Fashion intellectual property law: how to protect, enforce & monetize your IP rights

The Hospital Club, B@B– 18 February 2014

Intellectual property in fashion & luxury: how to protect, enforce & monetize your IP rights

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How and why is IP the foundation of a sound luxury & fashion business?


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What are IP & IP rights?


Author

Creativity/Innovation

Society

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Which IP rights are available to luxury & fashion houses?

PATENT

CONFIDENTIAL INFORMATION

TRADE MARKS

PASSING OFF

COPYRIGHT

MORAL RIGHTS

UNREGISTERED DESIGN RIGHTS

REGISTERED DESIGN


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What are the remedies for IP infringement?


REMEDIES

FINAL REMEDIES

PECUNIARY

ACCOUNT OF PROFITS

DAMAGES

NON PECUNIARY

DECLARATION

DELIVERY UP

COURT ORDER REVEAL

RELEVANT INFO

INJUNCTION

INTERIM REMEDIES

INTERIM INJUNCTIONS

EX PARTE ORDERS

SEARCH ORDER

FREEZING INJUNCTION

WITHOUT OR ON NOTICE

PROCEEDINGS

CRIMINAL SANCTIONS

THREATS

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The court system for IP in England & Wales

CHANCERY DIVISION

INTELLECTUAL PROPERTY ENTERPRISE COURT (formerly PATENTS COUNTY COURT)

SMALL CLAIMS TRACK


•  How to bring a claim? •  The trial •  Costs

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How do these IP rights get used in the fashion & luxury sector?


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Patent law

Katerina Plew v Victoria’s Secret

PATENT

INVENTION

NOVELTY

INVENTIVE STEP

INDUSTRIAL APPLICATION


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Trade mark law

•  Conventional trade marks •  Non-conventional trade marks

TRADEMARK

CLEAR

PRECISE

SELF-CONTAI

NED

EASILY ACCESSIBLE

& INTELLIGIBLE

DURABLE

OBJECTIVE


•  Christian Louboutin v Zara •  Christian Louboutin v Yves Saint

Laurent

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Trade mark law

Unfair advantage?

Detrimental? Yes!


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Passing off

•  Goodwill

•  Misrepresentation

•  Damage


Rihanna v. Topshop

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Copyright law

•  The idea/expression dichotomy •  Originality •  Fixation & tangibility


COPYRIGHT

LDMA/PRIMARY WORKS

LITERARY WORKS

DRAMATIC WORKS

MUSICAL WORKS

ARTISTIC WORKS

ENTREPRENEURIAL/SECONDARY/

DERIVATIVE WORKS

SOUND RECORDINGS

FILMS

BROADCASTS

TYPOGRAPHY RIGHT

•  Thierry Berthelot v Van Cleef & Arpels

•  Ownership of copyright & the employee author

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Design law

•  European directive on the legal protection of designs (1998)

•  European regulation on community designs (2002)

•  North American Innovative Design Protection Act (IDPA)


REGISTERED DESIGN

ELEMENTS • DESIGN • NOVELTY • INDIVIDUAL CHARACTER • EXCEPTIONS TO REGISTRATION

INFRINGEMENT

PROTECTION OF SPARE PARTS

SECONDARY

DESIGN RIGHT

REQUIREMENTS • A DESIGN • QUALIFICATION OF THE DESIGN • ORIGINALITY • DESIGN MUST BE RECORDED • DESIGN MUST NOT BE

EXCLUDED

OWNERSHIP

INFRINGEMENT •  PRIMARY •  SECONDARY •  EXCEPTIONS

REMEDIES

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IP strategy plan: key considerations


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Developing brand equity: how the legal bits are at the core of a successful brand equity strategy

•  Extreme concentration of intangibles that brands embody

•  Brand contribution = intangible earnings •  Difference between cost price & sale price


Brand equity in million $

Louis Vuitton 24,312

BMW 22,425

Mercedes 15,344

Porsche 12,413

Hermès 11,917

Gucci 7,449

Chanel 6,823

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International IP protection: why it matters & how to do it

•  Preventing counterfeits & knockoffs •  Preventing trademark & patent “trolls” & “squatters” •  Securing IP protection where the company sells or plans to sell its products •  Securing IP protection where the company manufactures its products


Why?

How?

•  Madrid Protocol (trademarks) •  Berne Convention (copyrights) •  Patent Cooperation Treaty (patents)

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Strategies to protect your IP rights: be on the ball


Do not delay!

Spend your IP protection budget wisely!

Register IPRs

Legal opinion Police IPRs Promptly

take action

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Strategies to avoid infringing on IP rights: be very cautious here


Look for notices of rights on

products/labels

Search for patents,

trademarks, designs

Use good common sense!

Consult qualified IP counsel

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IP litigation & disputes: do’s & don’ts


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What to do if you receive a cease & desist letter or are sued

•  Forward it to you lawyer

•  Submit a claim with your insurance carrier

•  Call the business party on the other side of the case

•  Remember the cost of litigation & try to avoid it

•  Arbitration?

•  Settlement?


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Understanding the stakes in IP litigation


•  Copyright disputes

•  Trademark disputes

•  Patent disputes

•  Design disputes

•  Settlement

Lawsuits as a business

tool

Cost

Where? Who?

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Monetizing your IP rights: how to rip the profits from your creativity


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How to monetize your IPRs?

Licensing

Assignment

Franchising

Selective distribution

Taking security over

your IPRs

Collateral against

corporate financing

Auctioning


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Conclusion


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intellectual property in fashion & luxury: how to protect, enforce & monetize your IP rights

Annabelle Gauberti Founding partner [email protected] @Crefovi on Twitter


Fashion intellectual property law: how to protect, enforce & monetize your IP rights

Law

Transcript of Fashion intellectual property law: how to protect, enforce & monetize your IP rights