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.