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Liability in Louboutins:  Fashion Law as an Emerging Discipline

Jashan Jayesh Merchant, Student, Maharashtra National Law University, Mumbai

Introduction

The emergence of fashion law as a discipline to reckon with, has, in the recent times, taken the legal world by storm.  Also known as the law of luxury good and first systematized in 2004, with the publication of “Droit Du Luxe” by Annabelle Gauberti[i], which is widely regarded as the cornerstone of fashion law. A number of recent cases of intellectual property rights issues,[ii] copyright issues, fashion controversies, employment, consumer protection, counterfeit issues, brand imaging and discrimination or racism in the fashion industry[iii] which have come into the limelight have illustrated the need for this field of law to be given a specialized and official status. This essay deals with some of the major sub-branches of fashion law, with Part I talking about cases relating to copyright and other civil law issues, Part II dealing with the rights of employees and workers in the fashion industry, and a conclusion, elaborating on the need for the codification of this branch of law and its significance in society.

Part I

Since the differentiation between different fashion brands and subsequently their worth or their standing as a status symbol in society is based on their symbolic designs, a number of copyright cases have originated wherein one brand has sued the other for lifting their design and marketing them as some other brands. This is a prevalent issue in the cases of major national and international fashion houses. In the case of Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc,[iv] Louis Vuitton sued Akanoc, alleging that some of its customers directly infringed on their company’s copyrights and it failed to curtail the same, despite receiving 18 notices from the plaintiff. Hence they were accused of knowing their conduct to be mala fide, and were therefore guilty. The Court of Appeals for the Ninth Circuit held the defendant liable and statutory damages were awarded. This went on to become a landmark case in federal trademark and copyright law.[v] Louis Vuitton’s trademark tote bags come under the most copied designs in the world, so dealing with each and every case of lifting of designs may be unrealistic to deal with. However, cases relating to lifting of designs and reproduction of copies are not limited to small time companies lifting from larger companies. There are rivalries relating to design between major international fashion houses as well. In Christian Louboutin LLC (“Christian Louboutin”) v.Yves Saint Laurent America, Inc,[vi] the plaintiff alleged that YSL and its affiliated companies violated Louboutin’s red sole trademark by selling women’s red monochrome shoes virtually indistinguishable from the same and sought relief stating that Christian Louboutin was the first to introduce the concept of red-soled shoes in 1992 and has been registered by trademark since 2008.  On the grounds of contravening the goodwill of Louboutin’s brand image and causing deception to consumers due to the identical nature of the products under the New York Common Law. YSL, however fought back, stating that they had in fact pioneered the concept of red soled shoes before Louboutin registered it.  The Court finally dismissed Louboutin’s injunction as YSL’s shoe was completely red and so did not qualify for a sole mark. [vii]This shows the Court’s specific outlook towards intellectual property protection. Another high fashion company to face the woes of copyright infringement was Burberry, who filed a suit against Designers Imports [viii]for selling counterfeited Burberry goods, namely the distinctive check print and knight in arms symbol, and Euro Moda for selling copied accessories and apparel. [ix]Courts awarded Burberry $1.5 million in damages in the Designers Action and $4 million in the Euro Moda Action, each of which was significantly less than the statutory maximum, which was what Burberry sought in each case. [x]For willful infringement, the Lanham Act[xi] provides for increased damages where the court determines that the defendant infringed on the plaintiff’s trademark willfully, i.e. the defendant had knowledge of its conduct. This case shed light on the fact that various loopholes in the law could serve to escape maximum payment of damages when an action was sought.  However, these damages were sought under a codified Act, which made the procedure more transparent and comprehensive.

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In India in 2003, eminent designer Tarun Tahiliani stated that JJ Valaya had copied his bespoke “jewel tees” attire and displayed them at a later fashion week. [xii]No case was filed, but it made headlines in the fashion industry. The Fashion Design Council of India (FDCI) recognized the need to include Indian fashion designers under the ambit of the copyright law, so designers could secure patents and protect their art. While a number of designers were gratified, a few expressed apprehensions at the quality of the implementation and execution of these laws- with rampant red tapes and court cases being dragged on for years, they wondered if they would be given the justice they deserved. As of now, the word “clothing, apparel or accessories” is not explicitly provided in the Copyright Act of 1957[xiii], with the primary focus of protection of works given on the basis of authorship and not craftsmanship, though literary and technological works are well protected under this law, fashion is still open to interpretation.  In Rajesh Masrani v. Tahiliani Designs Pvt. Ltd,[xiv] the plaintiff alleged copyright infringement on the grounds of imitation and substantial reproduction of the plaintiff’s copyrighted works. The appeal was later dismissed, however some important contentions related to couture and its protection were laid down. The plaintiff’s creations were regarded as “artistic work” under Section 2(c) (i) of the Copyright Act under “any other work of artistic craftsmanship.” However, since the plaintiff’s creations were not registered under The Designs Act, 2000, the provisions of which will be enumerated later in the essay, certain aspects could not be taken into consideration. The Court held that registration under the Copyright Act was not necessary to claim copyright infringement and subsequent damages. [xv]However, taking into account the fact that designs are creative in nature and therefore a little variation may also be termed as a new design makes it difficult for the Courts to draw the line between a copy and an inspiration. This case was one of the first of its kind in India and laid down the groundwork for the need for specific laws relating to designs and fashion designs in the Indian scenario.

In Microfibre Inc v. Giridhar and Co and Ors,[xvi] the plaintiff alleged that his designs for upholstery fabrics were copied by the defendant who tried to pass them off as his own, hence violating the copyright. This case w as heavily relied on as precedent during the decision of Rajesh Masrani v. Tahiliani Designs Pvt. Ltd. The case was dismissed as the plaintiff had not completed the registrations and formalities according to the law that allowed him to claim the work as his very own and both parties were left to bear their own costs. The Designs Act, 2000 was referred in this case as well, and the plaintiff was not registered under it.[xvii]

The Designs Act, 2000 [xviii]was promulgated keeping in mind the fact that a designer or an artisan should not be deprived of the profits of his work which should be adequately protected and further widen the ambit of Intellectual Property Law in India.  The word “design” has been specified to only the features of shape, configuration, pattern or ornament or composition of lines or color or combination thereof applied to any article whether two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle or construction or anything which is in substance a mere mechanical device, and does not include any trade mark. This is contained in Section 2(d) of the Act. The design must be original and not previously published in any manner, and must not be obscene or vulgar in any way as to hurt the sentiments of society.  The design, however, must be registered by the Controller under this act or the plaintiff will not be liable to claim damages under it.  The piracy of registered designs calls for a compensation of not more than Rs 50,000 /- and the suit must be filed in not lower than a District Court.

How far does this Act go in safeguarding the rights of the fashion industry? Mr. Tahiliani and others who have not been able to reap the benefits of this Act may voice their dissent, if asked. It caters more to issues and products relating to industrial design, which are easier to differentiate between and the “grey area” between an inspiration and a copy is not often breached. Although the clause for piracy extends to fashion designs in India, since the registration process is not made aware and the approval of registration which is supposed to be published every Saturday in the Official Gazette is not regularly updated, this discourages designers from being safeguarded under this Act, a fact that was reiterated according to a briefing paper published by The Energy and Resources Institute (TERI) on the Protection  of Industrial Design in India: Issues and Challenges[xix]. Most of the survey respondents, who had applied for registration of their designs, specifically relating to jewellery and leather footwear, reported that the registration process must be sped up in order to keep pace with the dynamic, globalized market.  Also, it was noticed that a curtail on piracy led to more innovation by fraudsters, who tried to decode loopholes in the Act to answer to the demands of the huge market for copies, especially in high end designs. Since the provisions of the Designs Act do not include the specifics of fashion design per se, and what unique differences may qualify or be found in order to file a claim and seek damages, it fails the purpose to an extent with respect to the fashion or the luxury goods industry. Due to lack of awareness, unwillingness to seek legal recourse and lackluster enforcement of these laws because of its ambiguous nature, designs are not protected to their deserved fullest and are infringed, in many cases even going unnoticed. Only 5% of the survey respondents were, in fact, party to an infringement action, citing the complexity of legal procedure as one of the deterrents for the same. Also, the Design Act is ambiguously worded, with certain terms requiring clarification, for example the difference between originality and traditional command over craftsmanship. These disincentives, in a sense, curb the proper implementation of laws and also emphasize on the need for a separate set of precise laws that address the needs of the fashion fraternity appropriately.[xx]

Nevertheless, specific laws related to fashion design do exist. In 2012, the Innovative Design Protection Act or the “Fashion Bill” [xxi]was passed by the United States Senate that lucidly identified articles of apparel and accessories as an article of men’s, women’s, or children’s clothing, including undergarments, outerwear, gloves, footwear, and headgear; handbags, purses, wallets, tote bags, belts, eyeglass frames and their subsequent indemnity, provided, of course, that they are original and have not been showcased elsewhere or made public prior to registration, with special sub-divisions for the terms “fashion” and “fashion design”, so that there is little room for misinterpretation The Fashion Bill provides for penalties up to $10,000 for copyright infringement. [xxii]The US Trademark Act (also called the Lanham Act) provides protection for symbols, logos, and slogans, so high fashion brands can avail of this law to differentiate between their products and those of others. Also, registration of a design patent is valid up to 14 years, which is another way of securing a product’s integrity.[xxiii]

Hence, it can be seen that intellectual property laws and subsequent copyright laws are imperative in the fashion industry. Although progress has been made in this sphere, there is a lot more scope to define and redefine regulations, stipulations and provisions to make life and work easier for designers and the fashion design scenario as a whole.

Part II

Another significant aspect of the fashion industry is the laws related to fashion models and workers in the textile and footwear factories. This touches upon the more humane aspect of the law, as atrocious conditions prevail for a percentage of people who fall into these categories. While the life of a fashion model may seem glamorous and worth coveting, the other side of the spectrum sees models bowing to pressure and resorting to eating disorders like bulimia and anorexia in a bid to stay thin and fit into sample sizes, which causes serious health implications and has proved to be fatal. Cases of young models dying due to anorexia nervosa are abound, with names like Isabelle Caro, Ana Luisele Ramos and Eliana Ramos to name a few. There have been various countries that have enacted legislation banning underweight models in order to curb eating disorders among the fashion fraternity, such as Italy and Spain. France, in 2015, passed a bill relating to the banning of “excessively thin” models and stated that a certificate stating the model is in good health is required for her to practice her profession. The weight, age and body shape of a model will be taken into consideration in order to determine her health. [xxiv]Although the main aim of this bill was to check rampant anorexia, it can be argued that the only symptom of anorexia is not the standard of weight and can be identified by hyperactivity, sleeping disorders, heart irregularities, anemia, bone loss and dental decay. [xxv]Also, plus-size models may also suffer from this disorder, but it may not be diagnosed according the Bill as they will not fall under the minimum weight bracket.  Digital photo editing software’s for “touching up” are also frequently employed, providing an unrealistic illusion in the market that may influence impressionable youths, especially women, adversely and encourage self-harm and self-restrictions on eating and a balanced diet.  This Bill also called for a penalty on digitally retouching photographs (silhouettes of models) of approximately $ 80,000 and imprisonment up to 6 months. [xxvi]

Another disturbing issue regarding the human rights of fashion models is the decreasing age of models, especially in the branch of high fashion. Models in their preteens or even younger start shooting campaigns for fashion houses and walking runways. Child models are more susceptible to be taken advantage of financially, sexually harassed, molested or raped. Also, on a social level, the sexualization of children and childlike attributes in the media encourages social evils such as paedophila and may encourage child sex offenders. Child models may also be overworked or may leave their education midway, which stagnates their growth in an intellectual and worldly-wise capacity.

 In 2013, the New York Labor Laws included models in their definition of a “child performer”, protecting the participation of any one below 18 in a modeling capacity in New York. Since New York City is one of the major fashion capitals in the world, this will go a long way in improving their work conditions and work aesthetics. They have to be regulated by a parent or guardian, obtain a special permit, be given adequate breaks, and have earnings that are accounted for. [xxvii]This cut-throat industry requires the softness to deal with sensitive and developing children and teenagers, and provide a hospitable work environment that does not prey on their self-esteem and personal life.

Since fashion and its portrayal through media has such an impact on the masses, it is imperative that sections of society must be adequately represented. There is a paucity of diversity in the modeling industry across the board, especially at major fashion weeks in the fashion capitals of the world such as Milan, New York and London. Cases of racial discrimination and regional discrimination are often found, with a majority of models being or preferred to be white-skinned. A survey found that 79.4 % of models or a startling majority of models, walking at the high fashion weeks internationally were found to be white.[xxviii] The suppression of representation of racial groups breeds feelings of low self-worth, resentment and the problem of relatability in society. Several suits have been filed against top designers such as Alexander McQueen and Tommy Hilfiger for propagating racial biases[xxix]. Although no specific laws have been formulated to make sure fashion models are diverse, the fact that they are not violates the principles of equality and equality of opportunity. In India, discrimination on the basis of skin color is unbridled and shamelessly advertised as well through products such as fairness creams. Laws calling for the respect of the aesthetics and roots of models should be put into place to have a wholesome and well-rounded industry that does not cater to or fuel further biases among people.

Laws relating to laborers and workmen in the textile and footwear industry also need to be given serious thought. Many multinational apparel companies and high fashion houses have been accused of manufacturing goods through “sweatshops” and employing child labor, violating human rights of citizens.

In Australia, the Fair Work Act 2009 [xxx]has been amended to include “outworkers” or employees or contractors working from home to provide them with at least minimum wages as well and not have extremely demanding hours of work and no holidays.[xxxi] In India, child labor is banned and education for children up to the age of 14 is compulsory. However, a in a lot of countries and specially developing ones, pitiful situations for these categories of people continue to exist. Unions and strikes are not very common as most of these laborers and employed artisans are from rural areas and uneducated. They do not receive benefits, monetary or in kind, for the relentless efforts they put in. The company/designer must be made liable for the issues facing these workers and provide them with a rewarding and functional environment.

In India, child labor is condemned and the fundamental right to education for children up to 14 years is being practiced and propagated. The Child Labor (Prohibition and Regulation) Act, enacted in 1986, does ban involvement and work of children below the age of 14 in hazardous occupations, namely silk manufacture [xxxii]and diamond factories[xxxiii] from the point of view of fashion industries.  They are paid pitiful to no wages and treated harshly. Unfortunately these forms of bonded labor are still practiced and eradicating them depends on the forceful implementation of the existing laws.

Conclusion

In conclusion, this essay summed up two major branches or aspects of civil law- namely copyright and intellectual property based issues regarding the protection of designers and artisans creations and human rights, shedding light on the conditions of workers and employees in the fashion industry. The law is an instrument that brings about change and justice. It can be concluded by the findings in this essay and the abundance of social issues that Indian law has not been suitably amended or created with respect to the fashion industry. Specific laws to safeguard the people directly and indirectly involved in this industry need to be safeguarded and provided for, whether in terms of monetary help or otherwise. Fashion contributes immensely to the economy in terms of revenues. This diverse and dynamic field needs to be explored and brought to the notice of enthusiastic and committed legal minds, who will strive for its official inclusions in the laws of this country and thus lend a helping hand to a section of society that the public sees only one side of. The fact of the matter is that it may be difficult to envision a set of laws in place for a profession that is considered “easy” in Indian society, but truth is that it is anything but. Fashion is expression and tradition and deserves to be treated as such. To rephrase the words of Roland Barthes, -“Fashion experiences itself as a natural right of the present over the past, and the law makes sure this right can be implemented.”[xxxiv]

Bibliography

Statues, Rules, Acts, Bills

  • The Lanham Act, 15 U.S.C. §§ 1051 et seq, 1946
  • The Copyright Act, 1957
  • The Designs Act, 2000
  • The Innovative Design Protection Act, 35 U.S.C. § 284 et seq, 2012
  • The Child Labor (Prohibition and Regulation) Act, 1986
  • Fair Work Act, 2009 (Aus.)

Books

  • Frances Corner, Why Fashion Matters (Thomas and Hudson 2014)
  • Guillermo C. Jimenez and Barbara Kolsun, Fashion Law: A Guide for Designers, Fashion Executives, and Attorneys (2nd edition, Bloomsbury 2014)

Cases

  • Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc 658 F.3d 936 (9th Cir. 2011)
  • Christian Louboutin LLC (“Christian Louboutin”) v.Yves Saint Laurent America, Inc, 696 F.3d 206, 228, (2d Cir. 2012).
  • Burberry Ltd. v. Horowitz, 13-35-cv (2d Cir. 2013)
  • Burberry Ltd. v. Euro Moda, Inc., No. 08 Civ. 5781, 2009 WL 1675080 (S.D.N.Y. June 10, 2009)
  • Microfibre Inc v. Giridhar and Co and Ors, 2006 (32) PTC 157 Del
  • Rajesh Masrani v. Tahiliani Designs Pvt. Ltd,2008 PTC (38) 251 (Del.)

Journal Articles

  • Casey E. Callahan, Fashion Frustrated: Why the Innovative Design Protection Act is a Necessary Step in the Right Direction, But Not Quite Enough, 7 Brook. J. Corp. Fin. & Com. L. (2012), available at

https://brooklynworks.brooklaw.edu/cgi/viewcontent.cgi?article=1060&context=bjcfcl

  • Grochala, Kelly, Intellectual Property Law: Failing the Fashion Industry and Why the Innovative Design Protection Act Should be Passed (2014), available at

https://scholarship.shu.edu/cgi/viewcontent.cgi?article=1135&context=student_scholarship

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[i] Annabelle Gauberti, “Droit Du Luxe”, 2004

https://crefovi.com/Droit%20du%20luxe.pdf

[ii] https://www.hg.org/fashion-law.html

[iii] https://www.huffingtonpost.com/news/fashion-industry-racism/

[iv] Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc 658 F.3d 936 (9th Cir. 2011)

[v] Louis Vuitton Sets A New Standard In Federal Trademark And Copyright Law, 17 January 2012

https://www.fashionapparellawblog.com/2012/01/articles/fashion-cases/louis-vuitton-sets-a-new-standard-in-federal-trademark-and-copyright-law/

[vi] Christian Louboutin LLC (“Christian Louboutin”) v.Yves Saint Laurent America, Inc, 696 F.3d 206, 228, (2d Cir. 2012).

[vii] YSL has Louboutin Seeing Red, 5 May 2011

https://www.fashionapparellawblog.com/2011/05/articles/fashion-cases/ysl-has-louboutin-seeing-red/

[viii] Burberry Ltd. v. Horowitz, 13-35-cv (2d Cir. 2013

[ix] Courts Double-Burberry-Check The Math And Award Damages Less Than The Statutory Maximum For Willful Infringement, 16 February 2010

https://www.fashionapparellawblog.com/2010/02/articles/fashion-cases/courts-double-burberry-check-the-math-and-award-damages-less-than-the-statutory-maximum-for-willful-infringement/

[x] Ibid

[xi] The Lanham Act, 15 U.S.C. §§ 1051 et seq, 1946

[xii] Finally, copyright laws for Indian fashion, 21 October 2003

https://timesofindia.indiatimes.com/delhi-times/Finally-copyright-laws-for-Indian-fashion/articleshow/243784.cms

[xiii]  The Copyright  Act, 1957

https://copyright.gov.in/documents/copyrightrules1957.pdf

[xiv] Rajesh Masrani v. Tahiliani Designs Pvt. Ltd,2008 PTC (38) 251 (Del.)

[xv][xv] https://indiankanoon.org/doc/111285241/

[xvi] Microfibre Inc v. Giridhar and Co and Ors, 2006 (32) PTC 157 Del

[xvii] https://indiankanoon.org/doc/112937069/

[xviii]  The Designs Act, 2000

https://ipindia.nic.in/ipr/design/design_act.PDF

[xix] https://www.teriin.org/div/briefing_paper_industrial_designs.pdf

[xx] Ibid.

[xxi] The Innovative Design Protection Act, 35 U.S.C. § 284  et seq, 2012

[xxii] https://www.congress.gov/bill/112th-congress/senate-bill/3523/text

[xxiii] Protecting Fashion Design, 3 January 2013

https://www.forbes.com/sites/oliverherzfeld/2013/01/03/protecting-fashion-designs/

[xxiv] France Enacts New Law Banning “Excessively Thin Models”, 18  December 2015

https://www.thefashionlaw.com/home/france-passes-model-law

[xxv] https://www.webmd.com/mental-health/eating-disorders/anorexia-nervosa/understanding-anorexia-symptoms

[xxvi] France Enacts New Law Banning “Excessively Thin Models”, 18  December 2015

https://www.thefashionlaw.com/home/france-passes-model-law

[xxvii] https://modelalliance.org/child-models

[xxviii] https://www.businessoffashion.com/articles/intelligence/between-the-catwalk-and-the-consumer-fashions-growing-diversity-gap-2

[xxix] https://www.huffingtonpost.com/news/fashion-diversity/

[xxx] Fair Work Act, 2009 (Aus.)

[xxxi] https://www.fairwork.gov.au/employee-entitlements/types-of-employees/outworkers

[xxxii] “Indian silk industry employs child: Human Rights Watch”. 23 January 2003

[xxxiii] Chandra Korgaokar and Geir Myrstad (1997). “Child Labour in the Diamond Industry”. International Labour Organization. pp. 51–53.

[xxxiv] https://www.notable-quotes.com/f/fashion_quotes_iii.html

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