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

The best part of the Oscars is the fashion.  While there were definitely some misses last night, and some boring entries, my favorite look was Sandra Bullock's metallic Marchesa gown.  And for the record, she is one of my favorite actress ~ I am SO glad she won (Best Actress for The Blind Side in case you turned if off after the red carpet)!

On an interesting side note, Fashionista has a story this morning, listing this dress as Five Oscars Dresses ABS by Allen Schwartz is Bound to Knock-Off.   

This time, Schumer is being aided by Jeannie Suk, Harvard Law professor and co-author of Standford Law Review article, "The Law, Culture and Economics of Fashion," in which a new fashion copyright infringement standard is proposed. (because substantial similarity wasn't difficult enough for judges or Nimmer, see section 13.03). 

Suk, and her co-author C. Scott Hemphill, propose that fashion designs will be "infringing" i.e. an illegal knock-off if they are a "close copy" or are not "substantially dissimilar." 

WHAT DOES THAT MEAN?!  And how in the world will judges figure that one out?  Is a "style guide" included in the Act?

As a practicing fashion lawyer, litigator, former COO of apparel companies and the fourth generation of my family to work in fashion, law professors and politicians with no hands-on fashion industry experience should not be allowed to "fix" something that they have no practical knowledge of. 

This proposed legislation will do nothing but hurt the $350 billion dollar United States Fashion Industry.  Doesn't Schumer know the rule, "three strikes, and you are out?"

Stay tune for more on why the DPPA is a VERY BAD IDEA and will only harm the fashion industry.

Photo Credit: Fashionista.com

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Fashionista posted a story last week alerting the world that Urban Outfitters in London are selling Anna Wintour tote bags during London's fashion week:

"with the words “FAN CLUB ANNA WINTOUR” scribbled on the front. It’s £50, which is about $77."

An internet search revealed that the item was also available on Urban Outfitters' Website, but is out of stock. 

Here's the unanswered question: does Urban have Anna Wintour's permission to use her name in connection with the sale of these items?  It appears that way. 

If not, it would create a legal issue (right of publicity) in some states here in the United States. 

The bags don't seem to match Wintour's taste level, but she could risk the “Streisand Effect” if she made an issue out of it.

What do you think?

photo credit: Fashionista

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By: Jaysen Chung, USC Law and future Fox Rothschild summer associate, Summer 2010

With the 2010 Winter Olympic competitions already in full swing, the International Olympic Committee and the Vancouver Organizing Committee for the Olympic and Paralympic Games for 2010 ("VANOC") are giving the evil eye to alleged “ambush marketers” or companies who are not official (i.e. paid) sponsors of the Games, but are nevertheless engaging in marketing campaigns that create the impression that they are associated with the Games.

Lululemon Athletica Inc., the Canadian athletic clothing brand, has made Global Language Monitor's list of top 2010 Ambush Marketers.

Lululemon puts out a line called “Cool Sporting Event That Takes Place in British Columbia Between 2009 & 2011.”   This line includes t-shirts, sweatshirts, and mittens in colors that just so happen to be the national colors of countries such as Canada, the United States, and Germany. 

Under the Olympic Committee’s bylaws, it does not appear that Lululemon’s products constitute trademark infringement (certainly, the Olympic Committee cannot go about claiming trademarks on a country’s colors or national athletic pride), though it may be walking a fine line.

Should clothing companies like Lululemon be able to profit from the Olympic brand without paying substantial licensing fees like other official sponsors?  Are companies like Lululemon confusing customers, or "simply pursuing marketing ‘best practices’."  We think they are creative marketers and here is why:

• The Olympic Committee’s bylaws have strict guidelines, prohibiting non-official sponsors from using particular trademarks, such as almost all forms of the word “Olympic” or the logo of the Olympic rings, and had even tried to prohibit the use of words like “Winter,” “Gold,” and “Medals”.  If consumers want to purchase gear that bears these trademarks, they will need to purchase clothing made by the official sponsors.
• Consumers may simply prefer the style or look of the Lululemon line over those of the official sponsors, even though Lululemon’s line is bereft of any Olympic trademark. In that case, the official sponsors would be losing business due to their own lack of creativity or clever marketing.
• Consumers may not know, or could care less, whether the clothing they purchase is made by an official sponsor of the Games. In addition, given Lululemon’s line of t-shirts and sweatshirts that run for $50 and $100, respectively, consumers are probably not purchasing them because they are cheaper or more affordable alternatives to clothing made by official sponsors.

This problem will not likely be solved in the near future, because companies will always want to find some sort of fun and creative angle to sell to consumers during this event [Subway Ad - Video]. 

I guess we will have to wait and see what kind of clothing lines will be making an appearance for the “Non-Winter Global Sporting Event That Takes Place Somewhere in the United Kingdom Between 2011 & 2013.”
 

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Last month, in Get Your Hands Off My Bag, we alerted you to the potential legal action between Bird Handbags, designed by Liz Carey and  Juicy Couture, now owned by Liz Claiborne.  I was finally able to get a copy of the complaint, filed on January 29, 2010.  As predicted, it is for trademark infringement and some NY State common law causes of action, including unfair competitive and deceptive practices.

Basically, Bird Handbags wants Juicy to stop using the name "Bird" to sell apparel and accessories, including bags.  As we told you last month:

A  company name can be protected under Trademark law.  In September 2008, Juicy Couture, Inc., filed three intent to use applications for the mark "BIRD BY JUICY" for classes 25, 18 and 14 (these classes include clothing, handbags and jewelry among other things).  In October 2009, Bird Handbags filed a trademark application for the mark "BIRD" for class 18 (bags), on a combination use and intent to use basis.  Bird Handbags claimed a first use date of July 2007. 

This will be an interesting case, because in the U.S., the first to file usually wins.  But here, Juicy has not yet filed a statement of use and Bird may be able to show that Juicy knew about them when the registered for its marks. 

In the worst case scenario, a judge may allow both companies to use the mark and just may prevent federal registration by either company.  While seemingly fair, this would be a disaster for future growth of either company, because a company's name is usually its most valuable asset.  If it is not federally registered, you cannot sell it or license it.

In sum, registering your name with the trademark office should be one of the very first steps a new company takes.  Otherwise, you risk a bird fight. 

photo credit: Stylelist

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Most everyone in fashion knows that clothing does not have Copyright or Trademark protection.  Hence the prevalence of designers paying homage to, gathering inspiration from or copying the products of another.

What most people don't know is that it is almost the 10th anniversary of the seminal case that set the standard of whether clothing has Trade Dress protection.  Fashionlawyerblog.com posted an interesting article today, by fellow fashion lawyer Joseph Gioconda, recounting the battle between Walmart and Samara Brothers, where the Supreme Court decide that clothing design can only be protected when it is "distinctive" or:

"only upon the designer’s proof of 'secondary meaning;' that is, once enough consumers have come to identify the design as emanating from a single source."  

Gioconda concludes "[f]or better or worse, the Samara ruling forced designers and their copiers to compete in the marketplace."

Whether such competition helps or hurts fashion is fiercely debated within the industry today.  Recent studies have shown that copying may just help the industry.

To make things more fun, there is a recent trend of increased filings of Trade Dress lawsuits by designers, such as Alexander McQueen and Balenciaga, that are apparently sick and tired of their best selling items being"knock-off."

With the amount of pressure and attention the current regime is getting, this may be the decade the rules governing copying in fashion change, especially with the rise of the internet and social media. 

But for now, recognize that you may be copied and use that information to create your own game. Don't try to beat the competition, be different than the competition.

photo credit: apparelnews.net

ps -- please remember that FABRIC can have copyright protection and that there is no such thing as the "30%" rule.

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This past weekend, the Stylist reported that Bird Handbags has sued Juicy Couture, now owned by Liz Claiborne, for Copyright Infringement.  Despite a thorough search, I haven't located the complaint.  So, perhaps Bird Handbags is merely contemplating suit, as report by Fashion Week Daily. 

Regardless, the report of an alleged copyright infringement action odd; as a fashion lawyer, I have not seen a handbag that is protectable by copyright law, but it could be possible to protect the fabric it is made out. 

The Fashion Week Daily article seems to imply that Liz Carey, the owner of Bird Handbags, former model and ex-wife of Oasis drummer Alan White, is upset that Juicy is calling its handbag line, Bird by Juicy.   

A  company name can be protected under Trademark law.  In September 2008, Juicy Couture, Inc., filed three intent to use applications for the mark "BIRD BY JUICY" for classes 25, 18 and 14 (these classes include clothing, handbags and jewelry among other things).  In October 2009, Bird Handbags filed a trademark application for the mark "BIRD" for class 18 (bags), on a combination use and intent to use basis.  Bird Handbags claimed a first use date of July 2007. 

Usually, the first to file wins.  But this is an interesting situation because Juicy has not yet filed a statement of use, Bird has the earlier use date and Bird will likely rely on a combination of common law and federal law trademark claims.  So, for now, the answer is up in the air.

 photo credit: TinyZippers.com

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Design Patents are a rare form of intellectual property in the fashion industry.  A few companies like, Not Your Daughters Jeans, Under Armour and even Gwyneth Shoes (which recently sued Paris Hilton) has one, but these are the exceptions and not the rule.  What is a Design Patent and why are the so uncommon in fashion?

The U.S. Patent Office states, "Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture."  If successfully filed and prosecuted, a process which averages 18-30 months, you will have ownership of the design for 14 years.  To succeed in registering a patent, you must show that the proposed design is novel (i.e., no one else has previously designed a product like this). 

Design Patents are uncommon in the fashion industry for two main reasons:

1. A Design Patent can be expensive for a Fashion Company.  The cost of a Design Patent averages $2500-5000, depending on the challenges raised by the patent office, not including maintenance fees.  Fashion Designers make many items a season, and it is next to impossible to predict which will be your best seller.  To protect your entire line, every season, can get costly, especially for an emerging designer.
2. A Design Patent takes a long time to get.   Fashion cycles move quickly.  So, by the time your patent issues, the item you protected is likely obsolete.  Thus, you spent a whole bunch of money for nothing.

In my experience, there are only a few instances where Design Patents make sense, mainly in shoe accessories.  If money is not an obstacle, you could always try and register, if a search reveals that your idea is new and novel.  That way, you could list "patent pending" on your invention, deterring knock-offs while the patent office examines your idea.  That extra jump in the market may be enough to brand you as the innovator and translate into extra sales.  That's not bad bang for your buck. 

photo credit: Cychanglaw.com

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These days, Trade Dress lawsuits are a hot topic in fashion law, causing one leading fashion blogger to wonder whether we are seeing a "trade dress trendlet."  For example,  Alexander McQueen and Balenciaga both sued Steven Madden; Danner sued Rag & Bone.  Even Paris Hilton wasn't spared.  But what exactly is Trade Dress and does it protect fashion designs?

The answer to the first question is easier than the second.

Nolo's Plain-English Law Dictionary defines Trade Dress as:

"Various design elements used to promote a product or service. For example, trade dress includes the unique shape of a bottle, the color of a pill, or the decorative elements within a chain restaurant. Trade dress can be protected under trademark law if it is distinctive and a showing can be made that the average consumer would likely be confused as to product origin if another product had a similar appearance."

A company can file for Trade Dress protection under the Lanham Act (section 43(a)) with the United States Patent and Trademark Office.  The procedures for filing an application are similar to filing trademark application.

A few things bear mentioning.  Utilitarian aspects of your products, that serve a function such as zipper, snaps or buttons, are not considered when determining if your design qualifies for Trade Dress protection.  So, taking away all the useful stuff, would an average customer (think three people at a bus stop) recognize your brand merely from seeing one of your products?  If the answer is yes, you may have a viable claim for Trade Dress.

One fashion expert opined that this "secondary meaning" test is virtually un-meetable for fashion items.  The only two things that she could think of that qualified were a members only jacket and a burberry trench coat.

So, unfortunately, it will be an uphill battle for fashion designers to rely on Trade Dress protection, especially new and emerging one, unless this recent round of "shoets" kicks up the heels of existing law.

photo credit: ManagingIntellectualProperty.com

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Another "Shoet."  This time Brooke Hollow Inc., which does business as Gwyneth Shoes, hopes to knock the socks off Paris Hilton and her shoe company, Paris Hilton Footwear Line Collection made by Antebi Footwear Group of New York. 

Gwyneth claims that Paris Hilton knocked-off its design patent, Patent Number D579,642, for a heart-shaped "shoe sock," and further alleges that Hilton's use infringes on its Trademark rights because its "pink heart" has become a source and brand identifier for Gwyneth shoes.

The Cut reports that:

"Paris said on her website, 'I personally chose the styling, design, materials and colors for the line and also wanted to make sure it was super-comfortable! Each shoe has a heart-shaped comfort pad sewn in ... so you can dance all night long!'"
 

Even without reviewing the complaint, I have to disagree with The Cut taking Paris' side, apparently because other companies make and sell heart-shaped shoe pads.  I wouldn't want to be walking in Paris' shoes.  Here's why:

Yes, Gwyneth's Trademark claim seem a bit of a stretch, for the same reasons Alexander McQueen, Balenciaga and Danner will have a hard time prevailing on similar claims: secondary meaning is very hard to prove, especially in the realm of shoes and clothing.

BUT, if Gwyneth has a valid design patent, overcoming its presumption of validity is very difficult and costly.   

Cross my heart.

Photo credit: TMZ

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Its raining cats and dogs, or at least combat boots, this season. 

Last week, Danner Inc., sued Rag & Bone for selling the "Danner Combat Boot by Rag & Bone" to Saks and Barneys, joining in on the trademark infringement trend started by Alexander McQueen and Balenciaga.

Left: Danner Boots. Right: Danner Combat Boots by rag & bone.

Without yet reading the complaint, two things strike me as very odd:

1. In this case, the knock-offs, priced at $525.00, are more expensive then the original, priced at $265.00; and
2. Rag & Bone actually seems to be using the DANNER trademark in commerce i.e. by naming, selling and promoting its shoe under the name "Danner Combat Boot by Rag & Bone."  As Ron Coleman discussed in his excellent analysis of the Balenciaga LEGO complaint, use of someone else's trademark in selling your product implies that the trademark holder, here Danner, granted Rag & Bone permission or a license to use its name.  I am guessing that is not the case in this matter, because Danner's lawsuit is for trademark infringement and unfair competition, not breach of contract.

So it seems that Rag & Bone was dumb enough to violate the first rule of Fight Club --  if you are knocking off someone, don't talk about it in the name of your "inspired" product. 

photo credit: @PerezHilton or cocoperez.com

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These days everyone seems to be enthralled with Fashion Licensing.  What is it?

Licensing is the process of "renting" your fashion company's intellectual property, generally its trademark, but sometimes its copyright, to another entity for a sum of money called royalties, for a certain period of time, for a certain product or category of products, for an agreed upon period of time within a certain territory.

If you answer yes to both the questions below, your fashion company is probably ready to start liscening: 

1. Does your company own its intellectual property (this will generally be your company' name and/or logo)? and
2. Is your company doing more than $30 Million in sales?

Why consider licensing?  Because every dollar earned goes directly to your company's bottom line.  Done right, licensing gives your company an opportunity for massive growth in a short amount of time, for minimal investment.

On the flip side, if you chose the wrong licensing deal or licensing partner, you will lose customers and all the goodwill you have built up your brand name. 

Is it worth the risk?  Yes.  If you do your homework, spend some time "dating" and make sure you have a good prenup.  Then, utilize the know-how of "specialists" to diversify your most valuable asset and create a revenue stream where one did not previously exist.  Liscensing will turn your fashion company into a lifestyle brand.

Photo Credit: A Reason to Write - India

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 Copyright protects original, non-useful works of authorship fixed in a tangible medium of expression.  Currently, you can not copyright fashion because clothing is a "useful article."

But, if aspects of a piece of clothing can be "physically separable" from the underlying garment, you may be able to protect it.  Examples include:

• A t-shirt graphic (think Ed Hardy);
• printed fabric; and
• removable lace or applique

Registering a copyright is relatively simple.  All you need to do is submit a completed application, copies of the work to be registered (referred to as deposit materials) and a nonrefundable filing fee, which varies depending on how you file.  It is $35 if you register electronically, $50 if you register using Form CO (paper filing with 2-D barcode-generated form) or $65 to file the old-fashion way -- on paper.  

In general, if the work was created after Jan.1, 1978, the copyright lasts for 70 years after the author’s death.  When there are joint authors, it is 70 years after the last author’s death. For works for hire, the copyright lasts 95 years from publication, or 120 years from creation, whichever is shorter.

You do not need to register your work to obtain rights, but unlike under trademark law, your work must be federally registered in order to bring a suit for infringement.  There are other benefits as well.

Please remember, that there is no such thing as the 30% rule (or any percent rule).  If you copy someones protected work, even if you think the company is out of business or the print is in the public domain, you might just end up being sued.

photo credit: the Copyright Symbol Webpage

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In April 2008, several fashion bloggers noted that Steve Madden "knocked-off" French Couture House Balenciaga's "Lego" shoes, which were part of its Fall 2007 collection.

. 

Last Monday, December 15, 2009, perhaps inspired by Alexander McQueen's recent suit against Steve Madden for similar copying, Balenciaga filed suit against Steve Madden for Copyright Infringement, False Designation of Origin, Unfair Competition and Deceptive Business Practices in New York federal court.

Interestingly, the complaint barely mentions Trade Dress, and does not include it as a cause of action, maybe because secondary meaning is so difficult to prove. 

Or maybe Balenciaga's complaint is just poorly drafted.  In the copyright infringement claim, Balenciaga fails to allege that it holds a federal copyright registration, a prerequisite for bringing a copyright action in federal court.  In the Deceptive Trade Practices claim, the company alleges that Madden is "in direct competition with Balenciaga," which at the prices listed above, seems very hard to believe.

Under existing US laws, it is permissible to copy shoes and clothing because those items are useful articles.  But, I think Balenciaga has a leg to stand on.  Here's why:

Balenciaga argues that Steve Madden is engaged in a pattern of willful and deliberate copying, constantly stealing the most successful styles from other shoe designers, thus profiting from their research, development, and successful track record. 

By not having to spend money for design and development, and focusing only best-sellers of others, Steve Madden skips the risky part of the fashion business. 

So, Balenciaga just might have colorable argument that Steve Madden is engaged in unfair competition by copying its colorful shoes.

Photo credit: City File

p.s. While I like crazy shoes, thank goodness these Legos are not under our tree.

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In fashion, your company’s name or logo is generally its most valuable asset.   In order to profit from your fashion brand name or logo  (via sale or licensing), you must own it by “trademarking” it with the United States Trademark and Patent Office. 

A trademark (or servicemark) is a word or slogan that distinguish the source, origin a sponsorship of a good (trademark) or service (servicemark).

Unfortunately, many young fashion companies fail to trademark their name or logo. Then, after substantial money has been invested in promotions, public relations and collateral such as hangtags, business cards, invoices and signage, the company learns an expensive lesson: their “name” is already taken or blocked.

So what should your Fashion Company do? 

1.  Conduct a search to see if your desired mark is taken.

2.  If the mark is available, file a trademark application with the Trademark Office.

3.  Respond to any "Office Actions," or questions from the examining trademark attorney.

4.  Assuming there are no objections from the trademark office or another trademark holder, your mark will register.  Currently, this takes 9 to 14 months, but can vary greatly application to application.

You are required to maintain your mark and also may want to consider protecting it in other countries, both where you manufacturer and sell goods.

Don't forget, any time you claim rights in a mark, you can use a "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO.  This will give you some protection against infringement by putting others on notice of your rights, hopefully deterring counterfeits. 

Once you receive a federal registration number, change the "TM" to an "®" and register your mark with proper government agencies to minimize exposure to counterfeiting.  

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Under current Copyright law, it is legal to “knock-off”, or be inspired by, another designer’s products.  Proponents of the current state of the law argue that this design piracy actual spurs sales by inducing obsolescence.

Counterfeiting, the practice of passing of imitation goods as the real things, however, is illegal in the United States. According to the International AntiCouterfeiting Coalition, counterfeiting costs U.S. businesses $200 billion to $250 billion annually. 

What if they are wrong and the sale of counterfeit products, like the sale of knock-offs, actually increases sales of the authentic product? 

A new study “The Real Value of Fakes,” by MIT Professor Renee Richardson Gosline has shown just that. MIT News reports:

Gosline interviewed hundreds of consumers who knowingly bought fake luxury apparel, many at “purse parties” where such goods are sold. Gosline found that within two years, 46 percent of these buyers subsequently purchased the authentic version of the same.

Now that’s more "faux" for your bottom line.

photo credit: ReplicaEstore.com

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Lately, there has been much talk about trends - how they are started and when they reach a critical mass called the trend tipping point.  I think the next trend will be Alexander McQueen's "alien shoes," shown during his Spring 2010 runway show that included a performance by Lady Gaga (maybe because they remind me of the toe shoes of my youth). 

I am not alone.  Grazia Daily reports that a McQueen spokesperson stated:

"We've had lots of people showing great interest in the show shoes. . some of the callers are also looking 'to buy them as art pieces'. . .[and] the process used to create the Alien shoes is very innovative and protected by copyright."

I have two questions: (1) how can the "process" to create shoes be copyrighted?  And (2) when will this trend trickle down to my price range so I can get a pair?   

As for the first question, copyright protects the original expression of an idea, whether literary, artistic, commercial or otherwise; it does not protect the actual process of assembly or outward appearance.  Clothing and shoes are not currently protected under copyright law because they are useful articles.  Fabric designs, however, generally have copyright protection.  So I wonder how McQueen can claim a copyright in the process of developing his new shoes.  More likely, he is trying to protect the process under patent theory.  Any thoughts?

As to the second, it might be a awhile because Alexander McQueen recently sued Steve Madden for "copying" his "Faithful" booties on a trade dress theory.  As a result, a company may think twice before using McQueen's shoes as inspiration. 

When commenting on McQueen vs. Madden, I doubted McQueen would succeed because he wouldn't be able to prove secondary meaning.  Maybe with the "Alien Shoes" shoes, McQueen takes one (wobbly) step closer to victory.

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Project Runway ended season six with a two part finale and an even bigger controversy. 

First, Tim Gunn counsels contestant Irina that using images of Coney Island on her t-shirt, intended as a layering piece in her collection, would be trademark infringement.

Tim advises Irina that she needs to rework the T-shirt "with images that are your own."  In part two, Irina shows Tim her revised T-shirt, which is "decorated" with reasons she allegedly loves New York.  Tim even quotes one:" 'Reasons to love NY'...is that Madonna is back?"
 

Here's the Controversy:  Bloggers Tom and Lorenzo quickly discover that Irina's reasons to love NY were not her own, but from a 2008 New York Magazine Article, "Reasons To Love New York."  A few days later, New York Magazine confirmed that Irina used their words without their permission.

Tim didn't stop her from showing her collection and Lifetime still aired the show, so Irina's conduct is okay, right?  UNLIKELY.

The lifted words were printed by New York Magazine and it owns the copyright. This means that no matter how creatively Irina arranged them on a T-shirt, only New York Magazine has the right to use this phrasing.  From the post cited above, it does not seem that Irina had New York Magazine's permission.

So why air the finale?  Due to the war between Bravo and Lifetime over who had the right to release season six of Project Runway, they certainly had enough time to re-shoot or pull the episode.

Perhaps because the producers and network were unaware of the origins.  These seems questionable because in a subsequent interview with Tom and Lorenzo, Irina admits she copied New York Magazine's article, insinuating that the producers of Project Runway were aware of the source.  Or perhaps because Irina hasn't actually sold any of her T-shirts, there is no money to recover in a lawsuit and thus no motivation.  Or maybe even the PR benefit to New York Magazine outweighs any harm. 

But, as a fashion lawyer, I couldn't let this very public copyright controversy pass by without comment.  I don't want any of you to become embroiled in a similar controversy.

In sum, taking the work of another without permission will normally get you sued.  (and remember there is no such thing as the 30% rule.)

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You have may heard the term direct to retail or DTR, but ever wonder what it is? It is a licensing relationship where retailer effectively becomes the licensee as well as the seller of the product. This means that the retailer pays a royalty to the licensor and sources licensed merchandise itself. The royalty to be paid can be based on the retail price or vendors' sales price (i.e., the retailer's cost). DTR deals often do not include a guarantee, but the marketing commitment is one of the key terms. Importantly, retailers make better margins on DTR products than the traditionally licensed goods.

Many well known companies such as Disney and Icoxic have been in the DTR game for awhile now. Disney was one of the first. In 2008, Iconix reported that 50% of its approximately 250 million in revenues in came from direct-to-retail arrangements. In 2009, the company projects that those numbers will increase, with 60% of its revenue coming form DTR.

So how do you get a DTR deal?

• Your company must have proven capabilities as a potential supplier or vendor to get in the door;
• Once in, make your pitch to fill an existing gap that you have identified in retailer’s portfolio and why you are perfect to fill it; and
• If you get the deal, remember that establishing a good relationship is the key to long term direct-to-retail success. With the DTR model, retailers generally want to establish long-term relationships on select brands, and once a partnership is formed, it's likely to sustain itself over time.

If the match is a good one, everyone wins. Why? Because when retailers work with their own suppliers, they can get product on the shelves more quickly, and it can be on trend. The minute a property is successful or a movie turns out to be a big hit, retailers can turn something around and have it in store in no time. And for the licensor, that means more money directly to your bottom line.

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There is legislation pending before Congress, the Design Piracy Prohibition Act (DPPA), or H.R. 2196, that would allow designers to obtain copyright protection for their fashion designs for three years.

Steven Kolb, Council of Fashion Designers of American (CFDA), one of the supporters of the bill claims that it is needed because:

[p]irates steal American fashion designs, make low quality copies in Asian factories with cheap labor and import them back to into the U.S. to compete with the original designs.

Others, such as Jason Wu and Narciso Rodriguez rally against the injustice of lower priced companies profiting from the sales of virtual identify copies to gowns worn by celebrities or those in the public eye.

My question is this: isn’t inspiration, homage or “knocking-off” the force that creates a trend, thus causing customers across the country to desire and purchase the design?

Remember Meryl Strep in the Devil Wears Prada?

The ironic part of this new law is that copyright registration would not be allowed it if the design “merely reflects a trend.” According to the bill, a trend is:

a newly popular concept, idea, or principle expressed in, or as part of, a wide variety of designs of articles of apparel that create an immediate amplified demand for articles of apparel embodying that concept, idea, or principle.

The trend “safe-harbor” prevents protection for any “hot” or fast-checking item. Now that is the true paradox of fashion.

Photo credit: Getty Images/Mark Wilson

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There are two business mantras that every fashion company should follow:

1. Always take the meeting, and
2. Get it in writing

Recently, due to the drastic increase in the numbers of copyright infringement cases being filed, I have added a third: there is no such thing as a 30% rule or whatever “rule” your designer may tell you.

Buying a copyrighted print, then changing it a certain percentage is not permitted and can get you into expensive litigation quickly. In October, the California Apparel News reported that one recent trial over a paisley print ended in a six figure judgment.

Why are more lawsuits being filed? Two reasons:

1. Due to the current state of Copyright Law, an unscrupulous plaintiff can easily obtain a substantial windfall based on an invalid Copyright Registration.
2. Most designers still think it is okay to take a print of another, change it a certain percentage and then have it produced by their own supplier.

Once a potential plaintiff has a Copyright Registration, Courts presume that it is valid. Trying to argue that you were unaware of the copyright or you believed the design was in the public domain generally does not work. In plain English, if a average person, imagine two guys at a bus stop, think the two items look alike, you will likely be held liable for copyright infringement.

So, what should you do? Find out after the jump...

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Here’s what happened: After seeing a recent Ralph Lauren advertisement featuring Filippa Hamilton, several bloggers questioned whether the image was real or photoshopped. One blogger at BoingBoing posted the advertisement with the caption, “Dude, her head's bigger than her pelvis.”

This comment so displeased Ralph Lauren that it had its attorneys take action pursuant to the Digital Millennium Copyright Act (PDF) (“DMCA”) and issue a DMCA Infringement Notification (PDF) to the Blogger’s ISP.

Instead of taking down the image, BoingBoing claimed that reprinting the photo along with criticism of the way the company chose to portray the model is legally permissible fair use under copyright law. And, so incensed over the threat, BoingBoing posted Ralph Lauren’s DMCA Take Down letter, which causing even more negative commentary for Ralph Lauren, also known as the “Streisand Effect.”

For example, the controversy was reported by ABC news, Extra and even the ABA Journal.

In the end, it appears that Ralph Lauren pulled the advertisement and a company spokesperson issued the following apology:

For over 42 years, we have built a brand based on quality and integrity. After further investigation, we have learned that we are responsible for the poor imaging and retouching that resulted in a very distorted image of a woman’s body. We have addressed the problem and going forward will take every precaution to ensure that the caliber of our artwork represents our brand appropriately.

Even though the Daily Mail reported that Ralph Lauren claimed the retouching of Fillipa “was an isolated incident," photos of second airbrushed model, Valentina Zelyaeva, became widely publicized this week.

And, if this was not enough negative PR for Ralph Lauren, Filappa recently appeared on The Today Show. Even though Fillipa wears a size 4, is 5-foot-10-inch, and weighs 120-pound, Filippa reported that Ralph Lauren actually fired her over 6 months ago for being “too fat.”

As Dana Shultz notes, the issue here is not that Ralph Lauren likes its models to look more like Bratz Dolls than human beings. But, that fashion companies should think twice before taking action against “negative” online commentary. You may, as Ralph Lauren learned, get more that you bargained for.

Photo credit: High-touch Legal Services Blog

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In a recent blog post, law professor, lawyer, and fashion blogger Susan Scafidi discusses the recent lawsuit filed by Alexander McQueen against Steve Madden.

In her post, Susan writes:

U.S. law doesn't protect clothing designs against copying. Hence Steve Madden's apparent business strategy: copy everything from sole to shoelace, but avoid the legally secured trademark...While the complaint isn't yet available online, lawyers for Alexander McQueen are part of an emerging trendlet, namely a return to trade dress claims...From a big picture perspective, if this trickle of trade dress claims continues, will it have a significant effect on the frequent copying of creative clothing?

I think that it won't, and here's why:

A trade dress claim will only succeed if your brand is famous, has design elements that have been around for years, and the item at issue has secondary meaning. This means that an average consumer (think the two men at a bus stop in Detroit) must be able to recognize you, the fashion manufacturer, from the outward appearance of the items. Most manufacturers will be hard pressed to met this standard.

“Inspiration,” copying and piracy is what drives trends and economic studies show that it is actually good for the fashion industry.  So for now, despite the "trade dress trendlet," it is business as usual in the fashion industry, even if McQueen has faith in its ability to change.

Photo attribution: CounterfeitChic.com

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