Fashion Design Piracy; The Louboutin Case And The Legal Considerations
Author: O. M. Atoyebi S.A.N Contributor: Efe Iseghohime
The Fashion Industry is one of the most dynamic industries in recent times. Trends are being set daily and we receive a constant “Out with the old, in with the new” perspective. This we see in design, style, pattern and colour arrangement. What protection is then available for the creators of these unique ideas and creations? How aware are these fashion creators and designers of their rights and protection under the law?
It is almost impossible to create a masterpiece without other designers trying to imitate that design. Some go as far as replicating these designs in mass production. This and many more issues are what this article aims to address.
WHAT IS FASHION DESIGN PIRACY?
Fashion design piracy occurs when part or all of a designer’s original design is reproduced or redistributed under the name of an unauthorized entity[1] [1]. This is not the same as counterfeiting. Counterfeiting is the act of reproducing another brand’s identity e.g. The famous Toke Makinwa has a bag line with the initial “TM” on all the bags. It becomes counterfeiting when another brand creates a bag and still puts the same initials on them, in a bid to deceive the public and make them believe that they are buying Toke Makinwa’s brand. Most times brands that create counterfeit, create substandard products that cause a negative ripple effect on the brand they are trying to imitate.
Piracy on the other hand is in the design of a product. Brands that involve in piracy pass these designs off as their own original work. This act is as detrimental to authors as plagiarism.
With the current rise in the use of social media, it is easier to market and advertise using celebrities and influencers. This brings very fast results most
times, considering the amount of time an average person spends on these social media apps. This means that it has become much easier to pirate an original idea.
It is also worthy of note that fashion piracy is not limited to clothes alone, it applies to accessories, travelling boxes, shoes and even perfumes etc. Similarly, piracy doesn’t hurt big brands alone, smaller brands suffer the same from bigger brands imitating their designs and because these big brands have a wider reach, it is easier to make these designs look like their original work at the detriment of the smaller brands.
In the Christian Louboutin and Yves Saint Laurent (YSL)[2] [1] famous case, it was a matter of alleged ownership of the “red lacquered sole” featured in the footwear produced by Louboutin. In 2011, when Yves Saint Laurent released its monochrome footwear collection in a range of colours, including red, Louboutin brought an action for infringement of its red sole trademarks. The US Court of Appeal for the Second Circuit, ruled that Louboutin has the right to trademark protection over its red soles. In the same vein, YSL may also continue to sell shoes with red soles if the entire shoe is red.
LEGAL CONSIDERATIONS
The laws protecting the ever dynamic and well-evolving fashion industry are but a few and largely inadequate to cover grounds. Everyone under the practice of law has resorted to the laws that guide intellectual property in Nigeria. These laws are:
- The Copyright Act
Alongside protecting other areas, this act is made to protect artistic creations which Fashion Designs fall under by virtue of Section 1 of the Copyright Act. The lacuna in this act lies in Section 1(3), which states that “An artistic work shall not be eligible for copyright, if at the time when the work is made, it is intended by the author to be used as a model or pattern to be multiplied by any industrial process”.
The bulk of the fashion industry professionals are in it for business, and to make money off their mastery, this act does not protect them. The United States of America Copyright Act may not be there either, but it recognizes fashion designs as it provides that “if and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article“. Thus, this legislation goes beyond the multiplicity of the creation but the uniqueness of the creation before conferring it with the Copyright protection.
Furthermore, another evolving area of the fashion industry is one that deals with our olfactory sense which is the nose. Perfumes are also artistic creations even though it is still debatable. A novel decision was made in the L’oreal lancome v. Kecofa case where it was held that the smell of a perfume may, in principle, be copyrightable. Evidence was taken from both laboratories and it was confirmed that twenty-three 0ut of twenty-five principal chemicals in the fragrance formulation were the same[3] [1]. L’oreal sold its fragrance for 50 Euros and Kecofa sold for 5 Euros. This goes to prove that even fragrances can be pirated and are very deserving of Copyright protection.
The Nigerian Copyright Act needs amending that would include these evolving areas.
2. Patent And Design Act
This is one of the major focuses of this article. This Act aimed to protect fashion designs on two grounds, which are:
- It must not be contrary to public order or morality.
- It must be such that before the date of application for registration, it would not have been made available to the public anywhere and at any time by means of description. It must be new.
The first ground is very applaudable, but the second ground which is supposed to protect the ideas of these creatives did not exactly seem to cure the problem. It is important for these ideas to be first tested in the public domain to determine
their receptiveness before registration. Also, many fashion designers are not aware of this law and already have their designs on display in the market. What then is their remedy?
This Act needs amendments to meet with the times. Fashion designers with old designs already in the market can be remedied just the way the United States of America tried to remedy theirs, although limited to one year of release.
The U.S Design Patents Act protects product packaging which is a very important element of today’s fashion industry and product design. In order to protect a product design, or in this case a fashion brand, the owner must prove that consumers associate the design with the brand as seen in the Louboutin and YSL case.
Just recently, the Annual African Magic Viewers Choice Award (AMVCA) was hosted, and we could see how fashion designers outdid themselves to show their creativity. Toyin Lawani styled Ifuennada in a Met Gala worthy outfit that had masks all over the Skirt of the dress. This is something that has never been seen before, but can no longer be registered under the Nigerian Patent and Design Act because it has been made available to the public.
3. Trademarks Act
Trademarks are used to identify and distinguish the source of the goods of one party from those of others in the course of trade. On registration of these marks, signs, symbols or logos, they become exclusive to that brand alone. How then is this relevant to fashion design piracy? In the fashion industry, we see how jackets, shawls etc., are imprinted with no other design but logos. Examples of brands that have done this are Fendi, Burberry and even our own Nigerian designer Ashluxe. No other brand can try to pirate their designs of these pieces for obvious reasons except in cases of “counterfeiting” which is slightly away from our discourse. This is one reason why Trademark registration is important.
RECOMMENDATIONS
- Fashion Designers should always sign Non-Disclosure Agreements with their employees upon employment, to protect unreleased designs that are usually within the reach of employees.
- Smaller Fashion design brands should not be afraid to register their designs as soon as the design ideas pop up, to prevent piracy and theft from bigger brands with a wider audience.
- Fashion Design Piracy should be taken more seriously as it can negatively affect the economy of the country. When there is inadequate protection of designs, it would create an unhealthy creative environment. Designs would be treated with less respect, recreated with less originality and sold at lower prices, depriving the country of millions of Naira in tax revenue.
- The amendment of the Copyright Law will encourage the production of inspired works; it would stimulate creative workers to develop their own designs independently.
- The Patent and Design Act should be amended to give a time frame for novel designs to be registered, not limiting the possibility of registration to the period before its introduction to the public space.
- More sensitization should be carried on by the Agencies of Government meant to implement the Copyright Act, Trademarks Act, Design and Patent Act, to protect upcoming fashion designers who may not even be literate enough to be aware of these laws available to them.
CONCLUSION
Essentially, it is a question of if we, as a country, want to respect and protect individual and unique ideas and promote creativity and competition in the fashion marketplace. To do so, we must grant protection to all artists’ ideas, including fashion designers. The best and most effective method is protection under a design right, rather than copyright, which can be formatted to the specifics of this industry. And with a grant of protection, not only will creativity increase, but also more jobs and competition will be created, benefiting the overall economy.
Ultimately, fashion is not merely clothing but an art; a form of expression that warrants the creation of property rights[4] [1].
[1] Mary Kassandra Ross, ‘The Effects of Design Piracy on Consumer Perception: When Large Fashion Corporates Pirate Small Independent Fashion Designers’ (2018) https://etd.auburn.edu/handle/10415/6308#:~:text=Unlike%20most%20creative%20industries%2C%20fashion,name%20of%20an%20unauthorized%20entity [2] accessed 9 May 2022
[2] No.11-3303 (2d Cir. 2013)
3] Simon Pitman, ‘L’oreal wins copyright claim from dutch supreme court’ (2006) < https://www.cosmeticsdesign-europe.com/Article/2006/07/31/L-Oreal-wins-copyright-claim-from-Dutch-Supreme-Court [3]> accessed
[4] Y. Eldik, M. Michaels, ‘Eyes off the Runway: How to Prevent Piracy in Fashion’ (2014) https://www.hnlr.org/wp-content/uploads/sites/22/Eyes-off-the-Runway-Eldik-Michaels1.pdf [4] accessed 19 May 2022