Isabel Marant has come out on top in a copying case against Mango. In a ruling from this past spring, the Paris-based brand – which filed suit against the Spanish fast fashion giant in a French court, alleging that it blatantly copied its Fall/Winter 2013 Scarlet boot design – the Tribunal de Grande Instance de Paris found that the design of Marant’s boot is original enough to warrant copyright protection in accordance with French law.
Mango responded to Isabel Marant’s 2013 copyright and design right lawsuit by alleging that the brand’s Scarlet boots lack “original character” and arguing that without such originality, the boots are not subject to copyright protection in accordance with Article L.112-2 14 of the French Code of Intellectual Property. Siding with Marant, the court noted that while the shape of the boot’s heel and the use of “bi-material textures” are pre-existing elements, "there is no type of shoe with a combination of all these elements known." As such, it found that the amalgamation of those elements – "which results from the choice of the designer” – is novel and thus, worthy of copyright protection.
Having met the originality requirement, the court turned its attention to the second prong of the copyright test: Whether the two shoes are sufficiently similar to find copyright infringement. According to the court, the Mango version produced “the same overall visual impression [as] the Scarlet model,” thereby satisfying that requirement, as well.
In terms of the damages award, Isabel Marant held that experienced a loss of € 350,000 due to Mango’s sale of the lookalike sneakers. The court ultimately awarded Marant € 37,800 based on the number of copies sold by Mango; only sales in France were taken into account because the court at issue was limited in jurisdiction to France, even though the court noted that the boots may have been sold in many countries.
FRENCH LAW VS. AMERICAN LAW
This case serves as a useful tool to compare French copyright law and the breadth of protection afforded by copyright law in the United States, where useful articles – such as shoes – are rarely protected in their entirety regardless of the level of originality at issue. This is why Marant had little copyright recourse when Steve Madden copied her best-selling Willow sneakers in 2012 or when any number of brands copy the non-trademark elements of adidas’ shoes.
For the uninitiated, U.S. copyright law (as opposed to design patent or trade dress law, for example) rarely provides protection for an entire garment or accessory. This is because copyright law does not want to provide a monopoly on any useful items, and given the functional elements of garments and accessories (think: clothes provide warmth, shoes cover your feet and bags serve to carry things), they fall neatly within the category of useful articles.
In order to be protectable, there must be some degree of separability – either physical or conceptual – between the artistic elements embodied in the garment/accessory and the useful function of the item. So, while individual aspects of these items may be protected, such as an original print that covers a dress or a highly intricate, sculpted heel on an Alexander McQueen shoe, for instance, the design of the dress and the shoe as a whole is not protected.
Separability is a particularly mystifying topic, as the tests for determining it vary quite a bit. It is also a rather timely topic and it is the central issue in the Varsity Brands v. Star Athletica case that the Supreme Court will hear on Monday.