Osgoode Hall Law School Takes Note of CanadaFashionLaw

I continue to be amazed and flattered by the support within both the legal and fashion community that CanadaFashionLaw is receiving. 

Osgoode Hall Law School, a top tier Canadian law school, sets itself apart in the intellectual property community with its creation of IPOsgoode, an intellectual property law and technology program.  IPOsgoode "cultivates interdisciplinary, comparative and transnational research, collaboration, policy-thinking and practice". 

CanadaFashionLaw.com was recently featured on IPOsgoode.  Below is the excerpt: 

by Andrew Baker

Ashlee Froese, Osgoode Hall Law School alum of 2006 and IPilogue contributor, has launched CanadaFashionLaw, which has garnered immediate attention from both the fashion industry and the legal community, receiving over 500 unique hits in its first three days.

CanadaFashionLaw covers the business and legal issues surrounding the fashion industry by not only exploring contemporary legal issues, but also by providing commentary on the existing policy framework of intellectual property within the fashion industry.

In her third post, Froese explains how Canada’s poor performance in the The Office of the United States Trade Representative’s 2011 National Trade Estimate Report on Foreign Trade Barriers presents obstacles for the Canadian fashion industry with regards to US willingness to trade.  She goes on to explain that other countries, such as France and Italy, have specifically drafted domestic intellectual property laws for fashion design, which provide greater legal clarity.  The US is also considering specific protections for the fashion industry as it reforms its copyright law.

CanadaFashionLaw has also covered two interesting cases in Canada and the US, respectively.  Froese has reviewed the recent Supreme Court of Canada trademark case, Masterpiece Inc v Alavida Lifestyles Inc. 2011 SCC 27, explaining that the decision demonstrates the usefulness of conducting trade-mark availability searches (the Masterpiece case was also reported on by co-counsel for Masterpiece in the IPilogue).  The blog is also following a pending suit by Christian Louboutin against Yves Saint Laurent for allegedly copying its distinctive red-soled shoe design trade-marked in 2008.

Already, CanadaFashionLaw has caught the attention of the legal community with NY State Attorney, Vincent Lotempio, recently interviewing Froese on his blog.  The interview discusses fashion industry-specific policy solutions within the framework of trade-mark law thereby highlighting many of the unique and interesting problems arising at the intersection of fashion and law.

Guide to Canada's Fashion Weeks

Think fashion only happens south of the border?  You would be wrong.  Here's a quick reference guide to Canada's various fashion weeks:

LG Fashion Week
Dates: March 28 to April 1, 2011; October 17 to 22, 2011
Location: Toronto
Overview: This is Canada's biggest fashion week.  In its 12th year, LG Fashion Week brings together media, industry, consumers and buyers.

Rogue Fashion Week
Dates: Simultaneous to LG Fashion Week
Location: Toronto
Overview: Not satisfied with staying within the confines of LG Fashion Week, Rogue Fashion Week sees designers take matters into their own hands.

Toronto Alternative Arts and Fashion Week
Dates: April 26 to 29, 2011
Location: Toronto
Overview: This fashion week looks at emphasizing the interplay of fashion with arts, photography and music. 

Frugal Fashion Week
Dates: July 21 to 24, 2011
Location: Toronto
Overview: This charitable initiative seeks to profile and support local retail and design communities.

Montreal Fashion Week
Dates: February 7 to 10, 2011; September 6 to 9, 2011
Location: Montreal
Overview: Ce défilé de mode est probablement le plus grand compétiteur de LG Fashion Week.

Vancouver Fashion Week
Dates: April 12 to 17, 2011
Location: Vancouver
Overview: Reflecting Vancouver's international flare, west-coast based designers share the spotlight with foreign designers from Korea, China and India, for example.

Western Canada Fashion Week
Dates: March 24 to 31, 2011; September 22 to 29, 2011
Location: Edmonton
Overview: This fashion week celebrates the fusion of art, design and musical culture for a unique collaboration of the creative minds.

Atlantic Fashion Week
Dates: June 13 to 19, 2011
Location: Halifax
Overview: Entering into its 5th season, this fashion week is determined to let the rest of Canada and the world know what the eastern provinces are made of.

Eco Fashion Week
Dates: February 22 to 25, 2011
Location: Vancouver
Overview: This green machine celebrates environmental sustainability and eco-friendly industry practices.

Ottawa Fashion Week
Dates: March 18 to 20, 2011
Location: Ottawa
Overview: This fashion week looks at talent in the nation's capital.

Alberta Fashion Week
Dates: May 19 to 21, 2011
Location: Alberta
Overview: This fashion week highlights fashion designers from throughout Canada.

Tips on Reaching Toronto’s Fabulous: Toronto Fashion Incubator and TNT Host Event

I was fortunate to recently attend an event co-hosted by the Toronto Fashion Incubator and TNT Boutique.

First, some context. 

Toronto Fashion Incubator (“TFI”) is a non-profit organization that is dedicated to helping emerging Canadian fashion designers become viable businesses.  Established in 1987, TFI focuses on educating and supporting emerging designers on the business aspects of the fashion industry.  Critical topics like marketing, sales, business planning, exports and strategic business planning are addressed through a variety of programs (mentorship, seminars, private consultations).

TNT is one of Toronto’s meccas for the fashionable (and wealthy).  TNT, which celebrated its 20th anniversary, is proud to cater to 4 generations.  With several stores in Toronto and Montreal (one of which spans 14,000 square feet in Toronto’s prestigious Yorkville area), TNT serves its clientele with notably high quality and highly demanded fashion lines (Diane Von Furstenberg, Alexander Wang, Theory, Elizabeth & James).  On several occasions Nicole Ritchie has attended TNT to launch her line, House of Harlow.

More than cocktails - the event was informative and inspiring...

TFI and TNT joined forces as Arie Assaraf, owner and buyer of TNT, shared his insight on what it takes to be a designer selling in his stores (an enviable and coveted feat).  Here’s a summary of what Arie had to say:

- Think of your fashion line as a closet.  Augment your closet with some trends, but don't forget about the classics.

- Each retailer has its own philosophy that attracts a different client base.  Keep that in mind when you are shopping your fashion line around.  Is there a natual fit?

- Success in the fashion industry is not based on luck.  You have to be knowledgable and you have to be constantly aware of what is happening in the industry.  There is no room for ego or a sense of entitlement.  A passion for your craft and an ability (and willingness) to change is key. 

- Avoid creating a fashion line that is overly nichey in terms of demographic, price point, style, or trend.  Don't carve yourself out of the main market.

- Be creative but be realistic.  Don't bite off more than you can chew.  Have long terms goals, but keep them attainable.
- One of the biggest downfalls of fashion designers is that they fail to think of themselves as a business from day one.  If you don't have the legal, business or financial acumen, outsource it.  Surround yourself with professionals so that you can focus on your creativity. 

Overall, the event was a great success.  Arie graciously provided his insights, which the designers devoured.  As a successful businessman, Arie's advice spans well beyond the fashion industry and can be applied to any entrepreneur.

The New Online Bounty Hunter: Canada’s Anti-Spam Legislation

In December 2010 the Fighting Internet and Wireless Spam Act (“FISA”) was passed by the Canadian federal government.  It is expected to come into effect in later this year.  FISA’s goal is to:
“promote the efficiency and adaptability of the Canadian economy by regulating commercial conduct that discourages the use of electronic means to carry out commercial activities”.

Translation: no more spam e-mails!!

FISA prohibits the sending of electronic communications (such as e-mails, instant messaging) unless consented to by the recipient.  If an electronic communication is sent, the sender’s information must be disclosed and there must be a mechanism to unsubscribe.  FISA also extends to computer programs that are installed to cause electronic communications to be sent without the recipient’s consent. 

The Canadian Radio-Television and Telecommunications Commission (“CRTC”) oversees compliance with FISA and has been granted broad powers.  For example, the CRTC can obtain warrants to enter individual or business premises to ensure that there has been compliance.  The CRTC can also issue notices for individuals or businesses to produce documentary evidence of compliance.

But, the CRTC is not the only sheriff in town.  Individuals have also been granted a private right of action.

The cost of contravention is steep.  An individual that does not abide by FISA can be charged up to $1,000,00; a corporation can be charged up to $10,000,000.

Oh...Canada! A Q & A with Ontario fashion lawyer Ashlee Froese

I was flattered to recently be interviewed by Charles Colman, a New York based attorney of Charles Colman Law PLLC who also practices fashion law.  Chuck runs an interesting blog http://www.lawoffashion.com/ and accompanying twitter account @fashionlawblog.  Chuck serves as Co-Chair for the Fashion Design Legislation sub-committee of the American Bar Association.  I have reproduced the interview below:

In light of apparel retailer Target's widely publicized, but legally fraught, expansion into Canada, LAW OF FASHION felt it was high time to hear from a fashion lawyer on the other side of the border.  After all, with all due respect to New York, Canada seems to figure its s#*! out before we do.  (In multiple realms.)

LOF was fortunate to arrange a virtual interview with Ashlee Froese, an attorney with the Ontario law firm Keyser Mason Ball, LLP, who also runs a blog at canadafashionlaw.com and sends out sassy and informative tweets from @brandfashionlaw

Ashlee spoke to LOF about the differences between U.S. and Canadian trademark law, intellectual property protection for fashion designs north of the border, and recent fashion law developments in Canada (all hyperlinks courtesy of LOF):

LOF: The emergence of "fashion law" as a unique discipline is relatively recent in the U.S.  Have Canadian law schools and attorneys begun to recognize "fashion law" as its own practice area?

AF: I think that the development of “fashion law” as its own niche has had more traction in the U.S., and is still very much in its infancy in Canada.  There are far fewer law schools in Canada (not more than 20) and to my knowledge, fashion law is not part of the curriculum at any of those schools.  Some law schools, such as Osgoode Hall Law School, my alma mater, have instituted programs that focus in intellectual property, which is a component of fashion law, but we have yet to see a specialization of "fashion law."

LOF: Could you give us an overview of the similarities and differences between Canadian and U.S. trademark law?

AF: There are significant similarities between Canadian and U.S. trademark law.  Both U.S. and Canada are “use-based” jurisdictions, which means trademark rights “accrue” from use in commerce.  Procedurally, the trademark prosecution stages are similar (filing, examination, publication, opposition, use requirement, registration).  We also have similar bases for filing trademark application: 1) proposed use, 2) actual use and 3) foreign registration and use.

However, there are also pronounced differences.  The United States’ adoption of a classification system under which additional filing fees of $325 (U.S.) are charged per class of goods/services (as opposed to Canada’s single filing fee for all goods/services) can be cost-prohibitive for some Canadian businesses seeking trademark protection as they enter into the U.S. market.  Canada does not have an equivalent to the USPTO’s principal-versus-supplemental-register regime.  Moreover, it is not possible to divide a trademark application in Canada.  Canada is also not a signatory to the Madrid System, although there have been whisperings that Canada is looking to become a signatory.  On a side note, it is my view that the U.S. Patent and Trademark Office operates in a more business-like manner than its Canadian equivalent.

Canada has taken a conservative stance on the protection of non-traditional trademarks.  The Canadian Trade-marks Office has maintained that a trademark must be visual in order to garner protection.  Thus, sounds, smell and touch cannot be protected.  The U.S. has taken a more liberal view of what can constitute a trademark.

LOF: Does Canadian intellectual property law grant protection to fashion designs?

AF: Yes, but there are limitations.  It is possible to protect aspects of fashion designs through proper navigation of Canada’s intellectual property regime.  However, there is a hesitation to grant a company exclusive IP rights in a useful article, as such a grant may impact competition in the marketplace.  Thus, Canadian law imposes a system of checks and balances that guard against a degree of exclusivity that would stifle commercial development.  

Traditional trademark protection in Canada serves to protect logos, slogans and brand names.  Color can also function as a trademark.  For example, Christian Louboutin is seeking protection of its infamous red soles as a trademark in Canada.  (As of this writing, the application is still pending.)  Designs, features and patterns that are applied to clothing are capable of protection.  Louis Vuitton Malletier’s floral motif, for example, is a pattern applied to clothing that has been granted trademark protection.  “Distinguishing guises” is a subcategory of trademark protection that extends to the packaging of the product or the shape of the product itself.  But this type of protection would most often be used to protect the shape of perfume bottles that complement a fashion line, for example.  As in the U.S., functionality and non-distinctiveness remain bars to trade-mark protection.

“Industrial design protection” is a useful but somewhat underutilized avenue in Canada.  [Ed. Compare to U.S. design patents.]  This type of protection covers the shape, configuration, pattern or ornamentation on an utilitarian article that is aesthetically appealing.  Protection is not granted where the design is solely functional or where protection would impact any method of construction or manufacturing.  Industrial design protection is only granted for 10 years and protection must be sought within 1 year of disclosure of the design.  Industrial design protection is statutory; registration is required in order to obtain protection.  Currently, dresses, pants and shirts are eligible for industrial design protection in Canada.

Although copyright protection extends to “works of artistic craftsmanship,” protection is limited when the article is “useful.”  Further, no copyright protection is available to “non-useful” designs that are applied to “useful” articles produced in quantities greater than 50.  This is obviously a low threshold for a typical fashion company.  Thus, industrial design protection will usually be a more prudent avenue of protection for the fashion designer. 

LOF: How much influence, if any, do U.S. court rulings on intellectual property exert over the direction of Canadian IP law?

AF: I think that there is always interest in what is happening in the U.S.  Having attended a number of lectures by judges of Canada’s Federal Court, it is apparent that in addition to looking at legal developments in America, the judiciary also looks at developments in England and Australia, in particular. 

LOF: What, if any, major fashion law developments are you seeing in Canada right now?

AF: Well, in August of last year, Louis Vuitton and Burberry launched an anti-counterfeiting suit against two producers and distributors in Vancouver and Toronto.  The plaintiffs are seeking $3 million (Canadian) in damages for trademark and copyright infringement, which, if granted, would be Canada’s largest anti-counterfeiting damages award ever.

The Supreme Court of Canada also recently handed down a ruling on trademark law—the first since 2006.  Although the decision, for the most part, seems to confirm some fundamental tenets of Canadian trade-marks law (i.e., Canada is a “first to use” jurisdiction, trademark protection extends throughout the country, etc.), some passages in the opinion have piqued trademark lawyers' interest in attempting to determine how the judiciary will deal with the intersection of trademark law and keyword advertising, an issue that has been extensively explored in the U.S., but not received much judicial consideration in Canada.

Hate Will Take You Nowhere Fast: John Galliano's Trial

Infamous for his creative flare and eccentricities, John Galliano has once again attracted the media’s attention.  But in the instance the saying “all press is good press” cannot be applied.  Galliano is standing trial today relating to his anti-Semitic rants hurled at and physical altercation between customers at a dinner in Paris on February 24, 2011.  Ironically, the first day of Galliano’s trial falls on the first day of Men’s Fashion Week in Paris, which ensures that the world’s fashion media will be present to watch this case unfold.  

Not only are there legal implications to Galliano’s actions, his career has been jeopardized.  Immediately following the event, the fashion world reacted strongly against Galliano.  Within a few days of the event, Galliano was fired from Christian Dior (which happened to coincide with Paris Fashion Week).  Natalie Portman, the latest face of Christian Dior, openly condemned Galliano’s actions.  Soon thereafter Galliano was also ousted from his own namesake label.

Going from bad to worse, Galliano fired his original counsel and is now involved in a embezzlement and defamation suit with his previous counsel.  

Not only has Galliano’s actions cost him his reputation and career, he could face up to 6 months of jail time and a 22,500 fine.    

Groundbreaking Change for Internet as ICANN Approves New gTLDs

Significant Change to the Internet
After years of deliberation and consultation, ICANN (the non-profit organization that runs the internet) has finally approved plans to increase generic Top Level Domains (“gTLDs”), a decision that will dramatically change the internet.

A gTLD is the last component of a domain name (i.e. ‘dot-com’, ‘dot-net’, ‘dot-org’).  Currently, there are 22 gTLDs.  With over 1.6 billion internet users, and every indication that this number will increase exponentially , ICANN became concerned that the internet highway would cease to be limitless. 

ICANN has opened the floor to the world for each to create their own gTLD and registry to govern it.  The new gTLDs can be any configuration (i.e. ‘dot-fashionhouse’, ‘dot-luxurybrand’, ‘dot-city’, ‘dot-beverage’, etc.).  Under this regime, the internet will literally become limitless.  Thus, we may see ‘dot-PRADA, ‘dot-BMW’, dot-Toronto, or ‘dot-wine’, for example.  But it will cost you: $185,000 (US) to be exact.  Applications open on January 12, 2012.  Applicants must demonstrate that they have a legitimate claim to the gTLD they are buying.  Whereas this may be more simple with unique brands (i.e. dot-XEROX), it is complicated for brands that are not as distinctive (i.e. dot-DOVE).  In Canada, both Mars Canada Inc. and Unilever Canada Inc. own rights to the trade-mark DOVE.  If both brand owners have rights to the trade-mark in Canada, who has the right to “dot-DOVE” throughout the world?  This goes to the root of the issue between domain names and trade-marks, which we will see play out in the gold rush for new gTLDs.

Sibling Rivalry: The intersection of Domain Names and Trade-marks

Domain names and trade-mark owners have always had a contentious co-existence.  Whereas trade-mark rights are granted on a use basis, domain names are registered on a “first-come, first-serve” basis.  Obtaining a trade-mark registration requires rigorous prosecution; the threshold for obtaining a domain name is very low.  Trade-mark rights are granted territorially; domain names are global.  Identical trade-marks can co-exist in association with sufficiently disparate wares and services; once a domain name is registered, there cannot be any duplicate domain name.  The exclusivity of the domain name registration and the “first-come, first-serve” characteristics of the domain name can be a great cause of frustration for trade-mark owners.  This frustration will no doubt be compounded with the release of new gTLDs. 

Interview with Damn Heels Entrepreneur

At the last LG Fashion Week I was fortunate to meet Hailey Coleman, Creator and President of Damn Heels Inc.  Hailey's company created a product line that has great potential within the shoe industry.  As a company that is still in the growth stages, I thought it would be interesting to appreciate the practical journey of an emerging Canadian company in the fashion industry.  I hope you enjoy our interview below:

1.  Tell me about your product and how you came up with the idea?
After one excruciatingly painful, hour-long post-party walk home in London, England, I decided that walking the streets barefoot was a faux pas that could – and needed – to be prevented. Damn Heels has introduced sexy, fold-up flats tucked into a small pouch that expands into a trendy tote bag. Women slip their sore, blistered feet into the soft-sided flats and their stilettos into the tote.

The shoes and tote come pre-packaged 

The shoes pack up nice

The shoes come in a variety of sizes
The package folds out into a handy-dandy tote to take your "damn" shoes home.

 2.  Do you have a target audience in mind? What is your strategy to reach them?
Damn Heels is targeting hip, urban, professional women. We’re looking to reach these ladies in unique ways other than the average shoe store.www.damnheels.com.

3.  As an emerging designer and business owner, what were the significant or most surprising challenges you faced? How did you overcome them?
I don’t know if anything was surprising because everything was so new to me. Every step has been a challenge and most importantly a learning experience.

4.  What kind of financial, business or support resources/services were available to you either through the government or the fashion industry? How did they help you?
There are many business plan competitions that offer cash prizes. I’m also working with the Canadian Youth Business Foundation that has some fabulous resources for young entrepreneurs. I think the greatest thing for me has been reaching out to people who have been in the business or other similar industries for advise.

5.  You were quite successful on Dragon’s Den. Tell us about that experience.
Dragons’ Den was a fabulous experience and offered really great exposure for Damn Heels not only in Canada, but internationally as well.

6.  Do you have other projects lined up? Tell us about them.
I’ve started another company called Damn Straight. We’re installing coin operated hair straighteners in women’s washroom. Ladies no longer have to lug the hair straightener to the gym or can give themselves a little touch up at the bar. I’ve got a few other things tucked up my sleeves, but you’ll have to wait and see.

7. As your business grows, are you focusing on the Canadian market or looking abroad? Why?
I’m not only focused on Canada. The world is rather small and there is awesome opportunity everywhere.

8.  What has surprised you the most about your journey to success?
The most incredible part of starting Damn Heels is all the amazing experiences and people I’ve had the opportunity to meet.

9.  From creating to manufacturing to marketing and, finally, sales – what has been the most interesting aspect of the business and why? Which has been the most challenging?
I find the design and the marketing the most exciting part. Sales are not my forte, but I’m working on it.

10.  What advice would you give the emerging designer?
I have a few things that I live by:  Do it! Get comfortable feeling uncomfortable. Put yourself out there.

11.  Where can we find your product line?
Ladies can purchase Damn Heels online and view our retailers at www.damnheels.com.

Ready, Set, Design: Toronto's FDCC's LG Fashion Week Returns

The Fashion Design Council of Canada ("FDCC") announced that it is now taking applications for designers who wish to be a part of its LG Fashion Week during October 17 to 22, 2011.

The FDCC is a non-profit national organization that aims to enrich the commercial viability of Canadian designers both nationally and internationally.  In its twelth year, LG Fashion Week prides itself on being the second biggest fashion week in North America, a significant acheivement.

The opportunities for designers who show at LG Fashion Week can be significant as media, industry, buyers and consumers attend the week-long event. 

For more information, go to http://www.lgfashionweek.ca/

Recent Decisions Confirm Luxury Brands' Rights Over Domain Names

A series of recent domain name decisions confirm that the Uniform Dispute Resolution Policy ("UDRP") is still largely in favour of brand owners.  Domain name disputes are brought under the UDRP to determine a brand owner's right to own a domain name that contains the brand owner's trade-marks or, if the domain name is similar enough, that it causes confusion in the online marketplace.  In the legal world it is a quick, efficient and cost-effective way in which a brand owner can assert its rights to a domain name that is the subject of "cybersquatting".

The practice of registering domain names containing third party trade-marks, without having a legitimate interest in those trade-marks or domain names, is commonly referred to as cybersquatting.  Cybersquatting is akin to "brand hi-jacking".  A cybersquatter will register domain names that are variations of FASHIONBRAND.com in order to:

(a) divert online traffic onto its website,

(b) generate money through pay-per-click mechanisms, or

(c) sell the domain name to the rightful brand owner at a premium. 

This can be very disruptive to the brand owner and can significantly damage its brand.

Three recent decisions confirm that the UDRP is a legal tool that has great utility for the fashion brand: rightful ownership of the domain names: jimmychoo.uk.com, buyvictoriasecretapparel.com and dolcegabbanaapparel.com, dolcegabbanaclothing.com and dolcegabbanaclothingstore.com was granted to the respective fashion houses. 

In order to be successful, the UDRP has a three-part test that must be satisfied:

1) is the domain name is identical or confusingly similar to the brand owner's trade-mark;

2) does the current domain name owner have any legitimate rights or interests in the domain name? and

3) was the domain name registered and being used in bad faith?

In the three decisions mentioned above, the panels all found in favour of the brand owner. 

These decisions remind us that the internet is not as "lawless" as it is often presumed to be.

Cause for Celebration at Annual CFDA Awards

Significant Progress on US Legislative Change to Protect Fashion Designs

In June 2011, the Council of Fashion Designers of America (“CFDA”) hosted its annual Fashion Awards – the fashion world’s equivalent to the Oscars®.  Yet the biggest award granted to the industry came in December 2010 when the Senate Judiciary Committee unanimously passed the Innovative Design Protection and Piracy Prevention Act (the “IDPPPA”), which is the US fashion industry’s latest attempt to secure intellectual property protection for fashion designs.  To date, under current copyright laws in the US, fashion designs have not been protected as they are deemed to be ‘useful articles’ and not works of art.  Powerful players in the fashion industry, through the Council of Fashion Designers of America, have spearheaded lobbying efforts to revamp copyright legislation to encompass the fashion industry.  The IDPPPA has been the most successful attempt. 

Interestingly, at the CFDA Fashion Awards, Diane von Furstenburg, renowned fashion designer and president of the CFDA, on reflection of the IPPPDA’s success simply stated: “I don’t know that fashion is art.  It’s design.  But it has value and we have to protect it.  It’s intellectual property.”  Art or not, there are significant business reasons to protect a fashion design.  Creative ingenuity is creative ingenuity, regardless of the medium, and intellectual property laws aim to protect that creativity.  But valid questions about the impact that this kind of legislation may have remain:

  • Can emerging designers afford to enforce their rights?
  • Does this increase the influence of established designers, who presumably have deeper pockets and “litigation funds”?
  • Will it negatively impact the high street brand that profits off of haute couture inspired pieces?
  • Will the increased costs to the designer be offset by increased cost of clothes for the consumer?
The IDPPPA reflects its predecessor in that it is an amendment to the current US Copyright Act and provides short term protection (3 years) for fashion designs.  (It is interesting to note, however, that existing US copyright protection is granted protection for the life of the author, plus an additional 70 years after the author’s death.  Although the move to legislate specifically for the fashion design demonstrates a growing recognition of the intellectual property issues specific of the fashion industry, the stark difference in the duration of protection of fashion designs as opposed to copyrighted works indicates that fashion designs are not seen as equal creations.)

“Fashion design”, under the IDPPPA, is defined as:

“the appearance as a whole of an article of apparel, including its ornamentation, and includes original elements of the article of apparel or the original arrangement or placement of original or non-original elements as incorporated in the overall appearance of the article of apparel that are the result of a designer’s own creative endeavour, and provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles”

Thus, it is clear that the application of the IDPPPA within the fashion industry will be very select.  The threshold for protection remains somewhat high in that it requires novelty and originality. 

The test for infringement of a qualifying fashion design is “substantially identical”.  However, the IPPPDA does contemplate where the overlap in design features is a “result of independent creation”. 

In addition to the endorsement by the Senate, the IDPPPA is also supported by various segments within the fashion industry, such as the CFDA and also the American Apparel and Footwear Association (“the AAFA”).  It is significant that the IPPPDA is backed by the AAFA, as the organization did not support the prior attempt at legislative change. 

An Interview on Fashion Law in Canada with...Me!

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.

Interview with Fashion Lawyer Ashlee Froese

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).

I will be addressing this topic and other emerging hot topics on canadafashionlaw.com or on my twitter account @brandfashionlaw. Feel free to follow me there.

How Does Politics Affect the Fashion Industry?

Fierceness and fabulousness aside, the fashion industry is a serious (and lucrative) business.  It is estimated that the fashion industry generates $500 million for Ontario annually.  In fact, Toronto is home to the third largest design workforce in North America.  However, Ontario has refused to recognize the fashion business as a cultural industry thereby making fashion designers ineligible to receive any arts grants and/or funding.  For the emerging designer, such financial assistance can be critical to growing the business.  Conversely, the Quebec government has significantly invested in Montreal’s fashion industry.  For example, two years ago it earmarked $82 million to develop and internationally promote Montreal’s fashion industry.  Moreover in Quebec, fashion also qualifies for arts and cultural funding, which has seen immediate benefits.  Once the fashion industry was eligible for cultural grants, employment in the fashion industry doubled in less than a year.  Advocates within the fashion industry (such as the Fashion Design Council of Canada and the Canadian Apparel Federation) note that Quebec’s preferential treatment is benefiting the Montreal design community, much to the detriment of the Ontario design community.

If we can see the detrimental effects that varying policies can have on the design communities within Canada, how does Canada as a whole fare internationally and what are the implications for Canada?  The Office of the United States Trade Representative recently released its 2011 National Trade Estimate Report on Foreign Trade Barriers, wherein it examines obstacles within Canada that negatively affect the US’s willingness to trade with Canada.  In 2010, Canada did not fare well.  Canada was listed on the Priority Watch List because of its failure, in part, to implement copyright reform and bolster customs border enforcement practices.  Once again in 2011, the US continues to urge Canada to address these issues.  Although the fashion industry was not specifically cited as a concern in this report, it is clear that upon global comparison, Canada is coming up short, which in the long term can be detrimental to the growth of Canada’s fashion industry. 

It is not surprising that in countries where the fashion industry is a major contributor to the economy, the domestic intellectual property laws facilitate adequate protection of fashion designs.  France and Italy are examples of countries that have instituted laws that explicitly protect fashion designs.  The United States is currently attempting to reform its copyright laws to offer protection specific to fashion designs.  In Canada, however, the fashion designer has to meander through a myriad of intellectual property laws to garner protection, although none that are specific to the entire fashion piece. 

Canada’s fashion industry has the potential to be a big player in the international arena, but with designers such as D Squared moving abroad, is Canada really supportive of its designers, thereby enticing them to stay in Canada?

Hot Off the Press: Supreme Court of Canada Confirms First to Use Trade-mark Principle

For the first time since 2006, the Supreme Court of Canada ("SCC") has issued a decision on trade-marks law (Masterpiece Inc v Alavida Lifestyles Inc. 2011 SCC 27).  In a nutshell, this case deals with a company’s right to obtain a trade-mark registration in Canada where a similar trade-mark (albeit unregistered) is already in use in the Canadian marketplace. 

Trade-marks: Who cares?

First, I think it is important to appreciate the significance that trade-marks have to a business.  In the SCC decision, Justice Rothstein succinctly explains the importance of trade-marks to both a business and its consumers:

“Trade-marks in Canada are an important tool to assist consumers and businesses.  In the marketplace, a business marks its wares and services as an indication of provenance.  This allows consumers to know, when they are considering a purchase, who stands behind those goods or services.  In this way, trade-marks provide ‘a shortcut to where they want to go’”.

Given the important role that trade-marks play for both the business and the consumer, problems arise where competitors have similar trade-marks:

“Where the trade-marks of different businesses are similar, a consumer may be unable to discern which company stands behind the wares or services.  Confusion between trade-marks impairs the objective of providing consumers with a reliable indication of expected source of wares or services.”

Trade-marks 101

This case is really dealing with the intersection of statutory trade-mark rights (i.e. a trade-mark registration) and common law trade-mark rights. 

Trade-mark rights are acquired in Canada through use.  Common law trade-mark rights exist as soon as a trade-mark is used in Canada.  There is no requirement to register a trade-mark in order to have rights to the trade-mark in Canada.  A trade-mark registration, however, affords benefits above and beyond common law trade-mark rights, which is why it is favoured by companies. 

The Facts

In order to understand this decision, it is first necessary to understand the facts of the case. 

Masterpiece Inc. and Alavida Lifestyles Inc. operate in overlapping industries: the retirement residence industry.  The parties operate in Alberta and Ontario, respectively.   

In 2001, Masterpiece Inc. started to use a series of trade-marks containing the word MASTERPIECE, some in combination with the word LIVING. 

In December 2005, Alavida Lifestyles Inc. filed a Canadian trade-mark application for MASTERPIECE LIVING based on proposed use.  It began using the trade-mark in January 2006. 

Masterpiece Inc. subsequently filed a trade-mark application for MASTERPIECE.  However, this was rejected by the Canadian Trade-marks Office based on Alavida’s trade-mark application. 

Masterpiece Inc. sought to invalidate Alavida’s Lifestyles Inc.’s trade-mark registration for MASTERPIECE LIVING on the basis that Masterpiece Inc. had used its trade-marks prior to Alavida Lifestyles Inc.’s trade-mark and, therefore, Alavida Lifestyles Inc.’s trade-mark should not have registered.

The Trial and Appeal Level Decisions

At trial, the Federal Court upheld Alavida’s Lifestyles Inc.’s trade-mark registration.

At the appeal level, the Federal Court of Appeal agreed with the trial judge.

The case was appealed to the Supreme Court of Canada, which is the highest level of court in Canada.

The Issue

As posed by the SCC:

“The question in this case is whether the trade-mark MASTERPIECE LIVING proposed and subsequently registered by Alavida Lifestyles Inc., a company entering the retirement residence industry in Ontario, was then confusing with the unregistered trade-marks or trade-name previously used by another company, Masterpiece Inc., in the retirement residence industry in Alberta.”

The Decision

The SCC held that Alavida Lifestyles Inc.’s trade-mark registration should be expunged (i.e. invalidated) on the basis that it was confusingly similar with Masterpiece Inc.’s previously used trade-marks. 

The Reasoning

Basically, the SCC declared that use of a trade-mark trumps all.  Those that are first to use a trade-mark, have first rights to the trade-mark (regardless of whether the trade-mark is registered or not). 

Confirming the national scope of trade-marks, the SCC held that it was irrelevant that Masterpiece Inc. and Alavida Lifestyles Inc. operate in different provinces.  The confusion analysis must be undertaken under the hypothetical assumption that the trade-marks exist in the same market.  This is based on the principle that a trade-mark registration grants exclusivity throughout Canada.  Therefore, there must be no likelihood of confusion throughout Canada (regardless of whether a competitor’s trade-marks are registered or common law trade-mark rights) in order for the trade-mark to register:

“In order for the owner of a registered trade-mark to have exclusive use of the trade-mark throughout Canada, there cannot be likelihood of confusion with another trade-mark anywhere in the country.”

Determining the likelihood of confusion between trade-marks (frustratingly for our clients) is a subjective test.  The court has determined that the appropriate test is to determine confusion is to examine the trade-marks from the perspective of a “casual consumer somewhat in a hurry”, who is regarding the trade-marks on first impression with an imperfect recollection of the parties’ trade-marks.  Subsequent research undertaken by the consumer to dispel any possibility of confusion should not be taken into account:  “it is confusion when [the consumer] encounters the trade-marks that is relevant.”

What Can You Do To Avoid This?

Given that this decision was released only very recently, application of this decision has yet to be tested.  However, it does confirm the necessity of conducting comprehensive due diligence prior to seeking to register trade-marks in Canada.  Conducting fulsome preliminary trade-mark availability searches can have great utility. 

A preliminary trade-mark availability search is not mandatory, however, it is a prudent course of action to take in terms of branding due diligence.  In essence, it will provide the opportunity to determine whether pre-existing third party trade-marks may pose a significant barrier to registration.  This helps reduce the risk of re-branding your company’s product or services at a later date and losing goodwill and market recognition your company has developed.