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Determining counterfeits is unclear business : Design infringement case highlights lack of precedent in protecting creative rights

Feb 28,2017
Despite crackdowns by companies and governments, counterfeiters have continued to make designer knockoffs that look so similar to the original designs that it is becoming increasingly difficult to spot which is the fake. However, even if there are obvious design differences with few similarities, the distinction between original and knockoff becomes a lot more ambiguous when determining whether one is an imitation or not.

Take two handbags: one is the highly coveted Kelly bag from French luxury house Hermès, and the other is a Korean handbag brand Playnomore’s Shy Girl bag with large playful eyeballs emblazoned on the front.

The Hermès’ Kelly bag is handcrafted by artisans using finest leather. It has a history that dates back to 1935 and the price is said to start around $10,000. Meanwhile, Playnomore’s Shy Girl uses synthetic leather, and the large eyeballs are placed on the outside of the bag - the signature design of the brand - is decorated using sparkling sequins. The bag was created in 2014 and costs 178,000 won ($157).

The two bags sound distinctively different, but in July 2015, Hermès filed a lawsuit against Playnomore, insisting that the Korean handbag brand had copied its signature Kelly and Birkin designs, infringing upon the Unfair Competition Act. The law prohibits the “act of infringing a person’s right to profit by using that person’s product, which was the result of considerable effort and investment.”

Hermès argued that the design of one of Playnomore’s Shy Girl bags resembled that of their Kelly and Birkin designs, such as the design of a closure which consists of two thin, horizontal traps designed to fit over the flap with metal plates at their end that fit over a circular turn lock; as well as a padlock which fits through the center eye of the turn lock; and a key fob affixed to a leather strap - which are iconic Hermes design features that can be immediately identified by millions of consumers.

During the first trial, the Seoul Central District Court stated, “There’s no concern over getting confused between the two bags.” However, the court ruled in favor of Hermès saying that it believed that, “Playnomore had used Hermès’ iconic design it has been using for a long time without authorization and made unfair profit by relying on Hermès’ reputation.”

But on Feb. 16, the ruling was overturned at the appeals trial at the Seoul High Court. It ruled against the French fashion house, stating that “it is difficult to see it as violating fair trade or free competition just for resembling part of the design,” acknowledging Shy Girl’s signature eyeball design as the major contributor to the brand’s success.

According to Kim Chaeny, the designer and founder of Playnomore, the Shy Girl bag series, adopted a design that was a “classic look that everyone can sympathize with.”

“While marketing and selling the bags, I’ve never mentioned the name Hermes or its Birkin or Kelly bags,” she said. “I knew that the design was used by the brand, however, I was aware that this design has already existed in the 1700s well before Kelly or Birkin and that I would have no legal issues… I never even thought about riding on Hermès’ reputation.”

“Hermes may file an appeal and I understand them for doing so,” she added. “I’ll just say what I have to say - that Playnomore is not a copy brand for the sake of all my employees who have worked so hard to create this brand.”

When the court ruled in favor of Hermès during the first trial and ordered Playnomore to pay a total of 100 million won in fines and dispose of the remaining Shy Girl bags, Kim said she stopped manufacturing them.

“That classic design itself wasn’t that important for us,” she said. “The design was only a part of the products we sell and we have already started producing our second collection with a new design that is going well. So whether we win or lose the trial, I didn’t want to obsess over the design.”

Playnomore has been appealing to its global consumers with the philosophy of pursuing a fun, witty design, using its signature large playful eyeballs design.

By picking up slogans like “Fake For Fun,” the brand has been speaking up about the charm of using fake materials.

“I don’t regard expensive leather like crocodile as a valuable material as cruelty and sacrifice is used in order to obtain them,” Kim said. “Even though it’s accessible and cheap, depending on how you use it, it can be a lot more valuable.”

Ever since the two bags went into the courtroom, the extent of this relatively new Unfair Competition Act has been a hot issue in the Korea’s fashion circle.

Since Hermès’ renowned Kelly and Birkin bag design patents had expired in Korea since 2000, Hermès sued Playnomore for violating the Unfair Competition Act which was enacted on Jan. 31, 2014. Kim was sued in July 2015.

When reached, representatives from Hermes Korea declined to comment on the case.

“I feel that even the [judges of the] Seoul High Court agonized over their remarks after the appeals trial,” said Kim. “When I read the sentence, I felt like the judge was trying to be very neutral and sympathize with both sides. Legal experts told me that Korea will need more precedents to arrange this confusing law and that this trial was the starting point.”

BY YIM SEUNG-HYE [sharon@joongang.co.kr]