Burlesque Designs for the Eye: Makeup Designs in Dispute

Knobbe Martens

Knobbe Martens

On December 13, 2018, Face Lace Ltd., founded by makeup artist Phyllis Cohen to provide ready-to-wear makeup designs, filed suit in the Central District of California against Bare Escentuals Inc. d/b/a Buxom Cosmetics. Face Lace’s complaint alleged copyright infringement and trade dress infringement under the Lanham Act.

Face Lace alleged that its Burlesque design, created by Ms. Cohen in November 2011, shown below on the left, was “illegally and intentionally misappropriated,” and wholly incorporated into Buxom’s adhesive “Eye Veil” product, shown below on the right.

Face Lace’s complaint included an image showing “Burlesque superimposed in red over Buxom’s infringing copy, demonstrating the blatant copying of Ms. Cohen’s design”:

With respect to the direct copyright infringement claim, Face Lace alleged that Buxom’s Eye Veil design intentionally copied, displayed, and used the Burlesque Design.  Face Lace alleged Buxom had access to the Burlesque Design by virtue of its distribution online and that Buxom created substantially similar derivative works of the Burlesque design.  Interestingly, it appears that Face Lace had filed a copyright application for the Burlesque design, but the registration had not issued prior to filing of the suit. The complaint references “Copyright Case Number 1-7219732511” and does not reference a registration number.  The 9th Circuit (along with the 5th Circuit) allows a copyright infringement suit to be filed after a copyright application has been filed in the U.S. Copyright Office.  The 10th and 11th Circuits allow a copyright infringement suit to be filed only after a registration for the work has issued.  In January 2019, the Supreme Court heard oral arguments on Fourth Estate v. Wall-Street.com, which should settle this circuit split.

With regard to the trade dress infringement claim, Face Lace alleged that consumers identify Face Lace as the source of the Burlesque Design. Face Lace further alleged that Buxom knew of the considerable commercial success of Face Lace’s Burlesque Design trade dress, and that Buxom willfully used the look and feel of Face Lace’s trade dress in a manner likely to cause confusion, or to cause mistake, or to deceive customers that Buxom’s Eye Veils are from Face Lace or otherwise associated with or authorized by Face Lace.  Face Lace’s complaint does not identify the elements of the alleged trade dress. Such an identification of the elements of the alleged trade dress is typically required in a complaint. See Lepton Labs, LLC v. Walker, 55 F. Supp. 3d 1230, 1240 (C.D. Cal. 2014).

Face Lace did allege that it filed U.S. Trademark Application Serial No. 88/227,327 for .  The application was filed on December 12, 2018 and alleges a date of first use anywhere of February 22, 2012 and a date of first use in commerce of March 31, 2012.  As of the writing of this article, the application has not yet been reviewed by the USPTO.  The application identifies the trade address as “an ornate and intricate design outlining eyes, eyelids, and eyebrows, that appears to be inspired by the plumes of ostrich and peacock feathers used by Burlesque dancers at the infamous Folies Bergèr.”  Given that the asserted trade dress is a product configuration, and does not include a claim of acquired distinctiveness, the application will likely be initially refused.  As previously noted in These Boots Are Made for Walkin’: Trade Dress and the Distinctive Look of a Boot Sole, trade dress is usually defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992).  Unlike word marks and product-packaging trade dress, product-design trade dress is never inherently distinctive, and thus, secondary meaning must be shown for trade dress in a product design to be protectable. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 216 (2000).  Also interesting is the statement that the trade dress is “inspired by the plumes of ostrich and peacock feathers used by Burlesque dancers at the infamous Folies Bergèr.”  We previously explored whether vintage designs could be adopted as trade dress in Vintage or Protectable? Steve Madden Creates Waves for the Ark.

On January 31, 2019, an answer was filed by the successor to Bare Escentuals - Shiseido Americas Corporation.  Shiseido denied all the salient allegations, and asserted a variety of Affirmative Defenses, including that: (1) the claims are barred because Face Lace did not possess a registered copyright at the time of filing the Complaint; (2) damages are limited because Face Lace did not possess a registered copyright at the time of filing the Complaint; (3) the claims are barred because there is “a common public source that precludes copyright infringement”; (4) the claims are barred because a lack of originality in the alleged copyrighted work precludes copyright ownership; (5) the claims are barred because of fraud on the U.S. Copyright Office; (6) the claims are barred because the alleged trade dress is not inherently distinctive; and (7) the claims are barred because the alleged trade dress has not acquired secondary meaning.

It is interesting to note that retailers such as Macy’s, Ulta Beauty, and Nordstrom, as well as Buxom itself, now show the Buxom Eye Veil kits to be unavailable or sold out.  Whether this is a temporary hold on sales of Eye Veil is yet to be determined, as is the question of on which, if any, of the claims Face Lace will prevail. 


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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