In Episode 4 of Asked and Answered, we class up the joint by speaking with fashion law blogger Greta Hogan. We discuss fashion and intellectual property and answer the question, “How should fashion startups think about legal issues?”
Music: Jackit, “Questions Answered;” Mouthguard, “Miami Corrector”
Eric: Hello and welcome to Ask and Answered Revision Legal’s podcast about intellectual property and Internet law issues. This is episode 4, and we’ll be talking about fashion law. My partner John DiGiacomo is here today. John how are you?
John: I’m good. I’m the most unfashionable person in the world so this should be an educational experience for me.
Eric: Me too. I’m Eric Misterovich by the way, and yeah, fashion is not a strong suit for me either. My wife, I think, cleaned me up a little bit, but not a strong fashion sense in our firm I don’t think.
John: No, I don’t think so. Maybe Jessica. I think she’s got it down, and she’s good where she’ll tell me that I look terrible and I appreciate that. I’m glad we hired honest people.
Eric: Yeah, I’ve had that with my wife certainly. I get dressed and she looks at me and goes, “No. Nope. That’s not going to work today.” Yeah, we need people watching over us. Someone that can help us on the legal aspects of fashion law is with us today and that’s Greta Hogan. Greta, how are you?
Greta: Good. How are you?
Eric: We’re doing great. We’re glad you’re hear with us.
Greta: Thank you for having me.
Eric: Greta you are a law student at Michigan State College of Law, right?
Greta: Yes, I am.
Eric: That’s awesome. That’s both of or alma maters so we’re proud that you’re carrying the torch for MSU.
Greta: Oh, definitely.
John: Yeah, and I think we’re especially proud to see somebody like you stepping out and making a name for yourself, even in law school with this site that you’ve created. Can you tell us a little bit about your background, and about your website?
Greta: Sure. Right now I am a second year law student and I’m from Youngstown, Ohio an I’ve always had experience in fashion. Hopefully I’d like to think I know what I’m doing, but I’ve worked at a boutique and really enjoyed what I did there, and it’s always been a part of me. When I came to law school I decided I wanted to pair up 2 things that I’m very passionate about. Combining fashion with the law. My first year I did not think it existed. I was trying to figure out what I wanted to do or how I could create this area of fashion law, and that’s when I found Fordham’s Fashion Law Institute, and that’s given me a path to start this website and create a brand for myself.
Eric: Yeah, it’s really great. It’s fashiondocket.com for everyone out there listening and go check it out. It’s really interesting. It’s a beautiful site, and I think you do a great job running it. Like John says, really smart idea to go and start doing it because you never know what happens once you start something. This is really cool.
Greta: Thank you. Actually the Business of Fashion announced that fashion is now a trillion dollar industry, 1.5 trillion to be exact, so it hopefully is really going to be up and coming, and I’m excited to see where it can take me.
Eric: Yeah, the niche areas of law that you can carve out and get some experience and become an expert in. It’s only going to help you in the future. I think it’s a great idea and even better executed, so that’s probably the more important thing.
Greta: Thank you.
Eric: All right. Why don’t we jump into fashion law, we provide … One of the main areas we work in is Internet law. I think there’s probably some relation in that there’s really nothing exists as Internet law. Nothing exists as fashion law. It’s a mix of traditional areas of legal practice with a certain focus on 1 industry. That’s how it is for Internet law. What kind of areas of law come into, or makeup your fashion law?
Greta: The way I like to explain it is really fashion law is just like the law, except it’s dealing with fashion brands, retailers, designers, and things like that, but it really encompasses everything from contract law, criminal law, intellectual property law, Internet law, whatever that might be, but there is a lot of problems especially now that retailers are using Internet to sell their goods, and there are sites like Etsy that are primarily online. It can also have a range of issues in environmental and animal law, and employment and labor issues. A little bit of everything.
Eric: Yeah, it certainly sounds like it. When you are looking at the news in fashion law issues are there things that are right now that are news stories that people may not know about?
Greta: Yeah, there’s a couple different issues going on. I know I have some on my blog, but as far as employment issues, there’s been an employment issue with Abercrombie and Fitch and it’s actually made it’s way all the way to the Supreme Court, so that was dealing with the regulations for their workers and what they could wear while they were working. There’s also disputes between Adidas and Marc Jacobs and that has to deal with the signature 3 stripe mark of Adidas, their trademark, and they’re trying to protect that. I think there’s definitely issues. I don’t know if everyone might look at them as fashion news, but they definitely intertwine with the law.
Eric: Yeah, that Adidas law suit is pretty interesting. I’m certainly familiar and I think most people are familiar with the 3 stripes of Adidas. What’s that case about? What’s going on in that case?
Greta: Sure, Marc Jacobs came out with, I believe it was a part of his collection for the Autumn Winter 2014, and 1 of the sweaters that he had, had the stripes going down the arm, so Adidas filed suit for a trademark to protect their mark because they’re alleging that the 3 stripes going down the arm can be recognized as their symbol, their mark in the area of fashion. If you saw it on the shoes, or on the sweater, or on a t-shirt, you would identify it with the Adidas name.
Eric: Yeah, and the 3 stripe are, I think, a famous mark for Adidas.
Greta: [inaudible 07:18].
Eric: At the same time it’s 3 stripes, right? That’s not the most creative mark in the world and it’s certainly not going to be uncommon I would assume in fashion designs.
Greta: Yeah, actually this is the big problem is because you can’t copyright a useful article. Usually you would have a copyright protection for some sort of design that you have, except because it’s on clothing and useful articles like shoes and things like that, you can’t have a copyright. Now designers are trying protect their mark by using their trademark. You see the MK for Michael Kors on his handbags, and you see the LV for Louis Vuitton. Now we’re venturing into what to do when you have these symbols that aren’t necessarily words or phrases, but like the red soul and the 3 stripes. Can it be recognized by consumers to be identified for that retailer, or the brand. Really I guess it would help to say why people are using trademarks.
These designers want to use the trademark because it’s a sign for consumers. Consumers can see a good, and see the mark the good, and know that it has a certain type of quality, so they know what to expect when they pay x amount of money to get that product.
John: Yeah, that’s a great point. It’s worth elaborating on that. The idea behind trademark and trade dress, which a lot of these clothing items may fall under is that it lowers what we call cognitive search cost, and that’s really a fancy way to say that when people want a really quality item they want to be able to reach Adidas and know that they’re getting that quality item. That’s especially important in today’s word because we have a lot of counterfeits coming from foreign countries. With trade dress and copyright I think you made the point that copyright may not extend to these kind of useful articles, and it also may not extend to items, or patters that are common. For example if they fail to meet the originality, or the spark of creation requirement associated with copyright, they may not be copyrightable.
A lot of these designers are probably looking to trade dress because it doesn’t have that requirement, but trade dress also has the requirement just like copyright that if it is a useful article there has to be … It has to acquire what’s called secondary meaning. Eric if you want to discuss what secondary meaning is, it’d probably be helpful.
Eric: Yeah. Secondary meaning is it’s not easy for everyone to accomplish. It basically is that the consumers see that mark, they see the shape of the Coke bottle and they immediately identify that as Coca-Cola. That is a tough burden. It’s not easy for, especially relating to fashion law, new designers to obtain trade dress rights. It’s going to take a while, and it’s going to take some recognition, advertising in the marketplace for someone to obtain that kind of connection between the consumers and their marks. Famous brands like Adidas probably will be able to do that.
John: Yeah, that’s really the thing. It’s that Adidas is famous, and when we see those 3 stripes the consumer has made that connection which is why Adidas is so protective in protecting that mark for lack of a better word. They really take that mark seriously because they want consumers to reach for their products. They want to ensure that they’re getting the same quality product every time, and they don’t want somebody like Marc Jacobs to trade off of the idea that, “Oh, hey. We can funnel consumers to buy Marc Jacob products who actually think that the Adidas design, or the Adidas mark is an indicator of quality.”
Eric: I’ll put a link to this … An article about this lawsuit in the show notes. They have an image of the article in question, and it looks … It has 3 stripes. I don’t know. You look at it and it looks like Adidas.
Greta: Well and I think especially because Adidas is known for their track jackets, so to me when I look at it, I think it’s similar. Putting it on a sweater is so, so close to the track jacket.
John: Yeah, that’s a great point because the test for trademark infringement, or trade dress infringement, or whatever the case may be here is likelihood of confusion, so in determining whether or not there’s a likelihood of confusion a court is going to look at the similarity of the goods or services, and it’s also going to look at the similarity of the trade channels, so if Marc Jacobs is selling in the same channels as Adidas is, and it’s likely … They’re probably selling at different price points, but maybe not. Those are the types of things that play into that likelihood of confusion analysis. You’re right that this really does look like … It looks like an Adidas track jacket. It looks like something that Korn would have worn in the ’90s.
Eric: It does. If this was, I don’t know, a purse, or something that maybe is different, but this is a track jacket. It has the 3 stripes. It is very Adidas reminiscent to me.
Greta: I think especially we were talking about what channel they’re in, and especially now because Adidas is trying to match up with its competitor. Nike, they’re doing all these collaborations with these famous artists. The question then becomes are they getting up to that Marc Jacobs status? Marc Jacobs is actually closing one of his collections, or his brands, so is Marc Jacobs coming down and Adidas going up so they’re meeting at that point where they are selling to the same people.
Eric: Yeah, true. That’s a very good point. What about for smaller companies, or new fashion designers? Do you think it’s a good idea to start at having a mark process. Fashion is so wide ranging that you may not want to always come back to the same mark in your different designs. Do you think that something that aspiring designer should think about?
Greta: Yes, I think a couple things. I guess it depends on what type of fashion are you going into. Who are you selling to? Who are you consumers that you’re trying to reach out to, and what are you selling? Are you selling handbags, or clothing? Shoes? That’s something to consider, but with me I think even putting a brand to my blog. A lot of people ask me why I don’t use my name and it’s almost like I want to create a brand. That’s the purpose of why I have my blog, whereas some people might just want to create a clothing line to sell at Nordstrom’s and they don’t necessarily want their name all over it.
The other way to look at that is, if you want to protect your designs, a good way to do it, at least in the United States is to put a trademark on it. It might not have to be your initials, or your name, but some type of symbol, I guess, that you can put on your collection so that people recognize that it is your work, and if you’re doing a deal with someone else they can recognize that it is your work.
Eric: Sure that strikes true to us in terms of Revision Legal. People ask that all the time. Why are you called Revision Legal. Usually my answer is because DiGiacomo and Misterovich is a nightmare to say, but that brand recognition was the main motivating factor.
John: Yeah, the key factor was obviously it’s very difficult to spell our names, but also that if we’re going to be a trademark, or an intellectual property law firm, then we should take trademark and brand building seriously. We should provide something … We should indicate to the consumer who’s buying our legal services that we actually understand what the hell we’re selling. What we are selling is very important. Yeah, you’re right. The idea that if you select a name, and you stand by it, then you will build good will and people will continue to reach for that good is very important. I think in fashion the way that people have done it in the past is they have a house mark.
The classic example would be somebody like Louis Vuitton, who has the house mark of Louis Vuitton, but then you also have these sub-marks where this is Louis Vuitton, but this is the … Again, I don’t know fashion that well, but this is the sub-brand. This is the … It has a certain price point. It has a certain quality. Those things are important. I think if you’re starting a business, and you’re starting a fashion based business, it’s important to identify, “What is my house brand?” “Do I have a plan for expanding into the future with other sub-brand, or how are those sub-brands going to interact with my house brand?” Maybe Greta, I don’t know if you agree with me on that, but maybe you can elaborate on what your perspective on creating a brand … A fashion brand is.
Greta: No, I mean I agree with you. I think a lot of designers do it to cover their grounds. It’s important that a lot of people are talking about Michael Kors now that he’s diluting his brand because he’s reaching out to so many different markets, whereas I think if you do it in the right way, in moderation, you could do it right. When I talked about Marc Jacobs I believe he’s now closing down the mark “By Marc Jacobs,” so he has, like you were saying, the different brand names, and they all have the different markets that they appeal to. I guess if you do it properly it can be beneficial. You have to be careful that you’re not diluting your brand because you’re trying to reach out too broadly.
John: That’s great point. We have a client locally who has a t-shirt company. When you think of a t-shirt company you don’t think of high fashion, but often it can be.
John: When you select a t-shirt it’s quality of the materials, it’s the cut of the t-shirt, and really also it’s also the brand. The brand is the key element. Their perspective is, “Look. We’re going to price high. We’re going to acquire high quality goods to put on marks onto that t-shirt. We’re not going to sell this in low quality stores. We’re going to have license agreements with distributors that meet our brand quality guidelines.” You’re right. If you don’t do that, if you’re not taking that level of control through contract, or otherwise, you’re really going to dilute your brand, and it almost becomes meaningless. If your brand is diluted in that way the signal to noise ratio, for lack of a better term, is high and no one’s going to be able to know who you are, and frankly they’re probably not going to care who you are.
Greta: Yeah, that’s a good point. Even with Louis Vuitton. A lot of brands have been changing their price points, and trying to appeal to the economy that we’re in, and Louis Vuitton has not swayed. They have left their product to be valued high because that’s what they’re known for. Someone like Louis Vuitton if you’re valuing $29 billion dollars, then it makes sense for you to stay in that high market and not branch out and make low end products. It really depends I think on number 1 the product, and the brand.
Eric: Yeah, that’s all very good points. One thing I’m hearing that’s coming to mind is the use of your name in association with the line of products you sell. Obviously, it’s very apparent in fashion. That’s not always the best from a trademark perspective to be only using a surname in connection with your goods or services. You probably won’t obtain trademark registration right away. It’s not a very distinctive mark. The idea of … I think this is something for young, or new fashion designers, take some time to figure out if your brand can really be protected. If you’re going to spend all this time following your dream and creating this product, talk to an attorney, get an idea of how to best select a name, a brand, a logo to go along with what you’re going to build, right?
John: Yeah, I think that’s great advice. I’m sorry Greta. I didn’t mean to interrupt you.
Greta: No, go ahead.
John: I think that’s great advice because, you’re right. Louis Vuitton. Is it Louis Vuitton?
Greta: It’s Louis.
John: I’m terrible with this. Louis Vuitton, obviously, they’ve been around forever. Same with Chanel. Those types of brands. They do use surnames, but they’ve built this longstanding goodwill into those surnames. It was probably more difficult for them to get a mark, but they have marks now. It’s a lot easier for a younger company to get a mark not in a surname. It’s always a trade off. If you want the brand to be you if you are that designer, maybe you do select a surname. If you don’t want the brand to be you, if you want to protect the brand early, maybe you don’t select a surname. Those are things that should be addressed right at the outset I would think.
Eric: Yeah, I completely agree. I think most people assume, “Hey, it’s me. It’s my name. This is great. I’ll call it my name. Who else can have a mark in my name?” Well, there’s probably other people that have your same name, and trademark law doesn’t like to give out exclusive ability to use a surname. A last name. I think it’s a word to the wise. Whether you’re starting a fashion business, or the next brewery. Last names are traditionally weak marks. It might be your first inclination to incorporate that, but the more distinctive your mark, the more arbitrary … The classic example of Amazon to sell books, or Apple to sell computers. Those are better marks. Those are stronger marks. For anyone listening thinking about starting a brand, or business of any kind. You should take some time to really think about that. Include that analysis into selecting your name.
John: Let’s talk a little bit about how designers actually protect their works, and protect them against infringement and counterfeit copies. Greta can you give us an idea … You know this area well. How do designers, ranging from large and small protect against infringement, counterfeit works, and protect their works in general?
Greta: One thing that is becoming big now is these larger brands are having brand protectors. Attorneys who are actually going out there and trying to shut down these websites, because now a lot of the counterfeits are being sold on websites. I now there was even something on Facebook where advertisements were coming up and everyone truly thought they were the real purses, or handbags. It turned out to be a counterfeit site. I think a lot of consumers aren’t sure what to trust, or if it’s a fake or not. They think they’re getting a really good deal on something. I think definitely attacking the Internet sources of these counterfeits is becoming a big issue. There isn’t any laws to protect fashion designs in the United States, so it’s definitely becoming an international battle, because there are different laws in different countries. Is fashion design protected? Yes, maybe not. I think it really depends.
John: I think we’ve seen these kind of programs instituted. A good example is eBay’s VeRO. VeRO is this program instituted by eBay where if you are a designer and you believe that your rights are going to be widescale … You’re going to face widescale infringement. You can contact eBay, and eBay will setup a program where you can notify them and have these items removed on an expedited bases. That works sometimes. Other times it doesn’t. There are a lot of other sites that have programs like that Etsy being one of them, but I think designers probably face a really threat from Chinese counterfeiting. It’s the elephant in the room with regard to American brands, or even European brands because stuff’s made a lot cheaper there. I have seen actually some attempts to stop the importation of what are seen as counterfeit goods through the US Custom’s Bureau. Again, it really depends on whether or not somebody catches it at the Custom’s Bureau. It’s a really-
Greta: I was going to say that. Yeah.
John: It’s a really tough problem to solve.
Greta: I think now a lot of … Okay, with the handbags. If they get imported, and it’s just the bag, what they’re doing is they’re separately taking these little trademarks of Prada with them, and then putting them on the bag once they are already imported in the States. Really could you tell that’s a knock off when it’s coming through customs? Maybe not. People are getting smart about how they’re doing it, and I think it’s harder to catch.
John: That’s a great point. My brother-in-law actually lives in … Ex-brother-in-law now, lives in China, and he would come home for Christmas and he would bring me shirts. One year he brought me a Polo shirt. The Polo … He said, “This Polo shirt was made in the same factory as Polo. It’s not actually real.” Of course my first reaction was, “You’re giving a trademark attorney a fake Polo shirt? This is the stupidest thing you’ve ever done. You’re right. They’re doing all these sophisticated things where they’re bringing things in and then they’re sewing them on after the fact. These customs and border patrol guys are getting boxes of labels, and they’re saying, “Okay, we can stop these labels from coming in, but it’s not like they’re not just going to ship more labels.” It’s not expensive to ship labels. It’s expensive to ship product. It’s a weird problem. It’s kind of an interesting time to live in a time of globalism, and see all these brand industry problems associated with that world.
Eric: Yeah, it seems like one of those problems where the bad actors are always going to be a step ahead of enforcement.
Eric: No matter what you do. I guess the only silver lining in there is if your good are being counterfeited by Chinese manufacturer, I guess it’s a sign you’ve made it to some extent.
John: Well, that’s right-
Greta: That’s the-
John: Go ahead. I’m sorry Great go ahead.
Greta: No, I was going to say I was at the symposium at the Fashion Law Instituted in New York last weekend, and that’s what a lot of us were saying, “Oh, you’ve made it. People are copying you,” and the designers didn’t like that very much, because it is such a huge industry for these counterfeiters. If they weren’t making so much money off of it, it might not be a big concern of the designers, but unfortunately it is, and they are making money off of it.
Eric: It seems like it’s going to be a problem that will continue on. Why don’t you tell us a little bit more about that symposium you attended. That was at Fordham?
Greta: Yes. That’s how I got started in the fashion law thing. I was searching online and I found that there is a Fordham Fashion Law Institute. Professor Susan Scafidi has created this institute that combines fashion and law. I believe there’s 7 course, but they do offer a summer program. It’s offered to people internationally. It’s a 2 week program. It’s in New York City. I believe it was 8 days. When I went it was only Tuesday to Friday, Tuesday to Friday, so you had some time off in the city. You go to class and you learn about the different topics in fashion law, and what’s going on now. You also have the opportunity to do day trips. It’s voluntary, but it is included in the costs that you pay for the course. For instance, the places they will take you are amazing. The connections that Susan has. We went to the Met and we met with in house counsel to the museum. We also went to visit sustainable jewelry designer Melissa Joy Manning, and we saw her studio, we saw how her jewelry is made. We also went to the design studio of fashion designer Nanette Lepore, and she’s from my hometown so I was so excited to go there. It was just amazing. We got to see them making the garments. We got to go to her showroom, so the same place that Nordstrom’s would come when they want to decide what pieces from the collection that they want to purchase. It was awesome.
Eric: That sounds amazing. It sounds like a great experience. It’s always nice to see your clients, or potential clients actually working. Where we work somewhat up in the clouds sometimes with the issues we face, and it’s always fun to go visit and see the actual production, and see the beer being made, or the clothes being made. It’s fun that see that and know that you’re helping them do that to some extent.
Greta: Well and I think it gives clients an appreciation for the work that we do. I think a lot of times attorneys are seen as the bad guys. If they bring you different options for a trademark, and you shoot down everyone that they really like, they think that you’re the bad guy and you don’t want them to succeed, but really being there with the consumers and the designers being able to see that I really care about the fashion industry. I care about the products that they’re making, the collections that they have, so what better person to represent them then someone who understands and appreciates what they’re doing.
Eric: Certainly. That makes a lot of sense. Is that an annual conference at Fordham?
Greta: Yes I believe. Well the symposium is annually, and then I think the bootcamp is every summer it’s offered.
Eric: You’ll be going back next year I take it?
Greta: Well, I guess I won’t be going back to the bootcamp. I think it’s offered annually, but it’s more of a 1 time thing. I’m sure I would love to go again next year but it’s so expensive.
Eric: I bet. Being in New York for the weekend’s expensive to if you’re used to East Lansing.
Greta: Yeah. That’s true.
John: New York is obviously a fashion capital just like Paris and Milan. What else is going on out there. We make fun of East Lansing for not being a fashion capital, but it kind of is isn’t it? There’s stuff going on in East Lansing isn’t there?
Greta: Well, yeah actually. There was just a fashion incubator that was opened in Lansing. It’s called The Runway. They do have a website. You can go and look at their designers and contact them. I believe they actually do have a retail shop at the bottom floor of their incubator that you can go and purchase the products from the designers themselves. Basically, what the fashion incubator is it’s an office space and a showroom space for a set of designers. They might have 10 to 12 designers and they provide work space to create their designs at a lower cost. They offer different types of expertise. They might get business advice, or financial advice, or legal advice. It’s really a great place for them to work together, but then have a showroom for themselves so that if someone wanted to come and purchase their brand, or come and look at it and see how it’s made, they can have a professional space rather than working out of their home.
John: Very cool. I’m sure that opens up a lot of opportunities for people who otherwise would not have the ability to scale. They get that mentorship that they need at the most important part at which they need it, and then they also I’m sure, are energized by being around other like-minded individuals.
Eric: Well Greta we like to end these podcasts with giving a tip to listeners on some legal advice that may be useful in their industry. We thought we’d give you the floor. If you’re giving 1 piece of advice to a young fashion designer, or a small fashion company, what would it be if you had 1 thing to tell them?
Greta: I think if I had 1 thing to tell a fashion designer, especially if they’re on the smaller scale is be careful about what you agree to if you have a contract, or someone approaches you and they really are interested in your collection, and they want to do some type of deal with you. It’s great and I’m sure something can come out of it, but you should be cautious about the terms and conditions of that agreement. Make sure you really do look at what you’re signing before you sign it because you could be entering into an agreement that might bind you to something that you didn’t know you agreed to. Or maybe you don’t have an agreement at all. You don’t have a written agreement. I think it’s best to have something in writing, or at least get some legal advice prior to making a decision like that.
Eric: Yeah, get it in writing. That’s always a good piece of advice. I think it’s true. Don’t get too far ahead of yourselves when you get a new opportunity. Opportunities are great, but they also come with risks, and you’ve got to understand what you’re getting yourself into because it may have lasting impacts on you. I certainly think that’s a good piece of advice Greta.
Greta: I think if you do your research you should be good. You can find things on everyone on the Internet now, so at least look into who you’re getting into a relationship with.
Eric: Yep. That makes perfect sense. Well, I think this has been a really great podcast. I know I learned a lot about it. Greta, I want to really thank you for being here today. We really appreciate it.
Greta: Thank you for having me. It’s been wonderful, and I’m glad I got to talk about fashion law and at least explain what it is, and it seems like it is a hot topic, and it can definitely intertwine with a lot of things that are currently going on.
John: Yeah, we certainly appreciate it and I want to say that I’m proud to be a graduate of Michigan State Law because if they keep producing people like you then I will never have to worry about the value of my degree. I think that somebody would be very lucky to hire you.
Greta: Wow. Thank you very much.
John: I think it’s great.
Eric: I agree. Definitely. Great job. Just the initiative to go for it I think means so much. Congratulations. I think you’re doing a great job. Keep it up, and we’ll have you back sometime.
Greta: Sounds good thank you.
Eric: Thank you.