Hello everyone

Hope we are all keeping safe, maintaining social distancing and sanitizing because I am
With this I welcome you to our hot topic for today's #IPSERIES our case study Jane Michael Ekanem v Laolu Senbajo ; topic -IP protection for fashion brands.
You ready

So yesterday my friend @gingerPOP_ sent me a post she saw on Instagram about a potential IP theft where Jane Michael Ekannem kimono which she gifted to Laolu was worn by serene William for the Essence 2019 September issue & and she was neither paid or acknowledged

Let's discuss, as a creative person or fashion designer how would you feel if your work was used for a different purpose and you were not acknowledge?

As a creative person or fashion designer, when you gift your designs can the person do whatever he wants with it? Can he use it for a photoshoot or gift another person

According to Jane' post it would seem Laolu made or mass produced her kimono design which she specially designed.

Was Laolu wrong to have mass produced Jane's Kimono?

So I also watched Jane's interview with Do2tun which is about 6 months old just to get more insight and she says the initial deal was to make the jacket for Laolu with no agreed motive and usage policies only for it to be worn by Serena Williams as seen below

It turns out the label stated "A LÁOLÚ X JANE MICHAEL KIMONO" with a price tag of $500 (NN183,500).
She further explained that just a tag or mention would have gone a long way to bring more attention to her as the creator of the work.”

Do you think Jane should have been tagged in the post?

Food for thought?
If I pay for something say a dress made by a fashion designer, do you think you still deserve credit/shout out/to be tagged in my post
Be honest ohh

In the interview with Do2tun, Jane stated that if she's going to give you a discount she would take into consideration, the value you would bring for her to give you a discount and I think this is applicable to everyone who is in business.
Do you agree?

Jane also stated that it's a different thing if she gifts you her design however, if you would be using it for a commercial purpose, you need her consent as you don't have the right to commercialize her work when there's no mutual agreement
Consent is very important for IP

As a fashion brand what are the options available for you when it comes to Intellectual Property (IP)?

First of all, IP doesn't protect an idea, IP has an intersection with every industry and it's advisable to have documentation record just to have an edge in the event of a

dispute.
As a fashion designer when considering your brand, it's advisable to have a multilayered protection for your designs and they include:
1. Copyright protection can be considered for your illustration & sketches, print & patterns of your work.

You enjoy automatic protection once it's in a fixed medium such as your sketch book.
Section 1(3) of the Nigerian Copyright Act provides : An artistic work shall not be eligible for copyright, if at the time when the work is made, it is intended by the author to be used as a

model or pattern to be multiplied by any industrial process. And I don't think Jane intended for her kimono to be mass produced

Do you think Jane's Unisex Kimono would pass an applied art?

2. Trademark protection for the name, logo, symbol, slogans and color basically anything used to distinguish your fashion brand from another. Unlike Copyright whose protection is automatic, you would need to register your TM in order to enjoy protection
See examples below

Take note that an unregistered TM can still enjoy some level of protection as the owner can sur for passing which is an act of falsely representing one's own product as that of another in an attempt to deceive potential buyers.

As a fashion designer you can use for passing off if it meets the following requirements:
a. "That the use of the name, mark, sign is likely to cause or has caused injury, actual or probable to the goodwill of the fashion owner."

b. There is a likelihood of confusion
in the minds of the common customer and
c. The unregistered TM in question has consistently being in use and is distinctive.
Remedies available in a passing action:
i. An injunction
ii. Delivery up for destruction of infringing goods

iii. Account of profit
iv. Damages and
v. Anton pillar order which is " an order for inspection and delivery up of infringing materials in the possession or control of an infringer"

Have you registered you fashion name, logo, symbol, sign, colour as a TM

Advantage of registering your fashion brand as a TM;
a. It gives you an upper hand in the event of a dispute,
b. You enjoy protection in the jurisdiction you register your TM because TM is territorial in nature, so as you expand you register in every territory you enter

c. You can commercialize your work through licensing, selling, collaborating/partnering or creating a franchise. Example the famous luxury brands
d. Helps you differentiate your fashion brand from another through the use of "TM" or "R'

e. In the event of an infringement, you can brief you IP lawyer to send a Cease & Desist (C & D) notice and you you can opt to settle out of court by exploring any of the alternative dispute resolution (ADR) mechanisms

Explore TM protection for color marks such as the Christian Louboutin red sole stiletto , the Hermés's orange bag, LV brown bag, Tiffany Blue.
The Pantone company that is known for its proprietary colour matching system for each has chosen "Classic Blue No:19-405"

3. Industrial design- Last year Deola Sage sent out this notice which I did a thread on( link below) https://twitter.com/esmeraldo99/status/1187044577376636930?s=21

By registering your Industrial design, you are preventing others from exploiting your new/original ornamental or aesthetic aspects which could be a 3 dimensional feature eg textile print, shape or a 2 dimensional feature.
Source : google

Do you have a registered Industrial design?

4. Patent- this type of IP may not not come to your mind immediately when it comes to IP protection if you are in the fashion industry. Patent basically protects invention that provides a new way of doing something, or offers a new technical solution to a problem.

By having a patent protection you could attract business partners/innovators.
Eg "Novozymes, a Danish, biotech company specializing in enzymes and microorganisms, pioneered the use of enzymes in the treatment of fabrics. Though not previously involved in the fashion industry,

in 1987 the company developed and patented a technology for the treatment of “stone washed” denim jeans. This technology is based on an enzyme called cellulase, which removes some of the indigo dye from denim so as to give the fabric a worn look.

Within three years, most of the denim finishing industry was using cellulase under license from Novozymes. Today, Novozymes’ technology for improving production methods and fabric finishing has been licensed worldwide. The company holds more than 4,200 active patents

and patent applications, and pursues a pro-active licensing strategy to maximize royalty revenue from these IP assets.

Another example is the Zendeya Cinderella dress she wore at the 2019 Met Gala.
The designer Tommy Hilfiger used technology hidden beneath the skirt to change the colour.

5. Trade secret (TS) and business model- a TS is any confidential information that gives you am edge as a fashion designer over your competitors and is known to be relevant to your fashion business.
This could range from your "list of key suppliers and/or buyers,

to use of software tools for fashion design, to logistics management of the entire value chain.
Eg ZARA, uses a proprietary information technology (IT) system to shorten their production cycle – i.e. the time from identifying a new trend to delivering the finished product

to a mere 30 days. Most of their competitors take from 4 to 12 months"

Did you know that an inferior quality or any copying or mass production can threaten your business?

Wrapping up
As a fashion designer take the following seriously:
i. Every conversation should be properly documented
ii. Always talk to an IP lawyer
iii. Have basic know of how IP impacts your brand
iv. In the event if a dispute always opt to settle out of court by exploring

ADR or just go to court so we can have a precedent
v. Think IP, Think big and see IP as an investment
vi. Always register your IP
vii. Have an aggressive IP monitoring team
viii. Know the value of what you have and set boundaries
ix. No friendship in business

x. Always have a brand strategy

In conclusion, this lockdown is not an invitation to explore your creative side by infringing on other people's IP.
Stay safe, sanitize, practise social distancing and see you next time