Riassunto Fashion and Intellectual property law

What is intellectual property?

Keyword: invention. Patent for invention (=brevetto). In fashion, the brand is a concept that derives from marketing, but if we want to focus our attention on law, we can talk about a trademark (=marchio). It is a very strategic topic.

Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; design; and symbols, names and images used in commerce. Definition: à our attention is on the economic field, strictly related to the activities of the enterprises in the fashion industry. ® IP is protected in law by, for example, patents, copyrights and trademarks, which enable people to earn recognition or financial benefit from what they invent or create. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which à creativity and innovation can flourish. We tend to say that the trademark is an instrument in the hand of the brand owner to gain financial benefits, but on the other hand it is also an instrument to ensure to the customer to find in the market products with a certain quality, and the competition and the democratic asset of the market itself, because there are a lot of trademarks in the markets.

• Ø Copyright: we can find it in books and websites for example;
• Ø Patent: related to the concept of technological innovation and we can find it in products;
• Ø à Trademark: difference between the two symbols R means registered trademark, so that it has been registered in a particular place where the trademark is used. TM can have 2 meanings: it is an unregistered trademark, so a kind of minor protection compared to the registered one; or it is a trademark waiting for registration, because when I want to register a trademark, the first step is to fill an application and we have to wait on average 8 months or 1 year or more to have registration. In the meanwhile, I can use TM, because I don’t have the registration yet;
• Ø Design: a very important kind of intellectual property right for the fashion industry, maybe the most important one.

The Venetian patent statute (March 19, 1474)

We tend to consider that IP rights are somehow strictly connected with the present economic assets we live nowadays, but this is not true, and we have come historical examples that are very old and that can help us to somehow understand better what is behind those rights.

The Venetian Patent Statute of March 19, 1474, established in the Republic of Venice the first statutory patent system in Europe, and may be deemed to be the earliest codified patent system in the world. The Statute is written in old Venetian dialect. It provided that patents might be granted for "any new and ingenious device, not previously made", provided it was useful. By and large, these principles still remain the basic principles of patent law.

“[T]here are in this city, and also there come temporarily by reason of its greatness and goodness, men from different places and most clever minds, capable of devising and inventing all manner of ingenious contrivances. And should it be provided, that the works and contrivances invented by them, others having seen them could not make them and take their honor, men of such kind would exert their minds, invent and make things which would be of no small utility and benefit to our State. Therefore, decision will be passed that, by authority of this Council, each person who will make in this city any new ingenious contrivance, not made heretofore in our dominion, as soon as it is reduced to perfection, so that it can be used and exercised, shall give notice of the same to the office of our Provisioners of Common. It being forbidden to any other in any territory and place of ours to make any other contrivance in the form and resemblance thereof, without the consent and license of the author up to ten years. And, however, should anybody make it, the aforesaid author and inventor will have the liberty to cite him before any office of this city, by which office the aforesaid who 1 shall infringe be forced to pay him the sum of one hundred ducates and the contrivance immediately destroyed. Being then in liberty of our Government at his will to take and use in his need any of the said contrivances and instruments, with this condition, however, that no others than the authors shall exercise them.”

• • à “Clever minds, capable of devising and investing all manner of ingenious contrivances” something strictly related to technology and the inventor is the person capable to invent new technologies. It was very important at that time but also for us today, to have people capable of ensuring a good level of technology. That’s why all the legislation related to patents is very important and we can use them as an indicator of the level of technology of a state;
• • à “Things which would be of no small utility and benefit to our State” the Republic of Venice decided to afford protection to patents because they focused their attention to utility;
• • à “New ingenious contrivance, not made heretofore in our domination” in order to obtain a patent it is necessary that there is something new compared to the past. Talking about a product or a process. I have to change something in the pre-existing technology;
• • à “Give notice of the same to the office of our Provisioners of Common” this is more or less what we call today registration: if we want to obtain a patent today, we have to go to a specific office and fill an application, in order to have a registration. This sentence says exactly the same;
• • “It being forbidden to any other in any territory and place of ours to make any other contrivance in the à form and resemblance thereof” forbidden. Here we find what is called the “scope of protection”, so what is the content of the patent right, so to forbid everyone to do the same product as mine;
• • à “Without the consent and license of the author” very important part: the two words “consent” and “licence” open the door to what we call today “licence agreement”. You cannot produce a patented product without the consent and licence. But, if you ask a licence, of course you can and you can see how modern this definition is, because it is already provided that a patent can be subject of a specific agreement called “licence agreement”;
• • à “Up to ten years” patents at that time had a duration of 10 years. Nowadays, it is 20 years and after that, the patent falls in public domains, so everybody can produce that particular product without any kind of limitation. So, a patent is a valuable instrument to ensure the technological progress, because after 20 years all the knowledge for that technological invention becomes common for everyone, and others can go ahead with technological progress;
• • à “Author and inventor will have the liberty to cite him before any office of this city” the inventor has the right to sign the infringement before the judgment of the public and in case of infringement it is possible for the author to obtain money as a kind of restore to what was lost;
• • “Who shall infringe be forced to pay him the sum of one hundred ducats and the contrivance immediately destroyed”.

500 years ago, in Venice it was already very important to protect patents and they were able to write a very comprehensive and modern definition of it that is more or less the same respect to the definition we use today.

IP rights in a sneaker

IP rights in a sneaker: design, logo and brand (like Nike), particular technology for the sole for example or other parts. So, we are talking about the technological aspect, that we have to consider. Can copyright be involved in the business of sneakers? Nike is very famous for the commercials: all the advertising campaign related to the promotion of this product is protected by copyright. So, we can understand that IP rights can also be used together to protect the same product under many different aspects.

• v Patent protects the technology used to develop the shoe.
• v Design protects the “look” of the shoe.
• v Trademark distinguishes the shoe from similar products from other manufacturers and protects the “reputation” of the shoe (and of the company that produces it).
• v Copyright protects every artwork and audio-visual creation used to advertise the shoe. 2

IP rights

a. Patents

They are related with innovation and technology. From a legal point of view, a patent is an exclusive right granted for an invention. Generally speaking, a patent provides the patent owner with the right to decide how - or whether - the invention can be used by others. In exchange for this right, the patent owner makes technical information about the invention publicly available in the published patent document.

b. (Industrial) design

An industrial design constitutes the ornamental or aesthetic aspect of an article. A design may consist of three-dimensional features, such as the shape of surface of an article, or of two-dimensional features, such as patterns, lines or colours.

c. Trademarks

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks date back to ancient times when artisans used to put their signature or “mark” on their products.

d. Copyright

Copyright is a legal term used to describe the rights that creators have over their literary and artistic works. Works covered by copyright range from books, music, paintings, sculpture and films, to computer programmes, databases, advertisements, maps and technical drawings.

Now, under the copyright, we also have the protection of kinds of works that are currently used in commerce or economic activities of the company, like the databases, advertisements, computer programmes. So, also the copyright law has to be considered as a part of the instruments that a company has to protect their rights.

e. Geographical indications

Geographical indications and appellations of origin are signs used on goods that have a specific geographical origin and possess qualities, a reputation or characteristics that are essentially attributable to that place of origin. Most commonly, a geographical indication includes the name of the place of origin of the goods.

In the food sector we have DOC, DOP, IGP, DOCG and so on. But also “Made in Italy” can be considered as a geographical indication and there are some rules that regulate the conditions for this kind of expression (see in the next lessons).

f. Trade secret

Trade secrets are IP rights on confidential information which may be sold or licensed. The unauthorized acquisition uses or disclosures of such secret information in a manner contrary to honest commercial practices by others is regarded as an unfair practice and a violation of the trade secret protection.

In the food and beverage, I cannot register the receipt with a patent. And I can only use the trade secret (like Cola-Cola). Because if I want to prevent the others to copy the receipt, I need the trade secret. It is a neglected category because you apply it when you cannot obtain a patent protection, but it is very important as well. Sometimes the companies, even in presence of the chance to register a patent, they consider very carefully the situation and they decide to maintain the secret.

Also, the list of the clients can be considered as a trade secret, because it takes years for a company to have a huge list of clients, and it would be a problem if this list goes in the hands of a competitor. 3

Fashion law

Fashion law is a specific field of law that deals with legal issues that impact the fashion industry. Fundamental issues in fashion law include intellectual property; business and finance, with subcategories ranging from employment and labour law to real estate; international trade and government regulation, including questions of safety and sustainability; dress codes and religious apparel; consumer culture; privacy and wearable tech; and civil rights. Fashion law also includes related areas such as textile production, modelling, media, and the cosmetics and perfume industries.

https://www.qmul.ac.uk/law/media/law/docs/undergrad/03-Buchalska.pdf

Fashion law is the legal specialty that addresses the legal issues typically faced by fashion companies and fashion designers. As with other specialties at the intersection of business law and intellectual property… fashion law is actually a compilation of legal disciplines. Thus, fashion law incorporates relevant concepts from intellectual property contracts, corporate law, commercial sales, real estate, employment, advertising law and international trade and customers, among others.

à Conclusion of the article The subject-matter of this presentation is to answer the question: “is fashion law a new approach?”. It is incontestable that fashion law has a huge impact on our economy and society. The fashion industry is an industry of contradictions; it is both creative and derivative, artistic and commercial, innovative and nostalgic. In that sense, although a creative industry, it is still an exceptionally commercial industry, driven by consumer demand across a wide spectrum of tastes, behaviours and income levels.

Fashion law & IP

The fashion industry is a global phenomenon with an international language understood by millions of people. Fashion is one of the world’s most creative and inventive industries around the world.

WIPO: World intellectual property organization

It is an international organisation, an agency incorporated under the United Nations. The headquarter of WIPO is in Switzerland but with worldwide competences. à - https://www.youtube.com/watch?v=qzKjahXHm80 from the UK intellectual property office.

Nowadays for everyone is a good strategy to have a trademark to promote his/her activity on a social media for example. It doesn’t matter the dimension of the company, but it is very important to have a knowledge of the use of the IP rights if you want to start up even a small business. In particular in the fashion sector it is crucial to start with a clear strategy about the protection of the IP rights. Just to give you an example, before adopting a trademark today, it is very important to make “availability searches” in order to observe if a trademark is available, because if you start adopting a trademark which is overlapping with another trademark, or with a one that can create confusion with your trademark, it can be very dangerous for you and for your activity, because the owner of the earlier trademark has the right to stop your use of the trademark and to obtain from a judge an injunction to order you to stop using that trademark and to adopt a different one. 4

Copyrights, patents, trademarks, domain name, design, geographical indications, trade secrets, collective and certification TM

Characteristics

Copyrights: rights that creators have over their literary and artistic works (books, music, database, adv, computer programmes).

Patents: innovation and technology, it is an exclusive right granted for an invention.

Trademarks + domain name: Regulation EU 2017/1001: any sign (letter, number, colour, shape packaging, sound), capable of distinguishing the good or services of one enterprise from those of competitors and being represented on the Register of EU trademarks enabling authorities to determine the matter of protection. Do not describe what you sell. Help produces to retain their customers, making themselves recognizable. So legal rights and marketing tool.

(Industrial) design: ornamental or aesthetic aspect of an article.

Geographical indications + appellations and of origin: sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics essentially attributable to that place of origin. Commonly includes the name of the place of origin of the goods. DOC, DOP, IGP, DOCG, Made in Italy.

Trade secrets: IP rights on confidential information which may be sold or licensed. Neglected category, you apply it when you cannot obtain a patent protection. List of clients.

IP rights

Copyrights: no registration, it is sufficient the creation of the work.

Patents: registration.

Trademarks + domain name: registration + non registered TM.

(Industrial) design: registration + non registered design.

Geographical indications + appellations and of origin: registration.

Trade secrets: no registration.

When IP arises

Copyrights: creation of the work.

Patents: when I fill the application for registration.

Trademarks + domain name: when I fill the application for registration + I start using the TM for unregistered TM ones.

(Industrial) design: when I fill the application for registration + I start using it for unregistered.

Geographical indications + appellations and of origin: control of information.

Main requirements

Copyrights: original, fixed in a tangible medium of expression (tangible work of art).

Patents: absolute novelty (prior art), inventive step (specification of novelty), industrial applicability (no work of arts).

Trademarks + domain name: relative novelty, distinctive character (not origin of a product), lawfulness (not infringe the law).

(Industrial) design: absolute novelty, individual character (= inventive step), visibility (applied on external part).

Trade secrets: information under the control of the owner, information not disclosed.

Terms of protection

Copyrights: 70 y from the death of the author.

Patents: 20 y from the application, not renewable, public domain after 30 y.

Trademarks + domain name: 10 y from the application, renewable.

(Industrial) design: 25 y for registered design, 3 y for non registered design from when first made available to the public.

Trade secrets: until the information remains secret. 5

IP rights and domain name

IP rights When we see a circular shape, we are talking about a kind of right that doesn’t need registration, like copyright and trade secrets. When we see the rectangular shape, we need registration, like patents (that need registration without any doubts), trademarks, where the most part of the area is the registered one, but we also have a circular shape inside, for non-registered trademarks.

In the scheme we also have another category: the domain name. Today, every company has the need to have a website and it is very common that the word to access that website is the same as the trademark, and it is called domain name. It is the technological version of the trademark and it is very important for every company to have an identity on the Internet. So, when we c