.  In fact, as I noted as part of a symposium panel organized by the Fordham Intellectual Property, Media & Entertainment Law Journal (see Summer 2007 issue), Mexico pioneered the use of GIs for manufactured products and the majority of registered GIs in India are traditional handicrafts, including many textiles. 

From a cultural property perspective -- one of my favorite topics, as some of you know -- Nicholsby's request raises another interesting issue.  His proposed criteria, like that of other PODs or GIs, focus on kilts' place of manufacture and composition.  There's nothing about historic tartans or styling; in fact, many of Nicholsby's own 21st Century Kilts are anything but traditional.  There's the pinstriped group, available with matching waistcoats and jackets; the camouflage collection; and even denim and leather versions (which might not qualify as "Scottish kilts" under the proposal).  In other words, Nicholsby's desire to protect a Scottish cultural product from cheap knockoffs doesn't reflect an intent to preserve some quaint Brigadoon-like past.  His own collections are evidence of an understanding that styles change and culture evolves.  But Nicholsby also recognizes something special about the link between kilts and Scotland that goes beyond a Mel Gibson costume drama.

Oh, and as for that 1st question about a Scotsman and his kilt -- click the copyright symbol below for the uncensored answer.

Thanks to Professor Beth Noveck for the tip!

Posted by Susan Scafidi at 06:18 PM | Permalink

The World Intellectual Property Organization is in a furor over a scandal involving Director General Kamil Idris' alleged misrepresentation of his age in official documents and subsequent calls for him to step down.

The World Trade Organization is stuck in the Doha round of trade negotiations.  Still. 

But that hasn't kept a group of major global trading partners, including the US, the EU, Canada, Japan, Korea, Mexico, New Zealand, and Switzerland, from announcing plans to create an Anti-Counterfeiting Trade Agreement.  ACTA will focus on three areas:  1) international cooperation, (2) enforcement practices, and (3) a strong legal framework for IP enforcement. 

Reading between the lines?  Call it the Anti-China Trade Alliance.

For more information and commentary, here are the US press release, the EU press release, a skeptical opponent, and a pessimistic sympathizer.   

Posted by Susan Scafidi at 11:51 AM | Permalink

The recently concluded Paris Fashion Week, following on the heels of New York, London, and Milan, is the lens through which next season's trends are refracted.  So, what will it be for Spring 2008?  Floral prints, transparency, fluid shapes -- and lawsuits against eBay.

Reuters reports that Hermes has now followed Dior, LVMH, and L'Oreal in taking action against the online auction giant, which serves as a sales platform for both legitimate goods and counterfeits.  Many, many, many counterfeits, if the plaintiffs' claims are accurate.  French luxury conglomerate PPR, which owns the Gucci Group, may be next in line to file suit. 

Seasonal weather predictions are for increasing storms in San Jose -- and across the eBay empire. 

Posted by Susan Scafidi at 11:14 PM | Permalink

Kids love stickers.  Geek kids use them to decorate notebooks, slacker kids use them to personalize skateboards, and jock kids add them to football helmets. 

Some adults love stickers, or their embroidered equivalent, too.  Especially since certain add-ons can turn generic, legally imported merchandise into far more lucrative lucrative counterfeit goods. 

WWD's Ross Tucker and Liza Casabona report that with the crackdown on counterfeit goods at U.S. borders, there is an increasing trend among counterfeiters toward bringing in unlabeled knockoffs and adding the fake labels and logos stateside. 

This practice of finishing goods in the U.S. in order to evade anticounterfeiting enforcement activities isn't new.  Even at the point of sale, it's not uncommon to buy an unlabeled fake and have the seller stick on a fake logo afterwards.  I've regularly mentioned this practice as one reason among many that a law against design piracy makes good sense -- why should the government spend time and money on other anticounterfeiting legislation if enforcement can be so easily evaded?  In the absence of laws against copying designs, however, smart counterfeiters are apparently taking ever greater advantage of their ability to import unlabeled goods, manufacture the small and easily hidden labels locally, and bring the two together when the coast is clear. 

Of course, not all counterfeiters are particularly good at this sleight of hand.  Some get caught with stacks of fake labels or rooms full of embroidery machines.  Others simply can't match the label with the product.  Every now and then online auctions include Burberry plaid handbags with Kate Spade labels, for example, or a mixed tangle of Prada and Chanel charms.  My personal favorite is a dead ringer for a black Fendi "B" bag -- with a triangular metal Prada label stuck right in the middle. 

All of which gives a whole new meaning to "sticker shock." 

Posted by Susan Scafidi at 08:48 AM | Permalink

At the annual Feast of San Gennaro in New York's Little Italy, stands selling traditional sausage & peppers or zeppole mingle with carnival barkers and other standard street fair fare.  There's even a bit of Italian style, in the form of sunglasses by Dolce & Gabbana and Prada...or is there?

Approaching the the NYS Collection stand on Mulberry Street, the sun-dazzled consumer sees neat rows of sunglasses at bargain prices, all labeled with impressive designer names in large, bold print.  These aren't your usual cluttered trays of counterfeits; each pair has its own holder, and mirrors hang at a convenient height to reflect customer desire. 

A closer look at the displays, however, reveals that the boldface designer names aren't really what they seem.  Instead, NYS Collection's small print invites browsers to "compare our prices to" those of designer labels.

Below the brand names, there's a disclaimer in even smaller print: 

We have no association or relationship with the above named company whatsoever.  The consumer may compare our price and product to the above.  However, our product is unique and different than the above mentioned product.  We do not represent our sunglasses to be the originals nor are they copies to the above. 

In other words, the brand names are used as bait to lure in potential buyers, who are then informed that they aren't really being offered $10 Prada shades -- but hey, these look pretty good for the price.  And did you really want the label, anyway?

NYS Collection prides itself on its chain of shopping mall kiosks and especially on its displays, which have apparently been copied by competitors.  But is its use of designer brand names in proximity to generic sunglasses legal, even with a disclaimer?

Perhaps not, according to the doctrine of "initial interest confusion."  In trademark law, the standard test for infringement is one of "consumer confusion."  If the defendant's use misleads the consumer as to the origin of goods or services, then it infringes the plaintiff's mark.  The special case of initial interest confusion arises when the consumer is attracted in the first place by the use of someone else's trademark, even though no sale is completed as a result of the confusion. 

So you may wander over to the NYS Collection display because the idea of $10 Prada shades sounds good, but by the time you buy them you've realized that they're not really Prada, and you don't care.  Under the law, that can be just as much an infringement as if you really thought you were getting Prada. 

It would seem that whoever wrote NYS Collection's disclaimer isn't just wearing shades, but blinders -- or is looking at the law through seriously rose-colored glasses.

For further discussion of the doctrine of initial interest confusion, check out this article from Professor Jennifer Rothman. 

And next up:  Is the snake girl in the sideshow tent at San Gennaro really a reptile, or just more snake oil? 

Posted by Susan Scafidi at 11:13 AM | Permalink

Harper's Bazaar Editor-in-Chief Glenda Bailey is committed to the latest trends in both fashion and film.  Not only did she include a Simpsons-style layout in the August issue, but she even went yellow herself -- albeit while wearing a stylish Lanvin blouse. 

When it comes to the question of knockoffs, it turns out that Glenda's position is equally cutting-edge.  Sure, according to Brandweek she created Marie Claire's notorious "Splurge vs. Steal" feature when she was EIC of the British edition and then imported it to the U.S. when she took over the American version.  Since taking the helm of Harper's Bazaar, however, she's joined the fight against both trademark counterfeiters and design pirates. 

Proof positive that it's a woman's privilege to change her mind -- and sometimes, that's a good thing.

P.S.  Haven't seen The Simpsons Movie yet?  You may be amused by Bart's chalkboard-writing punishment.

Posted by Susan Scafidi at 08:07 AM | Permalink

The Office of the U.S. Trade Representative Government yesterday issued the 2007 Special 301 Report, which surveys the state of intellectual property rights worldwide.  Like any government document it has its share of acronyms--the name of the current U.S. anti-piracy initiative is STOP!, for Strategy Targeting Organized Piracy--but it also contains a lot of concrete information on legal developments around the globe.  As usual China and Russia are the primary sources of dissatisfaction, although government officials and industry alike have taken the occasion to note that these countries have also made significant progress.

The most disappointing aspect of the Report, however, has to be the removal of the Bahamas from the Watch List due to ongoing improvements in IPR enforcement.  Surely there's need for a just a bit more investigation--say, sometime next December through February?  

Posted by Susan Scafidi at 01:22 PM | Permalink

Fashion houses understand the value of protecting their creations to the (somewhat limited) extent provided by law, even if that means focusing on trademarks rather than the designs themselves, and many emerging designers quickly learn the same lesson. 

Now WWD reports on a new trend that makes intellectual property even more valuable -- the increasing willingness of factoring companies to lend against the value of the trademark or brand itself.  Traditionally, factors lend against accounts receivable, thus providing the necessary cash for, say, a designer with retail orders to purchase fabric and pay for production and shipping.  Once the clothing reaches stores, consumers (hopefully) purchase the items.  The designer finally receives a check, the loan gets repaid.  As reporter Lisa Casabona notes in the case of loans against IP:

Generally speaking, making sure the loan is protected is not much different from the preparation that goes into lending against other assets such as receivables, inventory, warehouses, real estate or equipment, sources said.  The specifics are different because of the nature of intellectual property assets.

"The risk is more because you are in theory lending against intangible assets which must maintain that intangible value," said [Andrew Tananbaum, president and CEO of Capital Business Credit].

In other words, now more than ever intellectual property is the cake that you can have and eat, too.  Put the trademark on the label and sell it to consumers, use the trademark as capital for a loan, and perhaps one day sell the trademark itself and let someone else worry about management while you design for the runway.  If only real cake were similarly renewable (minus the calories, of course).

(Once again, thanks to Hokusai for the counterfeit cake!)

Posted by Susan Scafidi at 09:07 AM | Permalink