Readers might remember that, a couple of years ago, this blog reported on a lawsuit filed in Italy by former Argentinean footballer Diego Armando Maradona against Italian fashion house Dolce&Gabbana. 

The reason? 

The use, by the defendants, of his name on a jersey (below) worn by a model during a fashion show held in Naples in 2009 [Maradona played for Napoli for a few years, and in that city he reached the peak of his career]. The jersey, which was sold neither before nor after the show, carried the number ‘10’, ie the same number used by Maradona while at Napoli, and had the same colour combination as Napoli jerseys. Images of the jersey appeared on general interest media and also on the Dolce&Gabbana website. 

News has reached The IPKat that now the Milan Court of First Instance has issued its decision on the matter, finding in favour of Maradona. The court noted that [the translation from Italian is mine]: 

To this end, the court referred to Article 8 of the Italian Industrial Property Code, which expressly concerns trade mark registration of third parties’ own image, names and well-known signs, to draw the broader teaching that such provision is aimed at reserving the exploitation of the relevant ‘allure’ of a name or sign to its owner, who can then repress any third-party free-riding of their own repute. According to the court, this provision ‘fully legitimizes merchandising, which allows the rightholder to capitalize on the competitive advantages that are inherent to their sign’. 

In conclusion, according to the court the use made by Dolce&Gabbana of Maradona’s name was aimed at misappropriating the prestigious sport history of the latter. 

As regards the damages, the fact that Dolce&Gabbana had not put the jerseys on sale was considered relevant. The determination of the damage was done based on endorsement deals concluded by Maradona. The court awarded damages for a little less than what the claimant had requested, ie EUR 70,000.

It is well-known that image rights protection in Italy is quite extensive, and courts have issued decisions that have progressively broadened the scope of protection afforded to one's own image, name, likeness, voice, etc.

Not long time ago, for instance, the Turin Court of First Instance ruled that unauthorized use of Audrey Hepburn's likeness on garments infringed her post-mortem image rights. Previously, the Milan Court of First Instance had held that even mere evocation of someone's own image (again, Audrey Hepburn) could be held a violation of image rights.

Yet, decisions like the Maradona one increasingly show how the line between misappropriation/free riding and cultural tribute is quite a thin one. 

In the case of Maradona, the expansive reading of Article 8 of the Code served the purpose of establishing a violation of Maradona's image (or rather: name) rights. 

Yet, contrary to the court's reasoning, the context in which the use took place does not necessarily appear to be one in which the end-goal of Dolce&Gabbana was that of free riding on the footballer's own sport history or suggest a partnership between them. 

Rather, the fact that his name was used on a fashionable version of Maradona's own Napoli jersey is indicative of the fact that the intention was to celebrate some of the symbols of Naples as a city, including its historically relevant sports people.

All this said, the take-home point seems to be once again that image rights can go quite far in Italy and that unauthorized use of third-party image, likeness, etc should be done - and handled - with care.

Looking to catch up with the latest fashion (law) trends? Readers might remember that this blog has already reported on a couple of fashion law courses, organised and run by former GuestKat Rosie Burbidge, Giulia Gasparin, and myself.

We are now organising a new event - 'Fashion Law London - The Spring/Summer Collection' -, which will be held in central London on Friday, 28 February 2020.

The 1-day course will focus on key developments in different areas of fashion law, including:

Here's the detailed programme for the day:

08:30-09:00: Registration and welcome

09:00-09:45: Big Data, machine learning and AI in fashion: a technical perspective, with Ijaz Akram (Crowdcube)

09:45-10:30: Big Data, machine learning and AI in fashion: a legal perspective, with Eleonora Rosati and Giulia Gasparin

10:30-10:50: Coffee break

10:50-11:40: Contrasting counterfeits: The Alibaba IP Protection Programme, with Graham Clemence (Alibaba)

11:40-12:40: What’s in an image? A panel discussion on image/publicity rights, deep fakes, and celebrity holograms, with Eleonora Rosati (moderator), Frederick Mostert (King's College), Kelsey Farish (DAC Beachcroft), and Hilary Atherton (Bird & Bird)

12:40-13:30: Lunch

13:30 - 14:40: Commercial technology and data protection compliance in online fashion: an update, with Giulia Gasparin

14:40-15.00: Coffee break

15:00 - 15:45: Fashion franchising, with Gordon Drakes (Fieldfisher)

15:45 - 17:00: Fashion IP case law update, with Eleonora Rosati and Rosie Burbidge

As mentioned, IPKat readers enjoy a discount in the registration fee. For further details and to register, just click here.

In the lavish setting of a private members’ club on Pall Mall, London-based Rosie Burbidge, Giulia Gasparin and Eleonora Rosati held their second event - The Fashion Law London Autumn/Winter Review.

The trio’s success with their first Review, the Spring/Summer Review, prompted the decision to hold another in the Fashion Law London series. Taking place on Friday 18th October, the day itself was advertised as an opportunity to “catch up with the latest fashion (law) trends; hear from industry innovators, world-leading luxury law experts, and those behind the most disruptive fashion businesses; and, join a frank and collaborative environment where you are at the centre of discussion,” and safe to say, it most certainly delivered. With a line-up of luxury brand creators, Intellectual Property icons, and fashion technology experts, this event was one not to be missed.

The day kicked off with a talk from Joanna Dai, founder of contemporary womenswear brand, DAI. Joanna inspired her audience by recounting her bold move from the world of finance into the unknown territory of the fashion industry. 

Previously an analyst at J.P Morgan, Joanna explained that the inspiration for her brand came from a dislike of the uncomfortable and impractical nature of professional workwear. Joanna’s key aim for the brand was to create a collection for the modern businesswoman that looked powerful but was as comfortable and wearable as yoga wear. In their own words, DAI has since then “created the intersection of performance fabrics, elegant tailoring, and honest premium quality.” 

Joanna’s honest recollection of her transition from comfortable, successful financial analyst to inexperienced fashion designer, to owner of a thriving premium brand was truly riveting. You can check out DAI’s latest collection here: https://daiwear.com/

Co-founder of the event, Eleonora Rosati, talked us through the latest copyright issues currently impacting the fashion industry. Those attending the event were fortunate to hear Eleonora’s insights on how recent case law is set to affect the industry and the practical implications of the decisions given. 

Eleonora covered a variety of cases, some involving huge household names in the beauty and fashion industries. Eleonora offered a truly current and dynamic perspective on these issues, and how they are likely to affect both the fashion and legal spheres in the future. 

Event goers were also lucky enough to hear from Intellectual Property legend, Professor Frederick Mostert, as he talked us through the perils of counterfeit goods. Frederick, an internationally recognised authority on a variety of intellectual property issues, recalled jovial anecdotes of working alongside Jackie Chan in his quest against counterfeit products, all whilst hammering home a far more important and solemn message about the reality of counterfeit products. 

Frederick discussed the somewhat lesser known truth about the illegal slave and child labour which goes into creating counterfeits, the dangerous working conditions and countless deaths involved, as well as the links to organised crime which the final consumer may be oblivious to. The key takeaway from Frederick’s segment? Always be conscious of the origin of your purchases, as a harmless ‘bargain’ may not always be so harmless. 

Another of the event’s co-founders, Rosie Burbidge, spoke to us about ‘Fashion Law in Practice’. Rosie highlighted recent cases with regards to trade marks and designs, and the implications these cases would have on the fashion industry at present.

Rosie highlighted some pertinent issues in the area of trade marks and designs and made reference on the day to the then very recently issued Advocate General’s opinion in the CJEU case, SkyKick. Rosie, like other speakers on the day, provided a hugely practical and bang up to date account of the picture of fashion law at present, whilst also accounting for what this may look like upon the event of Brexit. 

Tech aficionados and amateurs alike were treated to a highly beneficial panel talk on the role that new and upcoming technologies are playing within the fashion industry. Bilyana Georgieva, Mo White and Kam Chovet discussed a variety of technological innovations currently changing the way the fashion industry, among other industries, operates. 

The trio discussed the fate of the high street, highlighting the importance which technology plays in maintaining a polished online and mobile presence which complements the physical store. Offering a well-rounded consumer experience that keeps the customer coming back, so said the panel, is key. Thought-provoking topics emerging from questions asked by the audience ranged from Artificial Intelligence on the high street, to the store as an experiential event. Those attending the event were truly fortunate to hear from the panel’s wealth of experience in these areas, learning of the absolute necessity for fashion brands to keep moving with the times in order to stay afloat. 

Co-founder of the event, Giulia Gasparin, talked us through a variety of E-commerce platforms and the variety of technical solutions currently available to fashion brands that can enhance their provision of services. Using her experience as Senior Legal Counsel at River Island, Giulia compared a variety of technical solutions on offer to the fashion and legal industry, whilst also analysing the regulatory framework impacting these solutions.

Again, like her fellow co-founders, Giulia offered a highly practical and extremely innovative analysis of the technological solutions available to the fashion industry. For lawyers in search of inventive new ways to assist their clients and bring their practices fully into the 21st century, Giulia’s section was invaluable. 

Fiona Thatcher’s segment on how to manage the social media influencer was a great insight into the marketing of goods and services through social media personalities. Fiona guided us through her practical experience of social media Influencers as a senior lawyer at luxury jewellery brand, Atelier Swarovski, offering her expertise on how to utilise such individuals and also manage them effectively. 

Fiona’s segment was highly relevant and hugely beneficial to all of us interested in fashion law, and a welcome reminder of the highly specific rules and guidelines that must be enforced in influencer contracts to ensure the given brand’s products are marketed successfully. 

Winding up the day, Ijaz Akram spoke about the beneficial role of Blockchain and Artificial Intelligence within the fashion industry. 

Far from just a techy buzzword, Ijaz spoke positively to us about the real benefits of blockchain in combatting counterfeit goods, tracking shipments, aiding sustainability, and much more. 

The event's line-up of inspirational and innovative speakers and topics of discussion ranging anywhere from technology to trademarks really made the Fashion Law London – Autumn/Winter Review an event that was truly worth attending. 

The lectures given on the day were robust whilst remaining accessible to all levels of the profession. Whether you’re a student with an interest in Fashion Law, or a fully experienced Fashion Lawyer in the peak of their career, future events held by Rosie, Eleonora and Giulia are not to be missed. 

The next Fashion Law London events will be held in London on 28/2/20, and Milan on 6/3/20. Find out more here.

Thank you again to Rosie, Eleonora and Giulia for the opportunity to attend and assist at the event on the day!