European Judges Forum
European Patent Academy
Venice International University, isola di San servolo
14 - 15 novembre 2008

Sessanta giudici Europei esperti nel campo della proprieta' intellettuale si incontrano a Venezia venerdi' 14 e sabato 15 novembre, per discutere di un tema scottante: la difesa giudiziaria dei brevetti.
Non sono poche le aziende, in particolar modo nel Nordest, che si sono sviluppate partendo dalla protezione di un'invenzione e quindi con un brevetto. Mentre per la tutela dei marchi le norme hanno valore su tutto il territorio comunitario, per la tutela dei brevetti, fattore determinante per la competitivita' di un'azienda, non vi e' ancora uniformita' e ogni Stato procede in modo diverso, con comprensibili problemi, furti e difficolta' nella difesa di brevetti registrati all'estero.

San Francisco October 29th, 2008

First of all, I would like to thank the Arts of Fashion Foundation for giving me the opportunity to expose the legal protection in the fashion sector applicable in Europe. I will try to explain the situation in the most simple way as it is quite a complicated issue.

- Introduction
Fashion is a multicultural phenomena and has an international vocation. Fashion can be found in every part of the world, like music, visual art or cinema. As a product, apparel circulates easily. The rights attaching to such goods are often infringed. The increasing movement of immaterial goods have not only benefited to the fashion sector but this sector faces counterfeit worldwide. Therefore, it was felt necessary to analyse the legal mechanisms which protect and encourage creativity in the fashion sector.

Having established the “raison d’etre” (reason) of the subject, it is necessary to consider the legal nature of fashion designs, as well as the legal regime to which they are subject, including any protection which they afforded.

But before developing the legal nature of fashion designs, it is useful to give a definition and the specific characters of “créations de mode”, better known as fashion designs.

- Definition and specific characters of fashion designs
What is a fashion design ? What are the specific characters of fashion goods ?

The fashion design is a combination of elements such as the features of the lines, contours, colors, shape, texture and materials which offer a visual impact resulting in an image. This image is transformed into a prototype becoming the support for its industrial reproduction (mass-production).

Fashion design presents also specific characters such as:

first – the likeness between fashion goods such as a jacket looks like another jacket, a dress looks like another dress, and so on, and so on.

second -  the ephemeral character of fashion, designs are in constant renewal.

third – the ambivalent character of fashion designs. Original fashion designs are mass-produced.

fourth – if you look at a fashion design, you see it in a certain form and it reveals emotion such as it’s beautiful, I like it, etc.
So fashion designs are composed of two elements: an aesthetic effort and its utilitarian character. Fashion falls under applied art, l’Art d’habiller.  
Already, we can say that the nature itself of fashion design will render difficult legal protection.

- Elements excluded from protection
I would like to explain what is excluded from the protection : the idea, in itself is not protected, only the form or manner in which it is expressed is protected. Also excluded from protection the style, the shape and the trends such as color orientation, length, width of  shoulders, waist placement are not protected by the law. For example: the style of Giorgio Armani and Donna Karan are similar; the shapes are pure and both of them use soft textiles. This is permitted.
Another example can be the trend to make your silhouette look longer which is characteristic of certain fashion designers, like Cerruti, Jil Sander and Giorgio Armani. Or to propose clothes with contrasted colors and motifs, like Versace, Dolce & Gabbana, Christian Lacroix. Or to get close to minimalist art, like Calvin Klein, Prada, Courreges. 

- Legal nature of fashion design: aesthetic innovation
Let’s consider now, the legal nature of fashion designs.
Although, fashion designs sometimes incorporate technological innovation, emphasis is mainly placed on the legal protection of fashion designs that are considered as aesthetic innovation.

What is aesthetic ? Aesthetic is the “science de la forme”- science of shape. Fashion goods being a “creation de forme” are considered as aesthetic innovation. Protection  analysis is based on the nature of fashion designs mainly their intrinsic value of fantasy and aesthetic innovation. 
 
Aesthetic establishs a hierarchy between creations: from rich artistic works to simple works which are ephemeral and oriented to fashion with commercial  purposes.
If we apply this hierarchy to fashion sector, we can make three categories : haute couture may fall under artistic work, high end ready to wear may be qualified as applied work of art and ready to wear can fall under industrial designs. This is only hypothetical, because legal protection requires novelty and originality of the fashion designs. In case fashion designs are not considered original they fall into the public domain and can be used freely.  

- Legal protection
From the legal point of view, the aesthetic covers the “creation de forme” which is governed by intellectual property law. As fashion designs are between art and industry, it implies that they have an ambivalent character. This means that potentially , they are subject to two legal regimes.
If  fashion design is qualified as ornamental creation, the legal protection will fall under design. If it’s qualified under artistic creation, the legal protection will be copyright. The applied work of art implies artistic creativity but with industrial reproduction. 
On one hand, fashion designs will be protected under Industrial Property Law. 
On the other hand, applied works of art will be protected under Copyright.

 - Criteria for protection
In both cases, to be eligible to the protection under Industrial Property Law and Copyright, the criteria must be fulfilled. A work of art is going to be protected if it is new and original. The intensity  of the creativity distinguishes the design from the applied work of art.

In the case of an applied work of art, the law refers to the condition of “individuality”, and for the design, the law takes into account the criteria of “originality”.

“Individuality” means: subjective novelty, which is the result of the personal creativity of the author. It implies that the creator has done the work independently without the imitation of
a design that already exists.
We have to apply this criteria of individuality to the applied work of art in the fashion sector. The  purpose of  wearability of fashion designs doesn’t influence the protection under copyright. The protection cannot be denied for these objects eventhough the artistic creativity is limited. This is the actual philosophy behind most European Copyright Laws.
To fall under the protection of copyright, an applied work of art has to be different from the already existing objects and has to create new characteristics elements. Simple changes of a pre-existent form is not enough. Taken in an abstract way, it is difficult to understand its application in practice.
Therefore, I will give you an example. In one case in France, the Appeal Court had considered the personal activity of the fashion designer Jean-Paul Gaultier regarding his adjustments (adaptation) of the Austrian jacket to be protected under Copyright. The Court has judged Gaultier’s design to be individual. The Court said, and I quoted:
“concerning the modifications made by Jean-Paul Gaultier  to the design of Austrian jacket such as the taken in at the waist, sleeves dimensions, smaller wrists, the ornamental details as ribs  and  the black triangles. All these testified as an artistic research and expression of the personal vision of the creator.”
The Court has decided that Jean-Paul Gaultier’ design is different from the Austrian jacket and therefore is protected under the French Copyright Law and cannot be copied.       
    
« Originality » of design. As design is similar to the applied work of art, the distinction is only made by the intensity of the creativity. Therefore there is no clear lines between both criteria.
 « Originality » means: an objective novelty. Designs have to present a new creative value, a new aesthetic effect regarding the forms in the public domain. In the fashion sector, novelty is often a combination of original and new elements already known. A certain numbers of expressions are in fact adaptation, adjustment. Often, many new expressions are minor in respect to what already exist, what already have been seen and designs often have a lot in common. Novelty may be established if the object is different from what already exist. Like individuality, simple novelty is not enough to protect design. Therefore, originality implies a certain degree of novelty which express a  creative activity. In general, it is delicate to evaluate the objective novelty.
A certain degree of inspiration is permitted, but new aesthetic innovations are required for protection. 

- Legal protection – definition and exclusive rights
Intellectual property gives exclusive right to the creator of an original work for a certain period of time. Exclusive right means that only the creator is free to exercise those rights, and others are prohibited from using the work without the holders permission, such as copying and selling an identical fashion design.
The extension  of the protection depends on the work qualification as seen previously.
A registration is required for fashion designs protected under Industrial Property, and will last for a certain period of time, generally for 15 years. This registration of designs is based on the time line. The registered design gives to the holder the right to reproduce the work, to sell those copies, to import or export the work. These rights are called economical  and can be sold, licensed, lent or given to any other property. In fashion sector, licensing is often used by fashion designers for the production and distribution of their work. In that case, the author transfers its economical rights to a third party in exchange of royalties. 

For applied work of art under Copyright, the author automatically gets all the protection. It requires no formality when fashion work  fulfills the criteria of individuality. The copyright holder is entitled to enforce his exclusive rights, usually for 70 years after the author’s death. There are two (2) different rights: economical and moral rights. Economical rights are mostly the same as the ones under Industrial Property, which I already mentioned before.
Moral rights are attached to the author and cannot be transmitted. Moral rights disappear with the author death. Moral rights include the right to publish, to exhibit and the right to the integrity of the work. Integrity of the work bars the work from alteration, distorsion or mutilation. Moral rights are distinct from any economic rights. Even if an author has assigned his rights to a work to a third party, such as licensee, he still maintains the moral rights to the work. In most European countries, the authors cannot assign their moral rights. This situation doesn’t always comply with fashion industry. I won’t go into details as this issue goes beyond the protection of designs.
A good example that falls into a category of moral rights is the publication of a fashion design photo in a magazine without the permission of the author. In this case, Copyright is broader respecting the rights under Industrial Property. 

- Principle of territoriality
The principle of territoriality characterizes Copyright and Industrial Property Law. It means that the legal protection of designs is limited to the national territory that has delivered the intellectual property right. The consequences are that identical designs may be protected differently depending on the Member States Laws. Furthermore, the author has to assume enormous costs for the protection of his/her fashion designs. Because fashion goods are in constant renewal, these costs may not be justified. Therefore let’s go beyond domestic protection in favor of a broader approach to the protection of fashion designs.
I will only address the situation into European Union and the new system of European designs protection.

European Design Protection
At the European Union level, some similar rules exist for designs as a result of a process of standardization of the main domestic rules on Intellectual Property Rights.
Companies are still able to choose to register under national law, as national design protection, as harmonized by the Design Protection Directive in 1998 and continues to exist in parallel with European Design Protection adopted in December 2001.
The Regulation provides for two types of design protection, directly applicable in each Member State. A real progress has been made with the adoption of this unified system for European designs. This European right protects designs with a short registration period, as well as non  registered designs, both of which correspond to the wishes of the fashion sector. This system aims to foster creativity and innovation by making it easier to protect design throughout the Internal Market, which means 27 Member States.

Briefly, I will explain both of them, registered and non registered designs.
In the Regulation, fashion designs fall under the definition of European designs.
In order to be eligible for protection, designs must be new and must have an individual character. In other words it must be apparent to the public that they are different from products which already exist. This criteria has the same meaning of originality, which has been previously analyzed. .

- Protection given by the registration of an European design.
Holders of registered European designs have exclusive rights to use that particular design and to prevent any third party from using it anywhere within the EU. They are protected against both deliberate copying and the independent development of a similar design. The protection is provided for 5 years and can be renewed  every 5 years for up to 25 years maximum. The registration procedure is simple and inexpensive.

- Unregistered European designs must meet the same criteria as registered ones such as being new and having an individual character. Their protection will be applicable from the date of disclosure of designs to the public within the EU. That disclosure may occur through designs going on sale or through prior marketing or publicity. The relevant designs will be protected for three years. However, an unregistered design is protected only against deliberate copying.

Finally, in the beginning of 2008, the EU design registration system was linked with WIPO international system: the Geneva Act of the Hague Agreement concerning the international registration of industrial designs. The EU accession allows EU companies, with a single application, to obtain protection of a design not only throughout the EU with the Community Design, but also in the countries which are the members of the Geneva Ac – mainly 30 countries, including Singapore, Turkey and Switzerland. Unfortunetly, United States of America  has not signed the Geneva Act.

In conclusion, we can say that today in Europe, there is a convenient legal protection for the fashion sector, especially the European Union Design Protection. I wish that a similar system will be adopted one day and will encourage creativity and innovation in the fashion sector in the US.
I am not a specialist on US issues on fashion designs, but I would like to say that there needs to be some kind of change. Fashion industry is important and if there is no protection for fashion designs, the fashion sector will be weaken.

Thank you for your attention.

FASHION AND LAW IN EUROPE
Lecture by Jeanne Belhumeur
Arts of Fashion Foundation, San Fancisco, October 29th, 2008

Introduction
Definition and specific characters of fashion designs
Elements excluded from protection
Legal nature of fashion designs: aesthetic innovation
Legal protection of fashion designs
Applied work of art protected under Copyright
Fashion designs under Industrial Property Law
Criteria for protection: new and original
“individuality”: subjective novelty for applied work of art
“originality”: objective novelty for fashion designs
Legal protection: definition and exclusive rights
Fashion designs protected under industrial property: economical rights
Applied work of art protected under Copyright: economical and moral rights
Principle of territoriality
European Union Design Protection
registered design
unregistered design
Geneva Act of Hague Agreement
Concluding remarks

Venezia, 18 febbraio 2007 (da una nota di cronaca locale). Uno scudetto tricolore con la scritta "Italia" sopra, sotto o a fianco di esso non può essere registrato come marchio e quindi non può essere neppure oggetto di contraffazione.

(étude de Jeanne BELHUMEUR)

Le Traité de Rome, instituant la Communauté européenne (CE), se caractérise, par des attributions de compétences aux organes communautaires qui limitent l'exercice de la souveraineté des Etats membres. Le pouvoir réglementaire conféré à ces organes est une sorte de pouvoir législatif qui se substitue à celui des Etats pour l'établissement d'un Marché commun.
Dès l'origine du Marché commun, il est apparu nécessaire d'harmoniser les législations pour répondre au malaise engendré par la disparité profonde existante entre les systèmes nationaux dans le domaine de la propriété intellectuelle, voire de parvenir à l'élaboration d'un régime de protection communautaire uniforme. Des travaux ont été amorcés en ce sens dès 1960. Cependant, les oppositions de tendances qui se sont manifestées dès les premières tentatives ont rapidement découragé les experts de la Commission européenne.
Les difficultés rencontrées dans les tentatives de rapprochement du droit d'auteur et de la propriété industrielle ont rendu vaine cette démarche. Et pourtant, un régime communautaire de protection autonome des dessins et modèles répondrait aux préoccupations modernes du dessin ou modèle de mode: la confrontation entre les principaux systèmes actuellement en vigueur qui offrent un éventail de conceptions disparates serait pleine d'enseignement. 
Par ailleurs, la problématique communautaire réside dans la nécessité de trouver un équilibre entre le principe de la libre circulation des marchandises (article 28 du Traité CE, ex-article 30) d'une part, et la protection de la propriété intellectuelle (article 30 du Traité CE, ex-article 36) d'autre part.