No Large Scope of Protection for G-Star's Elwood
Dutch Supreme Court, 2 September 2011, G-Star international
B.V./ Bestseller Retail Benelux B.V.
G-Star´s Elwood jeans were introduced in 1996 and have been a
big commercial success ever since. The design combines five
elements that were in fact already known from motorcycle wear and
workwear – specific stitching, knee patches and a band at the
bottom of the legs – into a new design for jeans. G-Star has tried
actively to protect the design, by registering it as a shape mark
and by relying in various proceedings on those trademarks, as well
as on copyright and slavish imitation.
An action against Benetton even led to questions to the European
Court of Justice about the (im)possibility to register as
trademarks shapes that give substantial value to the goods (ECJ, 20
September 2007, C-371/06). Whether G-Star´s shape marks in fact are
valid has not been decided yet; after having been referred back,
the question now has to be answered by the Court of Appeal of The
Hague. Meanwhile, G-Star has started new proceedings, including
preliminary relief proceedings against Bestseller Retail, which
after appeal and cassation have led to the judgment discussed
here.
Copyright But No ‘Large Scope of Protection’
Bestseller Retail sells jeans under the brand Jack &
Jones – the stitching of which, in the opinion of G-Star, is too
similar to that of its Elwood jeans. G-Star has tried to obtain an
injunction, inter alia by relying on copyright. The fact
that the Elwood jeans are a work protected by copyright was
actually already decided by the Court of Appeal of Amsterdam in the
above-mentioned case against Benetton, and was upheld by the Dutch
Supreme Court in its first Benetton judgment (Supreme Court, 8
September 2006). A point of discussion in this case was whether the
derivation of elements already known from other clothing could
indeed lead to a work protected by copyright. This discussion was
settled to G-Star's advantage: the personal stamp of the author
may lie in the combination of design elements that are well-known
in themselves.
So the Elwood jeans are protected by copyright, but the next
question is whether the jeans objected to are actually infringing.
The Amsterdam Court in Preliminary Relief Proceedings ruled that
this was not the case. Next, the Court of Appeal reached the same
judgment. According to the Court of Appeal, it was important in
this respect that since the characteristic elements of the jeans
have been derived from older, other designs (motorcycle pants and
workwear), the scope of protection is not, as G-Star had argued,
‘very large’.
Against this consideration G-Star then filed an objection in
cassation. As G-Star argued, the Court of Appeal failed to
recognize that the combination of elements is precisely what is
original; the jeans therefore meet the requirement of originality,
and then what the scope of protection is has to be determined on
the basis of all circumstances of the case. This reasoning does not
hold however, as Advocate General Verkade has correctly observed in
his opinion. The Court of Appeal has recognized precisely the
originality of the combination; this makes the jeans an original
‘work’. The only observation made by the Court of Appeal with
regard to the scope of protection is that it is not ‘very large’,
as G-Star had argued in appeal. In a combination of well-known
elements this is indeed not obvious, as Verkade wrote with
reference to the old judgment ‘Spanish tiles’ (Supreme Court, 18
December 1981). Moreover, the question is what the qualification
‘very large’ means in this context; this is not a criterion
recognized in law. The only known and relevant distinction is that
between a larger and a less large scope of protection.
Slavish Imitation
In addition, in its judgment the Court of Appeal
rejected the reliance of G-Star on slavish imitation with the
summary consideration that there is in this case no imitation that
leads to confusion. In this respect it referred to the differences
between the jeans as already discussed within the context of
copyright. In cassation G-Star also objected against this argument,
in brief because an assessment of copyright infringement may not
replace an assessment of an alleged unlawful act. Such is however
not the case, as the Advocate General pointed out. After all, the
Court of Appeal has ruled that there is no confusion and has
therefore used the correct criterion. In proceedings like the
present – expedited appeal in preliminary relief proceedings – the
court may go by ‘an intuitive judgment’ without further
substantiation.
Shape Marks Possibly Invalid
Finally, the Court of Appeal ruled that ‘it is not
implausible’ that G-Star's shape marks will be declared
invalid. The Court of Appeal based this opinion on an earlier
judgment of this purport in proceedings on the merits, on the
registration practices of the OHIM and the BOIP, and on its own
preliminary judgment that the stitching contributes to the
‘substantial value of the goods’. The Advocate General is of the
view that this amply substantiates the preliminary judgment so that
the various complaints about substantiation can not succeed.
The Supreme Court?
The Court of Appeal has rejected the cassation without
substantiation, relying on Section 81 of the Dutch Law on the
Judicial System (no answer required to legal questions in the
interest of the unity of law or development of law). This means
that Bestseller Retail has won the case, and that the Elwood's
protection is weaker than G-Star perhaps had hoped. It becomes less
and less probable that the shape marks will be upheld. The
copyright of the jeans is a fact, but there is not a very large
scope of protection. Of course, in the end it will have to be
determined per challenged design whether or not there is an
infringement. For instance, against H&M G-Star was successful
in this respect (Court of Appeal of The Hague, 19 April 2011).