WIPOD – Page Points: Transcript of Episode 1

Intellectual Property in the Fashion Industry

Rosie Burbidge: My aim was to create something that looks a little bit more from a practitioner and perhaps even from an industry perspective, something that anybody who's working in a fashion business could pick up and have a reasonable understanding.

Lise Mcleod: Hello and welcome to the Page Points podcast from the WIPO Knowledge Center. What are Page Points, do you ask? These are conversations with content creators where we highlight the notable page points of the written works found on our library shelves. Fine-tuned bookmarks if you like, but absolutely no dog ears here. I am Lise McLeod and with me is Rosie Burbidge, who is here to talk about her book entitled ‘European Fashion Law, A Practical Guide from Start Up to Global Success' published by Edward Elgar Publishing. Our conversation took place in 2021.

Fashion is big business; complicated supply chains, large property portfolios consisting of retail and warehouses, and potentially millions of employees and contractors can be involved. Fashion brands and their associated intellectual property rights are very valuable but can be vulnerable to negative publicity. Fast-paced technology is an important part of success. All of these issues create a complex legal landscape.

Let's tune in now to hear what Rosie has to say about all of this and more in her book. Welcome to the podcast, Rosie.

Rosie Burbidge: Hello. Thank you very much for having me.

Lise Mcleod: How about we begin by you telling us a little bit about yourself? How did you come to dedicate your work to intellectual property law and in particular IP rights in relation to fashion? What motivates you?

Rosie Burbidge: Well, I mean, very big questions, so I'll try my best to give a succinct answer. My background is, well, I've always worked for IP rich industries, so right away from the start of my training, I've been very fortunate to work with a mixture of everything from pharmaceuticals through to gaming companies, and then a lot in the fashion, retail and related sort of media sectors. And fashion I particularly love because it's the combination of the brand.

So the trademark being really integral, but then also thinking about the design aspect and increasingly patents are becoming more and more important as there is a bit more convergence between different technologies, particularly around green technology and new types of fabric, and then looking at embedding fences and that kind of thing into fabric as well. So although I would definitely not pretend to be a patent lawyer, I enjoy the fact that I've had a widespread of IP rights in my training and background and I feel like fashion is a really fantastic industry for combining all of these different elements. And in a really interesting novel and inevitably massively subject to regular change. That's the short version.

Lise Mcleod: So the title of the book states that it's a practical guide that covers from a start-up business in fashion up to a global success. Who's the target audience?

Rosie Burbidge: I've read quite a lot of books around fashion law and I think that the US market is really well catered for. There are some really excellent books that look at the fashion issues in the US. And then there are some really great books that look at the issues in the European context, but typically from more of an academic standpoint, and my aim was to create something that looks a little bit more from a practitioner and perhaps even from an industry perspective, something that anybody who's working in a fashion business could pick up and have a reasonable understanding. I mean, inevitably it is still a law book, so there is a certain amount of jargon, but I have tried to make that as clear and easy to follow as possible and one of the ways in which I went about that was to try and follow a semi chronological fashion.

So the book takes you from the general principles around European law, but then it goes chronologically from the things that a business needs to think about right from the very start, you know from which IP rights they need to consider that arise automatically or they might need to register and then you know more commercial law issues such as which type of business to incorporate, whether that's a company or something else, and then employment issues, contract issues and all the rest of it, right the way through to when you get bigger, the joys of litigation, because one of the great signs of success is being copied. Or being accused of being copied. And it's part of most fashion businesses’ journey at one point or another. And I would say that together with franchising is sort of the end of that journey, although at the very end we do get into some future gazing. But I'm getting ahead of myself. We'll get to that bit later.

Lise Mcleod: If you agree Rosie, I'd like to frame our conversation in two parts. The first part, what elements were covered in your book, and then the second part, what has happened since the book was published? We will all agree quite a bit has happened since then. How about we begin by demystifying your outline, which IP laws can be applied to fashion?

Rosie Burbidge: Well, obviously there is not like a particular set of laws that's uniquely relevant to fashion, but there are a lot of laws that are particularly important for the fashion industry. Obviously, IP law, particularly soft IP law, so trademarks, designs, copyright, are very important for fashion. But then also things like modern slavery and issues around the ethical sourcing of products, the waste issues, making sure that supply chains are properly managed. Obviously, there are some really complicated issues around customs and that comes into IP rights. Again when you're looking at exhaustion and questions like that, including OEM manufacturing and that sort of thing.

So it's really fascinating to think about the global dimensions to fashion law. And I think that's one of the areas that I really wanted to share with the wider world was thinking about European legal issues. I focused particularly on, obviously the UK, being an English lawyer, but also on France and Italy being the major fashion hubs within Europe. Obviously, London, Paris and Milan Fashion Weeks are the key European moments in the fashion calendar. And although I do touch on briefly some other obviously Germany, some of the Scandinavian countries and Poland and countries in Eastern Europe as well. So I have tried to give it a pan-European flavour but inevitably I didn't want to be one of those books where it's just taking each country line by line and looking at the comparisons. Those books have a lot of utility, but that wasn't the aim here. It was to create more of a narrative structure to enable a reader to get a general flavour of what they need to know, maybe not answering all of the questions, but giving them the right questions to ask in the first place and the right things to be aware of.

So in terms of what fashion law is, I suppose my aim in the book was to, exactly that, to flag up the different legal areas, the different questions, the different kind of common problems that happen. So things like not getting a proper assignment from the designer of a key product, particularly when it's a fashion business that's maybe grown very quickly, they can, several years in, discover that their core product, that is a major source of all of their business, it's maybe the thing that they're primarily identified with, they don't necessarily own the legal title to. Those are the kind of things that they're just classic problems that I see time and again. And I think it's helpful to flag them up, obviously, again, like the importance of design rights and making sure that they're filed in good time and that if there are qualifying criteria, as far as possible, they're met so that the business doesn't lose out on what can be very lucrative and valuable IP rights. So that's fashion law in a nutshell, not really a law, but a whole host of laws that are relevant to fashion.

Lise Mcleod: You state in the book and I quote "bear in mind that when people in the fashion industry talk about designs, the intellectual property right in issue is usually copyright." Can you talk to us about this notion of designs versus copyright?

Rosie Burbidge: Yeah, no. Exactly. I mean, this is one of the difficulties with speaking a legal language and then coming into a community where the same word is used but meaning something completely different. So design in a fashion business would normally mean, like the CAD design. Or, you know, a designer is producing the drawings and maybe sending them to a factory to be produced, but that doesn't necessarily mean that that drawing is a design in the way that we would think of it as in something that you would register or even something that you would necessarily claim unregistered rights in.

And that's where it all gets a little bit more complicated when you're looking at particularly three-dimensional works, obviously there are slightly different approaches that are taken in different European countries as far as copyright and those sorts of works is concerned. The UK, for example, has a particular exclusion on the protection of a three-dimensional work based on a two dimensional design. So it gets really interesting quite quickly when you're thinking "Should design law apply here? And if so, which one?"

And obviously copyright is this kind of pseudo design right that can apply in some circumstances and certainly gets tried on. People very often assert copyright as though it is akin to a design, even if that isn't necessarily something that's going to wash if it goes all the way to court.  And I think that's one of the really interesting things is the difference between what you see going right, the way to judicial examination, compared to the many letters that you get early on in the process that never see the light of day and never got put into the public domain. That's the world that I get to move around in quite a bit.

Lise Mcleod: In the book, you guide us through the navigation of the digital environment. On the one hand, you mentioned that it's good to secure some early wins like domain names and social media handles. On the other hand, you remind us about when something's posted online it's out in the public domain so that careful consideration should be made before information's published. Can you talk us through this navigation through the digital landscape?

Rosie Burbidge: Of course.  So you don't need to post anything in order to secure a social media handle and obviously it's not the same as the trademark, but if you are planning to use a particular brand name, it makes sense to try and secure all of the relevant handles as early as possible, because you don't want somebody, like a competitor, registering it or somebody with a kind of gripe registering those kind of handles before you have the opportunity to get in there.

But conversely, obviously if you post say a picture of one of your key products before you've really thought through your marketing campaign, firstly, you start the clock as far as any design registration is concerned, so then you've only got one year in which to file, sorry six months. And then you also get into a situation where maybe if it's something that's confidential, you don't want to be sharing that yet. You don't necessarily want to be letting the cat the bag. I mean, most, I feel like most fashion businesses are quite savvy about that sort of thing and, you know, they, they kind of know what they're doing, but I think sometimes people can get a little bit overexcited about sharing their great new idea and maybe do it a little bit earlier than would be wise.

Similarly with a domain name, there's no harm in securing as many different permutations as possible, as long as you're not ending up with an incredibly large renewal fee, that's going to come through in a year or so. And it's just thinking through like, where does it, where does that line stand? Do I want to make sure that I don't have any ADRP worries and really get a nice little domain name thicket established as early as possible, or do I just need to worry about the ones that are really the key priority for me and where I'm going to put one of my marketing budget? So that might be the dot com, but it might be something else, you know, it could be for instance, dot London, if London is going to be a key part of your brand name, or there were so many other GTLDs these days that, you know, the choice is pretty endless.

I mean, now, TikTok for example, isn't mentioned in the book at all, but obviously that would be a handle that you'd want to secure now because it's kind of come out of nowhere in the last couple of years.  It's always changing. That's the magic of social media.

Lise Mcleod: The book offers a number of chapters outlining some very practical steps, the different steps to take when starting up a business, say, before you enter into your first contract would be an example. What would you consider to be maybe the three most important steps to consider when starting out?

Rosie Burbidge: Oh, difficult question. Narrowing it down to three. I suppose, obviously as an IP lawyer, I would say, think about your IP rights. And then I guess the next one is to make sure that any contracts with employees or with third party contractors. So whether that's developers, designers, anyone like that, that there is a very clever assignment of the relevant IP rights. I mean, say it's a web developer. You're going to get the foreground IP rights assigned, not the background, but just being careful that relevant rights are assigned. I suppose the final thing is the practical side. So thinking about what company, what kind of logistics, as far as, I mean really boring, but super important things like your accountant.

And I mean, another problem that I've seen a lot of the time with start-ups is that they don't... the owner doesn't necessarily have all of the passwords and can get locked out if they have a disagreement with somebody. So that applies to social media accounts, but also to the backend of the website and any Shopify account, that sort of thing as well. So I would say investing in a password manager. It's not in the book, but I think that would be my pro tip to anyone planning on starting a fashion business these days, like something like last pass so that you don't get locked out from everything.

Lise Mcleod: If I have a well-established business, what would be the most important issues to make sure that I'm prepared for? Say, for example, what happens if I feel like someone may have copied my work?

Rosie Burbidge: Yeah. So again, that I would say the three most important things are having a really solid anti-counterfeiting program, that's monitored on a really regular basis using as many of the digital tools as possible, but bearing in mind that sometimes you need to work with either the police, customs authorities, you know, people on the ground in different territories and potentially getting search and seizure orders and that sort of thing in different countries, and to really enforce those rights.

Then thinking through that the portfolio is regularly kept up to date so that you can stop competitors or people who are maybe skating a little bit too close to your territory from encroaching. And then I think the final thing is being really, really careful in the licensing. So both in-licensing and out-licensing what I notice with larger fashion businesses is they tend to go through a phase of doing a lot of typically out-licensing. So the brand on two different products, like the classic example is being sunglasses, perfume, cosmetics, that sort of thing, and that needs to be monitored regularly to make sure that there isn't a damage to the brand, that there is consistency, that things like any grey market's products are sold in accordance with the license terms. 

And I think that unfortunately, as an exercise, a bit like anti-counterfeiting, that needs to be revisited  on at least an annual basis because it's just so important to the value of the brands and to maintaining that, you know, it might not be a luxury brand, but you still want to have consistency in the brand experience for everybody, for all customers, because they're certainly going to see the brand name and assume that you're responsible, even if contractually, that might not be the reality of things. So those are the three big ones I think, as you get bigger.

Lise Mcleod: So changing gears a little bit, I would now like to move on to two very important factors since the book has been published, Brexit and COVID-19. I don't know if you'd like to speak about them separately or interchangeably. There was one phrase in the book that you wrote "that intellectual property was one of the areas of law, which have been the most consistent across the European Union in the last 40 years." Is this still the case today? Where have we gone since 2019?

Rosie Burbidge: Well, I think, I mean, there's a reason it was called the Office for Harmonization and the Internal Market, right? I mean, not the catchiest title. I think EIPO is a much, much better name, but obviously that's because there was a recognition at an EU level that IP was the means of providing a measure of consistency across the different member states and it's not like the law is going to change overnight in the UK. We have implemented all of the directives. Most of the regulations we have essentially copied and pasted.

As I said, in relation to the community design regulation we've got something that's almost identical in UK legislation now. So short-term, there won't be vast differences occurring apart from, in relation to exhaustion of rights, where there's actually a government proposal looking at the four different options, which is broadly, we match what the EA is doing on a non-reciprocal basis, which is what we're doing at the moment. We do it purely national, we do it for everywhere, full international, and then they're also thinking about doing it on a mixed basis. So that might be that you go fully international for say trademarks, but national only for patents for example. I don't know exactly what the plan is, but at a very high level, those seem to be the four options.

So exhaustion in the very short term is where I think there'll be the biggest, the most up for grabs, I guess is the way to think about it. But longer term, we will inevitably see a divergence and I think particularly because the philosophy in the UK has generally been a bit more free-market oriented and a bit less right holder friendly; particularly somewhere like France, which is very much focused on the rights of creators. So it will be interesting to see how, how that plays out in terms of trademark rights passing off, which is already significantly more limited than unfair competition, which is the European or continental European rights.

And yeah, we will see how copyright changes because the Coty decision which introduced probably more opportunity for thinking about three dimensional works and copyright, that came out and was considered in January. No, I guess around early 2020, in a decision in the transitional periods in the UK. But, I suspect that we will slowly move further away from thinking about three-dimensional works and copyrights, unless they fit within these narrow structures of sculpture and works of artistic craftsmanship, which has been the default rule in the UK for a very long time anyway.

So things like that, where maybe we might have, if we'd stayed in the EU, continued down that road and been much more open to having three-dimensional works like fashion objects, garments, jewellery, etc. being protected. I suspect that we're not going to continue down that road in the future. So there's a certain amount of future gazing on that side of things, but the one area where there's definitely going to be a lot of changes around exhaustion.

And then thinking about COVID. I mean, where to start it’s… I think at a fairly small level, what are the big changes that I've seen on a registry side is everyone filing for masks. Because no one had a trademark for masks and obviously this is now the key, key accessory and all sorts of related things, you know, linked to that. So it has been interesting seeing lots of new filings going through, so that sort of thing. And then just the supply chain. There are questions around use. I don't quite know how that will work out, but if people had made genuine plans to launch and then it all got slightly put on hold because of the pandemic, there'll be issues around that. There are going to be all sorts of question marks around… I mean there already are breaches of licenses because of the pandemic. Lots of distribution agreements have been put under a lot of strain.

Obviously, even without the pandemic things like the tanker that blocked the Suez Canal for ages, it just feels like global supply chains have had a lot to deal with recently. So, that side of things is interesting. I suspect there'll be a lot more on-shoring, I've already noticed clients that may be not focusing on UK manufacturers. Some are, but certainly in...whereas they might have gone to Pakistan or Bangladesh or China, they're now going to Portugal or maybe Turkey. So a lot closer and where there are less frictions or likely to be frictions.

The other change obviously linked to Brexit is, I mean this is not going to come as a surprise, but we... a lot of UK businesses are now setting up in the Netherlands or Germany and have warehouses in one of those countries normally. I mean, obviously there are plenty of other options to choose from, but they... because of their location and because of the language, they tend to go Netherlands and or Germany. Hopefully we will get to a slightly more stable, known situation in the not so distant future but in the short term, I think most businesses have adapted, but maybe not fully changed their practices yet. There's still an element of flux and things around VAT are quite complicated and the different sales taxes, there'll be all sorts of questions around returns. Yeah. It's not, none of it's easy. I think quite a few people have solved the problem by just not shipping over from the UK to the EU or vice versa and that's not a long-term solution. So we shall see.

Lise Mcleod: What do you anticipate the future direction of the fashion industry to be? You mentioned in the book, the consideration of keeping up with technological change, something like virtual reality, do you think that things will move more digital and then add an extra layer of complexity? We also have the pandemic to consider, so, do you believe that the industry will be moving more so into a digital world?

Rosie Burbidge: So I think yes and no. I think personally, if VR ever had the time to shine, it was the pandemic. It didn't happen. I was quite positive about VR for quite a long time and I think if it, if it didn't come into its own, when everybody was working remotely, I don't know that it ever will, because we definitely have the technology and it is doable from home.

I think AR, so augmented reality, is something that the fashion industry is much more interested in. And I think there are more opportunities there so being able to wander a shop and get the same information when you're looking at an object that you can get online. So all of the kind of fabric information, and then even things like reviews from people so you're able to get the benefits of both. And I think that will help encourage people to return to the stores as well because people have become accustomed to having that additional information in an e-commerce environment. I've noticed, certainly stores are taking a slightly different approach and maybe not necessarily stocking everything, but just being somewhere where you can try to feel the fabric, get a sense of whether it's the right thing for you and then order it so that it gets delivered. And I suspect that model will continue because it seems like quite a logical one. As people have got used to deliveries and that as a concept, I think that sort of hybrid approach will continue.

In terms of other digital technologies, beacons have been around for quite a long time. So that's giving the same kind of information that you might get in e-commerce within a store. So what are the hot areas? What are the products that people are particularly interested in? And then there have been these kind of mirrors that you get in fitting rooms that can show you whether there are other sizes available and that sort of thing, and suggest other items that might go with it. So that again, I can definitely see those sorts of slightly gimmicky things, but nevertheless, valuable and fun. You know, we all want a bit of fun after the pandemic I think so it would be interesting to see how that opportunity continues to grow. And then obviously things like wearables, with the ultimate wearable being the Apple watch, probably, but that will no doubt continue as a niche, but I hope ultimately a bit more integral aspect to fashion.

Lise Mcleod: So, how do you keep yourself up to date to best inform your clients?

Rosie Burbidge: Good question. Honestly, a combination of Twitter, Instagram, Vogue Business and then I subscribed to the FT the New York Times and the Guardian which are three very different papers but I like to get a different perspective on all of the different issues and I think the FT... I was, I never thought the Financial Times would be such a good resource for fashion, but it's very good. They've got some really great writers and it's probably my favourite publication these days.

Lise Mcleod: Do you have any final thoughts before we close? What would you like our listeners to remember from this conversation?

Rosie Burbidge: I would hope that they've got enough of a flavour for the book to see... Maybe give it a test, test drive, it's available as an e-book, in hardback, and in paperback. I have an accompanying website which is the very unoriginal domain www.europeanfashionlaw.com. Easy to remember and on there, there's quite a few resources linked to the book, a rundown of the different topics that are covered, and then also as a way of maintaining that dialogue.  Obviously the book came out in 2019, but quite a few things have happened since then, so there are blogs that I put out on roughly a monthly basis that cover the latest issues that are relevant to the fashion industry. And then obviously podcasts that I've done and things like that, they're also available there, videos, that kind of thing for people to check out and find out a bit more about some of the things that we talked about today.

Lise Mcleod: What's the best way for us to find you outside of this conversation and for keeping up with what you're doing?

Rosie Burbidge: So I have a mailing list that can be signed up for via the website that comes out on a monthly basis. And then I also, obviously my email address is on the websites. I won't try and... my surname and the name of my firm are both not the most obvious spellings. So I would recommend www.europeanfashionlaw.com is the easier thing to find on the internet, I think. And then all of the relevant links are on there. I'm also on Twitter, LinkedIn, and Instagram. Although I would say that LinkedIn is the best way to reach me of the different social media channels.

Lise Mcleod: Thank you, Rosie. Thank you very much for joining me today. I really appreciate it.

Rosie Burbidge: Thank you for having me. It's been a real pleasure. Thank you.

Lise Mcleod: I hope that you enjoyed my conversation with Rosie. Her book is available through Edward Elgar and as she mentioned, information about her work can be found via her website: www.rosieburbidge.com. More information about this book and other IP works in our collection can be found via the WIPO Knowledge Center webpage. Until next time and the next Page Points. Bye for now.