YOUR SOLE IS MINE!

          IP Quail ChronicleIMG_1941

A pressure inducing page turner.”

         IP Quail Times

  “We couldn’t decide who to swing for.”

        IP Quail Observer

 “A warp of philosophical plots.”

The Characters:

  1. Christian Louboutin- [Lu buh tah]: A French fashion design house, a giant in a sea of vultures oozing opulence and the bane of many a wallets.
  2. Yves Saint Laurent [Loh roh]: ‘Un autre’ French fashion house, with grandiose yet wearable threadery.

The Setting:

A musty wooden enclosure fortified by four partitions enjoined centrally by a high ceiling with petrified floors, marble exteriors (variable) and mortals in flowing black robes, white powdered wigs and a gavel; a Court.

The Plot:

A partially wounded bleeding sole vs A fully wounded bleeding shoe, which one was wounded first and can the partially wounded sole have an exclusive right to be wounded to the exclusion of all other fully wounded shoes which would likely confuse regular shoes that the partially wounded heel was the original and first officially bleeding heel? The plot thickens (or clots).

Can a single colour be claimed as a mark of trade in fashion and if so, could a red lacquered sole which contrasted in colour to the rest of the shoe be considered as a distinctive identification for a brand?

The Conflict:

Your sole is my sole, and my sole is all mine. No so? Could Christian Louboutin have the exclusive use of the colour red on the soles of its designer footwear to the exclusion of other brands?

The Resolution:

No, no, no (hand smack!) You can’t do that. You can’t eat all the cookies in front of a drooling pack of vultures. Leave some crumbs! You cannot claim exclusive use of a colour in fashion but wait, just you wait one second, you may be able to claim how you use it; in this case on a sole contrasting with the upper shoe, but only in the designer shoe market.

Consider a scenario. Lady makes straw hats, lines them with purple linen to absorb sweat (and associates purple with royalty). Upper crust ladybirds flock for her hats and she hikes the price. Her twin Ladio when painting the shed knocks over the can of paint emptying half in the middle of his cowboy hat. It dries off and leaves a purple stain. People notice his purple coloured cowboy hat interior and request him to make some for them. No doubt Lady is furious upon finding out that her colour concept has been swiped albeit to a different market. Ridiculous to prevent people using a colour?

Can a single colour serve as a trademark on a product so widely used as a contraption used to protect feet?

In 1992, the red sole was developed by Christian Louboutin for women’s high fashion footwear and over the years became such a hit and was so closely associated to the brand that in 2008, protection for it was granted for that polished red heel in the form of a trademark. Enter YSL who created a collection in 2011 with similar bright red soles but which matched the entire colour of the shoe (monochrome).

Dissection: Can the look of something through colours which are in the public domain for free use (aesthetics) be protected, and secondly can certain elements of something with the special purpose of practicality (functional) as shoes be the subject of legal protection exclusive to one party?

Aesthetics: On the basis that the look and feel of something can distinguish one products from that offered by others and thus can be easily recognized by customers, the contention was whether the red polished colour on the sole of Louboutin’s shoe was distinctive and thus warranted of protection in the high end designer footwear market.

We can appreciate that in fashion, some companies depend on colour for recognition. Think of the Tiffany Blue box (trademarked by the way) which is described as an international mark of style and sophistication. Or the Burberry check pattern where emphasis is not so much on the colour but on the ‘arrangement’ of those colours and how they can create a cult recognition of a brand.

Functionality: For something with the practical use of protecting feet, Louboutin claimed they went further by making their shoe appealing and a signature of their craftsmanship. The red sole is one of the most recognizable brands in high fashion for footwear and is oft associated with a certain level of class and taste.

In the end the court held that it was worth protecting the colour  red sole of the Christian Louboutin shoe BUT only if it contrasted with the colour of the rest of the shoe. This means that other brands (read: designer footwear) are free to use the red colour on their shoes but only if the rest of the shoe is red as well i.e. one colour, (monochrome).

Take away: Fashion is heavily dependent on colour. Which means that a whole season of red stands the risk of being liable for infringement if various parties had the legal right to use the colours in a specific way and others infringed on that right. Contrasting red sole (not fine, don’t do it) One colour red shoe and sole; monochrome (fine, knock yourselves out).

Quail out!

 

The Invisible IP Filter for Second Hand Products

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It is no secret that the best place to buy designer gear for practically the price of a takeaway meal is in Africa. Believe me, it is a joy to receive a genuine designer product for peanuts because the seller is ridiculously clueless about the real value of the product he is selling. Sweet days!

Why? How? Say you.

There are trunk loads arriving in our parts on the daily, that’s why. ‘Charity goods’ they are, but we pay for them because none of our sellers will actually let us have them for free.

Charitable as the globe is, this presents a unique conundrum. Not enough of the addictive product is available. Result = fake copies which cost more than the cheapie you bought down the market. People, erm… ladies, love new things, and even better when it looks like their favourite designer product which are few and far between up in here. Thus, it only makes sense that you have to pay more for your passed off copy which someone burnt midnight oil, greed and selfishness to replicate like a bulk Picasso.

Does intellectual property apply to products given up by the original owner as a charitable gesture? Certainly, a lot of shops sell these charitable products although they have no affiliation with the original brand.

But that’s not even the contention.

The contention is the lack of prescence of the big brands here who can enforce against infringement of their Intellectual Property in developing countries. Infringement is a free for all party if you can bring your own infringement plan and piracy projections. Walk around the streets of Nairobi and registered businesses with valid business permits are selling fake bags, shoes and accessories. Licenced infringement!

If there is no one to prosecute against those who pass off, then it becomes a trend that many immerse and fully devote themselves to. It is quick cash, ladies are slowly catching on to high fashion thanks to social media and news. This envy is then fed by the fake imports market.

Brand presence would clearly be a hindrance to this market. Nonetheless, do not expect to make money from a society that is used to the alternative. This IP Quail has seen far too many old ladies with authentic monogram designer bags to care very little about shelling top dollar for one abroad.

Despite this, it is time we formed an Intellectual Property police and penalized businesses trading in fake products to fight this passing off menace.

Continue reading

Can Anyone Use Your Image on their product? Rihanna v Topshop

Rihanna Topshop vest

Here lies an interesting case which will better aid your view of I.P issues.

This case involved an artist you can relate to; world famous pop star Rihanna aka “Riri”.

In this case cited as Robyn Rihanna Fenty & Others v Acardia [2013] EWHC 2310 (Ch), a well-known retailer: Topshop sold vests with the photographic image of Rihanna on the front. Rihanna argued that she had not given permission for such use thus the unauthorized use infringed her rights. Topshop on the other hand argued that they had got the license from the photographer to use the picture. What smack! Even worse and more ghastly, Rihanna argued that the image used on that particular vest was unflattering and we can imagine vile and utterly rank!

This is a classic trademark case of passing off where someone uses your, image logo or brand in their product and misleads others in the process to believe that the product is actually yours. This practice is highly rife in Africa as you can imagine. Only here, people  get away with it.

For a successful passing off case there had to be three elements: public goodwill and reputation to protect; complained action was a misrepresentation i.e. misleading others into buying the non-endorsed product; and that representation might damage her goodwill which arisefrom her status as a style symbolL having authorized products for fashion houses such as Gucci and Armani.

One of the witnesses working in Rihanna’s management team on Jay-Z’s Roc Nation testified that the product was likely to deceive the purchasers especially because of Rihanna’s previous relationship with the Topshop. Of greater importance is that Rihanna had visited the Topshop store, and they later tweeted that she had graced their London store, leading many to believe there was a link with the retailer and that she was considering connection with the brand.

Interestingly, the law in England thence was that one could not assume that a fashion image in public use was authorized for use by the relevant parties and that a connection to such a belief was irrelevant. Rihanna perceived as style icon by many females and fans would lead them to believe that any product with her image would be endorsed by her. The misrepresentation led to a ‘loss of control over her reputation in the fashion sphere’.

The judge found that even without the word Rihanna splayed across the vest apparels, a misrepresentation had still been made. Sales were lost to her merchandising business a result of this damaged goodwill.

The judge in this case found that Topshop had sold the products with unauthorized images of Rihanna and awarded some cold hard cash to Riri.

What does this mean to you?

It means that one day ‘if’ you become famous, the fact that your local kiosk uses your image on its bread and sweets, does not mean you should break the bank to sue it.  You will have missed the 3 critical elements of passing off discussed above. You would have to be supremely famous, have lots of money, have goodwill ‘capable’ of being damaged and which in fact deceived the public, for your claim to be remotely successful. That is a tall order.

If anything, I say any publicity is good publicity. How many people globally have Googled  Topshop?