This interview was originally posted at BRRMedia. For a full transcript of the interview, please click here.

By Alexander S. Birkhold (New York)

The recent formation of the Model Alliance, an organization seeking to enforce and expand existing legal protections for models in the United States, has prompted increased US scrutiny of employment and image rights issues in the fashion industry.

On top of New York’s laws, organizations such as the Model Alliance and the Council of Fashion Designers of America have articulated aspirational guidelines for working with models, including:

■ Do not hire models under the age of 16 to walk in runway shows

■ Do not allow models under the age of 18 to work past midnight on fittings or shoots

■ Models may refuse non-paying jobs and jobs that pay only in “trade”

■ No model under the age of 17 shall be asked to pose nude or semi-nude

■ All jobs and castings involving full or partial nudity must be subject to informed, prior consent

For more information, visit: http://labor.ny.gov/workerprotection/laborstandards/workprot/specoccs.shtm#childmodel.

In addition to following the legislative and recommended regulations, brand owners working with models (whether in the US or elsewhere) should also prepare model releases before work begins in order to avoid subsequent conflict with their client. Any person who knowingly uses another’s name, photograph or likeness without the person’s consent may be liable for damages sustained by the injured person. A model release, however, provides the authority to use an individual’s name, voice, visual likeness, photographs or other stipulated terms. When drafting a model release, at least three factors should be considered:

■ Purpose. Will the image be used in advertising, an editorial or for art?

■ Duration of use

■ Nature of use. What is the medium in which the images will be published? Not all models will agree to allow their image used in certain media, so it is especially important to negotiate this term before use

To avoid disagreement later, make sure to discuss these factors up front, before your model walks on set or down the runway.

Welcome to the Summer edition of DLA Piper’s Law à la Mode, the industry e-magazine which is brought to you by our Fashion, Retail & Design Group.  Please click here to view the e-magazine or here to view as a PDF.

With the world's eyes on London this Summer, this edition has been complied by DLA Piper's London editorial team.  Putting our British fashion-foot forward, we explore DLA Piper's recent collaboration with Central St Martins College of Arts and Design, as well as considering "When is a free handbag considered a bribe?" under the UK's new and pervasive Bribery Act.  Moving further afield, we take a look at the European Commission’s ambitious plans for the European digital marketplace, and our Istanbul colleagues introduce us to the opportunities (and risks) of using Turkey as a manufacturing base.  Our US team explore new guidelines for working with models, while our team in Sydney has some top tips to keep in mind when opening an online store.  This edition also includes all our regular features, including "A Word from the Industry's Mouth" where we meet Victoria Chang, Belgian lawyer turned Fashion blogger. Finally, following on from our special edition of Law à la Mode to mark the 134th INTA Annual Meeting in Washington, DC, we give you an insight into our exciting INTA event: "Around the retail world in sixty minutes: Reflecting on the top branding issues for retailers in 2012".

We do hope that you enjoy this Summer edition of Law à la Mode.  If you have any comments please get in touch with the Fashion, Retail and Design Group via our email: fashion@dlapiper.com.

DLA Piper’s global Fashion, Retail and Design Group is made up of lawyers from around the globe, who combine legal expertise with a passion for the fashion, retail and design sectors.

By: Gina Durham and Erin Wright Lothson (Chicago)

Those involved in the fashion and retail industries are well aware of the challenges associated with combating the global proliferation of commercial-scale counterfeiting and piracy.  With legal rights and remedies often varying on a country-by-country basis, enforcement of intellectual property rights on an international scale can often be fraught with unexpected hurdles and inconsistent outcomes.  The Anti-Counterfeiting Trade Agreement (“ACTA”) aims to change that.

On October 1, 2011, eight countries signed ACTA, namely Australia, Canada, Japan, Morocco, New Zealand, Singapore, South Korea and the U.S.  A signing ceremony was held in Tokyo by the Government of Japan.  Representatives of the E.U., Mexico, and Switzerland attended the ceremony and confirmed their continuing support for ACTA.  Those three sovereignties are in the process of finalizing domestic procedures in preparation to sign, and their signatures are expected by May 1, 2013.  Collectively, these eleven countries represent more than half of the world’s trade.

In theory, under ACTA, brand owners and copyright holders will have better access to a consistent legal system to crack down on counterfeiters and pirates; will be able to obtain court orders to stop illegal activity; and will be able to secure meaningful damages remedies when their rights are violated.  While ACTA may make enforcement easier in many countries, some of the largest markets for pirated and counterfeit goods are not included and the world-wide fight against counterfeiting is far from over.  Brazil, China, India, Russia and South Africa all contribute to the world’s counterfeiting and piracy problems, and none are parties to ACTA.  

Some countries are concerned that while  ACTA significantly enhances protections for intellectual property rights- holders, it simultaneously threatens the critical balance of intellectual property law and challenges due process rights of citizens.  For example, the Brazilian parliament is debating recently proposed “Anti-ACTA” legislation.  The proposed legislation contains provisions that protect Internet neutrality and individuals’ privacy and personal data.  Brazil’s proposed legislation attempts to guarantee protections for Internet users and prohibits the strong enforcement measures that ACTA provides.

While counterfeiting and pirated goods continue to affect world trade, ACTA seeks to offer some consistency in the application of the variety of methods for brand owners and copyright holders to combat counterfeiting and piracy.  It remains to be seen, however, how these rights and remedies will operate in practice, especially for the fashion and apparel industries.

By: Bartolome Martin (Madrid)

Some decades ago, the Spanish Tourism Authority’s advertisements across Europe proudly touted that “Spain is different.”  In reality, this may indeed be true.  Spain is an idiosyncratic country where universality and localism are good friends, crisis and luxury seem to have a passionate relationship, and customs from the past walk hand in hand with the latest trends.  This self-contradicting spirit, cultural individuality and inherent diversity are without a doubt reflected in the Spanish fashion market. 

The Spanish retail market is similarly situated.  Louis Vuitton’s Fashion Director recently referred to Zara, Spain’s world renowned fast fashion retailer, as “possibly the most innovative and devastating retailer in the world.”  Zara’s success is a reflection of the Spanish consumer.  Spanish consumers have constantly evolving preferences; yet the fashion market is not without its difficulties.  Product moves slowly (attributed to today’s hard economic times), product lifecycles are short and there is constant pressure to follow the latest fashion trends.  This makes the Spanish retail business (and, by comparison, the European market in general) a serious strategic and logistical challenge where only the fittest can survive.  

Spanish consumers themselves exhibit conflicting behavior and are the source of many of these idiosyncrasies.  Consumers are fashion conscious and strive to follow the trends, but at the same time, are hardly inclined to pay a premium for the inherent value of such creativeness.  This leads to the lavish availability of fake products in the streets of Madrid and Barcelona, and likewise across the country, particularly rampant are knock-off accessories, including handbags, belts, wallets, etc.  These products are welcomed by the masses, whose pockets have been fiercely punished by today’s economy, but not enough to warrant renunciation of their consumptive habits.  The market will likely continue to evolve, particularly due to the E.U.’s prospective consideration of joining in the Anti-Counterfeiting Trade Agreement.  

Similar issues emerge when you consider the applicable legal framework.  Despite best efforts by E.U. authorities to offer a harmonized environment to European players, Spain’s regional configuration, formed by a bouquet of seventeen autonomous regions and two autonomous cities, results in a multiplicity of overlapping legal regimes that affect and influence commerce, consumer protection, environmental and many other related matters. Leading political figures have admitted the need for an improved structure that favors business endeavors, but to date these plans are merely well intentioned blueprints or openly wishful thinking.  

Notwithstanding these troubles, the Spanish fashion market remains intimate and charming for many of the players, who manage to rise above these challenges and have lived to tell their story of immense commercial success in Spain. 

The CJEU has provided some clarification of the law on when EU customs officials can seize counterfeit goods that are merely in transit through the EU. 

The story began in 2008 when a consignment of Nokia branded mobile phones arrived in Heathrow in transit from China to Colombia.  The customs officer was suspicious and sent a sample to Nokia for inspection which duly revealed that the phones were indeed counterfeit.

Nokia was not giving up, and having obtained what details it could about the goods themselves and such information as Customs had on the consignor and consignee, they were unable to identify who these were and concluded that both had taken steps to disguise their identity.  The next step was to ask the English High Court to review the UK Customs' decision not to detain the consignment.

Following a series of applications, a number of questions were referred to the CJEU in order to clarify the Regulation as regards goods in transit.  It is that decision (in joined cases also involving a reference from the Belgian courts of a case brought by Philips) that has just been announced and gives some encouragement to brand owners that they can, in certain circumstances, prevent goods in transit from one non-EU country to another from being released onto the market.  The key findings are as follows:

• Goods in transit placed under a suspensive customs procedure may infringe IP rights if the goods are the subject of a commercial act directed at EU consumers such as a sale, offer for sale or advertisement, even if such an act is before the goods arrive in the Member State. 
• Other circumstances which can lead to temporary detention include where there is an indication that those involved in the distribution chain are about to direct the goods to an EU consumer or are disguising their commercial intent. 
• Evidence of disguising commercial intent can include no declared destination where such a statement is required, a lack of precise or reliable information on the identity or address of the manufacturer or consignee of the goods, or a lack of co-operation with Customs.  Additionally, if documents or correspondence come to light which suggest the goods are liable to be diverted, the evidence can be considered on a case by case basis. 
• Even if none of the previous grounds of infringement can be established, Customs can still seize goods where they pose a risk to health and safety.

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Trading Standards Officers of Coventry City Council have discovered cigarette lighters displaying protected Olympic trademarks.

The goods were seized at a car boot sale, as part of a regular inspection by Trading Standards officers. The lighters displayed the Olympic symbol and London 2012, which are protected trade marks, and did so without the authority of the controller of those marks, The London Organising Committee of the Olympic Games. Various Olympic-related words and marks are given elevated protection under the Olympic Symbol (Protection) Act 1995 and the London Olympic Games and Paralympic Games Act 2006.

This seizure provides another example of trading standards officers working in conjunction with the organisers of the 2012 Games to seek to prevent so-called ambush marketing. We understand that steps are now being taken to trace the supply of these lighters.

Check out the full study and report to Congress here.

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Capitol Records Inc. v. Thomas-Rasset, No. 06-1497*

680 F.Supp.2d 1045 (D. Minn. Jan. 22, 2010)

Overview: In January, U.S. District Court Chief Judge Michael Davis for the District of Minnesota remitted a 2009 jury award of statutory damages totaling $1.92 million against defendant Jammie Thomas-Rasset by 97% to $54,000.  This damages award arose from claims that Thomas-Rasset willfully infringed plaintiffs’ copyrights by downloading 24 songs using the Kazaa peer-to-peer network.  Judge Davis held that although Plaintiffs highlight valid reasons that Thomas‐Rasset should pay a statutory damages award, the Judge ruled that these facts simply could not justify a $2 million verdict in this case.  He further opined that although this new award was still three times the statutory minimum, this reduced award remains “significant and harsh” and should sufficiently serve both the deterrent and the compensatory purposes of statutory damages.

Judgment in a Civil Case: Civil File No. 06‐1497 (MJD/LIB)

Overview: The plaintiffs rejected the reduced damage award and, instead, asked for a new trial on damages.  On November 4, the jury returned a verdict awarding statutory damages in the amount of $62,500 for each of 24 songs for a total amount of $1.5 million.  

Takeaways: P2P file-sharing cases are having a profound impact on the future of copyright as applied to individual users of online platforms.  Judges in at least two jurisdictions have changed the jury awards -- both citing them unconscionable -- potentially leading to not only a split in future appeals but also calls for legislation from all sides.

Overview: In one of the only copyright cases to reach the Supreme Court of the United States this year, the Supreme Court overturned a Second Circuit Court of Appeals decision which held that a Section 411(a)’s registration requirement is a precondition to filing a copyright infringement claim.  The case was a class action litigation over the rights of free lance authors with respect to republication of their works in electronic databases. The settlement reached between the parties and approved by the District Court, was objected to by ten class member authors.  The Supreme Court ruled that in a class action lawsuit, a copyright holder's (within the class or the settlement) failure to comply with this registration requirement does not restrict a federal court’s subject-matter jurisdiction over infringement claims involving unregistered works.  

Takeaway: A copyright registration is no longer needed by all plaintiffs in a class action lawsuit.

Overview: The United States District Court for the Southern District of New York granted summary judgment in favor of video-sharing service YouTube (owned by Google) on all of Viacom's claims for direct and secondary copyright infringement. The court held that YouTube was entitled to the protections of the Digital Millennium Copyright Act's ("DMCA") "safe harbor" provisions, 17 U.S.C. 512(c).  

Takeaway: Helping to define the boundaries of the DMCA safe harbor provision, the court in this case concluded that "[g]eneral knowledge that infringement is 'ubiquitous' does not impose a duty on the service provider to monitor or search its service for infringements."

Visa Int'l Serv. Ass'n v. JSL Corp., 95 USPQ2d 1571 (9th Cir. 2010)

Overview: The Ninth Circuit for the United States Court of Appeals affirmed the U.S. District Court for the District of Nevada’s summary judgment ruling, holding that JSL Corporation’s (“JSL”) “eVisa” mark diluted Visa International Service Association’s "Visa" mark under the theory of dilution by blurring, which occurs when a mark previously associated with one product also becomes associated with a second.  15 U.S.C. § 1125(c)(2)(B).  The court decided that even though Visa doesn’t own the word “visa” and may not  “deplete the stock of useful words” by asserting otherwise, the injury addressed by anti-dilution law in fact occurs when marks are placed in new and different contexts, thereby weakening the mark’s ability to bring to mind the plaintiff’s goods or services.  

Takeaway: Use of everyday, uncoined words that are also well-known brand names, even in connection with different contexts, can give rise to successful dilution claims.

MGA Entertainment, Inc. v. Mattel, Inc., No. 09-55673 (9th Cir. July 22, 2010)

Overview: The Ninth Circuit for the United States Court of Appeals reversed the District Court’s decision to enter equitable relief based on a jury’s findings that Mattel-competitor MGA had committed three state-law violations relating to a former employee’s involvement in creating The Bratz Dolls during the scope of his employment at Mattel.  The court also issued a general verdict finding MGA liable for infringing Mattel’s copyrights in its former employee’s works.  In addition to assignment of ownership of the Bratz brand, the district court also ordered Bratz manufacturer MGA to pay Mattel $10 million in damages.  Instead, the Ninth Circuit ruled that even if Bryant’s employment agreement assigned his ideas to Mattel, the value of the trademarks the company eventually acquired for the entire Bratz line was significantly greater because of MGA’s own development efforts, marketing and investment.  

Takeaway: The case is particularly important for companies considering the language in their employment contracts: it’s no longer clear exactly how broadly or narrowly the phrase “at any time during my employment” should be interpreted.

In re Chippendales USA, Inc., Serial No. 78/666,598 (Fed. Cir. Oct. 1, 2010)

Overview: The United States Court for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s refusal to register Chippendales abbreviated tuxedo costume -- wrist cuffs and a bowtie collar without a shirt -- as inherently distinctive.  The court looked to the use of the Playboy bunny suit, including cuffs and a collar, as substantial evidence supporting the Board’s factual determination that Chippendales’ Cuffs & Collar mark is not inherently distinctive.  

Takeaway: This case helps define what qualifies for trade dress protection for employee apparel.

Righthaven v. Realty One Group, 2:10-cv-1036-LRH-PAL (D. Nev. Oct. 18, 2010)

Overview: The District Court of Nevada granted defendant Michael Nelson’s motion to dismiss, finding that Nelson’s use of copyrighted materials on a blog falls within the Fair Use doctrine. Nelson displayed an unauthorized copy of a news story entitled "Program may level housing sale odds" which was originally published in the Las Vegas Review Journal.  Although Righthaven obtained a transfer of rights for the article from the Review Journal, the court held that when the traditional fair use analysis was applied to the situation, Nelson did not infringe Righthaven’s copyright as a matter of law.  

Takeaway: The Righthaven lawsuits are particularly notable because it represents a rising trend of using mass copyright litigation both to enforce copyright and to turn copyright litigation into a business model.

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*Disclosure: Before joining DLA Piper, I worked as a law student under the guidance of attorneys and professors on a file-sharing case in Massachusetts.