LAW ÀLA MODE Edition 4 – Winter 2011 Idiosyncrasies of the Spanish Fashion Market The Louboutin – YSL Shoe Saga Continues No Proof Shoes Shaping You Up, Says FTC Ring in the New Year à la Mode A Word from the Industry’s Mouth Tom Notte and Bart Vandebosch New Global Rules for Digital Interactive Marketing Does Social Media Clash with Luxury Brands? Are You Ready for the Next Shopping Channel? Don’t Let Genericide Happen to You Fashion, Retail and Design Group Contents THE DebAte FOR AdwORDS OwneRSHIP IN CYbeRSPAce COntINUES 04 Perspective on cyberspace’s latest trademark frontier DON’T Let GeneRICIde HAPPen TO YOU 05 Tips on how to protect the value of your trademark ARE YOU ReADY FOR THE NEXT SHOPPIng CHAnnel? 06 Expert real estate advice that keeps all parties satisfied IdIOSYncRASIES OF THE SPANISH FASHION MARKet 08 Insight for how to deal with a unique retail marketplace U.S. FASHION COPYRIGHT PROtectION StIll IN A StAte OF LImbO 09 A fresh perspective on the fashion design copyright debate FOR THE LOve OF Red . SOleS 10 The Louboutin – YSL shoe saga continues EdwIN CO. v. ELIO FIORUccI 12 A designer and company sharing a name? Be careful of the pitfalls! GLOBAL DevelOPmentS RegARDIng THE AntI-COUnteRFEITIng TRAde AgReement 13 The latest on a global initiative NO PROOF SHOES SHAPIng YOU UP, SAYS FTC 14 Best practices for marketing products with health and fitness claims New GLOBAL RUleS FOR DIGITAL InteRActIve MARKetIng 17 Expert advice regarding the ICC’s new Code A WORD FROM THE IndUSTRY’S MOUTH: TOM NOtte And BART VAndebOSCH 18 Insight directly from the design duo behind Les HOMMes DOES SOCIAL MedIA CLASH WITH LUXURY BRAndS? 20 How luxury brands have dealt with the changing social media landscape BUSIneSS ROUnd-UP 22 The latest in industry news RIng IN THE New YeAR À LA MOde 23 How are you celebrating? CAlendAR 24 Our round-up of what’s on this season 02 | Law à la Mode EditorialLaw à la Mode Rings in the New Year in the Heart of New York City igns of the holiday season abound, from the world’s goods. Finally, our A Word from the Industry’s Mouth column fashionistas navigating snowy sidewalks in their stilettos is honored to host an interview with Tom Notte and Bart Sin search of the perfect New Year’s dress to the Vandebosch, the Belgian design duo behind LES HOMMES. winter window displays of our favorite department stores And of course, we cannot ignore the implications the digital that awe children and adults alike. As retailers, designers cyberscape has on this industry. Stockholm provides the and consumers reflect on the year that has passed and look ICC’s latest guidelines for digital interactive marketing. Our forward to the year that is yet to come — the U.S. offices U.K. real estate experts discuss the intersection of retail of DLA Piper are thrilled to bring you this issue of Law à la leasing with “click and collect” online shopping patterns. Mode, the fashion-style legal magazine distributed to clients The international debate regarding trademarks and Google’s and friends of the firm all over the world by DLA Piper’s AdWords service develops and; last but not least, our social Fashion, Retail and Design (“FRD”) Group. Between media series focuses on how luxury brands can successfully the buzz and bright lights of the holiday season and the engage with their consumers. anticipated spring fashion weeks, we have much to celebrate. This issue marks one year since Law à la Mode’s inaugural We complete this issue with our business round-up, tips on issue and we are only getting started – sophomore issues how to celebrate the new year à la mode, and a calendar of of Law à la Mode and FRD global and regional events are what’s on this season, wherever you may be. already being planned for 2012. The FRD Group loves to hear from you, please contact us at New York is always in vogue for its innovation and holds [email protected]. We hope you enjoy this issue and we a beloved place in the hearts of designers, stylists, editors wish you a happy, healthy and stylish 2012! and jet setters alike. This issue highlights that innovation Ann K. Ford as it applies to the U.S. legal market. We cover the Anti- Tamar Duvdevani Counterfeiting Trade Agreement, to which the U.S. is an Kiran N. Gore inaugural signatory. We update you on the U.S. debate New York over copyrightability of fashion designs. We provide best marketing practices in light of the Federal Trade U.S. Editorial Board Commission’s recent focus on footwear and apparel products making health and fitness claims. Our coverage of Ann K. Ford – Washington D.C. the famous Louboutin – YSL red soles dispute continues; Gina Durham – Chicago and we give you tips to protect the inherent value of your Tamar Duvdevani – New York trademarks from “genericide.” Kiran N. Gore – New York Alexandra Marzelli – Washington D.C. Amidst our focus on U.S. developments, our international Melissa A. Reinckens – New York perspective is not lost. Milan provides an update on the Debbie Rosenbaum – Washington D.C. current status of community trademarks, as determined by the Michelle Schaefer – Washington D.C. European Court of Justice. We also offer a unique perspective Job Seese – New York from Madrid on idiosyncratic Spanish fashion consumers, Radiance A. Walters – Washington D.C. including their dual-love for fast fashion and knock-off www.dlapiper.com | 03 Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London) The Debate for AdWords Ownership in Cyberspace Continues Perspective on cyberspace’s latest trademark frontier dWords,” the paid, subscription-based Google ■ When the use substantially interferes with the owners’ use referencing service which allows users to of its trademark to acquire or preserve a reputation capable “A advertise their companies alongside Google of attracting customers and retaining their loyalty, the search results, has recently been the subject of much legal third party’s use must be regarded as adversely affecting scrutiny. In late September, the European Court of Justice the trademark’s investment function. This is the most (ECJ) gave a preliminary ruling on questions referred to it significant aspect of the ECJ decision, as any “substantial by the English High Court in the case between Interflora interference” with the “investment function” of a and Marks & Spencer (“M&S”), regarding the purchase by trademark constitutes infringement. M&S of the Google AdWord “Interflora” and other similar Interflora operates through a large commercial network, AdWords. so while the ECJ recognised that consumers could be In answering the questions referred to it, the ECJ repeated led to believe that M&S is part of this network, the final much of the recent jurisprudence in this area, in particular determination will be made by the English High Court. from the Google France case. Previous cases established that It will be interesting to see how the High Court applies purchasing a third parties’ trademark as an AdWord would this guidance and, in particular, whether the guidance in only amount to trademark infringement if such use would have relation to the investment function will open up new lines of an adverse effect on one of the functions of the trademark. argument for brand owners. The ECJ gave the following guidance on how national courts Similarly, under U.S. law, purchasing a third party’s should assess whether the use by a third party of a sign identical trademark, even a famous trademark, which is accorded with a trademark in relation to identical goods or services has heightened protection under the Lanham Act, as an an adverse affect on one of the functions of the trademark: AdWord does not necessarily constitute per se trademark infringement. Some U.S. courts have, however, found that ■ The origin function is adversely affected if the such use could be considered trademark infringement if an advertisement does not permit reasonably well- owner has a valid protectable trademark for commercial informed and reasonably observant Internet users to use and there is a likelihood that a third party’s use of the recognize the source of the goods or services referred trademark will cause confusion in the marketplace. to by the advertisement as the owner of the trademark. Alternatively, the adverse effect can be established if The Ninth Circuit recently determined in Network the Internet user encounters great difficulty in making Automation, Inc. v. Advanced Systems Concepts, Inc. that such a determination, or the Internet user believes the there was an insufficient likelihood of confusion resulting advertisement originates from a third party. from a third party’s use of the owner’s trademark as an AdWord to support a preliminary injunction against such ■ With regard to the advertising function, the mere fact that use. However, courts may be more likely to find trademark the use obliges the owner of that trademark to intensify infringement by the purchase of AdWords for use by a third its advertising in order to maintain or enhance its profile party to trigger a sponsored link through Google’s AdWords with consumers is not a sufficient basis, in every case, for service, which implies an association with the trademark to concluding that the trademark’s advertising function is advertise a third party’s competing products. adversely affected. For example, in Rosetta Stone Ltd. v. Google Inc., the Eastern District of Virginia court found no trademark infringement where Rosetta Stone sued Google for allowing use of its trademarks. However, in Hearts on Fire Company, LLC v.