An interview with Simon Crompton, creator of the blog Permanent Style
In my last post, I reported on my conversation in London with Simon Crompton, who runs the website Permanent Style (www.permanentstyle.com), which is devoted to the world of bespoke (custom-made) menswear. We discussed elements of style for men, but when the conversation moved to the topic of how a website proprietor protects his own intellectual property, Mr. Crompton had some decidedly pragmatic ideas.
Permanent Style is authored almost entirely by Mr. Crompton, who, last year, was finally able to devote his full professional time to it. The site features the latest developments in bespoke, from tailoring to shirtmaking to shoemaking, around the world. It is supported by advertising, and it also promotes its own limited line of products, from surprisingly stylish watch caps (ski caps) to Oxford shirting for readers to provide their bespoke shirtmakers. Prominent on the site are reviews of makers of bespoke clothing and shoes, with Mr. Crompton serving as live mannequin and photographer’s model throughout, reporting on each step of the process.
I asked Mr. Crompton what kind of legal protections he employs for his work. Because his writing originates in Britain and not the USA, he is spared the unique (and to those of us who have done it for clients or ourselves, often frustrating) requirement of registering his copyrights. His pragmatic view: “It isn’t as if it is a novel or song lyrics. Anything on the site obviously comes from me, and no one is going to run out and say I’m Simon, I wrote this.”
As for protecting his brand, he holds to an equally pragmatic approach: be first out, keep a solid reputation, and you win. “The site has been up just over ten years, and it is well-known. That’s a very good position in the world relative to others who might be trying to establish themselves.”
Mr. Crompton also noted a key advantage to prose authored in Internet time: “What I write is so fast-changing, and there is such a high volume of it that it’s not that easy to protect, but at the same time, there is not much virtue in somebody copying. I already have the biggest traffic. If someone were to start copying my articles, that would never generate much traffic for him. He would still have to attract readers and then subscribers by offering something different, and unless that should happen, I would always do better on search engine optimization.”
That goes to the heart of a key debate in copyright circles—what utility is legal protection in a world in which almost everyone can read just about anything, and anyone can publish just about whatever he or she chooses to write, on platforms from Twitter on up? Registering the copyright, to say nothing of suing to stop infringement, can look old-fashioned in the context of a business (and social-media) model that values “reach,” often by free access, and loyalty for the generation of revenue more than it does traditional legal protections.
In short, Mr. Compton is conducting a very contemporary business to promote many very traditional crafts. If by so doing he helps craftsmanship flourish, we can only commend him-even if the model depends more on lawyers reading about dressing well (and, we hope, attempting to do so) than on offering legal advice. When it comes to what we do, however, lawyers can only continue to recommend to their clients that they reach out and consult with their counsel whenever making important decisions about their intellectual property. If you do not make these decisions yourself, the marketplace will very likely make them for you.
Credit: Alan Behr
On January 8, 2019, the U.S. Supreme Court heard oral arguments in, Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC. The court is expected to resolve a decades-old split of opinion among the federal Circuit Courts on whether the Copyright Act permits a lawsuit to be filed upon submission of a copyright application or not until the copyright registration certificate has been issued or refused.
The language in the statute is simple. 17 U.S.C. § 411 reads: “no civil action shall be instituted until … registration of the copyright claim has been made in accordance with this title.” The statute also provides that, “[i]n any case … where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.”
In this case, Fourth Estate sued Wall-Street.com when the website continued to publish Fourth Estate’s work after the expiration of the limited license that had been granted to the website. Fourth Estate filed copyright applications for the misappropriated online publications and then asserted a claim for copyright infringement; however, its claim was dismissed by the Eleventh Circuit because the Copyright Office had not yet issued registration certificates. As have the Courts of Appeal for the Third and Seventh Circuits, the Eleventh Circuit follows the Tenth Circuit’s “registration approach,” which requires the Copyright Office to have acted on an application for registration by approving or denying it prior to initiating a lawsuit. The Fifth and the Ninth Circuits, however, follow the “application approach,” which allows for the commencement of an action upon filing a copyright application.
The split among those courts has large implications for photographers, writers, musicians, and fashion designers. For instance, the Copyright Office application processing time is notoriously slow: it can range from six months to more than a year to issue a registration. Creators are forced to endure an unpredictable wait time – or avoid that delay by paying an additional $800 special handling fee for expedited processing. In a seasonal industry such as fashion, where trends evolve so quickly and styles head to market within just a few months from creation, a small company cannot afford to sit back and wait for its copyright applications to be processed if infringement appears to be a credible threat, but it may also find that filing multiple applications with very significant expedited processing fees imposes an unacceptably great financial burden.
The fashion industry is a multi-billion dollar international industry. It has been argued that requiring the issuance of a registration certificate (or a refusal to register from the Copyright Office) for American authors and domestic works before litigation can commence conflicts with the de-emphasis on copyright formalities established by the Berne Convention, which governs copyrights across the globe. For now, this is all in the hands of the Supreme Court. We will provide a follow-up post when its decision is rendered.
Credit: Candace R. Arrington
An interview with Simon Crompton, creator of the blog Permanent Style
Readers of our blog have probably noticed my interest in custom-made clothing. There is a professional reason: because we represent so many different brands of ready-made clothing, wearing something more esoteric allows me not to show favorites.
For over ten years, Simon Crompton has been reporting online, in his website Permanent Style (www.permanentstyle.com), about the refined world of custom-made menswear—which, in British English, is known as bespoke (as in, asked for in advance). Mr. Crompton may be familiar to intellectual-property lawyers from his years of service as the lead writer for the International Trademark Association’s annual meeting newsletter—among other publications. I recently sat down with him at a café in London, and we talked about lawyers, protection of his own intellectual property and the finer things in menswear.
“I like the fact that lawyers seem to man the last bastion of dressing a little bit formally—because that’s generally what you want from your lawyer,” said Mr. Crompton, echoing the advice of the American tailor and author Alan Flusser. And he agreed on the reason: it is all about building a sense of trust. He hastened to add, however, that it is not about conformity: “All over the UK, and I’m sure it happens in the US as well, you see young lawyers outside of a pub on a Friday night, and eighty percent of them will be wearing a navy suit, white shirt and black lace-up shoes. It looks completely predictable. There is no expression of individuality.”
Bespoke, he explained, is about looking smart but in your own way: all fine tailors have a “house style,” but within what is typically quite a broad range, the customer in effect participates in designing what he will wear. Indeed, I had just come to Mr. Crompton from visiting my own London tailor, Henry Poole & Co., where I was able to plan a future suit as purposefully as a chef planning a meal: a gray pin-dot cloth in wool and cashmere. A peak or a notch collar? This time, the notch. Lining: abjure the bold prints for something more reserved, a contrasting gray pattern, but still quite unique. And a collared vest (called here a waistcoat)—because, as a transplanted New Orleanian, I still am not quite used to New York winters and because, to be frank, it adds a touch of style. That is what bespoke is all about.
Our next topic was dear to my editorial heart: I have delved several times on these pages into the mysteries of the necktie—that one item of a man’s workday dress that has absolutely no discernible function except to make him look better. It also relates to a very important fact about the male physique: a well-cut suit jacket forces the eye upward, to the neck and then the face. Having it pass along a v-shaped crop of chest hair does not support an impression of a man of consequence. “A suit without a tie can work sometimes,” Mr. Crompton offered, “if it is a very casual suit, but most times, it just looks as if something is missing.”
Indeed, although Mr. Crompton was wearing a dark green Neapolitan suit (by the tailor Ettore de Cesare) made of corduroy—that ribbed cotton cloth that is the winter-weight mirror to the informality of linen for summer—he was quite correct that it would have worked far less successfully without his blue woolen knit tie by Trunk Clothiers of London.
But what about those—relatively speaking—more casual days even lawyers are sometimes afforded? “I think it is important for a lawyer to try to master the art of wearing sports jacket and trousers,” said Mr. Crompton. His use of the word master was not an accident. Most professional men wear that outfit often; doing it in a stylish way, however, is a challenge to many. “Start off with Navy jacket and gray trousers and start experimenting slightly—with brown trousers and a different kind of jacket with subtle patterns.” In other words, make it stylish, but make it your own—even if every bit of it was purchased off-the-rack. Remember that bespoke customers also buy most of what they wear, from jeans to raincoats, ready-made.
And that is what bespoke is really about: doing it smart, doing it stylishly and most important, doing in a way not necessarily done by others.
In my next post, I will explore how Mr. Crompton looks to protect his own intellectual property.
Credit: Alan Behr
Much has been said and written about Christian Louboutin’s iconic red sole brand. It has sparked endless debates about trademark law in various courts around the world, including in the U.S., France, Switzerland, and most recently at the EU Court of Justice.
Christian Louboutin began selling his high-heeled red-soled women’s shoes in the early nineties. The red soles gradually became a signature brand, somewhat comparable to the famous Burberry check pattern. The creator’s idea starts as a mere decorative design, just like any fashion design. But over the years, it gradually becomes a brand in itself because the public begins to perceive it as a source identifier even without any concurrent word mark on the product. Burberry registered its design as a two-dimensional trademark around the world; it recently sued Target in the U.S. for selling scarves with a similar design. As has been the practice of Burberry over the years, that is a trademark claim, not a copyright claim—which would present greater challenges to Burberry under U.S. law.
Back to Louboutin’s red soles: The United States Court of Appeals for the Second Circuit ruled in 2012 that Louboutin owns a valid trademark for his red sole shoe design. Louboutin had taken Yves Saint Laurent to court for trademark infringement. The red sole trademark was deemed inherently distinctive, Louboutin having given ample evidence that the trademark had acquired secondary meaning. Those words sound like music for the fashion brand owner and its lawyers because it means that the court rewards years of investments in sales, advertising and free publicity. (As the court duly noted, Louboutin shoes are popular items to wear when walking red carpet events in the entertainment industry.) Louboutin’s victory was unfortunately limited to the court having confirmed the validity of the trademark; the court also ruled that the same trademark registration could not be invoked against shoes – such as those sold by YSL – that are monochrome red, covering the insole, outsole, heel and upper part.
The U.S. thereby paved the way for Louboutin, which is, after all, a French brand. A long-awaited judgment in the European Union was recently rendered by the EU Court of Justice. This time, it was the Dutch discounter Van Haren that was selling red-soled women’s shoes. The court held, after a long debate, that a red sole applied on the sole of a shoe can be a valid trademark in the EU. Under pre-2018 EU law, the shape of an object that “gives substantial value” to the product itself could not be registered as a trademark. (An example would be the distinctive shape of the Perrier bottle.) The court that the color red, as applied to a shoe, was not as a “shape,” as Van Haren had asserted; after all, Louboutin had not sought to register a shoe but merely a color applied at a certain location on shoes. Following the EU court’s guidance, the District Court in the Netherlands that had referred the issue will now ban the sale of Van Haren’s shoes throughout the European Union.
A crucial takeaway from this case is the reward given for the smart way in which the trademark had been registered. In many trademark systems, the registrant is allowed to specify its two- or three-dimensional object with a brief description. Louboutin’s lawyers had wisely specified the filing as follows: “The mark consists of the color red (Pantone 18‑1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark).”
That victory may not last very long, however. EU trademark law was recently amended, with the effect that not only “shapes” but also “other characteristics” giving substantial value to the product may be barred from trademark registration. This change in the law opens a new can of worms: in particular, it remains to be seen whether pre-2018 trademarks, such as the one owned by Louboutin, can be invalidated on the basis of the new law.
Credit: Diederik Stols | Guest Post
Phillips Nizer would like to thank Diederik Stols for the contribution of this post to the Fashion Industry Law Blog. Diederik is a partner at the law firm BOEKX Advocaten in The Netherlands where he specializes in intellectual property, media and entertainment and e-business. (http://www.boekx.nl/en/)
When one speaks about trademarks, the familiar adage “use it or lose it” comes to mind. But there is another important principal that can equally endanger your trademark rights: You must police the market, monitor the trademark register and take action to stop infringements, or you may find yourself without a trademark to enforce. Two recent cases demonstrate the importance of this latter principle.
LUSH is the trademark for a global brand of “hand made” cosmetic, fragrance and bath products sold by Cosmetic Warriors Limited (“CWL”), a company founded in England in the mid-1990’s. CWL opened its first Canadian retail store in 1996 and expanded to the United States in 2002. It now operates in excess of 940 stores in 49 countries, including 250 stores in North America, 200 of which are located in the United States. In 2002, it registered the LUSH trademark for use on t-shirts in Canada, but never filed a US registration for apparel. Pinkette Clothing Co. is a California company that, since 2003, has sold women’s clothing under the LUSH mark to retailers in the US and Canada, principally Nordstrom. Pinkette secured a US registration for the LUSH trademark for apparel in 2010. CWL did not oppose the issuance of registration for the mark, although its outside counsel apparently was notified through a trademark watch service of the application’s publication for opposition. In December 2014, CWL applied to register the trademark LUSH in the United States for clothing. When its application was rejected due to Pinkette’s pre-existing registration, it filed an application to cancel Pinkette’s mark. Instead of defending in the cancellation proceeding before the Trademark Trial and Appeal Board, Pinkette commenced a court action seeking a declaration that it did not infringe CWL’s trademark or, alternatively, that CWL’s failure to oppose Pinkette’s application in 2010 and its subsequent delay in seeking to cancel Pinkette’s registration barred CWL from enforcing its trademark rights against Pinkette. CWL counterclaimed for trademark infringement and to cancel Pinkette’s LUSH trademark registration. After trial, a jury found that Pinkette had infringed CWL’s LUSH trademark and that Pinkette’s registration should be canceled, but it also found that CWL had unreasonably delayed in asserting its claims. The court held that the delay barred CWL’s action and dismissed its claims. On appeal by CWL from the dismissal of its claims, the U.S. Court of Appeals for the Ninth Circuit held that CWL should have known of Pinkette’s usage as early as 2010, when Pinkette’s application for registration was published for opposition, that CWL had not been diligent in asserting its rights, and that Pinkette had been harmed by the delay because, in the interim, it had expended time and resources to develop its LUSH business. As a matter of equity, therefore, CWL would not be permitted to assert its claim either for trademark infringement or for cancellation of the Pinkette mark.
The second case demonstrates what can happen when many uses of a trademark for competitive goods are tolerated by the trademark owner for an extended period. The essential function of a trademark is to identify the source of the goods to which it is applied. Trade dress in the form of the design of a product or its packaging can also serve to identify a source and can serve as a trademark when it does. But if the design does not have a source-identifying function, referred to as “secondary meaning,” the design is not registrable for trade dress protection. When other third parties are permitted to use the design in the market for similar goods, the design cannot achieve the required secondary meaning.
Converse learned that lesson the hard way. In 2013, Converse registered a trademark for the “midsole” design of its Chuck Taylor All Star sneakers, consisting of the toe cap, textured toe bumper and two thin stripes along the side of the sole of the shoe. It claimed common-law trademark rights in the design based upon decades of its use prior to securing its registration. It subsequently filed a complaint with the International Trade Commission against Walmart, Skechers, Highline and New Balance seeking to bar the importation of sneakers it claimed infringed its registered midsole trademark and its common law trademark rights in the design. The International Trade Commission found that there was a likelihood of confusion between the Converse sneakers and the competitors’ sneakers. But the Commission also found that there had been a proliferation of competitors using the same design, on the same goods, sold to the same class of consumers over many years. As a result, the Commission concluded that the design could not be said to identify Converse as the source of the goods and, therefore, its trademark registration was invalid.
The lesson of these cases is clear. Adopting and registering a trademark is only the beginning of your work. To preserve and protect the trademark, you must police the market and assert your rights on a timely basis when you discover infringement by others. If you fail to do so, you may find that your investment in the trademark has been lost.
Credit: Helene M. Freeman