Fashion Law Practice: (Useful) Article – Ong’anya Ombo Advocates

Aug 15, 2019 | Law

Fashion law that forms a major part of Intellectual Property is given key consideration in fashion as a sector-specific area. Intellectual Property (IP) is a general term that refers to a collection of various rights that a person can have or own over various acceptable intellectual outputs. In the Republic of Kenya (Kenya), the most common types of IPs are Patent, Copyright and or Trademark, which most individuals assume only apply to software, hardware, or brand. Further, in most instances, the terms are wrongly used, not to mention interchangeably. However, it is imperative to note that IP entails other useful segments such as Geographical Indicators, Trade Secrets, and Industrial Designs.

IP does not necessarily apply to software, hardware, or brand only, as there are other multiple areas that IP Law can be applied to enhance the protection of the intellectual output of a person, which is no longer an idea. In this writeup, a unique area of application of IP is addressed with a keen focus on Fashion Law. It is evident that various local and or international persons’ have expressed interest in having their respective output or content displayed for commercial gain in Kenya, European Union (EU), the United States of America (US), among other countries or regions. However, while some are acquitted with the legal paradigm owing to their financial muscle to secure quality attorney services, others are languishing and only relying on Non-Disclosure Agreements, which have proven to be ineffectual.

For instance, Fashion Copyright can cut across the four pillars of Copyrightable outputs as per the laws of Kenya. According to the guide – Requirement for Registration of a Copyright Work – that is issued by the Kenya Copyright Board (KECOBO) provides that the key four pillars of Copyrightable work fall under Sound Recording, Audio-Visual, Literary and Artistic.

In appreciating the definition of Fashion and comprehending what it entails, it is evident that Fashion can be expressed through:

Sound Recording: a Fashion Designer might opt to record a description on how to come up with a particular design of article.

Audio-Visual: a Fashion Designer might opt to use this model to describe how to come with a particular design of article.

Literary: a Fashion Designer might opt to prepare a writeup on how to come up with a particular design of article.

Artistic: a Fashion Designer might opt to draw a design of how a particular design of article can be prepared and appear.

In most instances, an article will always be categorised under Literary and Artistic form but that does not limit the chances of the Fashion Designer adopting other means such as Sound-Recording and or Audio-Visual too. Meanwhile, the Copyright Act CAP 130 of the laws of Kenya provides under its interpretation, s 2, that articles fall under Artistic and or Literary work.

It is evident that since the laws of Kenya – including (quasi)judicial precedents – are not well established as those of EU on matters Fashion Law, there is an inevitable likelihood that the question of “Separability” will emerge. These questions always place the Fashion Designer at a precarious environment as it means that the respective article, as is, cannot be protected as a whole but certain element about it can enjoy protection save where it meets the Separability Test. For instance, John Zarocostas through his article “The role of IP in the fashion business: a US perspective” published on Word Intellectual Property Organisation’s (WIPO) website, highlights how the aspect of “Separability” is placing Fashion Designers in the US at unsuitable position because in certain instances, the whole article cannot be protected under the laws of the US as compared to those in EU.

Prior to delving further, it is important to address what is meant by the principle of Separability. There are two types of Separability pertaining articles (read: Fashion oriented elements). While there are no traceable decisions concerning “Separability” in Kenya, in relation to Fashion, other Jurisdictions have weighed in to define what Separability is, for instance, in the US, the Separability is either Physical or Conceptual in nature.

The analogy is that a useful article cannot be accorded any legal protection under copyright law unless that useful article has been incorporated with artistic work. It is essential that the artistic work is capable of being physically separated from the useful article. On the other hand, Conceptual Separability is based on the fact that the artistic work cannot be separated physically from the useful article.

According to the Two-Part Test as elaborated in the most recent precedent of the Supreme Court of the US in Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. [2017], other than the separability principle, the artistic work ought to have its own unique identification to that of the useful article, in that the artistic work’s relevance does not peg on the useful article, and it must be either two or three-dimension. Further, it is evident that the US Supreme Court finds that Conceptual Separability Test as an unnecessary principle to determine the copyrightability of useful article – but there are Justices’ who dissented from that conclusion.

In conclusion, while in the US, the Separability Test is not only enhanced through Judicial precedent for purposes of effectively addressing copyrightability over articles, the same has been provided for under the US Laws – and EU has comprehensive regulations and or directives. Therefore, since these provisions are not provided for under the respective statutes concerning Copyright in Kenya and to what extent the copyright applies to articles, the issue of Copyrightability of an article and Separability will emerge through Judicial precedent or, if lucky, the legislature will adopt the relevant amendments in order to not only make Kenya a suitable jurisdiction for Fashion Designers but also ward off unnecessary litigation that will stifle the operations of persons.

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