By Vivek Jayaram

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The most sought after piece of men’s footwear this past year was undoubtedly Virgil Abloh’s Off-White collaboration with Nike, in which the then upstart designer (now Creative Director for Louis Vuitton) reimagined classic Nike sneakers in a way that has now become Off-White’s calling card: reimagining familiar pieces of clothing or footwear with an inspiration that’s equal parts streetwear and couture.

Collabs like the one Mr. Abloh did with Nike are nothing new in the fashion world: Supreme x Louis Vuitton, Kenzo x Vans, and Rodarte x Target are just a few of the many recent and hugely successful collaborations among designers.  More than ever, established brands are looking to align themselves with younger, emerging artists and designers, resulting in a robust culture of collaboration in art and fashion.

Given the nature of our practice, many of our clients have participated in collabs with brands around the world.  Designers with furniture manufacturers, visual artists with apparel brands, and denim producers with sneaker companies are all some of the collaborations we’ve worked on in recent memory.

So, what are the most important legal issues to bear in mind if you’re collaborating and lending your brand to someone else?

  1. It’s All About the IP. When you find yourself in the middle of a collaborative effort, the core of the venture is each party’s willingness to essentially license the IP to the other for the limited purpose of the collaboration.  Sounds easy, right?  Not necessarily.  When properly drafting a collaboration license, we recommend that the parties pay attention to the scope of the license and make sure that they understand that the rights do not extend beyond the collaboration that forms the basis of the agreement.  Sure, if it’s a success there might be another collaboration, but from an IP perspective it makes most sense to license the marks for one line at a time.
  2. Term or Run. The parties probably don’t intend to let one another use their trademark forever in connection with collaboration.  And in the fashion world especially, the length of a license matters since new lines launch every season.  Make sure that your agreement contains a clear term or expressly sets forth the size of a run that the parties are agreeing to with regard to the collab.
  3. Payment. Receiving a flat fee is one thing, but often times collaborations include a revenue or profit share, which might require parties to grant the other audit rights to ensure that the shares are paid out accurately and in accordance with the terms of the agreement.
  4. Channels of Distribution. Where will the collaboration be sold?  And what will the price be of each piece?  Often times collaborative pieces are only available on one of the two brands’ sites; other times, they’ll be available on both parties’ websites.  These details should be agreed upon in the agreement.
  5. Termination. If it’s a successful collab, the license likely terminates when the product is gone.  If not, you’ll have to clearly identify your term and set forth any specific termination provisions that might apply to your project.

Collaborations are a great way to expose your brand to new audiences and make work that might be a departure from what you’ve been doing in the past.  But these arrangements require designers and artists alike to consider certain legal issues that might not necessarily be intuitive.  The best approach is to put your thoughts on these issues in writing, and make sure each of these topics are covered.