Maíra Schweling Scala and Isabela Fernandes Pereira of Mattos Filho discuss the implications of a recent lawsuit by the editor-in-chief of lips at cosmetics company Smashbox.
Makeup artist files lawsuit against cosmetics company
According to recent news published in the media worldwide, Vlada Haggerty, a makeup artist and photographer, filed a lawsuit in early January 2018 against an internationally known cosmetics company in the Federal Court of California, claiming that the cosmetic company allegedly copied her works on packages of its new line of products and improperly used registered trademark she owns.
On May 5, 2015, Vlada published in her account with a social network a photograph that portrays lips coated with liquid lipstick of golden color dripping from the lower lip into the form of a drop. Days later, on 12 May 2015, she published a similar image of the dripping golden lips, but the lipstick color this time was rose golden - as in the images below.
Since the beginning of her career as a makeup artist and photographer, Vlada has become well known for her artistic photographs that depict this style of lip art. The artist’s fame was so expressive that she began selling printed versions of her works to third parties portraying such “dripping lips” through an online platform.
By mid-2017, the cosmetic company launched a new line of products in the market, whose packaging presented the following graphic design:
As you can see, the lip figure positioned in the centre of the packaging of the cosmetic company’s new product line resembles a combination of elements of Vlada’s gold and rose gold lip arts.
The legal conflict between Vlada and the cosmetic company rose in this context. According to information disclosed by Vlada’s lawyer, the “golden lips” and “rose golden lips” images created by Vlada are copyright protected in the US and the image of the “rose golden lips” is trademarked in the US Patent and Trademark Office under No. 5,296,027.
In this regard, Vlada’s lawyer claims that the cosmetic company has copied works created by the makeup artist by reproducing the exact same drip position and highlighting a distinctive texture of Vlada’s works, as is obvious from this comparison:
With respect to the registered trademark (Rose Gold Lip Art), Vlada’s lawyer argues that the cosmetic company improperly used a registered trademark owned by the makeup artist in order to promote its new cosmetic line, which could cause confusion to cosmetic consumers; cosmetic consumers may associate the images and assume that Vlada had collaborated in the development of the new product line, which was not the case.
Lastly, Vlada’s lawyer reports that the cosmetic company has contacted Vlada to negotiate a possible collaboration in 2016 and again in 2017, but she declined due to an employment agreement under an exclusivity regime with a competitor. Vlada’s lawyer claims this demonstrates that the cosmetic company already knew her artwork and has used, in bad faith, Vlada’s photographs for the promotion of its new line of cosmetics.
What rules would be applicable in such case in Brazil?
In Brazil, there are two main laws that would be applicable to Vlada’s case and that must be examined, namely: (i) the Copyright Law (Law No. 9,610/1998), and (ii) the Industrial Property Law (Law No. 9,279/1996).
The Copyright Law. However, the photographs, which depict such lip makeup technique, would be subject to copyright protection because they fall under the concept of “photographic work” in the Copyright Law. Therefore, in Brazil, Vlada could not claim protection for her “dripping lips” makeup technique based on the Copyright Law. Nevertheless, as discussed below, she could challenge the unauthorised use of her images by third parties for commercial purposes.
Except for certain exceptions provided for in the Copyright Law, any partial or full reproduction, editing, or adaptation, of a copyrighted work requires previous and express authorisation from its author, especially when third parties seek to use such work for commercial purposes.
Considering that the cosmetic company used Vlada’s images for the sale of a new cosmetics line, seeking to sell its products, it should have obtained the previous and express authorisation from Vlada for such purpose. Otherwise, such activity would constitute the unlawful economic exploitation of a copyrighted work.
Therefore, with regard to the protection of the photographs, the unlawfulness of Vlada’s case is due to the use and commercial adaptation of photographic works by the cosmetic company without the proper authorisation from the author of those works (Vlada). Besides demonstrating the copyright infringement, Vlada would have to demonstrate, mainly, the originality and authorship of her creative work. As evidence, Vlada could present the images published on her social network account to demonstrate that she has published photographs that illustrate, in an original way, the “dripping lips” makeup technique since 2015.
The Industrial Property Law
The ownership of a trademark is acquired by duly registering the work with the Brazilian Patent and Trademark Office (Instituto Nacional da Propriedade Industrial – INPI). The owner is assured the right to exclusively use the trademark throughout the national territory (i.e., in Brazil only), subject to certain exceptions listed in the Industrial Property Law. The trademark owner (or applicant of a trademark) has the right to license or assign its use to third parties, which has not occurred in Vlada’s case, and to ensure its material integrity and reputation. The owner may also question the misuse of the trademark at any time.
In Brazil, a crime is committed against a trademark when an individual: (i) reproduces a registered trademark wholly or in part, without the authorisation of the owner, or imitates it in a manner that may induce confusion; or (ii) modifies a registered trademark in a product placed in the market, which is owned by a third party. The penalty for such infringement of trademark law is detention from 3 months to 1 year or payment of a fine.
Accordingly, if Vlada had a valid trademark registration in Brazil, she could file a lawsuit against the cosmetic company for infringement of trademark law by proving that the image used on the packaging is substantially similar to her trademark, which may cause confusion among consumers of cosmetic products (in this case, the confusion would result from the unduly association between the cosmetic company and Vlada’ products). In this scenario, the comparison between the images (that is, the indication of the same drip position, highlights and texture) would be a key element to reinforce Vlada’s argument.
Lip Drip Artist Vlada Haggerty Sues Make Up For Ever for Copying Her Trademarked Work. Available at: http://www.cosmopolitan.com/style-beauty/beauty/a14784007/vlada-haggerty-sues-make-up-for-ever/. Published in January 9, 2018. Makeup Artist Vlada Haggerty Sues Make Up For Ever for Copying Her Work. Available at: https://www.teenvogue.com/story/makeup-artist-vlada-haggerty-make-up-for-ever-lawsuit. Published on January 9, 2018. Smashbox makeup artist sues LVMH for lip art plagiarism. Available at: http://br.fashionnetwork.com/news/Maquiadora-da-Smashbox-processa-LVMH-por-plagio-de-arte-labial,935057.html#utm_source=newsletter&utm_medium=email. Published on January 11, 2018.
 https://smcarthurlaw.com/vlada-haggerty-sues-makeup-forever-and-louis-vuitton-for-copying-her-lip-art/. Access on January 18, 2018.
 Image available at: https://smcarthurlaw.com/wp-content/uploads/2018/01/MUFE-Complaint-Exhbits_.pdf. Access on January 18, 2018.
 Section 8 of Copyright Law: “The following are excluded from copyright protection within the meaning of this Law: I - ideas, normative procedures, systems, methods or mathematical projects or concepts as such; (...)”
 The Copyright Law establishes a list of creations that cannot be protected, such as mere ideas, normative procedures, systems, methods, projects, plans, texts of treaties or conventions, laws, decrees, regulations, among others.
 The Copyright Law does not require the author's authorization in cases of reproduction for personal use without the intent of profit, media dissemination for study or critic purposes, among other types of use that do not seek to economically exploit the work created.
 Unlike trademarks, patents and other assets of industrial property, in copyright law does not constitute a right; it is merely a formality that can be used in potential challenges regarding the authorship of the creation. That is, the registration is merely declaratory. The author who does not have the registration of a work, must use other tools to proof his/her authorship.
 Section 122 of Industrial Property Law: “Any distinctive visually perceivable signs that are not included in legal prohibitions shall be eligible for registration as a mark.”
Section 123 of Industrial Property Law: “For the purposes of this Law, the following definitions apply: I - product or service mark: one which is used to distinguish a product or service from another that is identical, similar, or alike, but of different origin. (…)”
 Section 129 of Industrial Property Law: “The property of a trademark is acquired by a validly granted registration, in accordance with the provisions of this law, the owner being guaranteed exclusive use thereof throughout the national territory (...)”
Section 132 of Industrial Property Law: The owner of a trademark may not: I - prevent tradesmen or distributors from using distinctive signs that belong to them, together with the mark of the product for its promotion and marketing; II - prevent manufacturers of accessories from using the mark to indicate the use of the product, provided they obey fair competition practices; III - prevent the free circulation of products placed on the internal market by himself or by another with his consent, without prejudice to the provisions of §§ 3 and 4 of section 68; e IV - prevent the mention of the mark in speeches, scientific or literary works or in any other type of publication, provided that it is without any commercial connotation and without prejudice to its distinctive character.