I was flattered to recently be interviewed by Vincent LoTempio, an IP partner practicing at Kloss, Stender & LoTempio in New York State about my thoughts on practicing fashion law in Canada. He has a very comprehensive blog at http://www.lotempiolaw.com/, and twitter account @LoTempio, which follows various aspects of intellectual property law. I have reproduced the interview below.
I am a Buffalo attorney who focuses on intellectual property law and I rarely get an opportunity to discuss fashion branding with other intellectual property attorneys. However recently I needed to find a Canadian attorney to help me file a trademark assignment for one of my clients in Canada, and I enlisted the help of Ashlee Froese a branding lawyer and Trade-mark Agent at Keyser Mason Ball LLP, a law firm in the Toronto area.
As it turns out Ashlee started a new website called canadafashionlaw.com and through the miracle of modern technology we connected on twitter and LinkedIn. When I noticed Ashlee’s moniker on twitter was @BrandFashionLaw I asked her if I could interview her for a blog post and she most graciously answered all of my questions. Thank you so much Ashlee!
And here is that interview:
Can you tell me a little about your background and your law firm in Canada?
I am a lawyer called to the Ontario bar in Canada and a Canadian trade-mark agent. I am an associate at Keyser Mason Ball LLP, a medium sized full-service law firm based in Mississauga, Ontario.
I am an active committee member with the International Trademarks Association and the Intellectual Property Institute of Canada. I am also an executive member of the Toronto Intellectual Property Group. I am a regular guest lecturer at various universities and colleges in Toronto, Canada on intellectual property and branding law.
Why did you become an intellectual property attorney and in particular a fashion trademark attorney?
From the first time I watched L.A. Law, I knew I wanted to be a lawyer. However, I fell into intellectual property law. Ever eager to ensure that I would get into law school, I worked at a law firm throughout the 4 years of my undergraduate degree. It happened to specialize in anti-counterfeiting enforcement, a niche area of trade-marks law.
During law school I studied other areas of law, however, intellectual property (especially trade-marks law) always held an interest. After an internship with the United Nations, I was fortunate to join a pre-eminent Toronto-based intellectual property law boutique. This allowed me the opportunity to hone in on trade-marks law from all aspects (prosecution, litigation, licensing etc.)
Although trade-marks are important for every business, I believe that trade-mark protection is especially critical in the consumer products industry. Couple the fact that the fashion industry is a heavy weight in the consumer products industry with my passion for fashion, becoming a fashion trade-mark lawyer was a natural step for me. If you are fortunate to be find passion in your job, it ceases being “work”.
How does a fashion law trademark attorney differentiate themselves from any other trademark attorney?
The fundamentals of trade-mark law are applicable to every industry. The law is the law, irrespective of the industry. However, there are certain nuances within each industry that may change your application of the law to the business or alter ever present “business considerations” that govern clients’ decision-making. As a lawyer, understanding those nuances can be of great assistance to your client. I hope to bring these insights to the fashion industry. Such specialization is not uncommon in the intellectual property field. For example, you oftentimes come across patent lawyers that focus on the pharmaceutical industry. I believe this can be applied to the fashion industry.
How important is it for a company to develop brand recognition through trademark?
Very! I cannot overstate this enough. A trade-mark is more than just a slogan or a pretty design. It represents the quality, reputation and character of the company. Ultimately, the trade-mark symbolizes an unspoken dialogue between the consumer and the company, otherwise known as “goodwill”. The goodwill generated by the trade-mark is what keeps the consumer coming back for more. Moreover, an important function of a trade-mark is to ensure that your company’s brand is distinctive, thereby setting it apart from its competitors. Simply put, without trade-mark protection your company is merely another company selling a widget. It is an uphill climb to generate market presence without brand recognition.
Why is it necessary for companies in the fashion industry to protect their product through trademark registration?
This goes back to my previous statement that trade-mark protection is especially critical in the consumer products industry. But trade-mark protection goes beyond logos and slogans, which can serve the fashion industry well. For example, Canada’s legal trade-mark system allows a company to protect colors, three-dimensional trade-marks, distinguishing guises, certification marks etc. If you are creative in your company’s trade-mark protection strategy, you can go above and beyond merely protecting the label.
In the fashion industry, licensing is the cash cow. At the most basic level, trade-mark protection is fundamental to ensuring that the brand remains strong. Before you can let others play in your fashion house, you have to make sure that your fashion house is secure. Dependent upon the jurisdiction, governing trade-marks legislation will mandate that further steps need be taken to ensure that, in a licensing arrangement, the trade-mark still remains distinctive of one source.
You wrote an interesting article on your website canadafashionlaw.com recently regarding the Christian Louboutin red soled shoes which gave rise to a trademark dispute. How is it that a color of shoe can be the basis of a trademark dispute? Is this also known as trade dress?
The Christian Louboutin v. Yves Saint Laurent (PDF) case is really interesting. As previously mentioned, in certain jurisdictions color can constitute a trade-mark. Take Ikea for example: there is no doubt that blue and yellow comprise part of the distinguishing and distinctive elements of its brand. The same can be said of red soles for Christian Louboutin. Any fashionista worth her Prada will easily recognize a Christian Louboutin shoe. The red sole has inextricably become linked with Christian Louboutin. Therefore, it functions as a trade-mark.
In a recent fashion show, Yves Saint Laurent displayed a variety of shoes (i.e. purple shoes with purple soles, green shoes with green soles and, finally, red shoes with red soles). It was this last color combination that got Christian Louboutin’s attention.
Christian Louboutin was able to secure a US trademark registration for the red sole in association with, inter alia, footwear. (Trade-mark applications are still pending in Canada and Europe). A US trade-mark registration grants exclusivity throughout the US for the trade-mark in relation to those wares/services. It is Christian Louboutin’s belief that Yves Saint Laurent is infringing on that exclusivity. Yves Saint Laurent, on the other hand, will likely contest the granting of the trade-mark, on the basis that a red sole is common within the fashion industry and, therefore, cannot be exclusively proprietary to Christian Louboutin.
Can you help companies identify and protect their trademark like the red bottom of a shoe in the fashion industry or any other industry for that matter?
Absolutely. I encourage clients to look beyond their traditional view of trade-mark protection to take advantage of brand protection via distinguishing guises and color, for example.
I believe that trade-mark protection functions as both a shield and a sword for the business. Fundamentally, trade-mark protection functions to create a fence around your fashion house. It stakes your territory. This is the shield aspect to trade-mark protection. But the trade-mark also functions as a sword: the exclusive proprietary aspect to the trade-mark ensures that competitors cannot get too close to your brand. The more creative you are in protecting your brand means the greater the “brand monopoly” your company may enjoy in the marketplace.
Do you think the copyright laws should be changed to help the fashion industry? Or is the fact that knockoffs keep the industry constantly looking for better designs to keep in front of the copycats a good thing for consumers?
If the designer was secure in the fact that nobody would be able to copy a fashion design, they might not be so anxious to come up with the next best thing. Can it be argued that the common practice of copying new fashion designs in affect forces designers to come up with fresh new ideas?
This is hot topic of debate. Really this boils down to whether you believe that fashion is a function of utility or a piece of art. Whereas a pair of standard jeans may not be especially note-worthy, a one-of-a-kind haute couture evening gown is a different creature.
If you look at some countries that very clearly have a thriving, profitable and note-worthy fashion industry, you will note that those intellectual property laws specifically protect fashion articles. France, for example, has a well-established legislative history (since 1793) of protecting fashion designs through copyright legislation. It is logical that fashion industries will thrive in jurisdictions where intellectual property laws explicitly protect the fashion industry.
As technology advances, the necessity of garnering protection for fashion designs increases. There are known instances where infringers attend fashion shows, digitally record three-dimensional images of the fashion designs from the runway and instantly e-mail those images to “knock-off” manufacturing sites, all before the fashion show has ended. Often times, the high street store is able to produce and market these inspired knock-offs much quicker than the haute couture designers.
But, there is the counterargument that the haute couture clientele and the high street shopper are separate and distinct consumers that rarely intersect in the marketplace. Thus, the fashion house does not suffer from lost revenue due to fashion design piracy. In fact, its brand is promulgated to a wider market thanks to fashion design piracy. In essence, mainstreaming unique fashion designs injects a revenue stream into the fashion industry at all levels.
Furthermore, some even claim that fashion design piracy is beneficial to the creativity of the fashion industry, as your question suggested. As the unique fashion design disseminates throughout various income brackets of fashion consumers, the fashion design is “mainstreamed” and the uniqueness of the design diminishes. This creative exhaustion leads to an impetus to further creativity and so a new fashion trend is created. Under this rationale, fashion design piracy constantly pushes the creative envelope.
Ultimately, this line of reasoning negates the fundamental purpose of intellectual property law, namely to encourage development and creativity through protection of those ideas and inventions. What impetus is there to create, knowing that the creations are free for all to benefit from? But, with anything, there needs to be limits and a system of checks and balances in granting certain companies a monopoly through intellectual property protection.
Is there anything else you’d like to add that is currently a hot topic in the fashion trademark industry?
ICANN’s eventual roll-out of new gTLD domain names is causing quite a stir in the trade-marks industry, which may impact any business that has an online presence (which is basically everyone).