IP/Brand Protection

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On May 18, 2023, the United States Supreme Court ruled in favor of famed rock photographer Lynn Goldsmith against the Andy Warhol Foundation for the Visual Arts, Inc.’s (AWF),[1] in a long-awaited decision impacting fair use under Section 107(1) of the Copyright Act. The opinion written by Justice Sotomayor, in which Justices Thomas, Alito, Gorsuch, Kavanaugh, Barrett and Jackson joined, held that the “purpose and character” of AWF’s commercial use of Warhol’s portraits of Prince shared the same commercial purpose of the original photograph taken by Ms. Goldsmith and, as a result, did not constitute fair use.[2] The Court’s decision affirmed the ruling of the Second Circuit Court of Appeals, which held that the Warhol work was derivative of the original, and noted that “the new expression may be relevant to whether a copying use has a sufficiently distinct purpose or character” but that factor was not dispositive by itself.[3] The Court found that the Warhol Foundation’s licensing of the Orange Prince to Conde Nast did not have a sufficiently different purpose as the Goldsmith photograph because both were “portraits of Prince used in magazines to illustrate stories about Prince.”[4]Continue Reading Supreme Court Finds Warhol’s Commercial Licensing of “Orange Prince” to Vanity Fair Is Not Fair Use and Infringes Goldsmith’s Famed Rock Photo

This was first published in the Beverly Hills Bar Association’s Global Fashion Lawyer.

Appearance is arguably the most important aspect of modeling. Whether a model is practicing poses in the mirror, or sitting in the makeup chair and being prepped for a photoshoot, the essence of a model’s job is to be a canvas, painted and altered to fit the role of the job she books. Even if a model is not altering her appearance for herself, but at the direction of the project’s creative director, presumably the model signed up for the specific gig at her own volition.
Continue Reading Some Press is Bad Press: False Light in the Modeling Industry

On March 4, 2019, the United States Supreme Court held unanimously that “a copyright claimant may commence an infringement suit … when the Copyright Office registers a copyright.” Fourth Estate Public Benefit Corp. v. Wallstreet.com, LLC. (Slip. Op. at p. 1 (syllabus)). The Court also held unanimously that, upon registration of the copyright, “a copyright owner can recover for infringement that occurred both before and after registration.” Id. This decision resolves a long-standing circuit split between the application approach, which allowed a copyright owner to sue for infringement upon submission of a copyright application, and the registration approach, which allows an infringement suit to proceed only after the Copyright Office granted the registration.  
Continue Reading Supreme Court Holds that a Copyright Claimant May Commence an Infringement Suit Only After the Copyright Office Registers the Copyright

Growing frustration in the fashion community regarding weak or non-existent intellectual property laws has finally caught the attention of some nations. Nigeria is one nation that currently is trying to alleviate this frustration by reforming its intellectual property laws. This reform is driven, in part, because, Lagos, Nigeria has quickly risen as a fashion hub, and has been compared with such fashion centers as London, Paris, Milan, and New York. Nigerian designers have recently experienced great global success and visibility. For example, Amaka Osakwe has been pushing the limits of Nigerian fashion and has gained the attention of fashionistas in the United States and abroad. In 2014, she was invited to the White House by Michelle Obama, an admirer of her work, and her “Maki Oh” designs have been worn by Lupita Nyongo and other A-list celebrities. Last year, Ms. Osakwe was named a LVMH Louis Vuitton Moët Hennessy Finalist, placing her among the most notable young fashion designers in the world today. Other talented Nigerian designers include Duro Olowu, Deola Sagoe, Lisa Folawiyo, and Lanre DeSilva-Ajayi. As these designers continue to gain worldwide recognition, they must protect their designs from infringement both within Nigeria and globally.
Continue Reading An Uphill Battle Protecting Fashion Designs In Nigeria and Abroad

The European Court of Justice (ECJ) has struck down the 15-year-old “Safe Harbor” agreement that permitted companies operating in Europe to transmit personal user data to the United States, as long as the U.S. ensures an adequate level of data protection at the company and certifies that it will abide by seven EU data privacy principles regarding notice, choice, onward transfer, security, data integrity, access, and enforcement. The case, entitled Maximillian Schrems v. Data Protection Commissioner, was decided on October 6, 2015 and has an immediate effect on European courts. See here.
Continue Reading EU Court Rejects “Safe Harbor” Agreement Permitting Customer Data Transfers to U.S.

If you’ve ever wondered what the “lifestyle” of a Porsche driver looks like, look no further than Porsche Design’s latest fashion catalog. Twenty-three glossy pages of sleek leather jackets, modern business blazers, and retro-futuristic day-to-evening wear attempt to define what Porsche drivers look like, what they wear, and what they do in their free time. Porsche is selling more than just a vehicle—Porsche is selling a lifestyle.Continue Reading Four Wheel Fashion

The fashion industry is finally loosening its buttons—several decades and a few billion dollars in advertising later, retailers are moving away from using high-priced models and exotic locations to lure customers. Instead, many brands are promoting their designs by relying on every day images of existing customers wearing their products. Consumers- specifically, young women- are flaunting their personal style through social media platforms and retailers are embracing this outlet as a means of engaging customers. Recently, a Wall Street Journal article [1] highlighted this new phenomenon, explaining that retailers’ “embrace of real-people photos feeds the needs of young consumers for connection.” Candid street style is quickly becoming professionally-styled advertising’s more popular younger sister, and retailers are adjusting their business strategies to catch up with consumer behavior.Continue Reading Hashtagging Away Your Rights: Privacy and Publicity Rights in Social Media

On October 15, 2012, the United States Court of Appeals for the Second Circuit issued its opinion in Jovani Fashion, Ltd. v. Fiesta Fashions , Docket No. 12-598-cv, 2012 WL 4856412, holding that the prom dress artwork of fashion designer Jovani Fashions, Ltd. (“Jovani”) lacked copyrightable elements, and thus, could not be infringed by a competitor’s design. Though not a precedential decision, the opinion serves as both an important reminder of the absence of copyright protection afforded the fashion world and a streamlined instruction on the scope of and limits on copyrightable elements in works of fashion.Continue Reading Jovani Fashion, Ltd. v. Fiesta Fashions: Second Circuit Finds Dress Designer’s Copyright Claim Weak at the Seams

By Robert Magielnicki

On October 1, 2012, the Federal Trade Commission issued revised “Guides For The Use Of Environmental Marketing Claims” – the “Green Guides,” 16 CFR Part 260. The Green Guides originally were issued in 1992 and were revised in 1996 and 1998. The review resulting in the latest revisions began in November 2007.

The Green Guides set forth the FTC’s views concerning environmental claims and are intended to help marketers avoid making environmental marketing claims that are unfair or deceptive and thus violative of Section 5 of the FTC Act. The Guides are administrative interpretations of the law and thus do not have the force and effect of law. However, the FTC can take action under the FTC Act if a marketer makes an environmental claim that is inconsistent with the Guides.Continue Reading FTC Issues Revised “Green Guides”

By Tyler Baker and Ted Max

On September 5, 2012, the United States Court of Appeals for the Second Circuit issued its long-awaited and highly anticipated decision in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., Docket No. 11-3303-cv. The Second Circuit reversed the lower court decision, in part, holding that Christian Louboutin’s “red outsole” trademark was valid and enforceable, and affirmed in part, holding that such trademark protection was limited to uses in which the “red outsole” contrasts with the color of the remainder of the shoe. As a result, the appeal of Christian Louboutin (“Louboutin”) was not successful and the fashion atelier Yves Saint Laurent (“YSL”) was not enjoined from using a red sole as part of a monochrome red shoe. The ruling, deciding a novel and hotly debated issue of U.S. trademark law regarding aesthetic functionality, is a victory for both sides in some respects, yet certainly leaves the door open for future debate and lawsuits about the scope of the Louboutin mark’s protection.Continue Reading Second Circuit Digs Its Heels Into Louboutin Dispute; Finds “Red Sole” Trademark Protectable, But Limited in Scope

By Victoria Lee and Ted Max

In this hyper-digital age, the designer brand’s focus has gradually shifted from primarily print advertising media to reaching consumers through the Internet and many forms of social media with branded entertainment in the form of short fashion films. The fashion film trend pairs fashion brands with famous directors and actors to produce beautiful and easily-accessible short films, which feature the brand and highlight certain seasonal fashion designs or product lines. These films impact an advertising and marketing message while also appealing to consumers’ artistic sensibilities.Continue Reading Fashion Film Art Movement