A Deal and Blow Judgement; French Court Cancels Balenciaga’s Trademark But Recognises Copyright Protection For Tote Bags.
In a recent ruling from the Paris Court of Appeal on the 22nd of September 2017, the French Luxury fashion house Balenciaga has been dealt a deal and blow ruling, losing the right to use of one of its trademarks, but seeing the courts acknowledge...
Image illustration created by: Fashion, Law & Business
France - in a recent ruling from the Paris Court of Appeal on the 22nd of September 2017, the French luxury fashion house Balenciaga has been dealt a deal and blow ruling, losing the right to the use of one of its trademarks in France, but seeing the courts acknowledge the features of the brands tote bags as being capable of protection by copyright.
Balenciaga sued Leslycuir, the Chinese leather goods distribution company, for infringement of copyright and trademark for importing into France leather goods seized at customs - that the luxury brand claimed had infringed their rights.
In particular, the claims revolved around four bags 'Baby Daim', 'Revers', 'Classic Sunday', and 'Classic Tool.' Iconic style classics from Balenciaga recognisable thanks to their distinct ornamental zip and pocket feature - created in August 2001, by Nicolas Ghesquière, then artistic director of Balenciaga.
Background
On May 6, 2015, the Paris based fashion house Balenciaga lodged a complaint against the company Leslycuir at the Tribunal de Grande Instance of Paris for infringement of copyright, trademark infringement and parasitism. By contradictory judgment dated June 23, 2016 the Tribunal de Grande Instance of Paris: rejected the brands claim to copyright infringement on the claimed bags, and followed with a cancelation of the French brands figurative trademark mark No 134003896 (shown below) on the grounds of a lack of distinctiveness. The company Balenciaga appealed the decision asking the court to quash the judgment of 23 June 2016.
Copyright Protection
In the latest judgement from the Court of Appeal (September 22nd 2017), the court confirmed the earlier judgment of the Tribunal de Grande Instance of Paris regarding cancellation of the brands trademark, but regarding copyright, in contrast to the earlier ruling on the matter, held instead that the brands Baby Daim and Revers bags are original and thus protectable by copyright. In particular, the court argued that the choice of elements on each bag: “the shoulder strap attached by two rings and a hook, the positioning of the zipper and pocket on both bags and in addition, the former of the rectangular type envelope flap on the ‘Revers’ bag were purely arbitrary choices, based on an aesthetic preference bearing the imprint of the author's personality - which highlights originality," (a prerequisite for copyright, rather than mere functionality) and for this reason, deemed both bags capable of copyright protection.
Copyright infringement/Counterfeiting
Despite this acknowledgement however, in regards to the courts assessment of infringement, looking at the similarities between the two bags, the courts noted that the elements of the disputed bags sold by the company Leslycuir, presented: "significant differences which results that the overall visual impression of the two bags is not identical.” For example, with regard to similarities between the Baby Daim bag, and the alleged Chinese companies Leslycuirs version, the courts noted, pointing to specific differences in features such as the 'stitching,' 'metal rivets,' 'strap' and 'buckle' that the Leslycuir alleged version of the bag: “does not present exactly the same shape and outline as that of the company Balenciaga,” and for this reason there was no counterfeiting.
Note: New French legislation adopted in 2014 to strengthen the fight against counterfeiting, has modified the French Intellectual Property Code, in order to enable improved damages for copyright holders as well as harmonising the provisions applicable to various other intellectual property rights.
Trademarks
With regard to the trademark in question, registered in the United States on July 3, 2007, then filed in France, May 10, 2013 covering in particular the products of class 18: covering leather and imitations goods described as: "consisting of an ornamental pocket comprising a zipper, a strap and a second lower part lined with two rivets, and two pieces at the right and left ends."
On appeal, the company Balenciaga made complaint to the judgment undertaken to have ordered the cancellation of the trademark (as shown below) for lack of inherent distinctive character and lack of acquired distinctiveness through use. Arguing instead that the sign, “which represents the front of one of its bag models, had acquired a distinctive character through use in that it constituted a break with the trends in leather goods.”
As per Article L711-2 of the French Intellectual Property Code: “a mark is valid only if it is distinctive, which implies that it is arbitrary and that it fulfils the function of guarantee of origin.”
In particular, (as per the court documents) the company Leslycuir argued that the components of this sign were: "commonplace and have been used on many models of bags for several years for practical and aesthetic purpose in the fashion industry."
The court made a point of noting - that it did not seek to make a view on the 'originality' of the elements of this sign which may be found identically in any of the parts produced by the company Leslycuir, but instead: “seeks to determine whether the sign adopted to effectively constitute a mark…fulfils the function of a guarantee of origin.”
Acquired distinctiveness through use
Balenciaga argued that the bag contained elements that constituted a break with the trends in leather goods, according to the courts: “without showing that the alleged breach results only from the elements it has taken to create its mark and not from their combination with the other characteristics of the bag.” The courts took the view that Balenciaga’s purported: “strong commercial success of elements of the trademark sign in question that appeared on [it’s] first bag [called motorcycle'] and then later across other marketed bags...under a line called 'classics' does not show that...these distinctive elements of this line...[had been] adopted [only] to identify the bags it [had] marketed since then.”
[Thus, in a similar view to what was given in judgement in the Louis Vuitton case here] The courts held that: “the sign in question constituted an essentially decorative element which results moreover from the very description of the mark which mentions an ornamental pocket.”
It continued adding: “a number of elements of this sign such as the closure and the strap are functional elements, others like rivets are common in leather goods." Going on to observe that: "the sign in question had no verbal element, no logo, no particular monogram, allowing an identification of the company Balenciaga and its products.”
(Note: A figurative mark generally consists of a combination of verbal and figurative elements. It is a trademark where non-standard characters, stylisation or layout, or a graphic feature or a colour are used, including marks that consist exclusively of figurative elements.)
Turning to distinctive character of a mark through use, the courts held: “presupposes that the sign has been used as a mark, whereas in the present case…it appears that the sign, because of its purely functional and decorative nature, has never fulfilled its trademark function since the average consumer is not inclined to recognise Balenciaga's products on the sole ground that this sign has been used as a decorative element” - and for these reasons the courts upheld the cancellation of the Parisian brand Balenciaga’s trademark.
Thoughts
The case highlights the difficulties that fashion companies might have when seeking to protect their fashion creations using the law of trademarks. This is especially the case in places other than France, where fashion houses creations are not able to benefit from copyright protection.
Although the Brands figurative trademark has been cancelled in France, Balenciaga still holds its trademark in the states. The Paris fashion house, Balenciaga sued Steven Madden Ltd, back in 2014 accusing the footwear and accessories maker of trademark violations for copying the styling of its best-known handbag, known as a “motorcycle bag.” The case settled out of court for an undisclosed sum.
Current Court of Appeal case: BALENCIAGA c / THE COMPANY LESLYCUIR, SARL
Thanks to Marie-Andrée Weiss for bringing this case to our attention.
#NOFREEPHOTOS Fashion Photographers Take A Stand For Their Rights
In Milan, this past weekend according to WWD, about 40 photographers have come together publicly to protest against the unauthorised use of their street style photography.Members of the group, which calls itself an "unofficial union" named "The Photographers," have begun adding the agreed hashtag #NoFreePhotos to images uploaded on their Instagram accounts to take a stand against the commercial use being made of their photos.
Fashion week season,
Coverage of Paris, Milan, London, New York fashion weeks; communicating the codes of fashion culture in real time, through images - Street style photographers - arguably are the cultural intermediaries of the system that we call the fashion industry. At least four seasons a year, they help deconstruct and reconstruct the field of fashion. Documenting fashions sub-culture - backstage, in the shows and on the streets - they have a unique talent for their ability to capture all sides of the fashion world.
Through them, the system comes to life, verifying as the famed designer Chanel is known for stating: "Fashion is not something that exists in dresses only. Fashion [in fact] ..is in the street...it has to do with ideas, the way we live, what is happening." And during fashion weeks - the streets truly do become the unofficial documented runways of style.
Yet, in Milan, this past weekend according to WWD, about 40 photographers have come together publicly to protest against the unauthorised use of their street style photography. Members of the group, which calls itself an "unofficial union" named "The Photographers," have begun adding the agreed hashtag #NoFreePhotos to images uploaded on their Instagram accounts to take a stand against the commercial use being made of their photos by bloggers, brands and influencers at fashion events without correct remuneration or acknowledgement. As per a statement released to WWD on the matter, the group asserts that: "Brands, influencers and bloggers regularly make use of these photographers' copyright-protected photos to fulfil their responsibilities to the brands that pay them to wear and promote the garments and accessories which they wear to the fashion shows and events. The statement notes that the objective of the "collective action" is to put a stop to the "disproportionate gain being derived by the influencers."
Fashion Photographers take a stand
The statement establishes that there is "no malice intended with this action" however confirms that the photographers "simply wish to no longer be viewed as a passive entity in the equation of this industry." On Instagram one user commented that: "big/small designers use photos without permission to promote themselves and expect to use your work for free. This has happened to me every season!" Thus, along with the hashtag, group members are now adding to their Instagram bios: "My images are not to be used without express consent of license, contact me to obtain the rights, and more than three million followers, are said to have taken part in the movement across social media networks - Including Nabile Quenum, Adam Katz, Marcy Swingle, Tyler Joe and Eva Al Desnudo.
In response, some bloggers like Bryanboy maintain that many girls are not paid by the brands to wear their clothes, but agree to do so to be "well seen." On his Instagram account, he said: "I obviously understand the photographers' need to be compensated. But then again, when was the last time an influencer demanded a model release form from photographers who sell their images to magazines, retailer websites or the brands directly?Imagine if every influencer or editor or fashion person started complaining that their images are being taken and sold without authorization?" Adding: "I like to think that everyone should win in this symbiotic ecosystem. Think about it: girl gets famous online on her own, gains the attention of brands and starts to go to fashion week/month/circus looking like a clown. Street photos then starts shooting the said girl, often in borrowed clothes and uncompensated, and her images are sold to different outlets... where's the disconnect?"
But the issue here is not about image its about rights. Other influencers, like Shea Marie discussing the matter, maintained that she is not paid to wear the clothes of the brands, but recognised the work of the photographers "who are sometimes overwhelmed by a car, waiting in the rain or under a blazing sun for hours, weeks, and until the end of Fashion Week," she notes.
Notwithstanding the differing views on the matter, the collective action speaks to a larger problem for creatives and cultural entrepreneurs in the fashion industry and that is a lack of respect for rights. A major challenge for those operating in the creative and simultaneously cultural economy is how to sustain business growth. For many photographers the Internet has complicated the boundaries of ownership. Fashion images are cultural currency and operate as a form of symbolic and cultural capital that has the ability boost ones reputation as an icon in the industry. This is reinforced by data that highlights that for some bloggers a single street style shot during New York Fashion Week season could generate as much as $100,000 for them. So it makes sense that photographers are starting to take a stand for their rights. This Unionising marks a growing shift. Earlier this year, the well-known fashion model Gigi Hadid was sued by a fashion photographer for uploading an image of herself to her personal Instagram - without the photographer's consent to use it. Hadid according to court documents maintains an Instagram account, which has over 35 million followers.
The law and fashion photographer rights
What legal rights do fashion photographers have to protect themselves? First and foremost, in terms of the legal position in the UK on the matter - photographs, illustrations and other images will generally be protected by copyright as artistic works.
Who owns copyright in an image?
The person who creates an image ("the creator") will generally be the first owner of the copyright. However, there are various situations in which this is not necessarily the case.For photos, it may depend on when the photo was taken, also if an image was created as part of the creator's employment, rather than as a freelance creator.
What rights does the copyright owner have?
UK copyright law, gives copyright owners of an artistic work has the following four exclusive rights:
1. Reproduction right, or the right to copy the work
2. Distribution right, or the right to issue copies of the work to the public
3. Rental or lending right, or the right to rent or lend the work to the public
4. The right to communicate the work to the public by broadcasting or electronic transmission.
Copyright is infringed when someone carries out any one of the copyright owner's exclusive rights without their permission (and an exception to copyright does not apply). This can be in relation to either the whole or a substantial part of the artistic work. This means that a user will usually need the permission of the copyright owner if they want to perform certain acts, such as copying an image, sharing it on the Internet or posting the images to social media sites.
Moral Rights
Along with copyright the law in the UK gives creators moral rights. However these rights need to be asserted. If you have 'asserted' your 'moral right' to be credited for creating the photo, then that user should acknowledge you as the creator. Such an assertion can often be embedded in the image with metadata. Sometimes uploading and downloading images causes the associated metadata to be removed accidentally. According to the UK Intellectual property office, metadata that is deliberately removed, that identifies you as the copyright owner is unlawful.
Jurisdictions
Copyright protection and subsequent ownership thereof, at least in the UK and most countries in Europe arises automatically, provided the work is recognised as such and is sufficiently original. This means that unlike the US, copyright does not need to be registered to be protected. While the position of ownership and rights in the UK is relatively clear, (the person who takes the photo is usually the owner of the copyright in the photo) in continental Europe - your rights to ownership may depend on whether your photo is taken backstage, during a fashion show or on the street.
France & Italy
The aspects of continental copyright law for creators in Italy and France is by definition more protective due to having an open non-exhaustive list of works that can be protected.However, according to French case law - this higher level of protection for fashion creations, also means that taking a picture of a designers fashion creation during a fashion show - and posting this image online for commercial use could in itself be an infringement.
For example, in France - according to the Fédération Française de la Couture, the French fashion industry's governing body - only certain organisations have the right to reproduce and communicate to the public fashion images taken during Paris Fashion Week. Roberts A. D. et al. v Chanel et al. - Court of Cassation, 5 February 2008 case confirmed this position, where several haute couture companies (including Chanel, Christian Dior, and Hermes) bought legal action against three fashion photographers, that were invited by various fashion houses to shows during Paris fashion week for taking unauthorised photographs of fashion shows and uploading those photo's (for commercial use) to their website. The Photographers were sued for copyright infringement and the Paris Court of Appeal (affirmed by Cour de Cassation) held that they had infringed the copyright of the fashion houses whose creations were featured in the disputed photographs, in the terms of both clothes and also the fashion shows.
Social Media
With Paris fashion week starting today - there seems to be a timeliness about raising the spotlight and conversation around visual artists rights and image use. After all, its a complicated digital landscape out there. Rights are important, and this includes photographers understanding their rights when joining and using social media sites - so that they are not allowing the platform to do something with their photographs that they do not like. Images are fluid currency - and borrowing the term from Hussein Chalayan in the LIKE" era, this (banding together, while albeit only a partial solution to the problem of copyright theft) comes as an important step for fashion photographers in the direction of making 'the insiders' of the industry more aware of their rights.
References
Ashby Donald and Others v France - ECHR, 10 January 2013
Bourdieu, Pierre. "But who created the creators." Sociology in question (1993): 139-148.
Bourdieu, Pierre. "The field of cultural production, or: The economic world reversed." Poetics 12.4-5 (1983): 311-356.
IPO, "Copyright Notice: digital images, photographs and the internet" 2014
Roberts A. D. et al. v Chanel et al. - Court of Cassation, 5 February 2008