Stoush raises IP concerns

NATIONAL: A spat between one of Australia's leading design houses and a prominent beauty brand has again thrust the murky area of third party intellectual (IP) property into the spotlight.

The stoush between Perth-based womenswear label Aurelio Costarella and Le Tan Australian licensee Creative Brands, arose following what Costarella claims is the unauthorised use of one of its gowns in advertising material by the artifical tanning brand. The full-page advertisements, which first appeared in consumer magazines in November, are also replicated on Le Tan's Australian website.

According to Costarella designer Ray Costarella, the ads feature a model wearing a dress "identical" to his $4000 'Girasole' dress which includes the fashion house's signature look of intricate hand-stitching, French silks and vintage lace detail.

The argument has drawn parallels to a damages claim awarded by a French court to French couture house Louis Vuitton. The case centred around a video produced for singer Britney Spears that featured a car whose dashboard had been had been embossed with a cherry blossom print owned by Vuitton and featuring its well-known 'LV' trademark without written consent from the fashion house.

Legal experts spoken to by Ragtrader, say if the case were to be litigated, the merits of the case would be based on what intellectual property rights were at play.

Costarella - whose brand is trademarked globally - said at no stage was permission ever sought, nor given, for the dress to be used in the advertisement. The garment was not mass-produced and only two samples existed for promotional purposes. Of these, one was sent to the design house's PR agent in New York and the other was sent to an unnamed stylist for use in a Channel Ten promotion that never appeared, he said.

In email correspondence between the two parties seen by Ragtrader, Le Tan brand manager Leanne Dembo said the gown used in the Le Tan ads was not a Costarella creation but a "no name brand" from overseas. Dembo claimed she had not been advised where the gown came from.

"Although we have an in-house design team that specialises in packaging and point-of-sale design, this shoot was done externally as we are not experts in advertising photo shoots. The entire process was managed by an external consultant and as such I have absolutely no idea where the dress came from."

The email continued: "The stylist engaged by the consultant advised that it is definately not a [Costarella] dress and that it came from overseas."

In November, Costarella engaged its law firm Steinepreis Paganin to send a letter to Creative Brands alleging unauthorised use of Costarella's intellectual property. The letter included a demand that all campaigns featuring the dress were withdrawn, and sought an undertaking from Creative Brands that it would not infringe Costarella Designs IP in future.

It also asked for payment in the sum of $2000 made up of a 20 per cent hiring fee plus $1100 in legal fees.
In January the legal firm acting for Creative Brands, Deacons, sent a return letter stating that as the advertisement did not contain the words identifying the designer of the gown the demands in its original letter were invalid.

Complicating the issue is the fact Creative Brands engaged a consultant stylist for the shoot with whom it signed a confidentiality agreement. At the time of press Creative Brands has yet to release his or her name.

Speaking last week, Costarella said he felt "insulted and angry" at the time wasted on this matter.

"[We] can't believe that Creative Brands wish to keep this charade going and not disclose the stylist responsible and just tell the truth. Also, we are trying to create a luxury brand and don't see Le Tan products as a luxury brand association."
Costarella said when he spoke with the suspected stylist they admitted that when in their care the dress "may have fallen into another stylist's hands" when left in the network's studio.

While he had not yet decided what his next course of action would be, Costarella said the debate was not just about compensation but about a business taking responsibility for decisions made by its staff and freelance consultants.
He said he would not have any future dealings with the suspected stylist.

For his part, Creative Brands managing director Stephen Mason, who has been at the helm of the company for just five months, said he had believed Costarella's concerns were genuine however his hands were tied.

"I have no doubt in Mr Costarella's sincerity tut there is not much I can do. We used an independent stylist and they have told us the dress is not the same one designed by Mr Costarella. We have to take his word for that."

Mason said as a result of the dispute, Creative Brands would in the future alter its agreements with third parties to ensure they are able to give an undertaking they have sought permission to use any garments that appear in its advertising campaigns.

"In the past these things have been done verbally and you assume that when you deal with reputable third parties these things are already covered but in reality maybe that isn't always the case."

McCullough Robertson senior associate James Cameron said while he was not familiar with the details of the Costarella dispute, in general freelancers needed to be aware that each time they took on a job, they were likely entering into a legal contract - even one sealed with a "handshake".

For apparel brands, the supply of garments for shoots should be documented by a garment supply agreement.
"Terms can be put in place to govern how the garment is used or presented. Perhaps the garment is provided on loan only so as to avoid the risk of on-supply. In some instances, particularly for limited production garments, the designer may retain copyright and moral rights in the garment and be able to  impose restrictions on use of those rights."
He warned, however, intellectual property laws do have their limits.

"If every designer could sue for 'unauthorised' appearances of their garments things wouldn't be very right. In fact some designers wait and hope for it to happen - it is sometimes publicity money can't buy."

By Tracey Porter