Fashion industry clients need versatile, responsive legal advisement. The Law Office of Shourin Sen’s fashion industry practice combines a comprehensive understanding of intellectual property licensing and litigation with industry-specific knowledge. Our law firm designs strategies that are individually tailored to obtain the objectives of our fashion clients.
Intellectual property in the fashion industry
It is an imperative for fashion companies to ensure that their brand and product designs are shielded from being appropriated by rivals or from counterfeiting. Intellectual property laws enable a fashion firm to separate itself from its competitors and ensure that its design investments are protected. Fashion companies may utilize a web of federal, state and foreign law to defend their works, including copyright, trademark, trade dress, unfair competition law and utility and design patents.
Copyright in fashion designs
Copyright in the fashion industry protects original, non-functional, works of authorship fixed in a tangible medium of expression. Copyright vests on the creation of a work, but a rightsholders are granted additional powers if they register their works with the Copyright Office. The Copyright Act grants rightsholders who register their works within the first six months of creation or before being infringed by a third-party the right to seek attorneys’ fees and statutory damages.
Our fashion law practice advises clients on copyright issues and rights enforcement. Our law firm registers works with the Copyright Office, prosecutes infringement actions, and will issue opinion letters, which may shield a fashion company from damages for willful infringement should a third-party bring suit.
Trademark brand protection in fashion
Trademark law protects the marks by which goods or services are recognized in commerce. Along with copyright, trademark forms the backbone of a fashion firm’s intellectual capital. A trademark owner may seek remedies against anyone who distributes works with marks that are likely to cause confusion with their marks, or dilutes the value of a famous mark.
Our fashion law practice advises on a broad range of trademark issues. We consult with fashion businesses to find strong brand names that minimize risks and ensure broad protection. We register marks and will prosecute a mark in front of the Trademark Trial and Appellate Board. As part of our fashion law practice, we conduct trademark litigation and issue opinion letters on trademark infringement matters.
Trade dress protects the visual appearance of a product or its packaging that signifies the source of the product to consumers. A rightsholder must show a trade dress is distinctive to obtain registration on the principal register or common law protection under the Lanham Act. An owner of trade dress rights may seek an injunction and damages against businesses that distribute products that are likely to cause customer confusion as to the origin of a good. An example of trade dress protection in the fashion industry is the Tiffany blue box.
Design patents protect the ornamental design of a functional item. A rightsholder of a design patent can seek an injunction and damages against a party who makes, uses, copies or imports a substantially similar design. Design patents must be filed with the United States Patent & Trademark Office within one year of becoming publicly available. Our fashion law practice has forged relationships with attorneys who have niche patent practices. This allows our law firm to build representation teams that are tailored to our clients’ fashion law needs.
Licensing can offer designers, agents and manufacturers additional revenue streams and marketing opportunities. It can enable a fashion company to expand into new geographical territories or product categories. Licensing can, however, lock a fashion company into an ill-advised relationship if they are not careful to conduct due diligence on a counter-party and ensure its licensing agreement is properly structured. Fashion licensing agreements should contain, among other things, a clearly defined scope, quality control provisions, advertising and promotion restrictions, rights of inspection, and the appropriate warranties and risk controls.
Our law firm advises on all types of fashion industry licensing relationships including agency agreements, distributorship agreements, product tie-in contracts and endorsements.
Commercial fashion agreements
The process of bringing a product to market often requires a quilt of contractual relationships between suppliers, fashion companies, retailers and agents. These commercial arrangements, broadly grouped into sales agreements with retailers, sales representation agreements and purchase orders, offer their own set of liabilities if a fashion company enters into inappropriate contracts. These agreements are governed under the Uniform Commercial Code in the United States if the there is no binding contract with contrary terms.
Our law firm advises fashion companies, retailers and manufacturers on commercial agreements. We review contracts to ensure that they are a clear, comprehensive instrument for governing a relationship and contain the requisite warranties and provisions should a relationship sour.
International issues in fashion law
The fashion and design industry has a global reach. It is not uncommon for small- and mid-sized design firms to enter into agreements with foreign vendors. Our law firm advises fashion companies on finding an appropriate international partner, how to structure agreements so that a relationship will achieve its objectives, and the methods to ensure protection of intellectual property abroad.
International relationships and licenses
International business relationships are varied and take many forms. A fashion company may find it beneficial to enter into a sales representative agreement where a foreign agent obtains orders for the company; a license agreement where a foreign counterparty manufactures and sells a fashion company’s products; a distributorship agreement through which a foreign party sells products manufactured by a fashion firm in its territory; or some hybrid of the above. Each of these types of relationships carry their own associated risks, which are particular to the territory in which a counterparty operates. Our law firm advises on finding an appropriate international partner and shaping agreements so that they minimize a fashion company’s liabilities and offer an optimal chance for forging a successful relationship.
International trademark and service mark protection in fashion law
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that provides a cost-effective way for trademark and service mark holders to ensure protection of their marks in many foreign countries. A rightsholder, under the Madrid Protocol, can file a registration application in the United States and then have the mark referred to other countries for registration without a local agent. There are currently seventy-nine countries who have joined the Madrid Protocol.
The Madrid Protocol also facilitates management of marks. The Protocol created a simplified process whereby a rightsholder can register a change in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau, and then the information is circulated to member countries. Our law firm will advise on the referral of marks for registration internationally and build strategies for leveraging intellectual property assets outside of the United States.
Customs and fashion law
Fashion companies encounter customs and importation issues because a large percentage of U.S. products are manufactured abroad. If a fashion company does not fulfill the appropriate formalities it risks monetary penalties, seizures or costly delays. Importers should ensure they provide customs with the appropriate entry documentation and avoid material omissions. Our law firm will advise fashion industry clients to ensure that they are compliant with importation laws and assist in resolving any disputes that may arise with U.S. Custom and Border Protection.