|Earlier this year, Barbara Kolsun (Benjamin N. Cardozo School of Law, USA) treated those attending INTA’s Brands and Fashion Conference in New York City to a presentation that offered insight into her pioneering career in the fashion industry and advice on how practicing lawyers can develop their own brand. Building upon her impressive career leading many of America’s premier fashion brands, Ms. Kolsun now serves as Director of the Fashion, Arts, Media & Entertainment (FAME) Law Center at Cardozo in New York City, where she also teaches Fashion Law and the Fashion Law Practicum (in which Cardozo students counsel masters-level students at the Fashion Institute of Technology (FIT) on their capstone projects). Ms. Kolsun also provides counsel to Weight Watchers as a consultant. Ms. Kolsun’s career highlights include her prior employment as General Counsel (and first lawyer) for then-startups Kate Spade, Stuart Weitzman, and 7 For All Mankind, and as Assistant General Counsel at WestPoint Stevens and Calvin Klein Jeans. Ms. Kolsun has also co-authored two seminal books on fashion law.
In anticipation of The Trademark Reporter’s upcoming November–December, 2017, theme issue, which will focus on fashion law and related topics such as luxury brands, Jessica Elliott Cardon, Senior Counsel, Quality King Distributors, Inc., and Perfumania Holdings, Inc., Co-Chair of INTA’s Brands and Fashion Conference, and Vice Chair (and incoming Chair) of The Trademark Reporter Committee, sat down with Ms. Kolsun to discuss some of the latest trends in fashion law and what changes we should anticipate going forward.
Jessica Elliott Cardon (JEC): You were a featured keynote speaker earlier this year at INTA’s Brands and Fashion Conference in New York City. What was that experience like?
Barbara Kolsun (BK): I thought it was a fantastic conference. The quality and the substance of the presentations were top notch, like most everything that INTA does. Having been involved in INTA for many years, and having pushed for much more of a focus on brands and branding, and certainly fashion, I was thrilled to see a conference devoted to just that subject.
When they asked me to speak on the topic of building your own brand, I remember thinking, “What could I possibly say?” A lot of what I focused on had to do with surviving the business. Fashion is not necessarily the best spouse. There are a lot of mergers and acquisitions, a lot of re-branding, re-grouping, reorganizing—a lot of change. I also spoke about the kinds of things that a lawyer can do to keep relevant, like continuing to learn so that you’re not caught short-handed and shortsighted when the day comes that your company is sold or your job is eliminated for various reasons. Ultimately, it was very satisfying. I got such positive feedback from the attendees—particularly women.
JEC: What do you feel has changed the most in the practice of fashion law since you began your career?
BK: The business has of course changed dramatically. When I started, there was no Internet, there were no online businesses. Basically, fashion brands were retail stores. Usually, a fashion brand started by selling in a Saks or Macys, or a big department store, and then eventually brands like Ralph Lauren and Calvin Klein opened their own retail stores. In some cases, companies like Michael Kors opened 600 stores over a relatively short period of time, and then went public. And then suddenly, we were in the age of Amazon. Most people shop online now.
I think the first issue is how relevant the retail store is going to be going forward. I think we’ll see a lot more mixed-use spaces—restaurants and gyms, and entertainment-type facilities. Brands and retailers are going to have to really re-strategize in terms of how many stores to keep open and mall owners are going to have to re-strategize in terms of what’s going to be in those malls. Brands have to deal with the reality of social media and online shopping—it has just exploded. That’s the short answer—it’s in flux. It’s not going to go away.
One other thing that’s really important is that consumers are much more concerned with sustainability, with where products are made, and with who makes them. Particularly younger customers care deeply about those things. I think brands are focusing more on sustainability, too. There have been events in the news that have resulted in changes and an increased focus.
JEC: Another big change in the industry has to do with technology advances. Companies are trying to incorporate algorithms and analytics into not just how to better serve their customers and dictate what their customers are responsive to with respect to their fashion offerings, but trying to actually generate design algorithms and using artificial intelligence to do this. I’m curious what your thoughts are on the use of AI in designing fashion articles and how that could affect what we consider the author or designer of those articles?
BK: In almost all the start-ups that I worked for, the first thing that I discovered when I arrived was that there was nothing in writing. The first agreement that I had to draft was a design services agreement asking the designer to confirm that the designs belonged to the brand and assigning those designs to the brand. Often the brand didn’t appreciate why that was necessary. I think the same concept applies to technology. It’s really important to hammer home those rights and who owns what so you’ve addressed all possible permutations of where this is going to go.
JEC: With the prevalence and frequent use of influencers for brand promotion and product sales conversion by many fashion brands and other industries that cross over with fashion these days, do you think influencers are the next wave of fashion brands and design talent? Or, will traditional design talent continue to lead the way?
BK: I think traditional design talent will continue to lead the way. Influencers are very helpful, but ultimately, it’s about the talent. As a teacher at FIT, I can tell you it’s very exciting to see what’s happening, not just in the U.S., but all over the world. I’m very enthusiastic about the continuing rise of new and exciting designers.
JEC: You’ve authored or edited two books on fashion law. Fashion Law: Guide for Designers, Fashion Executives, and Attorneys and Fashion Law: Cases and Materials, which I believe was one of the first case law textbooks for fashion law. What drove you to create these books?
BK: The first book happened because Cardozo had asked me many years ago to come up with a syllabus for a course in fashion law. At around that time, I got to be friendly with Guillermo Jiménez, who is the co-editor of the book and who was teaching at FIT. He asked me to give him a list of lawyers in the fashion industry, and we started to have breakfasts at FIT just to talk about fashion law issues. I think it was probably the very first gathering of lawyers working in the fashion business. And from that meeting, Guillermo said we should write a book.
Once the book happened, I immediately started teaching. Suddenly, fashion law was being taught in law schools all over the country, and many of them were using our book. Then I got a call from Carolina Press and they asked if I would be interested in doing a casebook. I said, absolutely, but only if I can co-edit it with Guillermo Jiménez. So, we did the same kind of wonderful, collaborative thing.
JEC: That case law book was published in 2016, but there was a pretty important case that was decided by the Supreme Court just this year [Star Athletica v. Varsity Brands]—do you think that will end up being the most important case in your next edition?
BK: Absolutely. I think the Star Athletica case is one of the main reasons for moving into the next edition. Even though I don’t think it’s really changed anything significantly with respect to the protection of designs and copyright law’s place in the fashion business, it’s still an important case because it cleans up the law.
JEC: I think there has been enhanced activity among many fashion brand owners, luxury and non-luxury alike, in pursuing protection and design infringement cases with respect to unregistered trade dress or elements that are loosely defined as trade dress but that go a step or two beyond a color trademark. Even though there’s obviously less protection for fashion designs in the U.S., do you think we’re going to see a change, finally, in the United States, where fashion will get earlier protection nearing the fashion protection afforded in the European countries?
BK: No, I don’t. We’ve certainly seen over the last several decades numerous attempts to amend the copyright law, but I don’t believe it’s going to happen in the United States. I don’t think there’s a will. Each time it gets introduced and debated, suddenly the year is over and Congress is finished and it has to be reignited. That’s always going to be a challenge because brands now are global, so a particular element may be protectable in Europe but not in the U.S.
JEC: Why do you think fashion as a theme resonates so well in the trademark field?
BK: Well, I think there’s definitely passion for it. It’s a sexy subject. Fashion covers copyright, trademark, trade dress, patent, design patent—almost every aspect of IP. Fashion is one of the industries where, because of weak copyright protection and weak design protection in the United States, trademark law has become so important. Most fashion brands have really had to rely on trademark protection to enforce their rights. Also, fashion is a trillion dollar industry. It’s bigger than music. It’s bigger than sports. Designers are celebrities. People are really fascinated.
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