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: 

CanadaFashionLaw Debuted by Osgoode Alum, Ashlee Froese

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.