Miyuki Ebisawa: "Fashion Law" Protecting Creativity in the Fashion Industry

Have you ever heard the term "Fashion Law"? It is a legal field that handles legal issues related to the fashion industry and business.

In this article, among the vast themes covered by fashion law, I would like to outline "imitation of fashion design," which has frequently become a topic on social media and other platforms recently. I hope this will be an opportunity for you to learn about a part of fashion law that protects creativity and supports the fashion business.

The history of the systematization of the concept of fashion law is surprisingly recent, said to have begun when it was proposed at Fordham University School of Law in the United States in the early 2000s. It is said that there are three factors behind this: 1) the development of science and technology such as digital and manufacturing technologies, 2) the rise of fast fashion, and 3) the emergence of giant fashion conglomerates (huge corporate entities).

In Japan as well, since the launch of the Fashion Law Institute Japan in 2014, the importance of fashion law has been increasingly recognized through the efforts of many stakeholders. In 2023, the Ministry of Economy, Trade and Industry released Japan's first "Fashion Law Guidebook*1," which can be seen as a manifestation of this trend.

In recent years, the imitation of fashion design has attracted the attention of many people, with posts comparing images of clothes and labeling them as "copies" receiving tens of thousands of "likes."

In fact, fashion design involves a complex interplay of different laws such as the Copyright Act, Design Act, Trademark Act, and Unfair Competition Prevention Act. It is important to organize and understand the outline and application scenarios of each law.

Trademark rights are rights that protect identification marks, such as brand names and logos, that distinguish one's own goods or services from those of others. Typical examples include the name Louis Vuitton and the Chanel mark. It is necessary to register them as a set with the goods or services (designated goods/designated services) for which the brand name etc. is used, and one of the characteristics of trademark rights is that they are protected within the scope of being identical or similar to these designated goods/designated services.

Trademark rights often become an issue with "parody" logos that express satire or humor using famous brand logos as motifs. In Japan, there are no special provisions to protect "parody," and judgments are made according to the standards of the Trademark Act and the Unfair Competition Prevention Act mentioned later. Therefore, no matter how much satire or humor is included, if it is similar to the original logo, there is a high possibility of trademark infringement or violation of the Unfair Competition Prevention Act. For example, the parody logo in Figure 1 was judged to be invalid for registration because it was highly likely to cause confusion with the Champion logo.

Furthermore, following the recent trend of sustainability, trademark right troubles related to remaking and upcycling are increasing. When remaking or upcycling, if the original brand name or logo remains, there is a risk of trademark infringement or violation of the Unfair Competition Prevention Act, so caution is required.

In addition to brand names and logos, shapes and patterns that are famous enough to be identified with a specific brand just by looking at the design can also be registered as trademarks. For example, Hermes' famous "Birkin" bag and Burberry's check pattern are registered as trademarks.

Copyright is a right that protects creative expressions such as music, novels, and paintings. It is characterized by the fact that registration is not required and it arises automatically at the moment of creation.

It is often thought that "fashion design should naturally be protected by copyright," but in fact, there is a major debate over whether the design of practical goods intended for mass production, such as clothes and accessories, is protected by the Copyright Act. Currently, the mainstream view is that they are protected if they "possess aesthetic creativity that serves as an object of aesthetic appreciation independently, apart from practical functions." Behind this seems to be the idea of segregation: "practical designs should be protected by design rights."

For example, character prints and photo prints are likely to become objects of aesthetic appreciation independently of the practical function of the clothing and are easily protected by copyright.

On the other hand, the shape of clothing is inevitably tied to practical functions such as sleeves and bodies, and unless it has eccentricity or originality like a work of art, it is difficult to become an object of aesthetic appreciation independently. Thus, the reality is that the hurdle for fashion design to be protected by copyright is high.

The Design Act protects the shape, patterns, or colors of an article (including parts of an article), or a combination thereof, which creates an aesthetic impression through the sense of sight—so-called product design. Protection can be obtained by registering it as a set with the article if requirements such as novelty and non-easiness of creation are met.

While it is a system perfectly suited for the protection of fashion design, it is difficult to say that the design registration system is sufficiently utilized in Japan's fashion industry, except for some luxury and sports brands.

In the fashion industry, new works are announced and developed twice a year, mainly for the Spring/Summer and Autumn/Winter seasons. In other words, fashion products are generally scheduled to be sold out in about six months. However, since design registration takes about six months to a year from application, even if one spends time and money to apply, sales may have ended by the time it is registered.

Applications for design registration must, in principle, be made before the design is made public, or at the latest within one year after publication, but another reason is that the timing for application is often missed while the sales potential cannot be determined.

The Unfair Competition Prevention Act is the law that appears most frequently in relation to fashion design, including brand names, logos, and shapes.

Depending on the application scenario, it can be divided into two parts: Article 2, Paragraph 1, Items 1 and 2, which protect famous brand names and logos, and Article 2, Paragraph 1, Item 3, which protects the configuration (form).

(1) Protection under Article 2, Paragraph 1, Items 1 and 2

Article 2, Paragraph 1, Items 1 and 2 protect a person's well-known or famous indication of goods, etc.—in other words, famous brand names and logos. Unlike trademark rights, a major advantage of Article 2, Paragraph 1, Items 1 and 2 is that registration is not required and they are not necessarily tied to the scope of identical goods or services.

As with trademark rights, shapes and patterns that are famous enough to indicate the source of the goods are protected under Article 2, Paragraph 1, Items 1 and 2.

(2) Protection under Article 2, Paragraph 1, Item 3

Article 2, Paragraph 1, Item 3 regulates the transfer, etc., of "goods that imitate the configuration of another person's goods (excluding configurations indispensable for ensuring the function of said goods)," so-called dead copies of the form.

As mentioned above, Article 2, Paragraph 1, Item 3 fills the gap in the protection of practical product designs, where the hurdle for protection by copyright is high and design rights are difficult to use. In fact, most cases of imitation of fashion design (shapes, etc.) are issues under this item, and I position it as the "last bastion of fashion design imitation protection."

A lot of capital and effort are invested in product development. Since it is unfair for others to imitate this and make a profit without taking risks, the purpose of this item is to regulate such acts and ensure the opportunity to recover invested capital.

This item regulates the "imitation" of product configuration, and "imitation" is defined as "creating a product with a configuration substantially identical to the configuration of another person's product by relying on it." So, specifically, how similar must it be to be considered substantially identical? Since there is no further definition in the law, the criteria must be sought from accumulated judicial precedents. While there is debate on this point, in my personal opinion, the courts, in judging substantial identity, place importance on whether important parts are common, whether the differences are easy changes for a business operator, and whether the differences give a different impression to consumers.

Let me introduce a recent example. The court compared and examined the dresses in Figure 2 and judged that the basic form and the number and position of the skirt gathers matched, and although there were differences in the rows of bijoux, the size of the cleavage hole, and the color, there was no major difference in impression, and they were substantially identical (Tokyo District Court judgment, October 18, 2023).

I hope you have understood that fashion law plays a role in protecting creativity and supporting the development of the industry while making cross-disciplinary use of laws. I personally view fashion law as a tool that stays close to the industry and leads to optimal solutions based on the specific characteristics of the fashion industry.

The environment surrounding the fashion industry is changing significantly, and it is facing unprecedented new problems and challenges such as greenwashing, cultural appropriation, cross-border e-commerce, AI technology, and virtual markets. I would like to do my best so that fashion law can become a shield to protect the fashion industry and creativity from these problems and challenges.