Fashion Law : Fashion Lawyer & Attorney : Fox Rothschild Law Firm : Licensing, Intellectual Property

So what are you doing next week?  If you are East Coast based, I invite you to join me and my colleagues Gerard P. Norton, Ph.D. and Ted D. Rosen at the 2011 FashInvest Capital Conference!

What's FashInvest you ask?

FashInvest is a community where investors, venture capitalists, private equity investors, entrepreneurs and industry CEOs will gather to see emerging companies in fashion, branded goods, apparel, retail and related technologies showcase their brands in hopes of investment capital.

You'll have a chance to mix and mingle with C-level executives, learn from successful Fashpreneurs and walk away with valuable information on how your brand can follow in their footsteps.

Click here to register.

Click here for more information.

See you there!

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I hope everyone enjoyed their Thanksgiving.  As most of y'all know, it is my favorite holiday - a time to reflect on the things we are  #grateful for, a time to spend with family and friends, and a time to start planning and making goals for next year.....and a time to celebrate this blogs birthday!!

Yup, we turned two over the Thanksgiving break and I wanted to take a moment to say thank you to all you out there for your ideas, feedback and support....for disagreeing with me, for your contributions and your friendship.

Last year, I thank you for:

making "Fashion Law" a reality and not something laughed at

And I never thought this would happen so soon, but this year Fashion Law became a Movement!  I am still in awe that we made it happen.......I can only imagine what our future holds.

So thank you all for sharing your passion, love of the law, and commitment to all things fashionable.

And what's up next?  Well, you know what they say about the terrible twos, nah.  Just kidding.

We will be growing and maturing, only bound by the limits of our creativity and imagination.  Hope you'll stick around for the ride!

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Just want to send out positive thoughts to all y'all aspiring California (Fashion) Lawyers! 

Waiting on bar results is tough but just breath, stay busy and 6pm will come soon enough.

My fingers (and toes) are crossed (fashionably, of course!)

Big Hug and I expect to hear from you with good news later today!

photo credit: Geogr@phy Blog

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Hey everyone.  If you have been following me on twitter or a reader of this blog, you'll know that in 2011 we took a look at Brand Collaborations and predicted that you would see an increase in these joint ventures.

Well, that prediction has (and will continue) to come true.  WHY?  Because a smart brand collaboration is a why to extend your brands reach to a new audience and create more raving fans.

So, take a moment and back away from your last minute holiday shipping and take a look at this video from the Today Show featuring this years hottest brand collaboration - Versace for H&M.

 Happy Watching!

Visit msnbc.com for breaking news, world news, and news about the economy

 ps - in full disclosure, Fox works with H&M but did not work on the Versace for H&M deal, although I wish I did!

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I said it before and in response to Bloomberg Law's interview of Professor Susan Scafidi [Video] I will say it AGAIN:

IDPPPA will not prevent improper litigation.  Period.

Any argument that the "Heighten Pleading Standard" will prevent improper suits i.e. suits based on a designer's belief that their design is unique or original, is just nonsense, or a red herring as we lawyers call it.  Ask any litigator, not just a fashion litigator like me, and I promise you they will tell you the same thing.

I am seriously disturbed by the Bloomberg Law interview and you should be too.  Why?

• Professor Scafidi's comments - did she really say "elements" of Diane Von Furstenberg's wrap dress would get protection under IDPPPA or the Destruction of the Affordable  Fashion Bill?;
• It was 15 minutes and only presented one side;
• IDPPPA will be very costly to fashion brands because litigation costs will have to be factored into the price of clothing, increasing the price;
• It will cause less choice in the market place.  All designers need to do is "tweak" a garment compared to the original, says Scafidi.  What does that mean?
• It will flood the courts with litigation - Americans, unlike the rest of the world are KNOWN to be litigious; and
• By the way Professor Scafidi laughed at the suggestion of addition of loser pays langauge into the bill.

The only good thing about the interview? Professor Scafidi looked great!  Loved her necklace.

Repeating all the reasons why the Destruction of Affordable Fashion Bill is a really.bad.idea would take too long, but you can read more at the following related posts:

BREAKING NEWS: New Design Piracy Bill Introduced into Senate

Why IDPPPA is going to KO the Business of Fashion

IDPPPA: How to SLAPP the Sting Out of Frivolous Litigation

F21 Defeats Express: an IDPPPA Preview?

IDPPPA will not prevent frivolous litigation

The "Destruction of Affordable Fashion Bill" or IDPPPA gets one step closer to becoming Fashion Law

Senator Feinstein Puts the Breaks on The "Destruction of Affordable Fashion Bill"

Destruction of Affordable Fashion Bill Gets A Hearing Date

More Propaganda from Professor Scafidi on the Destruction of Affordable Fashion Bill on Bloomberg Law 

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Hi Everyone!  One week ago tonight was Fashion Night Out ("FNO").  I attend FGI LA's event in collaboration with McCormick's on Rodeo and then spent the rest of the night walking the area.  While I had fun with my companions, I was disappointed in FNO. 

The turnout seemed low and the energy even lower.  The focus and most of the buzz seemed to be New York-Centric (shocking) and the purpose of FNO seemed to be "kicking off New York Fashion Week," instead of celebrating community style shopping.

Yesterday, I saw a fabulous article on FMM that summed up my sentiments perfectly.  Here is an excerpt:

Moreover, in industry conversations, with the exception of New York and few London based retailers, no one reports dramatic sales or repeat customer business. This has lead to me to believe that while Fashion’s Night Out was great idea, but the execution failed when it launched in 2009. Instead of being a viable marketing initiative, FNO has become a convoluted PR event that promotes needless consumer consumption.

@macala then asks, Can Digital Save FNO? 

To find out, you MUST read the rest of the post.  It will truly be worth your time.

photo credit: FMM

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Hi everyone.  Thank you for all the feedback on the CBS segment.  Your support has been overwhelming and super encouraging. 

Now, let's turn to the question on everyones mind: why did Louboutin lose when his red lacquered sole is so distinctive and clearly has secondary meaning (which is a legal term meaning consumers see the red sole and immediately know Louboutin makes that shoe)? 

(remember SJP in Sex in the City?  Louboutin can thank her and J-LO for increasing the recognizablity of his red sole, but I digress)

In the legal world, color can sometimes be a trademark if it meets the Qualitex test, which says color alone sometimes may be used as a trademark:

“where that color has attained secondary meaning and therefore identifies and distinguishes a particular brand (and thus indicates its source),” but not where it is functional, meaning that the use of the color will put a competitor at a significant disadvantage because the color is essential to the use or purpose of the product, or affects the cost of quality of the product."

But wait, Staci, you say.  I though I just read that you think Louboutin's red sole has secondary meaning?  Yes, I do.  But Louboutin still loses to YSL and here's three reasons why:

1.  Louboutin's testimony.  This was probably Louboutin's biggest mistake.  When asked why he put red on his shoe's outsoles, he said red gave his shoes "energy," red is "engaging," red is "sexy" and red "attracts men to the women who wear my shoes."  WOW.  His lawyers did not do a good job here, or more likely Louboutin just didn't listen.  All the reasons stated are considered functional under trademark law and do not support a finding the color red is a source indicator of the brand (a requirement for securing trademark protection).  To be even more blunt, Louboutin should have said, I put red on the bottoms of my shoes so people knew who made them while women were walking in my shoes ans wearing them around town. 

2.  Louboutin's trademark.   Louboutin's trademark application was vague -- it did not specify what color red (i.e. pantone color), it did not specify whether the red would limited to laquard (as is most common with Louboutin, which begs the question why did they challenge YSL "flat" red shoe) or whether it would be used only on soles of high heels or flats (the application said high fashion shoes) or even whether the use would be limited to couture compared to mass.

3. Chilling effect on the Business of Fashion.  In our world, there are three primary colors: red, blue and yellow.  If one designer was granted a monopoly on red, what would stop another from claiming yellow?  Due to Louboutin's poorly drafted trademark application, Louboutin asked for and received, very very broad protection.  If the Court upheld its registration, it foresaw unlimited controversies: is a red to close to Louboutin's?  Is use on a low end flat ok?  Does every designer have to run to the court before releasing a collection or worse yet ask Louboutin's permission?  Granting one company a monopoly on a color would allow large companies with large legal war chests to flood the trademark office and the courts.  Small designers would be hurt and the same litany of concerns surrounding the adoption of the Destruction of Affordable Fashion Bill i.e. the IDPPPA are raised here.

And one side note, sorry because I usually hate long posts: the judge did not say a fashion companies can never trademark a color as many are claiming he did. 

The judge said it is hard to claim color as a trademark in fashion and based on the facts of this case - Louboutin's awful trademark application and disastrous admission - Louboutin is not entitled use red as a trademark.

I also have to wonder why Louboutin chose YSL as its test case?   Especially when the YSL shoes Louboutin claim are causing customer confusion look nothing like his and have been used by YSL long before Louboutin used his red soles. 

Again, poor lawyering or maybe the result of two long time French competitors taking a grudge match to the US Courts.  Someone should have warned Louboutin about the American legal system.

Now, based on the judge's comments this week, it is clear he will cancel Louboutin's red sole mark, unless Louboutin immediately appeals the Judge's denial of Louboutin's request for a preliminary injunction. 

Since the law and the facts of this case are so clear, the only reason Louboutin would appeal is ego or lack of clear thinking as he is likely still seeing red.

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My esteemed Fashion Law Colleague, Susan Scafidi, and I were both featured on CBS's the Early Show commenting on U.S. District Judge Victor Marrero's denial of Christian Louboutin's request for a Preliminary Injunction to stop Yves Saint Laurent  from selling red shoes, claiming YSL's shoes infringe on Louboutin's trademarked red sole.

As seems to be our pattern, Susan and I are on opposite sides of the issue.  While not shown on the CBS [Video], Judge Marrero's decision was "Dead On Balls Accurate."

WHY? 

Stayed tuned to learn why Louboutin should be seeing red from his many blunders in this lawsuit.

photo credit: CBS's The Early Show

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First, I have to start off apologizing.  This post was supposed to go up yesterday in honor of B.A.F.F.L.E.D's second anniversary.

When I first suggested to friends and colleagues that there is such a thing as "fashion law," they laughed.  Now, six years into being a practicing Fashion Lawyer (as a Fashion Litigator and doing Fashion transactions), I don't get any laughter when I tell people what I do.   Most ask:

How do I become  Fashion Lawyer too?

Once I started blogging (which has almost been for two years now, wow!), I learned that there are a group of us that are passionate about Fashion Law.  I have made so many connections online, using twitter, facebook and by reading and commenting on other blogs.

Now, not all of us fashion lawyers agree, take take similar positions or even call themselves fashion lawyers.  (no lawyer jokes, please)   But discourse and debate is what a democracy is all about. 

And if you take a step back and look at the big picture, you'll realize that Fashion Law has had enough early adopters to become a trend.  More than that, Fashion Law has tipped the scales and become a movement......or in fashion lingo, into a legacy brand!  Fashion Law even has an institute at Fordham Law School and its own state bar section in NY!

So here is a quick shout to those that helped make it happen:

• Counterfeit Chic (our senior statemanwoman, I believe)
• Likelihood of Confusion 
• Fame Appeal
• Fashion and Apparel Law Blog
• Fashion Lawyer
• Fashionista
• Fight Fakes
• B.A.F.F.L.E.D
• UDUAK LAW FIRM Blog (who just turned one!)
• And newcomer, Law of Fashion

And for all you fashion brands out there, what's the lesson?  Believe in yourself and what you are doing.  With commitment, utilization of social media and the Internet and passion, others will begin to believe.  And before you know it, you can go from a company to a legacy brand!

What movement do you want to create?

photo credit: The Blog of Jake Adams

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If you are a regular reader or follow me on twitter, you know I spent most of last week in Las Vegas at the 2011 Licensing International Expo (#LX11).

The show was amazing and I was able to mix and mingle with some of the most influential people in branding.  Even more importantly for you, I learned a new word:

SLICENSING

What does it mean?

It means to divide one asset, usually a trademark in the fashion industry, into as many pieces as possible. 

Now, this concept of diversifying a trademark into small consumable pieces is not new, nor uncommon in fashion licensing.  This is a recommendation that I have been making to fashion brands for years so they can become a lifestyle brand. 

What I didn't know until last week is that there is a word for it!!!

LOVE!!!

What do you think?

photo credit: Communal Table

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So how do you build a brand?  ahhh.  That's a million dollar question that many professionals get paid lots of money to answer.

Answering the question - what is brand building  is an easier place to start.

Building a brand is expanding your company from the products that made it fabulous and successful.  You engage your loyal customers and appeal to your target market and translate the quality and integrity you are know for into other products.

Sounds simple right?  Not so much.

But, you are lucky.  Stick with me this week as I provide insight and coverage from the 2011 Licensing Expo, sharing tips and techniques to help you grow your company into a brand.

viva licensing!!  #LV11

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You have heard the terms brand building and lifestyle brands on this Blog.  You may be asking yourself, what exactly is Staci talking about and why should my Fashion Company care? 

Let's discuss one at a time.

A lifestyle brand is one that permeates into all aspects of a person's life.  A lifestyle brand expands from one category of items, like clothes, and manages to become important in all aspects of your target customer's life. 

In other words, you can find a products from a lifestyle brand in all rooms of your house or its products enjoyed by a wide cross section of the public.

Fashion examples include Tommy Bahama, Tommy Hilfiger, Martha Stuart, Donna Karan, just to name a few.  Celebrity examples include Jessica Simpson, Kim Kardashian, & Sean Combs.  Harley Davidson and Nike are others.

Sounds good right? 

So how do you turn your Fashion Company from a one hit wonder into an orchestra?  Check back tomorrow, when I'll address brand building.

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Angry Birds.  I love it, my kids love it.  The Millennials love it.

And Rovio, the maker of Angry birds, gets licensing.  Just today, Mashable reported that Rovio will be releasing a family cookbook full of egg recipes under the Angry Birds brand.  How smart is that?

[and for those of you under a rock unfamiliar with the game, eggs are what the Angry Birds are trying capture back from the evil green pigs]

Why is this brilliant branding move?

Because Rovio is expanding the Angry Bird brand with the next logical step, meaning it is connecting some part of its existing product (the eggs in its video game) with its target market/core users (parents and their children) in a new and different way (in the kitchen, cooking as a family).

Mashable reports that the Angry Birds video game has enjoyed 1.2 billion hours of usage in the U.S.  With the Angry Birds Cookbook, Rovio will gain more of your off-line, quality family time in your home's most sacred place -- the kitchen.

Fashion Companies can learn from Rovio.  What part of your customer's lives can you expand into?

To successfully become a lifestyle brand, you need to expand with measured, logical steps.   Otherwise, you, like the Angry Bird pigs, will end up in stuck in the mud.

photo credit: Rovio

ps -- Rovio's Angry Bird Rio, released in partnership with 20th Century Fox, was another brillant move.  Not to mention its T-shirts & plush toys.  I bet we'll see great things from Rovio in the future!

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How excited am I?  As posted yesterday, I get to go to Vegas and report on and tweet about the Licensing Expo!  And I am slated to conduct some pretty cool interviews with top branding executives from Sony, Marvel, CAA and the Carton Network.  Cool huh?

So for those of you who are not familiar with licensing, in short, it is a way to turn a company into a brand.  What's the difference?

A company generally makes one category of products while a brand crosses multiple platforms. 

For example an apparel company can make just women's clothes and then begin to build a brand by adding in additional products like shoes, jewelery, handbags, etc.  Or you can take a music artist and then create a video game, a tv show, a clothing line, headphones etc. 

This is generally called vertical licensing - expanding your core product into completely different, but complimentary, product categories.

You can also build your brand by licensing horizontally.  An example would be a t-shirt company licensing into denim, dresses. outwear, etc.

The fashion and entertainment industries use all kinds of licensing models to build brands.  You may have heard the terms sponsorships, endorsements, joint ventures, direct to retail, development deal or other hybrid words tossed about -- we'll discuss these throughout the week.

For now, to understand the basics of trademark licensing, which is the most common in the fashion industry, click here.

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