This Way or That
Posted: July 27, 2016 Filed under: Accessories, Intellectual Property, Menswear | Tags: Brooks Brothers, copyright infringement, copyright protection, fashion design, neckties, Repp tie, ties, trademark protection, trademarks Comments Off on This Way or That
A young lawyer walked by while working late, waving the striped tie he had just removed, announcing that, after 9:00 p.m., business casual was mandatory. European-born, my colleague’s tie had blue, white and green stripes angled downward from left to right (as seen by the wearer), in the classic British (and predominantly European) tradition. In Britain, the convention developed that, just as each clan in Scotland has its own tartan, each regiment, club and school would likely have its own, distinctive, diagonally striped tie.
On not quite as classic but by now traditional American ties, however, diagonal stripes run in the opposite direction, from right to left. There are various stories about why that is so. As with anything you can find on the Internet, you can discover much that is of interest, some of which might even prove to be true. You may learn, for instance, that the reason the ties slant in different directions is that European infantrymen shouldered their weapons differently from Americans and that their rifles ejected spent casings in an opposite direction. Those explanations are not only fogged by inaccuracy but bear little evidence of good fashion sense.
More credible is the claim by Brooks Brothers that it invented the American right to left downward slide on what it calls a Repp tie (freely admitting that an early spelling error caused it to get wrong the name of the French Rep ribbed silk fabric it used to make the ties). The idea was to bring American “roguish charm” to British tradition–an act that, as is often the case when Americans reference British traditions–acts as both homage and gentle satire. The British officers and gentlemen men who earned the right to wear regimental colors around their necks sometimes being quite sensitive about having earned the exclusive right to that privilege, Brooks Brothers reversed the direction of the stripe in an effort to soothe warrior sensitivities.
American schools have their Repp variations. My American university’s thick-striped tie, in navy blue and burgundy, is guaranteed to dull down almost any suit that goes with it.
The striped tie having now been commonplace for over a century, uncountable combinations of alternating stripe widths and colors have been used. A designer looking to protect his or her intellectual property rights in the patterns of ties may theoretically create a novel combination of colors and widths running in either direction–just enough to warrant a claim for copyright protection. Given the multiplicity of existing designs, that protection, if granted, would likely be a “thin copyright,” but in theory it could happen. The larger question is: why bother? Individual styles rarely last more than one season, after all. Would you really sue to protect the design, hoping the defendant does not dig into neckwear history to find something similar warn by officers of a British regiment since before it fought in the Battle of the Somme?
Each of those regimental, school and club ties identifies a source of origin–raising the possibility that a particular pattern of stripes can be protected as a trademark. As a practical matter, unless a stripe acquires such distinctiveness that the market accepts that it designates a specific source and so is not merely decorative, it is probably not protectable as a trademark. It is possible, again in theory, that a particular pattern of stripes could gain “secondary meaning.” That is, they now serve, through usage, advertising and the passage of time, as branding and devices not merely as pleasing patterns. If that should happen, is it indeed enough of a difference to prevent a claim of infringement to run the same pattern in the opposite direction, just as Brooks Brothers and other American makers did in order to distinguish their patterns from those British ties from which they freely borrowed both conventions and patterns? Much could depend on survey evidence of consumer habits and consumer awareness of the differences. That is another way of saying: if you did not know about all that before reading this post, the difference in the direction of the stripes probably is of no consequence to you; your response to the survey would therefore likely aid the plaintiff in a claim that simply changing the direction of the stripes did not make the defendant’s pattern less likely to cause infringing confusion.
That would support the generally held view that, when it comes to neckties, diagonal stripes, in whatever direction they run, are, in nearly all situations, open territory for designers. Within the quite narrow sartorial conventions of male business attire, however, there is not really all that much new that can likely be done with diagonal stripes in neckties. So, let us all celebrate an ongoing tradition and try not to worry too much about all this. A good striped tie will not necessarily be the one that a lawyer attempts to protect as intellectual property. It will, however, always be one that will work for him just about anywhere.
………………………………………………………..
We would like to thank Stephen Sidkin of Fox Williams LLP, London, UK, for providing the inspiration and background for this post.
Credit: Alan Behr
I’m A Good Neighbor–Most Places
Posted: April 7, 2015 Filed under: Business Law, Intellectual Property | Tags: contracts, copyright protection, infringement, license agreements, licensees, licensors, trademark protection, trademarks, warranties, warranty Comments Off on I’m A Good Neighbor–Most PlacesWhen licensing a brand, a fashion licensee naturally wants to know not only that the licensor owns the trademarks that identify the brand to the public and the trade but that the licensee will be able to use the marks without having to contend with adverse claims from third parties. The last thing that a licensee wants is to have many thousands of units manufactured and, just as they arrive in ports and warehouses, get hit with an action for trademark infringement, alone or together with trade dress, copyright or design patent infringement. Indeed, an infringement action could contain any of those claims in combination, resulting in a rather complicated federal lawsuit. And if that is not quickly fixed, there goes the spring/summer season, and all those units, made at the licensee’s cost, might just as well never have been produced. As sub-optimal results go, that is about as low as they come for a new fashion collection.
To help protect against that from happening, counsel for the licensee will typically ask for a warranty of non-infringement. In the practical world of transactional law, there are no prizes for originality in draftsmanship, so all non-infringement clauses are like bees in a hive—they all look pretty much alike:
Fashion Company represents and warrants that the Licensed Manufacturer’s use of the Licensed Marks referenced in Exhibit A as contemplated under this agreement shall not infringe upon or violate the intellectual property rights or other rights of any third party in the Territory.
Of course, if things were that simple, licensees would not need lawyers. (Spoiler alert to licensors and licensees reading this series: Do not rely on what you read here as a substitute for legal representation. Please do not attempt to conclude a complex fashion license without benefit of counsel.)
Indeed, contractual law is about nothing if not the hidden complexity found in words and phrases. As signified by its capitalization, the word Territory should be a defined term. If the license is for a Territory defined as the “United States, its territories and possessions, and Canada,” the non-infringement warranty would cover claims made within those specific jurisdictions. Consulting the United States Patent and Trademark Office database to be sure that the licensor’s trademarks are registered and that there are no pending challenges to those registrations is good self-help for the licensee and a prudent caution for the licensor. But if the licensed Territory is defined more broadly—covering all of the Americas, Europe or even the entire world—the licensor may seek to limit the warranty of non-infringement to those portions of the Territory in which it is reasonably confident that it has protected its licensed rights.
And that is how licensees can find themselves with a predicament that is endemic but the fault of no one: there may be parts of the Territory where the licensor cannot be sure claims of infringement will not be made—as anyone who has seen, to his shock, that his trademark has been registered in another country by someone else for use on the same goods.
The solution? There are various methods that can be used here, but key is for the parties to identify the likely most important countries into which the licensed goods will be delivered (and where they will be manufactured—also an important consideration); they should work together to refine the warranty into something that is reasonable and fair under the circumstances. If that is done, the license should also provide a mechanism for the parties to cooperate in the event that the licensee will seek to introduce its products into areas in the Territory for which the warranty would not apply on execution.
The bottom line: It is a big world. Rights and remedies regarding licensed intellectual property can be very different from one nation to another. Care must always be taken to match the business plan for a license with the realities not only of the market but of the law. In the end, it is in the best interest of both parties to see that works out successfully. That proves again why all licenses are, if nothing else, documents of cooperation for the common good of the parties involved.
Credit: Alan Behr
See previously published related posts:
- “I Own It — I Mean, Really, I Do!“
- “I Hereby Promise That You Are My one and Only-ish“
- “I Promise, Therefore I Am“
- “No Guarantees In Life But Plenty in Contracts“
Can I Use the Photographs? (Part 2)
Posted: March 10, 2015 Filed under: Business Law, Intellectual Property | Tags: copyright infringement, copyright protection, photographers, photography Comments Off on Can I Use the Photographs? (Part 2)You’ve hired the photographer and have a written agreement that makes you the owner of all photographs taken. But if you think nothing could go wrong now, you may not have thought of everything. Attention must be paid to what is in the photographs themselves.
The scope of copyright extends to many two and three dimensional designs. So, if you manufacture useful products made from a fabric that has been lawfully made by, or with the permission of, the design’s creator, then you are entitled to publish photographs of those products. The key words here are “lawfully made” and “with permission”. Claims of copyright infringement in fabric designs are a growing problem. But this is not the only danger.
Outdoor urban settings, featuring graffiti, murals, or sculptures, also can produce claims. Ask Just Cavalli or the US Postal Service. Just Cavalli is confronting a suit in California by graffiti artists, who claim their work was copied on Just Cavalli’s apparel designs. And the United States Postal Service has to pay millions to the sculptor of the Korean War Memorial for using a photograph of the sculpture on a stamp. Both the graffiti and the sculpture were protected by copyright. Therefore, any use of them without permission in a photograph, including as a cool setting for your fashion, would be infringing.
Props and “set decoration” have also generated litigation. Rug and quilt patterns, crib mobiles, stuffed animals and dolls can enjoy copyright protection and their designers have brought suits when they have been used without permission in films and advertisements. So take care that the adorable baby modeling your clothes is not holding a protected toy or other prop that you didn’t create. Even items such as lamps can be protected by copyright, if they include sculptural forms which could exist independently.
Finally, while you want your photographer to be the next Richard Avedon, it is not a good idea to copy the composition of a famous photograph. That too can be copyright infringement.
Credit: Helene M. Freeman
See previous post…”Can I Use the Photographs? (Part 1)“
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
For a recent article by New York Times reporters Sydney Ember and Rachel Abrams on brands and their use, sometimes without permission, of consumers’ own photographs posted on social media showcasing branded items, click here.
Can I Use the Photographs? (Part 1)
Posted: February 3, 2015 Filed under: Intellectual Property | Tags: copyright, copyright infringement, copyright protection, photographers, photography, Wal-Mart Comments Off on Can I Use the Photographs? (Part 1)You hired the photographer to take pictures of your products, store, showroom or event. You would think that if you paid for the photographs and told the photographer what to shoot, you’d be entitled to use the images however you wanted. But you might be wrong.
Photographs are protected by copyright. Commissioning the creation of photographs and paying the photographer to take them does not give you ownership of the copyright in the photos. Under the copyright law in effect since 1978, the photographer owns the copyright in the photos. In the absence of a written agreement to the contrary, the party hiring the photographer acquires only the prints purchased and a non-exclusive right to use them for a particular purpose.
Photographers are often hired to take photographs, based on a cost estimate, without legal formality. The only writing that may change hands is the photographer’s invoice, which is duly paid, without examination of anything except the price. Pre-printed terms and conditions on the reverse side of the invoice commonly indicate the photographer retains any rights that are not expressly granted and may limit use of the photographs. If you acquire only the right to use the photographs in a catalogue, to cite just one example, you may not be able to use them in advertisements, or on your website, or on packaging, without further permission from the photographer.
And that’s not all. Not only can you not use the photos without the photographer’s consent, but also photos taken at your expense can be licensed by the photographer for use by others. Most professional photographers pursue additional income by licensing their photographic images for use in newspapers, magazines and books. Only a written assignment of copyright or exclusive rights can prevent the photographer from allowing others to use the photographs.
The consequences of not using a written contract to secure ownership of commissioned photographs can be especially severe when the relationship ends. Wal-Mart Stores and the Walton family learned this lesson when the local photographers’ studio that had photographed Wal-Mart and Walton events for over forty years closed. Their photo archives were put up for auction by the photographers’ heirs, along with the copyrights in the images. The Walton family and Wal-Mart Stores found themselves in litigation in an effort to obtain the photo archives for their museum, litigation that is still on-going.
Credit: Helene M. Freeman
See related posts:
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
For a recent article by New York Times reporters Sydney Ember and Rachel Abrams on brands and their use, sometimes without permission, of consumers’ own photographs posted on social media showcasing branded items, click here.
Compendium of Copyright Office Practices – 3rd Edition
Posted: January 21, 2015 Filed under: Federal & State Laws, General / Musings, Intellectual Property | Tags: Compendium of Copyright Office Practices, copyright protection, U.S. Copyright Office Comments Off on Compendium of Copyright Office Practices – 3rd EditionThe U.S. Copyright Office delivered a Christmas present to the creative industries: The third edition of the Compendium of Copyright Office Practices. Unlike its predecessors, the third edition is not merely a set of instructions to the Copyright Office staff for administering the registration and recordation functions of the Register of Copyrights. The new version is intended to provide guidance to applicants for copyright, as well, setting forth what is and is not copyrightable and identifying who is entitled to claim copyright ownership.
Fabric and jewelry designers will find its lists of non-copyrightable subject matter and its examples of the distinction between copyrightable and non-copyrightable designs instructive. While the Compendium reflects significant judicial decisions, collected in a table of authorities, it also ventures into areas that have been considered unsettled.
This is particularly apparent in the section devoted to the copyright in websites. Insofar as the Register of Copyright is concerned, the format, layout and “look and feel” of a website are not copyrightable; but the content—text, photographs, audio and audio-visual works—are copyrightable. The website creator may have a copyright in the collection or compilation of these materials, consisting of their selection and arrangement, even if it has not created the contents. If the website’s terms of service require a user to convey “exclusive rights” in user generated content, uploading by the user of his or her content to the site will entitle the site to claim ownership of the copyright in the content. But the Copyright Office does not make registration easy. It requires the users who authored the content to be identified by name in the application for registration. If there are too many to name all, the application should list several authors and indicate the number of additional authors and the staff of the Copyright Office may ask for a more complete list to verify that the identification of authors of user-generated content has been maintained by the site owner. And any registration for the content on a website will pertain only to the particular version submitted with the application, so new matter added after registration will not be covered by the prior registration. Although it may be made available for display throughout the world, a website is considered an “unpublished work”, unless downloading or sharing of content is authorized.
The Compendium does not have the force of law and the Copyright Office has frankly stated that it has addressed unsettled areas in the hope that its reasoning will be considered persuasive should the issues be presented in future cases. But the Compendium does control how the Copyright Office will address applications for registration and a review of its provisions will assist applicants for copyright in avoiding common problems that can impede registration. It is readily available on the Copyright Office website, www.copyright.gov, and each chapter can be downloaded or accessed separately as a pdf.
Credit: Helene M. Freeman
Do More But Restrain Yourself Too
Posted: July 10, 2014 Filed under: Accessories, Childrenswear, Footwear, Intellectual Property, Menswear, Textiles | Tags: brands, copyright protection, copyright registration, INTA, International Trademark Association, trade dress, trademark protection, trademark registration Comments Off on Do More But Restrain Yourself TooLuxury, being the thematic opposite of necessity, must be at least as much about what you desire as what you need. Building a brand to fill that role requires both diligence and self-restraint.
A luxury brand and its products should be readily identifiable as superior to both existing and aspirational customers. That is not to say that that non-luxury brands and their products do not require legal protection; we are simply recognizing that the luxury premium adds a new class to the market—those aspirational customers—whose perceptions and desires are vital to the future of brands in the luxury sector. For that reason, and many others, it is particularly important for luxury brands to work with counsel to identify and protect all the important proprietary elements that are capable of being protected. That includes protection, where appropriate, by trademark (and trade dress) registration, design patent registration, and—something rather unique to the United States—copyright registration.
With few exceptions, it is generally better to err on the side of more rather than less when it comes to registrations. Styles and style names that will only be in the catalog for a season or two are usually not worth the trouble, but anything of medium to long-term consequence to the bottom line and brand value almost certainly is. In these posts, we will go into more detail about various forms of legal protection, but a key guideline is this: once each season, have a look at what engages the public with your brand and your products and how that engagement might lead you to adjust your legal protection program. There is probably no more important work that marketers and counsel can undertake together in order to make your protection program both thorough and cost-effective.
This year, the International Trademark Association held its annual meeting in Hong Kong, giving the world’s intellectual property lawyers the opportunity to congregate in an important commercial city where branding is all. Once a playground for bargain hunters for, consumer electronics and rapidly cut and stitched men’s suits, Hong Kong has become a destination for consumers of luxury goods. Indeed, I cannot remember seeing another city in which almost any international luxury brand I can think of had more than one boutique. What was particularly interesting this time is that, for various reasons, visitors from the mainland were uncommonly absent, with the result that, in every store in which I had a look, the sales floors were empty of patrons. That may be a temporary problem, but it raises a bigger question: as surely as luxury is about something greater than necessity, it is also about relative inaccessibility; it is an experience over and above the ordinary that is made all the more desirable by its very lack of ubiquity. When luxury is everywhere, can it start to look commonplace? The risk is that new entrants will have a chance to succeed (in no small part due to their newness and limited production) in poaching customers sated by what has become too familiar. That may be healthy for the marketplace but not for you if you have a valuable brand.
There are no perfect formulas, of course, but here is a general reflection that might well apply when protecting a luxury brand and its products: under law, more is better; when preserving the reputation of a luxury brand and its products in a business sense, less may sometimes indeed be more.
Credit: Alan Behr
Photo Credit: Iskciedlam (Creative Commons)





