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Global Fashion Lawyer 2020-02-20T09:23:35-07:00

Alessandra Tarissi De Jacobis & J.D. Harriman

Alessandra Tarissi
De Jacobis

Alexandre Alves Costa

Yiraí Santiago-García

Editor’s Note:
Law Beyond Fashion and Lifestyle

February 2020 will be a memorable month.

February 2, 2020 (02022020) is a rare palindromic day.

On February 10, the Oscar night and stars were shining while waiting for the fashion days to rise in Milano, New York and Paris during the usual February fashion weeks.

Last, but not least, February 2020 is the month during which our first issue of the Global Fashion Lawyer magazine will finally see the light!

But what is our magazine about? We are lawyers practicing in jurisdictions all over the globe and we are passionate about fashion and lifestyle.

Fashion law crosses many important branches of law, such as business law, copyright and trademark, trade secrets and unfair competition, real estate, advertising, labor & employment, commercial sales (including international sales) and last but not least, also entertainment.

This magazine is not only for lawyers but it is also aimed to reach a larger audience and to be enjoyed by players in the industry, as this is one of the industries that is more and more globalized and therefore deals with different cultures and jurisdictions.

Also, our magazine will be about everything that belongs to the world of luxury: we cannot forget that many other sectors different from the strict sense clothing and apparel industry contribute to the development of fashion law.

For instance, jewelry, perfumes, furniture, luxury vehicles—they all belong to the fashion industry and, therefore, to fashion law. In this respect, the new frontier is represented by a very recent decision of the Court of Justice of the European Union regarding the applicability of the copyright protection to works of applied art, such as fashion and design products.

And this exactly reflects the content of our first issue.

Finally, it should be noted that several universities and law schools now offer fashion law courses and there are many fashion law lectures and programs held in many countries. Our magazine comes exactly at the time that the law and the industry are in a need of for more discussion about this topic.

Together with my co-editors, Alex Romain and Natalia C. Aranovich, whom I wish to thank for their hard work and valuable contributions, I really hope that you will enjoy our efforts and we look forward to sharing with you more during this year!

Alessandra Tarissi de Jacobis
Editor-in-Chief

Fast and Furious. When Luxury Deserves IP Global Protection:
The New Challenge of Ferrari 250 GTO.

2019 should be remembered as a very special year in the already golden history of Ferrari, the luxury car of the Maranello Plant.

In particular for the second year in a row, Ferrari has retained the position at the word’s strongest brand with a Brand Straight Index score of 94.1 out of 100.

Also, while the movie Ford v Ferrari has collected four Oscars Nominations and two Academy Awards, the Prancing Horse team was able to gain important victories not only in Formula 1 but also before the Italian Court.

The “Diva” covering the leading role in both the Hollywood drama and before the Italian Court is the Ferrari 250 GTO, one of the most iconic cars of the Maranello plant, produced by Ferrari from 1962 to 1964.

As to its challenge with Ford, it should be noted that before the Ford GT40 was (finally) able to win the 24 Hours of Le Mans in 1966, the Ferrari 250 GTO won the over 2000cc class of the FIA’s International Championship for GT Manufacturers in 1962, 1963, and 1964. 250 GTOs also won the 1963 and 1964 Tour de France Automobile, marking Ferrari’s nine year dominance of that race.

During the sixties,  the GTO price was $18,000 in the United States, with buyers personally approved by Enzo Ferrari and his dealer for North America, Luigi Chinetti. In June 2018, the 1963 250 GTO set an all-time record selling price of $70 million.

Turning to the victory before the Italian Court, on June 20, 2019, the Ferrari 250 GTO, has been granted with full legal copyright protection for its design.

Ferrari filed the lawsuit against an Italian car manufacturer, Ares Design Modena S.r.l., after Ares announced its intention to launch in the market of Ferrari 250 GTO replicas and alleging that it was going to replicate the same distinctive features of Ferrari’s iconic car.

After the initial Ferrari copyright application was refused, Ferrari then appealed against the lack of consideration for their claim of copyright infringement: the Court then assessed the compliance with the requirements for an industrial design product to be recognized as artwork and stated that there was objective evidence that the vehicle actually has artistic value.

Preliminary, it should be noted that, according to Italian Law, a work can be protected as a registered design or under copyright law.

The registration of a design work is important due to the possibility for its owner to gain the relevant protection (up to a maximum of twenty-five years) and giving the author the time necessary to obtain the due appreciation of the design work;  the evidence of due appreciation is then relevant for the purpose of demonstrating the artistic value of the design product that is in turn necessary to gain the copyright protection and, therefore, the related protection, inter alia, for the longer protection period (i.e., 70 years after the author or creator’s death).

In particular, as to the registration of a work as a design, according to Italian law (article 31 of Legislative Decree n. 30/2005),registrations as designs and models may be granted to the appearance of the whole or a part of the product, resulting in particular from the features of the lines, contours, colors, shape, texture or materials of the product or its ornamentation, provided that the same are new and have an individual character. A design work will be defined as new if it has never previously been disclosed and no application has ever been made for its registration, while the individual character requirement is met if the product results in a different overall impression from that caused by any other design work. Once registered, a design can be protected for up to 25 years.

With reference to the protection under Italian copyright law, an industrial design work is entitled to receive copyright protection as long as it has a creative character and an artistic value. To assess whether the design meets these criteria, the work in its entirety must be evaluated both from a creative and artistic point of view. In other words, the threshold for industrial design works to obtain copyright protection is set over both the two above mentioned requisites of creative character and artistic value.

It must be noted that although “creativity” means that the design is a personal expression of the artist, “artistic value” means that the design has an intrinsic representative and communicative value, beyond the functionality of the object as an expression of artistic trends and cultural influences.

Because of the standards described above, including the strict copyright-related definitions, only a few designs have been acknowledged as artworks by the Italian courts.

In the past, the Fiat group applied (and failed) to obtain copyright protection for two of its popular models: Lancia D24 and Alfa Romeo Giulietta SZ. The Court ruled that the two cars could not be considered artwork because the manufacturer had not demonstrated their artistic value.

Not surprisingly, in the Ferrari case, the Court recognized both creative character and artistic value. In particular, the artistic value was recognized by the Court, which took into account the “numerous awards and official testaments” that “the customization of the car’s lines and its aesthetic elements have made the 250 GTO unique, a true automobile icon.” The Court’s granting of artistic value deservedly recognized the numerous awards that the car had earned over time, the number of exhibitions, the press coverage (not only in the automotive sector), and the widespread depiction of the car in other artistic forms (such as coins, sculptures). As to the creative character, the Court also ruled that Ferrari had provided sufficient evidence, as it is an expression of the work of Sergio Scaglietti, its well-known designer.

The Ferrari decision is part of a new trend, as another Italian court recently granted the Vespa LX with copyright protection. These decisions along with a recent decision of the European Court of Justice (CJEU) suggest that the “artistic” element should be no longer considered as a required criterion in order to qualify an industrial work as a copyright work. In particular, the latest development concerning copyright protection on industrial works is the CJEU’s decision in Cofemel (C-683/17), dated September 12, 2019, where the CJEU faced the question whether member states of the European Union have the freedom to choose the threshold that industrial designs and works of design should meet if they were to qualify for copyright protection.

For what matters in cases as the Ferrari case, it must be noted that the CJEU judgment clarified that assessment of artistic merit is considered to be too subjective and uncertain to provide sufficient legal certainty and such criteria should not part of the requisite test.

In light of the Cofemel decision, which is binding, the EU member states’ courts must align their approaches to copyright protection for industrial works with this Cofemel decision. Consequently, industrial design works that may previously have failed to qualify for copyright protection should now have more chance to achieve copyright protection.

Is European law inciting a revolution in industrial copyright protection? If so, will the revolution impact the US market? Where would such a revolution leave owners of previously-built 250 GTO replicas,? Is the Ferrari judgment applicable only regarding the creation of new replicas in Italy or shall have any significance also in the USA?

In the United States, designs can be protected by design patents, copyright, trademarks, and trade dress. A design patent covers the ornamental aspects of a useful object.  In a design, any aspects which are merely functional are not protectable by a design patent.  Ferrari has been granted over 100 US design patents for their cars, components, interiors, and other similar elements.  Ferrari’s most recent design patent is US D870,626 for the design below:

Of interest is that the title of some of Ferarri’s design patents reads as follows: “Car including toy-car, motor car, replica car and scale-model car.”  This language implies that Ferarri is considering the existence of replica cars and is pro-actively asserting its design rights both with respect to cars and to replica cars.

A disadvantage of US design patents is the limited period of protection, which is only fifteen years from the date of grant.  Once the design patent expires, it cannot be used to enforce rights against those who would copy the design.

As with European copyrights, US copyrights have a much longer life.  As an intellectual property tool, copyright law is therefore a more useful tool than a design patent because of its longer enforcement period.  One challenge is that US copyright law excludes “useful articles” and defines a useful article as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” An article that is normally a part of a useful article is considered a “useful article.”  Cars and vehicles have been held to be useful articles.

But all is not lost! Trade dress, which is a form of trademark protection, applies to car designs.  Ferrari has successfully sued Roberts, a replica car maker, for trademark and trade dress infringement.  The court cited the Lanham Act, which prohibits acts “likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.”  At trial, Ferrari demonstrated that the exterior design of Ferrari’s vehicles (in this case, a Testarossa) enjoyed strong secondary meaning.  The court therefore held that Ferrari could pursue trademark and trade dress infringement against Roberts.

Thus, a car designer can use both design patents and trademark/trade dress protection to combat infringement of their vehicle designs.

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Ferrari 250 GTO and Beyond. How to Convey Luxury and Freedom Driving Cars. Interview with Giorgio Bulgari.

Interview by Alessandra Tarissi De Jacobis

Giorgio Bulgari is the great-grandson of Sotirio Bulgari who founded the iconic Bulgari maison. In 2011, the Bulgari family sold their controlling stake to LVMH (Louis Vuitton Moët Hennessy).

Giorgio started his career in financial services and then transitioned to luxury goods, working first for his father and then as creative director of Marina B (a jewelry house founded by his aunt Marina Bulgari). He is now the founder and managing director of Giorgio Bulgari SA with headquarters in Geneva, a company focused on designing one-of-a-kind jewelry for private clients globally, including Hollywood actor Dennis Quiad who recently proposed with one of his rings. (vedi https://www.usmagazine.com/stylish/news/dennis-quaid-proposes-with-vintage-giorgio-bulgari-ring-details/) But Giorgio does not have only jewels in his blood. He has a genuine passion for cars, a passion he inherited from his father Gianni and his uncle Nicola.

Giorgio, let’s go straight to the point: have you ever owned a 250 GTO?

The Ferrari 250 GTO is, without doubt, one of the most sought-after cars in the world – the “Holy Grail” for car collectors. Over the course of the last half century, it has emerged as one of the most desirable cars with a unique blend of style, exclusivity, performance and racing pedigree. And they are simply stunning.

I believe only 36 were ever made and my father was lucky enough to own one in 1963. He raced at Monza where he won and was first in class at the 1963 Targa Florio. The car went on to race 20 times, was never involved in an accident, and never failed to finish. That very same car – a 1962 Ferrari 250 GTO – is the most valuable car ever sold at auction, fetching $48M at Sotheby’s in 2018.

Which kind of car do you like?

I especially like cars that are light and communicative. That’s not to say I not am easily seduced by a beautiful car but if it isn’t fun to drive it blunts my passion for it. Old cars often transmit so much more sensory information and also ride on skinny tires – that allows you to drift at low speeds and you can enjoy driving them without breaking the law!

Where does your passion come from?

Family. I learned to drive a stick-shift with my father when I was 8 years old. Driving is a pure act of freedom.

I have been told that many passionate drivers would not be inclined to buy an electric car, despite their sustainability and green footprint. Apparently because they cannot hear the “roar” of the engine. What do you think about Tesla?

I’m intrigued by electric cars. I’ve enjoyed driving Model S’s and more recently a Jaguar I-Pace and am impressed not only by their sheer performance and torque but also by the different driving experience. You have no gears and use the accelerator to brake. Not to mention that everything happens in absolute silence which feels very modern and civilized.

The automotive world is clearly in transition and everybody seems to be getting behind EV’s but I can’t wrap my head around Tesla’s market valuation which has just recently overtaken VW!

And what about replicas?

It’s an interesting question especially now when you have Aston Martin continuing production of the DB4. Should they be considered originals, replicas or something entirely new? By definition replicas should be more accessible which is not entirely the case here. I think most collectors would strive to have an original but a lot of it has to do with ego. Personally, I’d rather drive an original, even if only once, than own a replica.

How do new generations interact with cars?

I often wonder what kind of relationship my kids will have with cars. They are still young but at their age I was already obsessed by cars and so was my father before me. I hear that fewer people are getting their driver’s license and choosing to ride with Uber or the like instead. And I can’t blame them. Levels of congestion are rising constantly and the threat of autonomous vehicles is on the horizon. This will likely limit their sense of freedom at the  they will perceive cars as mere means of transportation, just another service. I, however, am taking them on my laps and are teaching them how to drive.

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What Happens When You Combine Murder, Fashion and New York City?

You have the essential elements of Naïve,

a hot new legal suspense novel written by Charles Royce.

Interview by Karin Paparelli, Esq. Nashville, TN

Karin: As an entertainment attorney, I am privileged to represent a variety of creative talent. Charles Royce, the author of Naïve, is one such client. His brand new novel has already received considerable acclaim. Working with Mr. Royce, I am doubly blessed. Not only is he an exceptional writer, but has rapidly become one of my favorite people. When approached about being interviewed for Fashion and Law Magazine, Charles was so accommodating, it was as if the interview wrote itself.

Let’s jump right in. Without giving too much away, how does the fashion industry provide the backdrop for Naive?

Charles: Hi Karin!  In my debut novel Naive, Lennox is brutally murdered in his apartment in Manhattan. Micah is the primary suspect and is arrested for murdering his husband Lennox, however, there are many other suspects. For example, both Micah and Lennox worked for a mysterious new fashion magazine publishing company, a company that has quickly risen in the industry.  This same company had displaced the behemoth that formerly enjoyed market dominance with virtually no competitors for decades. When Lennox is murdered, people from both companies look like they could have played a part.

One of the suspects is Jenna, a former employee of Lennox. She is characterized by having an insatiable appetite for designer everything, clothes, bags, dresses, and shoes of which she is never seen without. You get the picture. In the sequel, we get to know her a little better, and we find out that she had only recently come into enough money to be able to afford those kinds of clothes. I mean, if a girl all of a sudden comes in to a little money, who wouldn’t dream of their Pretty Woman moment?

Karin: How did you handle the potential intellectual property issues that can be encountered when using established brands or personalities in a creative work?

Charles: Initially, my editor and I went round and round about using established names. I had so many questions. Can I mention a Stella McCartney dress, a Dior suit? If you’re in a certain area of New York, and you use another name for the only hospital in that area, are New Yorkers who read your book going to call bullshit? If you aren’t being negative about a company or a brand, then is it okay to use it by name? On the first few drafts, I had used real life publishing company names, magazine titles, even celebrities that spoke to my characters. That is until we spoke.

Your explanation of potential intellectual property infringement issues was illuminating. Basically you said, there’s a reason I wanted to use real names. Real names add an element of authenticity to fictional works. However, the reputation of such “real” companies was the result of time, effort and considerable expense.

And that is where the value lies. That is worth money. Money I didn’t have. It was my debut novel, if you remember. So I changed the names and certain details, but hopefully left enough richness that the reader would believe they are real companies and real people. I did leave Meryl Streep’s brief appearance at a party, but mostly because if she gets upset about it, she might call me, we’d have dinner, she’d forgive me and we’d be friends for life.

Karin: You obviously have a creative mind. Tell me a little about yourself. When did you know you wanted to become an author?

Charles: Well, I wrote my first novel at the age of 10, but please understand the word “novel” is a pretty dramatic overstatement, and I was not some sort of child prodigy. This novel I speak of is basically about 25 pages of garbledy-gook about a little girl with cancer. I still have it. It’s a good reminder how deeply rooted my writing is, despite the many different avenues of creative expression I’ve taken over the years. I’ve been copywriter for an advertising agency, a successful songwriter for a music publishing house, art director for a record company, creative director for an entertainment magazine, owner of a small southern bakery, and a mental health psychotherapist. Most recently I have come back to my original (and forever) passion, which is writing. Naïve is the culmination of all of these creative pursuits, and my lifelong appreciation for the fashion industry.

Karin: Usually novels based on fashion focus on the industry itself, specifically I am thinking about The Devil Wears Prada, or Confessions of a Shopaholic. What made you decide to place the fashion industry as a backdrop to Naive?

Charles: Interesting that you brought up The Devil Wears Prada. In the movie version of the book, Stanley Tucci’s character talks about being a little boy with a copy of Runway, dreaming of one day being in the fashion industry. That was me. Growing up in Vicksburg, Mississippi, I was obsessed with fashion. Every year my mom would buy all 4 nights of the Miss Mississippi Pageant, which was held in Vicksburg. Evening gowns, swimsuits, what they were wearing when doing their talent portion, I soaked in all of it. You would think I would have known I was gay as a child, but alas, it wasn’t until later. Later still, when I fully accepted myself, after I moved to Nashville, Tennessee. But I digress.

Cut to 2001, I was in Los Angeles, renting a small apartment on Canon Drive just off Wilshire, in an area they call “Beverly Hills adjacent” because I couldn’t afford a real 90210 residence. I got a job as a graphic designer at Variety Magazine, entertainment’s most established trade publication, which was headquartered just off Wilshire Boulevard at the time, so now my whole world literally revolved around Rodeo Drive. I’d pass it to and from work every single day.

When I lived in Los Angeles, I was pretty self-absorbed, became a little too concerned with image and looks, who I was with, who I was dating, where I was seen. My life was a mess. My mom died during that time, which plunged me into the drinking and drugging scene. I was what they call a “functional alcoholic and drug addict.”

Eventually I became Creative Director of Variety, and was hired by Variety’s parent company to run 5 other trade publications based in New York. So, I moved to Manhattan. Working in the publishing industry, I had many friends who worked for Condé Nast.  After a couple of years, I finally set my sights on working in the fashion industry. I managed to land two interviews for positions, one for GQ and the other for Bon Appétit, neither of which I secured, because as they said, I was “coming from a trade background, and had no experience in the consumer business.” Thank God, because shortly afterward, I got sober and moved back “home” to Nashville, where I currently I live with my partner of 5 years. I am finally at peace, both in my career and in my personal life. I’ve been sober now for 14 years.

To this day, that world still fascinates me. Fashion, I mean. To be that close to an industry giant like Condé Nast, to see the inner workings of their industry through all of my interview . . . the tours, the lunches, the lifelong friends who still work there. Of course, I’m going to draw from that experience. The fashion publishing industry is a beautiful, aspirational world that begs to be written about.

Karin: What did you take away from the process of writing Naive?

Charles: I have learned to find the answers. Research is extremely important to a book. For me, research has been instrumental, providing a realistic texture to a fictional world based on an established industry. When you find the right people to steer you in the right direction, it all comes together. It might not be like your original vision, but it won’t be so different as to be unrecognizable. You just have to be diligent and respectful, while still being faithful to the story.

Hopefully as a result of this process, I have created a fun and memorable ride for my readers. And with two other novels that build off Naive, the ride will continue for a couple of years at least.

Karin: Thank you Charles. As always, it has been a pleasure spending time with you. With the success of the initial release, two more novels to follow, and talk of adaptation for the screen, it would appear there is much more to come.

Naïve is available for purchase through Amazon.com and fine booksellers worldwide.

The Olympic Charter’s Limitations On Athlete Fashion

For years, the world has watched famous athletes wearing beautiful clothes during different moments in their athletic lives—and especially during the Olympic Games. It was not rare to see the national athletes dressed fashionably: wearing fancy suits during some moments (like the Opening Ceremony), nice uniforms when they were performing, and special outfits while on the medal podium.

The reason these Olympic athletes sport so many different sets of uniforms and brands during the Olympics is simple: the Olympic Charter rules.

Rule 40 of the Olympic Charter establishes certain limits on athletes and sponsors who use the Olympic Games for self-promotion or advertisements. The rule applies to competitors, coaches, trainers, and officials in the current Games. Rule 40 imposes some ethical standards on the athletes and covers marketing on social media. The rule states that in the so-called “blackout period”—which extends from ten days before to three days after the Games—the competitors (and others) must observe the limitations set by the Rule.

The Games are not cheap. And sending a delegation to compete overseas sometimes requires not only the right national political attitudes, but also the support of private brands that seek exposure during the world’s biggest and most-watched sporting event.

Rule 40 was implemented in 1991, in advance of the 1992 Barcelona Games, because the world was about to watch professionals participate in the Games. The Barcelona Games generated a lot of interest from various fashion brands as they saw an opportunity to market their brands with famous athletes. And one of the enduring images of those Games was a famous American basketball player standing on the medal podium, covering the logo patch of one brand on his shoulder with an American flag – because he had ongoing contractual obligations to another big brand.

Can all the athletes use the brands of their personal sponsors during the Olympics while the National Olympic Committee (“NOC”) has engaged different brands to sponsor the national team or the Games? The answer is the typical from the lawyers: It depends!

The NOC has begun addressing these contractual conflicts by implementing By-law 40.3 and Rule 50, which apply to official sponsors and to personal sponsors. These new rules assert that the athletes may get permission to use specific equipment as long as the sponsorship issues do not prejudice the athletes’ performance or the entire event. As one example, if a skateboarder uses only the wheels or trucks from some specific brand to perform the sport, Rule 50 will allow such use. Also, Rule 50 states that the allowable size of each brand’s logo for socks, shoes, helmets, safety gears, glasses, earplugs, watches, etc.

These Rules also prescribe the manner and brand an athlete must wear during flights, inside the Olympic Village, during the trainings and competitions and on the medal podiums. But the Rules allow for some exemptions, including how third parties can advertise with the athletes and the clothes the athletes can wear outside the above-mentioned places and moments. Notably, the sponsors of the NOC will provide the uniforms for all “Olympic moments,” while the athletes can otherwise wear the fashion of their personal sponsors, as long as it is within the limitations of Rule 50.

In our law practice, it has not been uncommon to see an athlete in our office, after an international event, with a notice of breach of contract or even a fine because he or she wore or used a brand that was not the approved brand for the National Team. Our search for a solution usually begins with the same rule that is being used to punish the athlete.

Athletes, agents and managers must observe the exemptions and must work to draft new contracts that reflect the evolution of these rules. Any contractual clauses must observe the general contracts rules, including mutuality of obligations, competency, capacity and the written requirement, producing the legal effects between the parties.

Endorsement and sponsorship contracts must be perfect to suit the wishes of the various parties. And this reality highlights the need for a legal professional to help avoid losses or damages on each side. The blackout period for advertisement, mentioned above, also traps many athletes, because some sponsors and technical assistants do not understand “ambush propaganda” (i.e., when the disallowed brand is accidentally manifest) and they use products or equipment out of the patterns allowed by the Rules.

If an athlete has the intense desire to be on the National Team or to compete in some specific competition that uses a brand different than his own, that athlete should amend his or her contracts as described above. That is why the NOC continues to make Rule 40 more flexible.

All the fashion designs and advertisements from personal sponsors are limited during the Rule 40’s blackout period and/or the limits of Rule 50. But the law, regulations and exemptions are important tools for lawyers and managers to help ensure that sponsors continue investing in Olympic athletes as well as the Games, so that they can help make the Olympic dream real for all.

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Ariana Grande v. Forever 21: Look-Alike Models in Marketing Campaigns

Ms. Grande’s Lawsuit

In September 2019, pop star Ariana Grande sued Forever 21 for $10 million, alleging that Forever 21 willfully used Ms. Grande’s name, image, likeness, and music lyrics without authorization and in violation of her statutory and common law rights of publicity, copyrights, and trademarks. [1] Ms. Grande claimed that in January and February 2019, Forever 21 launched a misleading campaign across its website and social media platforms and published at least thirty unauthorized images and videos of Ms. Grande. She also alleges that Forever 21’s advertising campaign used a model who looks strikingly similar to Ms. Grande; wore a similar hairstyle, clothing, and hair accessories;  used a pose that is identical to the pose in which Ms. Grande was photographed with the “7 Ring” audio played over some of the posts; used the distinctive “7” from the 7 Ring video displayed in the background ; and used captions containing lyrics from her song.

Interestingly, Ms. Grande alleges that before her album release in 2019, Forever 21 sought her endorsement of its clothing and accessory products, but she declined the offer because the company was unwilling to pay fair market value. The proposed endorsement deal centered around social media marketing, including Twitter and Instagram posts, and Instagram stories. According to Ms. Grande, following the unsuccessful negotiations, Forever 21 stole her name, likeness, copyright, and trademarks to promote her brands for free, to falsely imply that she had endorsed Forever 21’s businesses and products, and to cause consumers to believe that Ms. Grande was associated with Forever 21. Ms. Grande’s representatives demanded Forever 21 to take down all unauthorized pictures, but the company did not do so for another fourteen weeks.

The Governing Law

California Statutory and Common Law Right of Publicity

California law recognizes a right of publicity that prohibits the use of a person’s name, voice, signature, photograph, or likeness without prior consent, on or in products, merchandise, or goods, or for the purposes of advertising, selling, or soliciting purchases of products, merchandise, goods, or services. [2] In addition, California also recognizes a common law right of publicity, which protects a person’s name and likeness from being appropriated for the defendant’s advantage, commercial or otherwise, and is not limited in scope to any particular attribute. [3] A catchphrase, a race car, the sound of a person’s voice, and a costume and set dressing are forms of identity that may qualify for common law protection.

Trademark Liability: False Endorsement & Infringement

Under the Trademark Act, a person can sue for false endorsement based on the use of the person’s likeness or persona when the endorsement of a product is implied through the imitation of a distinctive attribute of the person’s identity. [4] Additionally, there is trademark infringement if the trademark holder shows that a defendant’s use of its trademark is likely to cause consumer confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the goods.

Copyright Infringement

Under the U.S. Copyright Act, the copyright owner of an original work, such as photographs, song lyrics or videos, has the exclusive right to reproduce, distribute, publicly display or perform the work, and to make derivative works. [5] The copyright protection may extend only to those components of the work that are “original” to the author if the work was not copied from other works and possesses a minimal degree of creativity. In the case of photographs, the originality does not extend to the object to be photographed but to the selection of the angle of shot, light and shade, exposure, effects achieved by means of filters, developing techniques, etc. It is worth noting that giving credit to the author does not negate infringement. The US Supreme Court has recognized copyright protection of a fashion design just in one case, [6] but generally, it is not protected under copyright law because clothes are considered “useful articles.”

Lessons to Learn

Earlier in 2019, Kim Kardashian sued Missguided, a UK-based online retailer, on similar grounds as the ones brought by Ms. Grande. [7] In a default judgement, the court awarded Ms. Kardashian $2.7 million in damages and $59,600 in attorney fees. In addition, the court permanently enjoined Missguided from using Ms. Kardashian’s marks.

Both Ms. Grande and Ms. Kardashian’s cases show that to avoid infringement of another celebrity’s rights, brands should be careful when developing marketing campaigns that use pictures, models, clothing, and accessories to imitate distinctive attributes of a celebrity without authorization.  The use of certain elements, such as clothing, accessories, and hairstyle that usually are not individually protected under copyright law, may expose the brand to more complex issues under trademark law (such as imitation of the celebrity’s attributes to imply endorsement or to confuse the consumer) and rights-of-publicity issues. It may also expose the brand to highly expensive lawsuits and publicized legal disputes that have the potential of tarnishing the brand’s reputation.  In contrast, when a brand uses the actual photograph of the celebrity, music lyrics and audio, copyright infringement claims are more likely to be raised and may also involve infringement of the copyright of multiple owners, such as photographers, composers, and record labels. Under the “fair use” doctrine, however, it is permissible to use limited portions of copyrighted works for purposes of commentary, criticism, news reporting, and scholarly reports. Whether the use qualifies as a fair use depends on all the circumstances. Therefore, in cases of doubt, it is recommended to get permission from the copyright owner.

[1] Ariana Grande-Butera, et al. v. Forever 21, Inc., et al., 2:19-cv-07600, U.S. District Court for the Central District of California.

[2] California Civil Code § 3344.

[3] Wendt v. Host Int’l, Inc., 125 F.3d 806, 811 (9th Cir. 1997) (citing Eastwood v. Superior Court, 198 Cal. Rptr. 342, 346 (Cal. App. 2d Dist. 1983)).

[4] Lanham Act, Section 43(a), 15 U.S.C. §1125(a).

[5] U.S. Copyright Act, 17 USC §106.

[6] Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S Ct. 1002 (2017).

[7] Kimsaprincess, Inc., et al. v. Missguided USA Finance, Inc., et al., 2:19-cv-01258, U.S. District Court for the Central District of California.