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IP Lawyer's Practice Is Fashion-Forward
New York Law Journal
Karen Artz Ash, national co-head of Katten Muchin Rosenman's intellectual property practice, has attended New York fashion week shows for the past nine years. You won't see many other lawyers at the invitation-only events, she said, noting, "It's not something that attorneys typically attend."
Ash said she wanted to be a fashion designer when she was very young, but she became interested in the law after her grandfather was killed in a construction accident and she observed a subsequent trial in a wrongful death case.
Ash, 55, is now a member of Katten's executive committee and chairs its pro bono committee. Focusing on fashion law, she has represented clients such as high-end designers Donna Karan, Elie Tahari, Han Feng, Marchesa, Haute Hippie and Alice & Olivia; apparel company Warnaco Group; teen retailer and designer Aeropostale; and discount apparel retailers Filene's Basement and Loehmann's.
Meanwhile, she just finished contributing to a fashion textbook for lawyers and a book for fashion designers; she is a contributor to fashion trade journal Women's Wear Daily; and she writes monthly columns on fashion licensing issues and trademark topics for other publications. Every year, as an adjunct professor at New York Law School, she teaches a class of about 20 students on IP licensing issues in the fashion field. The class field trip? A visit to Bloomingdale's.
Q: Describe the practice of fashion law.
A: Fashion law is an amalgam of several different practice areas. At the heart is intellectual property. This consists of proprietary rights vested in intangible assets, such as clients' trademark or brand, their unique trade dress, copyrighted fabric designs, design patents, utility patents, distinctive product trim or configurations (which may encompass one or more of the foregoing areas of intellectual property) and personalities (such as designers) associated with the company, brand or products.
Certainly, as fashion law contemplates the exploitation of intellectual property rights, another area of expertise is corporate law. A fashion lawyer should be conversant with general concepts of corporate law, including contract interpretation and enforcement, as well as the types of representations and warranties that would be appropriate for the parties to a fashion contract. The types of contracts that such area of the law generates include license and distribution agreements, manufacturing and sourcing agreements, agency and sales commission agreements, and assignment documentation, among others.
In addition, as the intangible assets of a fashion company are often the most valuable, these assets are used to secure financing. Accordingly, financing entities, such as banks or other equity investors, seek to obtain security interests in the intellectual property assets. An effective fashion lawyer should understand how to negotiate and conclude such arrangements, including the mechanics necessary to support perfection of security interests.
In the context of all of the above, it is important that a fashion lawyer understand and is able to address and identify bankruptcy risks associated with contracts.
Finally, it is important that an attorney engaged in the practice of advising fashion clients also understand and, at a minimum, be able to identify possible antitrust issues.
In short, the services provided by a fashion lawyer encompass many disciplines, perhaps initially rooted in a basic understanding of intellectual property law.
Q: What are some of the IP issues you handle most frequently?
A: Our practice runs the full gamut, working closely with our clients on:
the selection, searching, clearance and registration of names/marks and copyrighted material, both domestically and internationally;
enforcement of those rights both domestically and internationally;
monitoring third-party activities;
cease-and-desist letters, and responding to the same;
licensing agreements and distribution and related agreements up and down the chain of manufacture, distribution, advertising and sale of products;
working closely with a network of foreign counsel and our offices in foreign jurisdictions; and
administering, maintaining and advising clients on their rights (and limitations) under license and other agreements.
All of these tasks involve intellectual property issues and address matters such as determining the likelihood of confusion between two or more uses of names, brands or designs; and issues concerning the scope and definition of licensed rights held by a licensee or reserved rights retained by a licensor.
Q: What drew you to fashion law? Did any personal interest guide your way?
A: I have always loved fashion. My mother did some modeling, and she was a frustrated fashion designer who never had the opportunity. She always dressed elegantly, even when going to the supermarket. She still does. I wanted to be a fashion designer when I was very small and later became interested in being a lawyer. I found a way to combine both these passions.
Q: What's the benefit of attending runway shows and fashion events?
A: I am a member of the audience, like everybody else. I get to see what the client is all about. What excites them. What the trend is. How other people respond to the shows, the designer, the products. I get to see my clients' competition too. It is part of loving the entire aura and environment.
Q: Why is it important for your practice to personally keep up with fashion trends and brands?
A: Clients know when you understand their business. It makes an attorney more than an academic adviser. When you know what the trends are and what the marketplace considers a "trend," you can understand what is truly unique, identified with a single brand, or just fashionable.
Q: Is there more demand for expertise in this niche?
A: Yes. It is a practice niche that has always existed but now warrants a level of specialty because of how fashion companies do business. More often than not, fashion companies are part of larger, more complicated businesses with operations and sales all over the world. Licensing is a significant aspect of the fashion business and this area. Fashion law subsumes so many disciplines, as discussed above. Therefore, from a practitioner's point of view, it provides many opportunities for working with colleagues and cross-selling other areas of practice in a general practice firm.
Q: Are law schools focusing on fashion law courses?
A: I know, for a fact, that New York Law School, Fordham, Brooklyn Law School, Cardozo, NYU and Touro have special practice and job track courses. Columbia has a fashion law symposium and club that invites attorneys to speak to students about their experiences in the fashion industry. All of these schools have students who work as interns in legal departments of fashion houses.
Q: How has the practice itself evolved?
A: This practice is now recognized as a separate, distinct specialty niche, which means more attorneys will be drawn to the subject matter.
As to new legal issues, there is a tension between the need to exploit and maximize the value of a fashion brand and the need to preserve a high price point and exclusivity in the types of retail venues the products are sold. Many brands do manage to have volume and exclusivity, such as Louis Vuitton. On the other hand, many other fashion brands see the opportunity to affix their label, or more commonly a variation of their label, on more down market products, for example, the Vera/Vera Wang line and others. Some fashion brands segment their own brand in different price and quality tiers, such as Armani Exchange and Armani. A fashion house must be careful so as not to undermine the value of the principal exclusive brand by associating the name (even an abbreviated or secondary name) with lower price points, quality and channels of distribution.
Q: How have fashion houses and designers changed their in-house counsel hiring?
A: I think there is a greater recognition that lawyers play an important part in the everyday workings of a design house. So, I think that there is a greater willingness to expend the resources to have in-house counsel.
Q: For the fashion law course you teach, you bring students to Bloomingdale's. What's the lesson?
A: I want my students to see the "real world" implications of the contracts they read, write and will advise clients on. At Bloomingdale's, we visit "shop in shop" dedicated spaces. We speak with the employees -- most of whom are trained and supported by the design houses -- to understand the importance of the "look and feel" of the space to the brand identification. This includes color, shape, even the spacing between the products that are displayed.
Q: What's the biggest issue facing your fashion clients and what are the related legal implications?
A: I think the issue discussed, above, concerning the proper balance between volume and generating revenue, on the one hand, and preserving the exclusivity of the brand, on the other hand.
Q: Do your clients care how you dress?
A: Absolutely. I always wear a client's products when I go to see them.
Q: Are fashion industry clients more temperamental or critical than clients in other industries?
A: I don't think so.
Q: How would you describe your own style?
A: Eclectic. Maybe a little quirky but professional at the same time. Definitely not staid or just lawyer-like. I want to inspire confidence but make an impression. I want to feel good about how I present myself.
Q: Do you have any favorite designers?
A: My eclectic style dictates that I choose my wardrobe and accessories -- pocketbooks and shoes are very important to the overall look -- from a range of designers. I represent many designers so it is hard to identify a single favorite. I think most designers have something I love. I am very petite, so that does limit some of my choices or preferences. I need small scale.