By: Yann Rim, Phillips Nizer Intellectual Property Intern
Being home to Paris and Milan, the European Union (“EU”) has every reason to draft its laws to protect fashion designers and their works with particular care. An efficient way of protecting fashion designs is through the Unregistered Community design, which protects design works without requiring any registration process for a limited period of three years (instead of the five years of protection, with renewals, given to registered designs). As the fashion industry often depends on short-lived, seasonal designs, many designers have concluded that the burden of going through the registration process each season is not worth the trouble.
However, design law is not the only way to protect fashion designs. In fact, a fashion design can also be protected by copyright. The EU has set ground rules regarding the interaction between copyright and design law. One could expect that it would be extremely difficult to set such rules for twenty-seven jurisdictions with local laws and rules that differ considerably for cultural or historical reasons, but that has long been the challenge of a united Europe in so many different ways.
For example, Italy and Germany grant copyright protection to fashion design works on the condition that the work be of superior artistic value pursuant to the scindibilità principle in Italy and the Stufentheorie in Germany. In contrast, France does not require such a showing of artistic value because a 1793 statute prohibits imposing such a requirement. The French rationale is that, if superior artistic value were to be considered in granting copyright protection, the judge would effectively act as an art critic or, at the very least, expert witnesses would have to be called to testify on the question of superior artistic value, thereby enabling art critics to influence copyright law in unforeseeable ways.
So how does the EU deal with such differences? In the Cofomel case (Cofemel v G-Star Raw, C-683/17 – Sept 12, 2019), the Court of Justice ultimately chose to follow the French rule and held that, if the law of a member state were to require a showing of some sort of “aesthetic” value for a design to be eligible for copyright protection, that would contradict the requirement of objectivity (as to taste and art) as mandated under EU law. The Cofomel case had been initiated by the highest Portuguese court, which asked the Court of Justice if it should be inferred from Article 2(a) of the InfoSoc Directive that member states are not allowed to interpret the word “work” in conformity with their own copyright law definitions. The answer was “Yes.” The notion of work in Article 2(a) is an independent EU notion that is not subject to interpretation by member states. Therefore, EU courts are not bound by the states’ own interpretation of the word work and will disregard any national requirement that a work have superior artistic value for it to receive copyright protection. As a result, EU law can be said to prohibit member states from denying copyright protection to designs that meet the requirements for copyright protection – including designs other than registered ones (subject to Article 17 of the Design Directive).
That raises a theoretical question: would a fashion designer in Milan–whose work does not qualify for copyright protection under Italian law–have to move to Paris to benefit from French copyright law? Fortunately, the answer here is “No.” In the Flos case (CJEU Jan. 27, Flos SpA v Semeraro Casa e Famiglia SpA, C-168/09), the Court of Justice held that, although unprotected under Italian copyright law, the work in dispute was entitled to protection under EU copyright law regardless of which jurisdiction is the base of its designer.
Ironically, the single standard in examining eligibility for copyright protection has given rise to the double protection of fashion design works – by copyright law and design law – because if a work satisfies the EU requirements for copyright protection, the protection is granted regardless of its use as protectible a fashion design. However, double protection means that there are two statutory tools available; for copyright purposes, the work is still subject to the three-step test for protection. That test emerged by treaty (known commonly by the acronym TRIPS) permits restrictive measures:
- in certain special cases,
- that do not conflict with the normal exploitation of the work; and
- that do not unreasonably prejudice the legitimate interests of the author/rights holder.
In a way, that test is similar to the concept of fair use in the United States in that it gives leeway for a judge to decide what counts as a legitimate use of a copyrighted work in the absence of explicit permission. For a minority of French academics, a European law of fair use can be inferred from the test. However, the EU is not ready to do so at this time. The Court of Justice is apparently trying to avoid the effects of liberal and often unpredictable interpretations of copyright exceptions such as the fair use exception has seen in the United States.
Nonetheless, the Court of Justice did get some inspiration from the American fair use doctrine in the Nintendo case (CJEU Spt. 27 2017, Nintendo Co. Ltd v BigBen Interactive GmbH and BigBen Interactive SA, Joined Cases C-24/16 and C-25/16). There, the court defined the concept of “citation,” stating that Big Ben (a video game accessory seller) was merely “citing” Nintendo’s work in order to explain how to use its products on a video game console. The court therefore concluded that Big Ben’s use of a protected graphic design owned by Nintendo in order to explain or demonstrate the use of its accessories with Nintendo products was a legitimate, non-commercial use and did not constitute copyright or design law infringement, even without prior authorization from Nintendo.
It is clear that the Court got this idea from the fair use and fair dealing concepts of US law. Although the EU does not formally recognize a broad judge-made exception to copyright and design law protection, the Court of Justice was still willing to create an exception in order to tidy up its own law.
What that potentially means is that, when considering protection of designs in Europe, start your analysis at the EU level and work down from there to the individual national legal systems that may be involved. And, as with so much of design law worldwide, be prepared to expect the unexpected.
 The EU was formerly known as the European Community
 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs
 Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, also known as the InfoSoc Directive.
 F. Pollaud-Dulian, The dragon and the white whale : three steps test and fair use, in Intellectual Property in Common law and civil law, Elgar publishing 2013, p. 158
By: Alan Behr, Phillips Nizer Partner and Fashion Law Chair
The best words in any language were long ago vaccinated against easy translation. I am German and I still struggle to explain Gemütlich in simple terms. In my lumbering study of Italian (my pandemic at-home challenge), I came across sprezzatura, which can be roughly translated as a refined and carefully executed appearance of effortlessness. If you see a man wearing perfectly coordinated clothes with every appearance of somehow having just thrown them on before leaving home—that’s sprezzatura. (Rest assured: he spent a lot of time working on making it look like he spent no time at all.)
The look and the philosophy behind sprezzatura have characterized Neapolitan tailoring for generations. The result is a vibrant, instantly recognizable style that has been given a tactile presence by brands such as Mariano Rubinacci, E. Marinella, Kiton and the distinctly charming and playful Isaia. Trademark law is about the legal protection of brands, and brands are about nothing if not story: the best trademarks tell stories, inviting you into joining in the telling of those stories by your patronage of the brands behind them.
I was reminded of that by Jason Green as we sat in the comfortable parlor portion of a sales floor of the Isaia boutique on Madison Avenue in New York, sipping espresso. He opened by explaining that the brand’s distinctive logo represents the red coral of the Mediterranean—formed, according to myth, from the blood of the gorgon Medusa after she was beheaded by Perseus, her body thrown into the sea. People associated with the brand wear the coral logo on lapel pins, and by custom, whenever they are asked for the meaning of the device, they present the one they are wearing to the questioner.
That touch of branding whimsy is right for our times, noted Mr. Green. “My sense is that what is taking place in the mindset of people coming out of one of the most turbulent periods in recent history is a pent-up exuberance for the return of life as normal, he added. “In my view, there will be a powerful resurgence in sartorial expression, which, at its basis, means that you want to feel great—to leave behind whatever is connected to this challenging period and reclaim something joyful that was taken from us for too long.” That has brought on a resurgence, somewhat unexpectedly, of wedding wear and evening dress. You may not always wear a suit to the office, but a hand-tailored Neapolitan jacket (the buttons haphazardly fastened in homage to sprezzatura, of course) may well be your first no mask/no worries treat for yourself.
As with other brands, Isaia has spent this quiescent period reaching out to its best customers—visiting their homes and offices, giving them as close personal attention as possible. “It is big-box retailing that is dragging,” added Mr. Green. “Big boxes struggle with that due to their size and the intrinsic geography of that business.” In short, if your core business involves selling essentially the same inexpensive things on racks and online as your competitors, you can find yourself struggling to differentiate yourself enough to increase market share.
The trend toward specialized service will continue even in e-commerce, said Mr. Green, a channel often thought of as the nemesis of the personal touch. “We are moving away from that broad platform of selling a catalogue of styles online to something that literally takes place within the confines of a text, something personal delivered in a beautifully curated point of view—not a global transmission but an opportunity for an individual edit.”
What is the biggest problem facing luxury retailing? Mr. Green was quick to reply, “A shortage of good talent. High caliber people who know how to treat your customers well are not afraid to move around if given the chance, so much of what we do is nurture our talent. The same is true in the high-end auto and restaurant businesses.”
From a legal point of view, it comes down to protecting your brand and your trademarks, making sure your employment agreements are fair and up to date and, above all, approaching legal issues with the understanding that luxury retail has gone from being mostly about goods to being mostly about service.
By Candace R. Arrington, Phillips Nizer Associate
The 2021 G7 Summit, hosted in Cornwall, England earlier this month, generated eye-catching headlines about COVID-19, Brexit, and even Kate Middleton’s bejeweled bracelet originally worn by Princess Diana. Annually, heads of state from Canada, France, Germany, Italy, Japan, the United Kingdom, and the United States meet to strategize around global issues. This year, one of the issues addressed by the G7 was the hot topic of sustainability in fashion.
Sustainable fashion is an initiative to reduce the fashion industry’s impact on the environment by focusing on the development and implementation of sourcing, manufacturing, and logistical processes with lower environmental impact. Sustainable fashion includes the use of natural materials, recyclable fabrics, and biodegradable supplies.
The potential benefits are clear. The fashion industry is estimated to account for 10% of greenhouse gas emissions each year. New York City alone discards almost 200 million pounds of clothing every year.
The fashion designer Stella McCartney, the Prince of Wales, and some of the world’s most powerful executives gathered at the G7 along with world leaders to discuss climate change.
The G7 is not the first international body to tackle sustainability in fashion. In 2019, the United Nations launched the UN Alliance for Sustainable Fashion, joining global fashion stakeholders to tackle ecological and social responsibility. During the 2020 World Economic Forum in Switzerland, the Global Fashion Agenda, alongside Asos, Nike, and H&M, published a guide containing suggested plans to improve the environment.
Laws and policy proposals concerning sustainability in fashion are appearing more frequently around the world. The Swedish Fashion Council cancelled fashion week in 2019 to focus on sustainability initiatives such as taxing chemicals used in the manufacturing process. France’s Grenelle II Law mandates that any garment sold in France provide details surrounding its carbon emissions or its carbon footprint. The French President, Emmanuel Macron, has called upon François-Henri Pinault (the CEO of Kering) to help implement environmental initiatives in the luxury fashion and textile industries.
Sustainable fashion is often linked with ethical fashion, which is a similar advocacy framework that aims to reduce human rights violations such as the use of child labor in the manufacturing process. For instance, the California Transparency in Supply Chain Act requires businesses to ensure that their supply chain is free of suppliers and manufacturers that engage in slavery and human trafficking.
Although efforts to combat child labor have broad bipartisan support, there is an ongoing tension between the benefits of sustainable fashion and the concern that it will add expense to the manufacturing and distribution process, disrupt existing supply chains, and in some cases restrict options in the use of fabrics and other materials. On one hand, the Environmental Protection Agency has received pressure to regulate fashion in a manner more broadly akin to how it monitors the oil industry. Conversely, environmentalists in the United States have received pushback from fashion businesses that argue an aggressive approach to sustainability will be both restrictive and detrimental to the domestic market. A successful push for greater sustainability in fashion will surely require a convergence of stakeholders across multiple sectors in government and business; but in the end, as with all of fashion, it will come down to one deciding factor: if the public buys the clothes, it will be a success.
 Chan, Emily. “15 Things Everyone Should Know About Sustainable Fashion.” Vogue. April 19, 2021. https://www.vogue.co.uk/fashion/article/sustainable-fashion
 Wagner, Lindsey. “How to Get Involved in NYC’s Sustainable Fashion Movement.” Capalino. April 15, 2019. https://www.capalino.com/how-to-get-involved-in-nycs-sustainable-fashion-movement/
By Alan Behr, Phillips Nizer Partner and Fashion Law Chair
We noted in a recent report in The New York Times of a husband and wife, both in their sixties, whose company owned a Connecticut warehouse in which Brooks Brothers had stored fixtures, displays and props. As a byproduct of the bankruptcy of that signature purveyor of American style, the entire lot was abandoned in their care, leaving the couple with a warehouse full of trunks, mannequins, racks, Christmas trees and more—instead of rent that had been the primary source of their personal income. The lowest bid they received to haul it all away was just shy of a quarter million dollars—a sort of Storage Wars or Baggage Battles in reverse.
The sad fact is that, when retailing—which is about little if not the flow of goods—goes wrong, things will get stuck somewhere. If you are left in possession of boxes of new-with-tags crew-neck cashmere sweaters, you might, with some effort, come out ahead, but not everything can be that easily monetized. It is like musical chairs, and whatever you might say about possession being nine-tenths of the law, if you end up possessing things you did not want or, worse, find difficult to sell or even give away, you can end up suffering collateral damage in a battle lost by someone else.
For warehouse owners, whose contracts are normally both detailed and favorable to their legal position, a useful preventative, wherever permitted by law, is to insist on more upfront rent and perhaps a further deposit (directly or in escrow) of a reserve for hauling away abandoned property. If apparel is what travels through your possession, a good idea is to remember that fashion is about speed: generally, the longer that goods stay anywhere, the harder they will be to resell in bulk. That may not be as true for classic items such as those typically sold by Brooks Brothers, but the Connecticut warehouse held no merchandise or anything else for which a few eBay postings would provide quick relief. True enough, Christmas trees may not go out of style—but consider what you might have to do to move along whatever you end up possessing should something go wrong in the chain of distribution in which you find yourself but one vulnerable link.
It is often said that commerce is powered by capital and initiative, but the fuel that moves it along is optimism. Lawyers are, by nature, worriers, and we should not allow our warnings of “but what if” to hinder the good works that will arise from a positive point of view. But having a good exit strategy never hurt even the most optimistic of field commanders, and the same is true whenever goods enter into the stream of commerce.
By: Alan Behr, Phillps Nizer Partner and Fashion Law Practice Chair
About 2020 we can only say what the videogame hero Duke Nukem would sometimes offer when things turned out badly for him: “This sucks.” If you work for a company that rents evening attire, you have probably felt that more often than most by now; but if you work for a company that supplies Amazon with cardboard boxes, you may to be feeling just fine, thank you.
For 2021, many of us, whatever our employment, have resolved to make it a better one simply by going somewhere (just about anywhere) and, once there, doing something (just about anything).
For lawyers, the expectations are mixed. Word on the street is that, now that families have spent so much more time with each other—sharing living and working quarters in a way not experienced on such a scale in the West since before the Industrial Revolution—there should be one clear result: divorce lawyers can expect a banner year.
Fashion lawyers are not the subject of any predictions made with similar certainty, but a few notes are worth considering when reviewing what to address with fashion counsel this year:
- Perhaps your brand has undergone changes, such as if you have started making facemasks and PPE in workrooms once devoted to T-shirts, or if you have stopped producing ballgowns and switched to Zoom-friendly blouses. If you intend for those new products to stay in your line, it is time to consider updating your trademark registrations to reflect those expanded uses of your marks.
- There are special requirements to consider carefully with counsel if you have started offering purchasers the opportunity to review your products and services on your own website.
- Did you expand your relationships with influencers, endorsers and celebrities? There are rules and recommended structures for conducting those relationships that should be discussed with counsel.
- Needless to say, it is a good time to doublecheck your insurance coverage, the force majeure clauses in your contracts (as in, do you see the word pandemic anywhere?), and whether your lease allows you to sublet space you might not need if more members of your workforce will be working from home in whole or part going forward.
- And the workforce itself: You can cause yourself needless legal uncertainties if your employment policies no longer reflect the realities of your workplace. How will employees document the hours spent working from home? And what happens now if you have provided all along that your work hours are, say, nine to five, with an hour for lunch, but your people working from home are routinely taking off midday to get the kids settled in with homework and playdates and then finishing up the workday after dinner?
- What about your policies concerning office equipment for use in the home—everything from laptops to sewing machines for making muslin samples? They may also need to be updated, along with protocols for internet and email security.
That is just a partial list. The main thing to remember is simply this: whenever a business experiences changes as dramatic as those that the late and not lamented year 2020 brought on or accelerated, the legal circumstances under which the business operates very likely have changed as well. A legal refresh is therefore a prudent move—one that should be made without delay.
By: Alan Behr, Phillps Nizer Partner and Fashion Law Practice Chair
The inexplicable year 2020 was marked by technology connections that curiously spun into the fashion business worldwide. It is easy to point to the new Zoom wardrobes people have been buying online as a good example, but consider for a minute some far more circuitous connections:
On New Year’s Eve, a friend sent me a Facebook page showing the Staatsoper of Vienna, one of the world’s preeminent opera houses, displaying across its Neo-Renaissance façade an enormous lighted sign that sequentially spelled out “DANKE FUER NIX” (thanks for nothing). Just a couple blocks away, deep in the storage room of the Hotel Sacher, where I was supposed to be in March, but where I indeed never arrived, lies my latest suit from Henry Poole & Co. of Savile Row, London. Karen, a wise member of the tailor’s staff who, in more rational times, needed only to keep me from again mucking up my VAT refund forms, had sagaciously asked if I really wanted her to send out the suit (in Savile Row parlance, a single-breasted dining jacket, waistcoat and trousers in dark grey pinhead worsted) for me to collect in Austria. I said no worries, send it, please, and I even remembered to pack the suspenders (I mean, of course, braces) to hold it together when I arrived. Needless to say, the suitcase was never locked shut. It next turned out that the law firm I was to visit in Vienna was among the first establishments in Central Europe to have a COVID-19 outbreak—and there went my visit. And so, my suit sits comfortably in its box, along with the newly published book I had ordered on the history of Henry Poole (the oldest tailor on “the Row”), and there went as well my last chance of the decade to have original Sachertorte.
That had earlier come to mind when a neighbor’s dog, a rescue animal with emotional problems, charged at me and sank her fangs into my right kneecap, tearing open the sturdy denim of my Levi’s 511 jeans. The owner offered to pay for my pants. As I managed the bleeding, I explained that was the least of it, and lucky her that I had just changed out of a Henry Poole suit. The tech connection continues from there: while going for my tetanus shot, I asked for a COVID-19 test, and it came back positive. For reasons not clear to anyone, I spent a lucky quarantine completely asymptomatic, but that gave me plenty of time to reflect on all that and to consider future posts I hope to provide.
Tailors such as Henry Poole depend on foreign trade. (Well-dressed London men remain ubiquitous, but there simply are not enough of them to keep all the houses going.) For the tailors, even more so than for me, not being able to travel internationally was an enormous disruption—one that, without concessions from landlords and others, could prove ruinous. As reported in The New York Times, most of the properties on the Row are owned by a single landlord, The Pollen Estate, just under four-hundred-years old and therefore mercifully able to think long term. It gave the houses the rent accommodations necessary to hold them over until business improves.
We have seen similar prudent arrangements made in New York City where landlords who see the bigger picture and, if permitted by their lenders—which sometimes have a say in the matter and which also have to think in broader terms if their own customers are to remain viable—have been similarly forgiving. Accommodations can take several forms, including forgiving late payments, stretching out due dates for payments, abatement of rent for a period of time, permanent reductions of rent, and allowing tenants to sublet or to surrender all or a portion of rented space (sometimes in combination with the foregoing or in exchange for lengthening a lease term).
Despite rumors to the contrary, the practice of law can sometimes be a satisfying experience, and it has been a particular joy at the firm to help our fashion clients and so many others navigate through the perfect storm brought on by the pandemic.
And so, our suggestion to the fashion community at the start of a new, and let’s please hope, better year: retrieve that lease you signed and have a good look. Work with counsel and make sure that you understand what it says about your options when things might go wrong. And while you are at it, have counsel do some digging on your landlord to find out how it responded to tenant problems during the pandemic. As always with commercial law: what you understand now, when things are relatively quiet, can only benefit you later—when, after all, who can tell?
 Norges Bank Investment Management (the sovereign wealth fund of Norway), holds a majority interest in The Pollen Estate.