Foley Hoag LLP - Trademark, Copyright & Unfair Competition

 

 

New York Fashion Week (NYFW) officially kicks off today, February 7, 2020, with a week’s worth of captivating runway shows from top designers. The timing, however, could not be worse, since the 92nd Academy Awards is airing on February 9th, dead smack in the middle of Fashion Week. Due to this scheduling snafu, designer Tom Ford, who styles top actresses walking the red carpet at the Oscars, will be a no-show in New York. Other notable no-shows include designers Jeremy Scott, Ralph Lauren, and Tommy Hilfiger, but as they say, the show must go on.

Each year during this time, I blog about intellectual property matters facing the fashion industry. I usually start my research by reviewing NYFW’s schedule. When reviewing this year’s runway schedule, I could not help but notice that many designers debuting fashions this year have been involved in a variety intellectual property disputes. Below is my rundown of the top 5 IP disputes that previously kept this year’s NYFW designers up at night!

1. Christian Siriano vs. Former Licensee

Christian Siriano is set to debut his Fall/Winter 2020 collection at NYFW. Siriano is the darling of fashion reality show Project Runway, which he won back in 2008. Shortly thereafter, Siriano launched his eponymous fashion collection. Known for his elegant and bold evening gowns and cocktail dresses, Siriano has dressed the likes of Sarah Jessica Parker and Kate Beckinsale. Michelle Obama even wore a Siriano design to the 2016 Democratic National Convention.

In 2018, Siriano was embroiled in a vicious trademark and breach of contract dispute with his former licensee M&A Imports, d/b/a Just Love. M&A Imports started the fight when it sued Siriano for $10 million for allegedly backing out of the parties’ trademark licensing agreement, which gave M&A Imports the right to manufacture affordable fashions bearing the federally- registered trademark CHRISTIAN SIRIANO. Siriano hit back with a lawsuit of his own, claiming that M&A Imports infringed his registered trademark when it allegedly used the CHRISTIAN SIRIANO trademark on low quality fashions that Siriano did not approved, in breach of the parties’ agreement. Siriano alleged that M&A Imports’ breach gave Siriano the right to terminate the agreement, and after termination, M&A Imports continued to sell unapproved dresses bearing his trademark.

All well-written trademark license agreements contain what are called “quality control” provisions. These provisions are important to any trademark license agreement, because they protect the trademark owner’s reputation and the goodwill residing in the owner’s trademark, by specifying certain minimum standards that the licensee must following, including approvals by the licensor of sample products bearing the licensor’s trademark. Exercising adequate quality control over a licensee also prevents consumers from receiving low-quality products bearing the licensor’s trademark. If a licensor does not exercise sufficient control over the quality of the goods and/or services bearing her trademark, the goodwill residing in the trademark can become tarnished, and the trademark can become vulnerable to attack or even be deemed abandoned.

Luckily for all of us fashion fans, Siriano and M&A Imports apparently settled their dispute, as the parties eventually agreed to dismiss the trademark infringement and the breach contract lawsuits, leaving Siriano to focus on designing beautiful dresses, like this one depicted below from Siriano’s specimen of use filed with the U.S. Patent and Trademark Office.

2. Paparazzi vs. Monse

Fashion label Monse will debut its Fall/Winter 2020 collection on day two of NYFW. Laura Kim and Fernando Garcia started Monse in 2015 to create clothes “that made [women] look like it took five minutes to get ready.” Today, Monse is a fan favorite among various celebrities, as displayed by many paparazzi photos of actresses like Sarah Jessica Parker and Jennifer Lopez wearing Monse’s latest designs.

Jumping at the opportunity to tout its celebrity following, Monse got into trouble last year after it decided to post this photo of Jennifer Lopez on its Instagram page wearing one of its dresses.

While Jennifer Lopez did not appear to object, Carlos Vila, the photographer who took the photo, was not happy. Vila filed a lawsuit against Monse before the U.S. District Court for the Southern District of New York, alleging copyright infringement, in violation of the U.S. Copyright Act.

With some exceptions, copyrights are generally owned by the people who create the works of expression. In the case of a photograph, the photographer usually owns the copyright in the photograph, and in order to publicly display a copy of that photograph, one usually needs permission from the photographer. According to Vila’s complaint, Monse failed to obtain permission, prompting Vila to file his complaint requesting statutory damages. Statutory damages are money damages that may be awarded by a judge or jury to a copyright owner in a copyright infringement suit under certain conditions. The amount awarded is established by statute (i.e., the Copyright Act), hence the name “statutory damages.” In general, if a defendant willfully infringes a registered copyright, then the court can award statutory damages as high as $150,000 per infringed work.

According to the case docket, Monse made an offer of judgment to Vila for $10,000, pursuant to Rule 68 of the Federal Rules of Civil Procedure. A Rule 68 offer of judgment is a written offer made by the defendant to resolve the plaintiff’s claim. If the plaintiff rejects or ignores the offer and then later earns a judgment less favorable than the offer, the defendant can recover its “costs” from the plaintiff. “Costs” usually include smaller litigation expenses, like transcript fees, court reporter fees, and filing fees. While “costs” usually do not include large expenses like attorney’s fees, when the statute relied upon by the plaintiff defines “costs” as including attorney’s fees, like the Copyright Act, then the plaintiff may be liable for the defendant’s attorney’s fees. Thus, Rule 68 offers of judgment can be very powerful for defendants accused of copyright infringement, particularly in cases where the court or jury are likely to determine that the plaintiff’s actual damages are small, or where there is no evidence of willful infringement that would increase the statutory damages award.

Thus, faced with the risk of paying Monse’s attorneys fees in the litigation, it appears from the case docket that Vila accepted Monse’s offer of judgment and the court entered a judgment against Monse for $10,000.

3. Longchamp vs. Home Goods and Accessory Retailers

French fashion company Longchamp’s Fall/Winter 2020 ready-to-wear line will be on full display at NYFW. Longchamp is known for creating a wide range of well-designed luxury accessories and clothing, including its well-know “Le Pliage” tote bag, which bears a distinctive trapezoid shape, leather trim and distinctive stitching. The look and style of the Le Pliage bag was registered before the PTO to Longchamp’s parent company S.A.S. Jean Cassegrain in 2005 as a design patent. Longchamp’s parent company also later registered the design with the PTO as a trademark in 2006, as shown below:


As discussed in my prior blog post here, in addition to protecting a designer’s name and logo, trademark law can also protect the design and appearance (known as the “trade dress”) of certain fashion products, including handbags (like Hermès’ Birkin bag), and shoes (like Converse’s Chuck Taylor sneakers). Trademark law can also protect fashion design elements, including prints and patterns (like Burberry’s plaid print), distinctive stitching (like the U-shaped jean pocket stitching owned by True Religion/Guru Denim), and even colors (like Christian Louboutin’s red bottom shoe soles). Trademark protection only extends to fashion designs that are non-functional and have achieved a certain level of consumers recognition (called “secondary meaning” or “acquired distinctiveness”). Although Longchamp’s 2005 design patent appears set to expire soon (design patents last for only 15 years), its trademark rights in the Le Pliage bag will last for as long as it continues to use that design in U.S. commerce.

In 2015, Longchamp sued houseware retailer Bed Bath & Beyond and accessory retailer Laila Rowe in NY federal district court, accusing the companies of selling knockoff handbags and coin purses that allegedly looked like the Le Pliage bag. Longchamp alleged in the complaint that Bed Bath & Beyond and Laila Rowe committed patent infringement and trademark infringement, which allegedly caused Longchamp to lose sales in excess of $1 million.

Based on the court docket, it appears that the parties eventually settled their dispute.

4. Naeem Khan vs. Clothing Retailer

Naeem Khan is one of my favorite designers at this year’s NYFW. Kahn has dressed the likes of Michelle Obama and Kate Middleton, and is known for intricate, ornate and colorful patterns and designs. While Khan was previously in the press for refusing to dress first lady Melania Trump, he also made some heads turn when he posted a message on Facebook accusing J. Crew of copying one of his dress print patterns.

As explained in my prior post, prints and patterns can be protected by copyright, and in some instances, by trademark law. It doesn’t appear that Khan took any action against J. Crew, and based on his post, maybe he decided to take J. Crew’s design as a compliment.

5. Twitter Users vs. Michael Kors

Michael Kors is expected to debut his 2020 Fall/Winter collection of ready-to-wear fashions on the last day of NYFW. At last year’s NYFW, Kors debuted his spring and summer collection, which included styles that reminded many of designs and prints that are associated with hoodies worn by Mexican and U.S. Latinx youth called “jergas” or “Baja jackets.” According to Chimayoweavers.com, jergas are known as a “very old part of our tradition, dating back to the Spanish Colonial era. It is a simple twill weave, either a straight twill or a diamond twill called ojo de perdiz. Historically, this was the utilitarian fabric of New Mexico, used to wrap up bundles as you might use a tarp[.]”

Many Twitter users recognized the designs and were not happy with Michael Kors’ use of the jerga style and prints in his runway show, accusing the designer of cultural appropriation.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Cultural appropriation is the co-opting of intellectual property, cultural expressions, traditional knowledge or artifacts from another’s culture (usually a minority or indigenous group) without their input, consent, credit, or compensation. As I discussed in my prior post on cultural and intellectual property appropriation in the fashion industry, traditional cultural expressions raise particular legal and policy questions in intellectual property law. Traditional cultural prints may be exclusively owned by a particular organization or community under U.S. copyright law (so long as they are original, creative, and physically or conceptually separable from the function of the article) or trademark law (provided they are nonfunctional, distinctive source identifiers). Some countries also have special legislation for the protection of traditional cultural expressions.

In the case of Michael Kors, because jergas are known to be worn mostly by working class youth in Mexico, using them on NYFW’s runway as high fashion, and allegedly without crediting the people who originated the design, was seen as a smack in the face to certain members of the Mexican and the Latinx communities.

Brand owners should use special care when adopting prints, trademarks, product designs, packaging, and advertising campaigns that might appear to represent a cultural expression, and should consider these issues as part of their intellectual property clearance procedures and consult with legal counsel, particularly for important designs that may be part of a global ad campaign or runway show.

×