“DANK” customs, bootlegs, and reworked pieces

• Date: 01 July 2020
• Published date: 01 July 2020
• Author: Andie Bain
• DOI: http://doi.org/10.1111/jwip.12157

J World Intellect Prop. 2020;23:375–412. wileyonlinelibrary.com/journal/jwip

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DOI: 10.1111/jwip.12157

ORIGINAL ARTICLE

“DANK”customs, bootlegs, and reworked pieces

For an expressive use defence of secondary trademark works

Andie Bain

University of Sussex, Law, Brighton, UK

Correspondence

Andie Bain.

Email: andiebain@hotmail.co.uk

Abstract

Three secondary works born from streetwear fashion

have been identified, and it is the objective of this paper

to elucidate why trademark use in customs, bootlegs, and

reworked pieces is deserving of legal protection. The

paper travels through the oppression embedded in the

fashion industry, highlighting its hostility towards street

associations, which provides justifications for the

reappropriation of a trademark. To do so, it explores the

origins of streetwear and locates it within the industry. It

recognises that these secondary works sit uneasily within

trademark law and free expression principles as courts

fluctuate with determining the legality of their trademark

use. Additionally, the interrelationship between second-

ary works and their online distribution reveals an

existential burden on platforms to police the use of trade

marks without the sufficient tools to do so. This work

adopts a sociolegal approach as the topic explores the

letter of the law and its implications on society and its

subcultures.

KEYWORDS

intellectual property, intellectual property rights, trademarks

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This is an open access article under the terms of the Creative Commons Attribution License, which permits use, distribution and

reproduction in any medium, provided the original work is properly cited.

© 2020 The Authors. The Journal of World Intellectual Property published by John Wiley & Sons Ltd

1|INTRODUCTION

Challenging the fashion industry is one of the most influential and fastest growing genres of fashion: streetwear.

Originating from underground skate and surf culture, streetwear has taken the industry by force, swiftly climbing

the fashion pyramid and influencing some of the world's most luxurious brands.

The fashion industry itself is unusual from a legal perspective; operating in intellectual property's (IP) “negative

space’(Beltrametti, 2010, p. 148) as an “empirical anomaly”(Sprigman, 2006) that challenges general IP theory.

Raustiala and Sprigman (2006) identify this space as the low‐IP equilibrium, where minimal protection afforded to

fashion designs permits piracy that paradoxically spurs creativity. A myriad of commentators perceives this as

detrimental to the industry, and Potter expressly calls for concerns to be directed toward the “defenceless”

emerging designers unable to reap the benefits of IP protection (Potter, 2011, p. 81).

Yet this unregulated sphere permits creativity to flourish in the form of reinvention. Young streetwear creatives

reinforce the cyclical practice of appropriation by extracting a brand's most precious design element; the trademark.

Historically as a signifier of origin, the trademark has evolved into a form of “social currency”to represent a brand and its

values (Lury, 2004, p. 10). Trade mark owners are increasingly obliged to determine the values they wish consumers to

attach to products bearing the protected mark. As the trademark functions as a “speculative device”(Lury, 2004,p.12),its

secondary uses in streetwear become inherently problematic. This is because appropriation is a design strategy firmly

embedded in the fashion industry, whereby designers borrow components from pre‐existing designs to subsequently use

on their own. Tom Ford has remarked that appropriation is incredibly important to the fashion industry as it is essentially a

normalised aspect of the creative process (Ford, 2008, 19:06). The process of “appropriating”elements of pre‐existing

worksisofteninterpretedascopyingorimitating yet in fashion, imitation and the concept of “originality”are blurred

together so seamlessly that it often does not make sense to distinguish the two (Bollier & Racine, 2005).

This process encapsulates the notion of the “piracyparadox”; that the copying of design elements produces a faster

creative cycle as designers are always adapting and producing new designs (Raustiala & Sprigman,2006). Un like other

creative works such as literary, musical or artistic which all benefit from copyright, IP protection is limited in the fashion

industry. Raustiala and Sprigman contend that it is strongly protected by trademark law and it is the object o f this paper

to highlight that trademark law does so monopolistically. Streetwear fashion has opened a new realm of appropriation,

most notably in the form of three secondary works: customs, bootlegs and reworked pieces, all of which adopt an

expressive use of trade marks. It is evident in the development of modern trademark law that the Courts are struggling

to balance the exclusive rights of trademark owners with emerging expressive uses and it is the objective of this paper

to argue for an expressive use defence, while highlighting the social commentary these secondary works represent.

2|CHAPTER ONE

2.1 |Streetwear: Definitions and origins

The multifaceted nature of streetwear makes it a difficult genre of fashion to define, but it is best understood as a

style of casual clothing worn by members of various urban youth subcultures (Oxford Online Dictionary, n.d.).

Developing from a combination of sportswear, workwear, combat‐wear, shared influences and independent atti-

tude, streetwear represents culture, not just clothes (Hundreds, 2017). Its origin is best traced through dominant

streetwear labels such as New York's “Supreme”and Tokyo's “A Bathing Ape”, to California surf and skate culture

epitomised by one man: Shawn Stüssy. Adz and Stone (2018, p. 196) advise that to understand streetwear, “you

have to understand the who, what, when, where, why of Stüssy”. Adz and Stone's book, “This is Not Fashion:

Streetwear Past, Present and Future”is divided into two sections; the before and after Stüssy, commenting that the

effortless attitude and spot‐on cultural references, accompanied by an independent global movement, represented

“the epitome and acme of streetwear”(Adz & Stone, 2018, p. 195).

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Although Stüssy did not create the culture that formulated streetwear, “he was the figure it coalesced around”

(Bain, 2018). Appropriating and recontextualising design elements to create new meanings are what contribute to

streetwear's influential “culture”. Aiming to establish a cultural identity for his brand as strong as those of the

luxury design houses, Stüssy began by parodying Chanel's iconic interlocking logo with his own pair of “S”s;

influencing “decades of flirtation between high and low fashion”(Hundreds, 2017). But it is this affair which has

compromised streetwear's position in the fashion industry, as global corporations have “infiltrated”streetwear and

are rewriting streetwear's history “to fit their financial narrative”(Hundreds, 2017).

2.2 |For the culture: Positioning streetwear in the fashion industry

Traditionally, fashion's business model is structured by way of a pyramid. Malem (2008) identifies the top two tiers

(occupied by high‐fashion) as producers of exclusive luxury goods, forming trends that trickle‐down through to the

mass market (see Figure 1). This “process of innovation diffusion”(Lin, Campbell, & Piercy, 2012, p. 5) occurs most

notably due to trend imitation which decreases the desirability of original couture designs as the market becomes

saturated with similar goods of a lower quality (Raustiala & Sprigman, 2006).

Appropriation of pre‐existing designs is able to occur because of the fragmented legal framework that governs

the industry. Dahlén (2012, p. 102) asserts that “the relationship of fashion to IP law is a complex issue [as] a basic

condition for creativity is the inspiration of other people's work”.The Piracy Paradox (Raustiala & Sprigman, 2006)

stresses that the lack of legal protection enables the industry to operate in an “ecology of creativity”(Blakely, 2010,

3:03) that accelerates innovation. Despite attacks from a swarm of academics attempting to refute its analysis, each

response has focused on how the lack of remuneration for designers has thwarted their incentive to create. While it

is agreed that fashion designs “by their very nature are deserving of legal protection”(Day, 2007, p. 244), it is

erroneous to suggest that the solve motivation for creative expression through fashion design is economic.

In the early commodification of America, fashion design became anexpressive outlet as members of oppressed

subcultures would parody trade marks on t‐shirt designs. In a “compelling argument regarding trademarks and

FIGURE 1 Information extracted from Malem, 2008 [Color figure can be viewed at wileyonlinelibrary.com]

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