The fashion industry comprises a wide range of activities from the conception of a product to design to manufacture, as well as marketing and selling. For lawyers within the Intellectual property space, it involves the procurement of IP rights; including trademarks, copyrights, and patents-and the global licensing and subsequent enforcement of those rights. Understandably, in a world more concerned with the aesthetics and the rewarding economic potentials of creating a lucrative fashion line/brand, little, if any attention is paid to protecting the designs that have become the hallmarks of the burgeoning fashion brands all over the world. Fashion lawyers work on anything from intellectual property – trademarks, brands, designs, and copyright – to contracts, employment law and distribution agreements. Some shops and labels have their in-house teams, others outsource to legal firms1.
The fashion industry remains an interesting medley of intellectual property practice2. Fashion law applies to apparel, footwear, and even accessories. This emerging field of practice covers areas such as copyright, trademarks, service markers, utility patents, design patents, counterfeits, trade secrets, licensing agreements, advertising and publicity at every stage of the fashion business. It is believed that globally the fashion industry generates more than USD 2 trillion annually.3
The emerging trends of IP Protection in Fashion Law
Over the last ten to twenty years, the rise of the Internet changed the marketing and distribution of products. The introduction of social media created a new world for advertising and distribution and has played a role in the rapid rising and falling in popularity of many brands. Social media has also helped foster co-branding and endorsement opportunities between fashion brands and celebrities or other social media personalities, which has the benefit of allowing all parties to draw from larger public audiences. These new developments in advertising and media strategy have led to the emergence of new legal intricacies that have helped develop “fashion law” into its niche practice area.
Fashion labels and brands have become more protective of their intellectual property rights. This consciousness is undoubtedly more pronounced in Europe and North America. Sub-saharan Africa and Nigeria, in particular, are still playing catch-up. The fashion industry in most parts of Nigeria and sub-Saharan Africa involves a lot of innovation and creation so much so that the owners of the labels give a second thought to the issues of Intellectual property protection Intellectual property laws protect fashion brands and certain elements of fashion designs themselves. The industry has recently seen increasing use of design patents and trademarks to protect their intellectual property rights. These types of IP vehicles protect the “look” of a particular product or certain novel design elements of such a product. An example of a design patent might be an ornamental sculptural element, such as an intricate bow, affixed to a product such as a shoe, a distinctive color scheme that appears on a particular brand’s products and creates an association between that color scheme and the brand4. The growing focus on these two areas of intellectual property protection may be happening because the other avenues, such as utility patents, trademarks, and copyrights, are not always sufficient to prevent infringement. The case of Star Athletic, LLC v Varsity Brands, Inc5. was a landmark case that went before the United States Supreme Court in 2017. The case centered on the protectability of cheerleading uniforms. Specifically, it examined whether certain creative elements of the design of a cheerleader’s uniform – such as the stripes of a chevron – could be protected under US copyright law. In other words, could these elements be separated specifically or conceptually without taking away the purpose of the design, namely to be a cheerleading uniform?6.
In its decision, the Supreme Court clarified the standard for separability, saying that, in general terms, certain creative elements – whether two-dimensional or three-dimensional – of a garment may be protected by copyright law. However, it refused to speak to the protectability of, or the level of creativity inherent in, the specific uniforms in question.
The case has to go back to the lower court to determine whether the cheerleading elements were sufficiently original to warrant protection. While it is not yet clear what the practical impact of the decision will be on the US fashion industry, it does offer designers some hope of being able to use copyright law to make a case for defending at least some creative aspects of their garments7.
The law protects the sketch and drawing of a fashion designer or illustrator through the instrument of Intellectual Property known as copyright. Patent laws may also offer protection for designers. The European Union recognizes registered and unregistered rights for garments and accessories as a whole. Similarly, in America, the Innovative Design Protection and Piracy Prevention Bill; and the Innovative Design Protection Bill8 focused on protection for fashion designers.
The popular case of Christian Louboutin and Yves Saint Laurent (YSL)9 underscores the importance of intellectual property rights in fashion law. It was a case of alleged ownership of the red lacquered sole featured in the footwear produced by Louboutin. In 2011, when Yves Saint Laurent released its monochrome footwear collection in a range of colours, including red, Louboutin brought an action for infringement of its red sole trademarks. The US Court of Appeal for the Second Circuit ruled that Louboutin has the right to trademark protection over its red soles. In the same vein, YSL may also continue to sell shoes with red soles if the entire shoe is red.
The legal framework in Nigeria
The tremendous growth in the Nigerian Fashion Industry prompts a recognition of fashion law and the need for the law to provide a useful guide on legal issues faced by the designers and other interacting forces in the fashion world. However, Nigeria has no comprehensive and specific legal framework governing the fashion industry. Accordingly, specific legislation protecting fashion brands is non-existent. IP practitioners have therefore resorted to the general protection afforded under the existing legal framework for intellectual property in Nigeria. The existing legislation for this purpose includes; the Copyright Act, the Patents and Designs Act, and the Trademarks Act. Works of designers are artistic creations and can thus be protected by the Copyright Act. However, the design must not be intended to be used as a model or pattern to be multiplied by any industrial process.10 It appears the Act did not consider the dynamics of the fashion industry.
Alternative protection would be under the Patent and Design Act11; a combination of lines and colours or any three-dimensional form with or without colours is recognized as an industrial design. A limitation to this is the requirement that such design must not have been in the public domain. This is impracticable in the fashion industry. Fashion is a fast-paced industry dictated by trends; such reception by the public is an important factor. This calls to mind the need for urgent laws that offer adequate protection for fashion brands and their wares. The industry is flourishing even across borders and it may be stifled without effective laws.
Filing an IP Claim in Fashion law
The protection of designs in Fashion law is a relatively developing concept in Nigeria. This may not be unconnected with the fact that fashion brands are yet to come to terms with the need to protect their brands. Undoubtedly, the protection of fashion designs should go beyond basic trademark registrations. Combatting the IP problems posed by infringers is just as important as the registration of the designs. Even though there is no case law on this point, yet in Nigeria, case law principles gleaned from some decided cases on the point show that there is a test and a well-developed standard which considers several factors including:
- the strength of the claimant’s trademark;
- the similarity of the marks;
- the relatedness of the products in the marketplace;
- the likelihood that the senior user will “bridge the gap,” i.e., will develop a related product in the same market as the alleged infringer;
- evidence of actual consumer confusion;
- evidence of bad faith by the alleged infringer;
- the respective quality and cost of the products; and
- the sophistication of the consumers in the relevant market.
Apart from protecting the work of the designers, there are other salient issues that affect the fashion industry that deserves legal protection. With the campaign against piracy in the music and entertainment industry gaining traction, fashion brands risk losing their goodwill and money to unscrupulous individuals who copy brand designs and logos and pass them off as theirs unless such campaigns/efforts are replicated in the fashion industry. Fashion design piracy is common in the industry, especially in developing countries like Nigeria. It involves the unauthorized copying of original fashion design which can either be knock-offs or counterfeits. While a knock-off is a close copy of the original fashion mimicking its design elements but sold under a different label; a counterfeit is a copy of the original fashion design as well as the brand logo or label of that design. In other words, counterfeit apparel is sold in an attempt to pass off as the original product. Counterfeit may also involve piracy in fashion design besides piracy in the logo or label of the fashion brand.
Like most sectors of the leisure industry that are driven by talent and creativity, the fashion industry is exposed to manifold risks. It is most regrettable that no attempt has been made to protect the rights of fashion brands that have become victims of unwholesome practices bordering on counterfeiting, passing off and knock-offs.
Whether a small, medium or big fashion house, the brand is the most valuable part of a fashion business. Customers will associate the brand with specific styles, quality, and experiences. Many fashion houses invest much of their time and money to build a relationship with their customers through their brand. However, if the brand is not adequately protected through trademark filing and enforcement, customers may be unable to distinguish the style experiences from a counterfeit brand that they find elsewhere. This can have a detrimental effect on the bottom line12.
For this reason, it is important to ensure that a fashion house can protect the brand through trademark registration and its assets through copyright law. This reduces the risk of others borrowing or stealing from a given brand or using it for other malicious purposes. It also provides the brand with the legal standing to pursue cases where copyright infringement has taken place. The most distinguishing features that a fashion house should protect through trademarks are its brand name and logo as these are the most identifiable IP assets for a brand, whether it is a high fashion brand or a high street brand. The legal framework in Nigeria at the moment is weak and insufficient to meet the dynamics of the fashion industry. In all, Nigeria needs an urgent re-jig of its laws in this area by enacting statutes and regulations specific to the needs of the fashion industry.