Intellectual Property Protection in the Fashion Industry

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  • 19 April 2021
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Intellectual Property Protection in the Fashion Industry

The European scenario before and after the Cofemel vs. G-Star CJEU’s judgement.

Although Europe is the cradle of haute couture, there has always been reluctance, for both scholars and courts, to conceive that fashion items may be granted intellectual property protection.

Typically, intellectual property rights are granted, inter alia, to the authors of creations of the mind, such as inventions, literary and artistic works, designs, symbols, names and images used in commerce. From a theoretical standpoint, the protection of intellectual property rights includes industrial property rights and copyright.

With respect to industrial property rights, at an EU centralized level, there is a form of protection, which is the multi-layered regime of Community Registered Design (RCD) and Community Unregistered Design (UCD), established by Regulation no. 6/2002. Industrial design (including fashion items design) shall fulfil the requirements of novelty (no identical drawing or model has previously been made available to the public) and of individual character (the “informed user” shall be able to distinguish between the new design and a similar item) in order to fall within the scope of the above-mentioned dual system.

Specifically, there are two alternative routes to obtain protection:

  1. a) Community Registered Design: an industrial design can be registered before the European Union Intellectual property Office (“EUIPO”) if it meets the requirements of novelty and of individual character “before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority” (Article 5 and 6 of Regulation no. 6/2002). This system grants five years of protection (which is a reasonable time for the protection of products with a short lifespan such as clothes or shoes) that can be extended up to a maximum of twenty – five years. The protection mainly consists of the exclusive right of the designer to use it and to prevent any third party not having his consent from using it (Article 19 of Regulation no. 6/2002)
  2. b) Community Unregistered Design: no registration is needed in this case, but evidence of the first distribution must be provided in order to obtain three years of protection, that cannot be renewed in any case. In particular, the elements of novelty and individual character of the design must be satisfied “before the date on which the design for which protection is claimed has first been made available to the public” (Article 5 and 6 of Regulation no. 6/2002). Under such a regime, the designer does not possess the exclusive right of using the product in any case, but only whenever the contested use results from copying the protected design (Article 19, Regulation no. 6/2002).

Once clarified that there is the above-explained form of industrial design protection at a European level, the question is: can fashion items be protected also by copyright?

Despite the existence of several EU directives on the matter (inter alia, Directive 98/71/EC and Directive 2001/29/EC), EU Member States regimes are not totally harmonized, because each Member State has a certain degree of discretion in determining the requirements to grant copyright. The common standard, at an EU level, is represented by originality/creativity. In other words, a “work” shall be original in order to be worthy of copyright protection.

Besides the element of originality/creativity, some States’ legislations provide for industrial design to be granted copyright protection, some additional requirements, other than the originality of the product.

The Italian case is an example. Indeed, Article 2 of Law no. 633/41 (Italian Copyright Law) provides that industrial design items can be granted copyright protection if they are provided with “creative natureandartistic value”. The “artistic value” requirement has caused countless discrepancies among national and EU case-law; however, the need for the presence of artistic value has turned into a general reticence of the national courts in recognizing copyright to clothing, since fashion items were considered to be too utilitarian and so they could not be assimilated to artistic works.

Notwithstanding the legal challenges of the single Member States, the basic problem lies in the misconception of fashion as something ephemeral not deserving a higher degree of protection.

Nevertheless, in Italy, copyright protection has been recognized in few cases, so the jurisprudence is divided as follows:

  • Denials of copyright protection for the absence of an artistic value (e.g., the Max Mara modular goose down jackets);
  • Granting of copyright protection for the fulfilment of the artistic value requirement (e.g., the case of Moon Boots).

The Max Mara modular goose down jackets were not considered to be protected by copyright, according to the Court of Appeal of Milan with its judgement issued on May 5, 2017. Max Mara suited Liu Jo before the Court of Milan, alleging that the latter maison copied the feature of accessorizing down jackets with detachable parts. Max Mara’s claims were rejected both by the Court of Milan and by the Court of Appeal of Milan, which upheld the previous first-instance judgement, denying copyright to the down jackets of the Maramotti family.

An interesting decision has been issued on January 25, 2021, by the Court of Milan with judgement no. 491/2021, confirming copyright to the iconic Tecnica Moon Boots. Specifically, Tecnica suited Serendipity (Chiara Ferragni), alleging that the latter copied the design of the Moon Boots. The Court of Milan stated that the Serendipity boots could not be considered original, because “it is not sufficient to add the eye logo with some glitter to demonstrate an alleged creative autonomy, which in fact, would only consist in the flair style of models deriving from the use of glitter”.  Then, the same Court ordered Serendipity to destroy all the boots already produced and to compensate Tecnica for all the damages suffered.

In particular, these different approaches adopted by the Italian Courts are tangible proof that the evaluation of the requirement of artistic value is extremely complex and not objective, determining, sometimes, unjustified lack of recognition of copyright protection.

An important decision addressing this issue is the CJEU’s Cofemel vs. G-Star case. The new orientation endorsed by the court of Luxemburg is based on the principles established in the Painer case (Case C-145/10), where the CJEU, in relation to portrait photographs, stated that nothing in any EU directive “supports the view that the extent of protection should depend on possible differences in the degree of creative freedom in the production of various categories of works.”

The Cofemel vs. G-Star Case (both companies operating in the jeans, sweatshirts and T-shirts industry) was initiated in 2013 by G-Star. In particular, G-Star suited Cofemel before a Portuguese court, alleging that Cofemel was infringing its copyright and asking for compensation of damages. In particular, G-Star argued that Cofemel copied its ARC and ROWDY designs of jeans, sweatshirts and tee-shirts, adding that such could be classified as “works” covered by copyright. Cofemel, on the other hand, alleged that those clothes could not be considered as “works” protected by copyright. The action was upheld by the Court of the first instance, which ordered Cofemel to cease the infringement of copyright and the judgement was then confirmed by the Court of Appeal of Lisbon.

The question was then referred to the Supreme Court of Portugal, which submitted a preliminary ruling to the CJEU asking the following questions:

Is the originality requirement the fundamental criterion that governs the grant of protection in the area of copyright according to Article 2(a) of Directive 2001/29 (InfoSoc Directive)? Does the interpretation of Article 2(a) of Directive 2001/29 preclude the EU Member States to impose an additional requirement (e.g., artistic value) in order to ensure copyright protection to designs?

In order to answer the previous questions, the Court moved from the definition of design as “work” under Article 2(a) and stressed the fact that a uniform interpretation of that concept is, therefore, necessary for the harmonization of the copyright regime established by EU law.”

The Court further specified that in relation to the notion of “work”, the recent case-law has set the following principles:

  • the necessity of the requirement of originality, which consists in the fact that the “work” is an intellectual creation of its author (creative freedom);
  • the “work” shall be the expression of such creation and it “must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in the permanent form”. No element of subjectivity (such as the aesthetic or artistic value) should be allowed in the process of granting copyright protection because it characterizes a threat to legal certainty.

Consequently, the CJEU concluded that the imposition of additional subjective requirements would be in contrast with the necessity of objectivity, as enshrined in EU law.

It seems fair to conclude that, according to this decision, no additional requirements shall be requested in order to grant copyright protection, since copyright simply arises upon fulfilment of the requirement of originality. Furthermore, the degree of protection of copyright shall not in any way be limited by elements of subjectivity, involving discretionary assessments by judges. Therefore, the CJEU emphasized that it is true that EU Member States enjoy a margin of discretion in the process of granting copyright protection, but they shall always comply with the obligations set under Directive 2001/29 and to its judicial interpretation, which moves towards the achievement of harmonization on the matter of copyright. In this sense, national laws requiring the fulfilment of either artistic or aesthetic value should change direction.

Therefore, despite the fact that the road to the full protection of intellectual property in industrial design is tortuous and still has some gaps, first steps have been taken – both at an EU and national level – to achieve a better level of protection for fashion items.

To conclude, the hope is that the Cofemel vs. G-Star Case approach paves the way to the harmonization of the various EU national laws, to ensure that intellectual property becomes a tool rather than a barrier for fashion brands.

For more information on this please contact:

Lucilla Margherita
Of Counsel