The Other Shoe Drops

Photo courtesy of Reinhart Julian (Unsplash Photos)

The fashion industry has debated the effect of the Supreme Court’s 2017 decision in Star Athletica, LLC v. Varsity Brands, Inc., interpreting the Copyright Act’s rules for registration of two and three dimensional designs incorporated into useful objects, on the availability of copyright protection for fashion designs and accessories. There now appears to be an emerging consensus of finding copyright protection in circumstances where it might not have been previously expected. This is hardly surprising. What is surprising is that the Court’s decision may be impacting a key question that the Court side-stepped.

While Star Athletica resolved that an otherwise copyrightable design that is a part of a useful object could be the subject of copyright so long as it could be conceived independently of the object in which it was incorporated, the Court pointedly refused to decide whether the cheerleading uniform surface patterns were copyrightable under the rules applicable to all two and three dimensional designs. Chief among those rules is the requirement of “originality”.

The breadth of the potential impact of Star Athletica is reflected in the recent decision of the Copyright Office to issue copyright registrations to adidas for the Kanye West Yeezy Boost 350 and Yeezy Boost 350 Version 2 sneakers. The application for registration as a two dimensional design and a three dimensional sculpture had originally been refused on the ground that it was a useful article. A request for reconsideration of the refusal was filed and registration was again refused on the ground that the “simple shapes arranged into common and expected pattern in very simple color schemes” did not meet the originality requirement.

But on a second request for reconsideration, the Copyright Office reversed itself, concluding that under the test of Star Athletica the two and three dimensional aspects of the designs could be “perceived” as separate from the sneaker, the useful object on which the designs appear.

It also decided that given the very low standard for copyrightability, the designs’ lines, stripes and swirls, although individually not copyrightable, had been combined in a sufficiently distinctive manner so that the designs, when viewed as a whole, merited registration. The copyrightable combinations, as described by the Copyright Office, consisted of “irregular black lines of various lengths and shapes on a grey fabric with a black semi-circle in the arch and an orange dotted stripe on an off-white heel loop” in the case of version 1 and “several grey lines in a wave pattern with a thick orange stripe on the outsole that fades toward the heel” with an inner orange layer that adds “intermittent orange coloring” in the case of version 2.

In light of the Copyright Office’s decision to register the Yeezy 350 sneaker patterns, at least in their contrasting color ways, fashion brands should now consider seeking copyright registration for their important designs containing any variation beyond the most basic, unvaried stripes.

Credit: Helene M. Freeman

Read other blog posts related to Star Athletica, LLC v. Varsity Brands, Inc. here.


Retailing with Foam and A Good Swing

Photograph Copyright © 2019 by Alan Behr

Two cappuccinos worthy of a caffè in Milano started my last visit, with a fashionable friend, to the Brooks Brothers store on Madison Avenue, here in New York. The chain’s mother ship had recently opened a bright and hospitable Red Fleece Café, and so my friend and I met right on the ground floor, within handshake distance of displays of shirts and ties, had a refreshment and then, coupons in hand, went shopping, women’s first, men’s second. On our way, we passed a golf simulator, where a pro patiently guided a customer on improving his swing—with a real club toward a virtual green. Retailers have always offered something besides what are now universally called “items.” From lunch counters to hairdressing and beyond, stores have been attracting generations of visitors with more than just merchandise.

What has changed, however, is both the breadth and the layered complexity of it all. Even the décor matters as it never has before. The luminescent, open-plan renovation of the Saks Fifth Avenue store is a veritable invitation to come on in and have a look. As for services: soon after our visit to Brooks Brothers, this note arrived by email: “Your trousers are ready… We can pull nice coordinating pieces for you.” Personal shopping used to be a benefit given to the best customers of a retailer, but with physical (“bricks-and-mortar”) retailing challenged so completely now by online competition, all shopping has become personal, and stores must engage and entertain customers as they never have done before.

When a business expands, however tangentially and however much in pursuit of the raison d’ê·tre for a store—selling goods—the store should be aware of the likely importance of protecting its brand for the other activities. That means reexamining the retailer’s portfolio of registered trademarks. There should already be a registration for retail store services and there is likely one for online sales, but if a café or coffee bar has just been added, the next application should be for restaurant services (if not already there as a legacy from the days when even modest-sized retailers had soda fountains). But that virtual driving range? Entertainment services. I was recently invited to a delightful event at Saks, hosted by Switzerland Tourism. Two of my favorite things converged within a roped-off area of the sales floor: great retailing and Swiss chocolate. From a trademark point of view, however, that would be providing catering services and event location services. And so on.

Insurance policies need to be examined to be sure that the new range of activities is covered. The cappuccino is foaming, the Champagne is popping and the golf clubs are swinging—check with your carrier to be sure your coverage is current and sufficiently comprehensive.

Finally, be sure your employment policies are up to date. A dress code that applies to salesmen in men’s suits doesn’t necessarily apply to a golf pro, after all, to say nothing of a barista.

Credit: Alan Behr

See posts:Brooks Brothers at 200


Brooks Brothers at 200 – Part 2: Method

In my last post, I offered some of the history of the Brooks Brothers brand provided to me by Arthur Wayne, Vice President, Global Public Relations, during a recent visit with him at the company’s headquarters in New York. Having been to Brooks Brothers stores from Milan to London and beyond, I asked if the styles, brand names and trademarks appurtenant to them were used consistently throughout the world.

“When Claudio Del Vecchio bought the company, in 2001,” explained Mr. Wayne about its Italian owner, “he already ‘got’ the brand. The first thing he did was undertake a comprehensive product review. Under its prior owners, the company wasn’t really looking in its own garden—for quality of construction, tailoring—the core elements of the brand.” Mr. Wayne noted that, in the mid-to late 90s, there was much talk that casual Friday would be the death of tailored clothing, and the result at Brooks Brothers was that too many items were inexpensively made—something that is possible to accomplish credibly with fast fashion but is not possible to do stylishly with most tailored clothing.

“Claudio approached the brand as a customer,” continued Mr. Wayne. “His thinking has always been, ‘If I feel this way about what I am seeing, others must, too.’ He brought back quality tailoring and made sure the stores have a consistent Brooks Brothers look. The review was a long process and not everything was changed, but the initiative made us ready for the next challenge: brands are now in their customers’ hands.”

That was elegantly put and it shows the current problem faced by all brands and their lawyers: a brand in its legal form is its portfolio of trademarks, along with other intellectual property rights. And a trademark is above all an identifier of source of origin. If you see the trademark COCA-COLA on a soda bottle, that means it comes from Coke, not Pepsi—and so on. If someone else uses your mark, you take legal action to prevent that or risk potentially losing control of the mark and its registrations.

But how do you accomplish that in the age of social media, when consumers get to rate a brand’s offerings down to individual products—and when the brand feels obligated to post negative consumer reviews of those products on the very website where it is trying to sell them—and when it must deal as well with influencers, who can influence whosoever they please, on their own terms? Those forces can alter the perception of where a brand stands, rather as the gravity of the sun bends the approaching light of a distant star, changing the perception of the position of that star. Brooks Brothers partners with influencers, and it features two of them—one American and the other Polish—in its anniversary edition of its house lifestyle magazine. It is all about what Mr. Wayne calls, “the importance of creating a dialogue with your customers. This is what matters to them.”

What is a fashion lawyer to do with all these new forces and new demands? In the third and final post in this series, we will consider some contemporary lessons for international branding.

Credit:  Alan Behr