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April 08, 2009

Still Pending: L'Oreal v. eBay.fr

Maybe French judges like to tease the parties before the court, or maybe they just take really long lunches.  Whatever the reason, the decision expected today in L'Oreal v. eBay has been postponed -- again.  This time 'til the end of April.  Stay tuned.

Related post:  European Theatre of Operations:  Everyone v. eBay.

April 06, 2009

Hair Raising

It's been half a century since Clairol introduced its now-iconic hair color campaign with the coy question, "Does she...or doesn't she?  Only her hairdresser knows for sure."  Today for many women and an increasing number of men, the use of hair color is as unremarkable a grooming practice as the application of lip balm.  Of course she does if she wants to.  Who cares?

Abercrombie & Fitch, it turns out -- at least if an employee's hair color of choice does not comport with the retail chain's "look policy."  And, alleges a lawsuit pending in the Southern District of New York, the only acceptable hair colors of choice for African Americans at A&F are dark brown or black. 

Former sales associate Dulazia Burchette claims that she was twice sent home to re-dye blonde highlights to a color she was "born with" before finally leaving A&F.  According to the complaint, at least one other African American employee with nonconforming hair color was fired, another was allowed to work only in the stockroom until such time as she could dye her hair, and a third chose to wear a black wig.  Caucasian employees' hair color and highlights were allegedly not subject to similar scrutiny. 

While Judge Richard Berman last week dismissed several of Burchette's arguments, she was allowed to proceed with the primary claims regarding racial discrimination, hostile work environment, and retaliation. 

And so the battle over African American women's hair -- from Renee Rogers' 1981 action demanding that American Airlines allow her to wear braids to the Cleary Gottlieb law firm's bad hair day a couple of summers ago, courtesy of Glamour magazine -- continues.  And it's a good bet that neither Tina Turner nor Tyra will be doing a line for A&F any time soon.

Via WWD.  

March 11, 2009

European Theatre of Operations: Everyone v. eBay

L'Oreal is determined to stop the sale of counterfeit perfume on eBay, and potentially expose some legal disunity in the European Union at the same time.  The French cosmetics company earlier this week opened its case in British court, which leaves the list of countries in which it has taken action against the online auction giant at France, Belgium, the U.K., Germany, and plans for Spain.  L'Oreal lost its case in Belgium last year; a decision in France -- whose courts earlier ruled in favor of both LVMH and Hermes in similar claims against eBay -- is expected as early as today.

In related news, Rolex lost its most recent salvo in in a long-running dispute against eBay in Germany.  In an earlier ruling, Germany's highest civil court had decided that while eBay couldn't be liable for damages, it did have to monitor its site once it became aware that counterfeit sales were occurring.  On remand, the lower court found that eBay is complying with this requirement.

And across the pond, eBay's program allowing rights-holders to report specific instances of counterfeit merchandise offered for sale in the eBay marketplace was sufficient to satisfy the trial court.  Tiffany's appeal (still) pending. 

What was that about shopping victoriously?

March 06, 2009

Show Stopper: LV convinces Danity Kane to cease & desist

Danity Kane album coverLouis Vuitton has wrangled a promise of reform from Bad Boy Entertainment and Warner Music Group, who will remove images of LV's trademarks from the eponymous debut album and videos of recently disbanded girl group Danity Kane. 

In its public statement, the luxury goods company politely refrained from pointing out exactly why it didn't particularly care to have its marks associated with DK's particular species of sleazy safari deshabille.  Instead, LV expressed appreciation for the music labels' commitment to educating artists about unauthorized use of others' intellectual property. 

And that goes triple for Sony BMG, who last year was persuaded to pay up after its artists Britney Spears, Da Brat, and Ruben Studdard all partook of the famous LV toile without permission. 

Given the apparently irresistable attraction of its logos, perhaps LV's next step should be to start a music label of  its own.  

February 03, 2009

Sois belle et tais-toi!

Some designers attribute their inspiration to nature, others to history, and still others to fellow artists.  All of which is fine and dandy, until someone files a lawsuit.

Take Tony Duquette, one of the great American designers of the twentieth century, whose work ranged from theatre sets and costumes to interior design to jewelry.  Duquette was inspired by, among other things, malachite; even the endpapers of his longtime business partner's book about Duquette are patterned after the stone's deep green striations.

Now take designer Michael Kors, who may or may not be particularly inspired by malachite, but was definitely inspired by Duquette -- so much so that Kors cited the late designer as the inspiration for his 2008-09 resort collection. Hence the Michael Kors "Duquette print shantung shift dress" (left) and a series of similarly named items.  

Where Michael Kors sees inspiration, however, Tony Duquette, Inc., sees trademark and copyright infringement, unfair competition, and violation of California's right of publicity statute.  And while some claims in the complaint are probably of the kitchen sink variety -- arguing trade dress in malachite could be a stretch, given other appearances as diverse as a Ralph Rucci evening gown and a Banana Republic perfume, not to mention the stones themselves -- others may end up costing Michael his next resort vacation. Yes, the repeated use of Duquette's name may have been intended as an homage rather than a suggestion of affiliation.  No, it's not always that easy to shrug off trademark claims. 

Ironically, if Kors had remained silent about his inspiration, there wouldn't be a case.  Hence the quick removal of Duquette's name from what is now termed simply a "Malachite print dress" on Net-a-Porter, though Nordstrom retains the original descriptor.  (Good eye, UnBeige!) 

Perhaps it's certain designers who should be seen and not heard -- at least until they've cleared their comments with their attorneys.

January 28, 2009

Take It Outside!

Wondering what to wear in the woods? 

You could check out Woolrich, THE ORIGINAL OUTDOOR CLOTHING COMPANY (est. 1830) -- or Eddie Bauer, THE ORIGINAL OUTDOOR OUTFITTER (est. 1920).  At the moment, however, they're busy battling over whether Eddie Bauer has infringed Woolrich's trademarked slogan.  Among the usual claims is a keyword clash:  Woolrich is not pleased by Eddie Bauer's purchase of "Woolrich" as a Yahoo keyword triggering display of links to Eddie Bauer. 

As for me, I'll be hibernating indoors until spring -- as will the attorneys exploring the ins and outs of this complaint.  

January 12, 2009

Blind Item

What LA-based apparel company found the judge more than a little skeptical of its attempts to defend against claims that it had engaged in unauthorized use of the image of a certain film legend?  Just ask the guy in seat 25B, whose laptop and printed documents were in Counterfeit Chic's direct line of vision -- for about 6 hours.  Not that I paid (much) attention. 

December 04, 2008

Bratz Grounded

Bratz dolls could be this season's hottest holiday gift -- if only because after the first of the year, they may disappear forever. 

Yesterday's court ruling in the ongoing battle between Mattel's Barbie and MGA's Bratz confirmed an earlier jury finding that the original Bratz fashion dolls and the "Bratz" name were created by a Mattel employee and thus belong to Mattel.  The judge also concluded that, while the jury was not specific as to whether it found only the original set of four Bratz dolls or their many subsequent siblings to be infringements of Mattel's copyrights, the court's own evaluation of the expressive elements of the works showed all of them to be substantially similar to the original drawings.  Bratz may be plastic, but apparently "minimalized doll noses" run in the family. 

The court enjoined further production and sales of Bratz dolls, but stayed the injunction until a February hearing.  Moreover, there's likely to be an appeal.  Still, collectors take note:  the charmed adolescence of Barbie's chief rivals may be nearing an end.

November 06, 2008

Don't Hug This Tree

Counterfeit Chic does not recommend using artificial scents to cover unpleasant odors.  Perfume is alluring, but no substitute for a shower.  A spritz of Febreze does not confer a dispensation from taking out the garbage.  And if you feel the need to hang one of those tree-shaped air fresheners from the rear-view mirror, it's time to throw out the fast-food wrappers littering the back seat and clean the upholstery. 

Still, those Little Trees® have their fans -- including, it seems, some lurking in the forest of fashion.  Hence the full-page ad that appeared in today's WWD, admonishing against using the familiar design without permission.

 

It turns out that in the past year, the trademarked design has been the subject of lawsuits against both Old Navy and Rocawear, which incorporated the trees into (presumably unscented) T-shirts.  Given that the trademark holder also markets its own line of tree-bedecked clothing, the fashion labels couldn't quite mask the telltale aroma of infringement. 

Related posts:  Admonitory ads from Chanel and Joseph Abboud.  

October 02, 2008

Parallel Lines

If adidas were a gambler, the federal district court in Portland would be its favorite slot machine.  After winning a USD $305 million award against Payless for infringement of the famous three-stripe trademark back in May, adidas carried on with a lawsuit against Wal-Mart.  The parties settled in late August, and now WWD's Matthew Lynch reports that adidas is back again, this time with another chapter in its long-running battle against Target

While adidas' complaint against Target is not yet publicly available, several of the athletic shoes on the chain's website incorporate parallel stripes into the designs.

 Target's bold stripes

 _________________________________________________________________

Meanwhile, Asics has claimed that its curved and criss-crossed stripes have been copied on athletic shoes from Dolce & Gabbana's D&G label.  Perhaps Asics should think about raising its prices to match?

 Asics Revolve USD $64 (left) and D&G $219

 _________________________________________________________________

And while all these lines converge in court, freelance journalist Kate Hahn has actually succeeded in creating a successful parody of the problem.  As anyone who has ever seen Robert Altman's film Prêt-à-Porter can attest, it is notoriously difficult to make fun of fashion.  The reality is already so far out there that attempts at humor tend to fall flat. 

Not so with Kate's Forgotten Fashion: An Illustrated Faux History of Outrageous Trends and Their Untimely DemiseAmong her pseudo-historical vignettes is the rise and fall of the "Adididas" brand, a counterfeit label of such extremely unpredictable -- but uniformly poor -- quality that it is said to have inspired destruction competitions among student backpackers.  You won't want to miss this tale of peeling stripes and exploding shoes, or the irony of the fakes' fall from favor once their quality improved and they actually began to resemble the real thing. 

 Illustration by Amelia Haviland

Kudos to Kate for creating, along with Andrae Gonzalo and other illustrious illustrators, a series of amusing stories that will smooth the frown lines of even the most imperious fashionista.  It's like Botox in book form -- only better. 

August 13, 2008

More Auction Action: eBay defeats L’Oréal

In a decision that crossed the American/European divide in the eBay counterfeit controversy, a Belgian court yesterday held that eBay was not liable to L’Oréal’s Lancôme (decision here).  Of course, L’Oréal has other cases against eBay pending in France, Germany, Spain, and the U.K as well. 

So far that makes 3 victories for the luxury labels irked by eBay (Hermès and LVMH in France; Rolex in Germany) and 2 for the auction giant (Tiffany in the U.S.; L’Oréal in Belgium), though both losing plaintiffs plan to appeal. 

And in the meantime, Lancôme probably has something to cover that black eye.

Related posts:  Tiffany v. eBay 2:  The Appeal, Euros and Scents: More on LVMH v. eBay, Strike 2: eBay loses to LVMH, Party TimeDefendant du Jour

August 11, 2008

Tiffany v. eBay 2: The Appeal

If Dad says no, ask Mom.  And if the Federal District Court for the Southern District of New York says no, ask the 2nd Circuit. 

As expected, Tiffany has filed a notice of appeal of its loss last month to eBay in a lawsuit alleging, among other things, that eBay should bear more responsibility for shutting down hundreds of thousands of listings for counterfeit Tiffany silver jewelry.  The auction site's response, with which Judge Sullivan agreed, was essentially, "Hey, we're a marketplace.  And we never even see the stuff.  How do we know what's fake and what's not?  If Tiffany tells us that a specific item is counterfeit, we'll stop that auction, but that's all we can do."  In legal terms, eBay cannot be held liable for contributory infringement of Tiffany's trademark without having specific knowledge that particular items are counterfeit -- as opposed to general knowledge that a large percentage of the listings are for fakes -- and then refusing to shut down those counterfeit auctions. 

Tiffany obviously didn't buy eBay's argument.  After all, eBay takes a cut of every sale, whether or not it's the real deal.  Talk about an ambiguous incentive.  Tiffany added in essence that eBay should look for red flags (like listings of multiples of the same item) and use the same common sense that buyers do when trying to figure out whether an item is genuine. 

From my perspective, eBay may have won a bit of a Pyrrhic victory.  Yes, it has avoided the legal responsibility and cost of policing Tiffany's (and others') trademarks, at least for now, but at the expense of being identified as a site where counterfeits may outnumber the real thing and the official policy is "caveat emptor."  Its wise publicity machine immediately leapt into action with noises about cooperating with brand owners in the fight against fakes -- but a Google search for "eBay" and "counterfeit" just turned up 1.8 million hits.  And half of us can't even spell "counterfeit."  (Remind me of that the next time I'm naming a website....)

In other words, eBay may be selling fake Tiffany silver, but the auction site is the one with the tarnished name.

 

So what's a fashionista looking for genuine goods at less than full retail to do?  (Hint:  The answer is not to email me.  I love you guys, I'm flattered, and I'm happy to share tips when I can -- but I don't authenticate auction listings.)  Instead, you can hope for a clearance sale, rent rather than buy, or visit an auction site that does guarantee authenticity.  Sure, eBay is great for unloading that tacky trinket your ex won for you at a street fair.  I've bought and sold there a couple of times myself.  But when it comes to luxury labels, why settle for uncertainty when you could score a certified preowned handbag instead? 

Related posts:  Euros and Scents: More on LVMH v. eBay, Strike 2: eBay loses to LVMH, Party TimeDefendant du Jour

August 06, 2008

A Family Affair: Disney's Little Miss-step?

Walt Disney is a family corporation:  family entertainment, family vacations, family fun.  And now, according to one trademark holder, Disney has even managed to infringe an entire family of trademarks, the "Little Miss" marks.

Yes, trademarks have families, too -- or they can, if one trademark holder owns a series of marks with a common element or "surname."  Think McDonald's, with it's "Mc" marks, like  Egg McMuffin, Chicken McNuggets, and the Ronald McDonald clown.  If consumers recognize the common element itself as a trademark when it's combined with other elements, then the holder of the family of marks can prevent other unauthorized combinations that would cause confusion, even if they're very different from any of the marks already in the family.  Thus McDonald's has successfully challenged McBagel, McSleep (budget hotels), McTeddy (teddy bears), and McClaim (legal services -- really).  (McDonald's is presumably unconcerned about Professor J. Thomas McCarthy's extremely influential treatise, McCarthy on Trademarks and Unfair Competition, which deals with families of marks in section 23:61.  Just don't call it McTrademark.)

The "Little Miss" family of marks at issue in the current case is composed of the younger sisters of the "Mr. Men" children's book characters, created by Roger Hargreaves.  The original "Mr. Tickle" and his many brethren have appeared in over 130 books since 1971, while "Little Miss Bossy" and her sisters are featured in more than 75.  The characters have also appeared on TV and on a dizzying range of product tie-ins.

Among the licensed "Little Miss" products are T-shirts, which since 2006 have been sold in some 5,000 U.S. locations, including -- wait for it -- Disneyland.   Which makes it all the more interesting that Disney stores are now carrying a line of "Little Miss Disney" T-shirts featuring the company's own characters, including Daisy Duck as "Little Miss Bossy." 

 Little Miss T's (top) and Disney versions (bottom)

Although only "Mr Men Little Miss" is currently a registered mark in the U.S., some 40 other character-specific federal registrations are pending, and plaintiff THOIP has also invoked state common law in its complaint.   The Hon. Shira Sheindlin of the Southern District of New York -- who shall emphatically not be referred to as "Little Miss Judge" -- will preside over the determination of whether or not the staunchly pro-protection Disney has violated its own trademark family values by ripping off the Little Misses. 

And in the meantime, Counterfeit Chic suggests revenge in the form of a "Little Miss Copycat" -- with or without mouse ears.

July 21, 2008

No, No, Naf Naf

Isabel Marant Fall 2006According to a French court, the cheap chic chain Naf Naf's copy of an Isabel Morant dress was, well, a bit naff

Despite minor differences between the original puff-sleeved black dress (on the runway, left) and the "slavish" copy, the chain and its supplier, Paris Paris, were ordered to pay the designer 75,000 euros (approx. USD $120,000).  The court also criticized Naf Naf for following in the wake of Isabel Morant's success and attempting to profit from the designer's creative investment without untying its own purse strings.  Both dresses were in stores during the Fall 2006 seasion, with the original priced at 250 euros and the knockoff at only 69.90 euros. 

An unusual decision?  Only in the sense that it actually went to court.  According to Counterfeit Chic's sources, European designers, who enjoy legal protection against such plagiarism, regularly settle similar complaints against fast fashion companies. 

U.S. designers, of course, still lack such legal protections -- at least until the next Congress convenes and the Design Piracy Prohibition Act is reintroduced. 

Via WWD.  Thanks to the indomitable Steven Kolb for the tip!

July 14, 2008

Tiffany Loses Lawsuit against eBay

eBay tumbled Tiffany's carefully stacked legal arguments today, with the court concluding that the jewelry giant must bear the burden of policing its own marks against online counterfeiters.  Opinion here  -- discussion to follow.

 

Tiffany v. eBay: Today's the Day!

Some people obsessively click "refresh" when trying to buy concert tickets.  Others can't stop returning to Drudge for election news.  For Counterfeit Chic, it's the latest in the world of law & fashion.

On Friday, that electronic docket-stalking finally turned up Judge Richard J. Sullivan's handwritten notice of intent to release his much-anticipated decision in Tiffany v. eBay -- today! 

The auction giant has been battered and bruised in similar cases in France, but will a U.S. court also hold eBay responsible for the sale of counterfeit goods on its site?  We'll keep you posted.  In the meantime, check out WWD's review of the dispute (thanks to Matt Lynch for the quotes!). 

July 11, 2008

Euros and Scents: More on LVMH v. eBay

Time is money in eBay's ongoing battle with LVMH, as a French appellate court upheld a fine of 50,000 euros per day for as long as the auction site continues to allow sales of several LVMH perfume brands.

This ongoing fine is on top of the 38.6 million euros already awarded to LVMH, primarily to compensate for the sale of counterfeit luxury products on eBay, but also as a penalty for the unauthorized sale of authentic fragrances, including scents from Dior, Givenchy, Guerlain, and Kenzo.  Like other luxury companies, LVMH carefully controls the distribution of its fragrances under the theory that a rose does not smell as sweet -- nor does it command as high a price -- when it's sold alongside lesser blooms.  In addition, it's easy for counterfeit versions to creep into unmonitored supply chains -- hence the periodic news stories about fake eau de toilette that turns out to contain, well, just that.  Distribution agreements therefore typically attempt to prohibit resale, with varying degrees of success.

While eBay doesn't defend the sale of counterfeits, it is opposed to legal limitations on e-commerce that limit the resale of authentic products, like the fragrances in question.  According to Bloomberg, however, eBay has now announced its intent to comply with the order "as technically and humanly as possible."  Whatever that might mean.

In the U.S., the first sale doctrine (usually referred to elsewhere as "exhaustion of rights") limits the ability of an intellectual property rights owner to control a product once it has been released into the stream of commerce.  In other words, if you want to resell that copyrighted book you've finished reading or that tacky trademarked tchotchke, go right ahead.  However, copyright and trademark holders have had some success in limiting the first sale doctrine via contract (and statutory modifications), which is why you usually don't buy software -- you just license it, with a prohibition on passing it on.  Other jurisdictions enforce somewhat greater restrictions on resale -- so French LVMH and American eBay are involved in a cultural clash as well as a legal one. 

While LVMH has once again experienced the sweet smell of legal success, its dispute with eBay is far from over -- with respect to either counterfeits or unauthorized sales of authentic products.  Stay tuned.

And in the meantime, read more about the issue in Cosmetic News (thanks to Sophie Douez for the quotes!) or listen to my brief chat with June Grasso on Bloomberg Radio at 4:20 this afternoon.

June 30, 2008

Strike 2: eBay loses to LVMH

The gavel has fallen -- and hit online auctioneer eBay pretty hard.

In a much anticipated decision, a French court today ordered eBay to pay LVMH 38.6 million euros for allowing the sale of counterfeits on its site.  The award is allocated among several divisions of the luxury conglomerate, primarily LVMH and Christian Dior Couture, with smaller amounts to perfume brands Christian Dior, Givenchy, Guerlain, and Kenzo. 

Following on the heels of Hermes' victory against eBay in another French court earlier this month, the decision essentially shifts more of the responsibility for policing offerings to the auction site, which profits from each sale -- counterfeit or not.  After learning of its loss in court, eBay immediately announced its intention to appeal and went on a rhetorical offensive, stating, "Today's decisions are not about fighting counterfeiting. It's about LVMH's desire to protect commercial practices that exclude all competition." 

Obviously the French judges haven't bought eBay's argument -- but will home court advantage help?  Or will the long awaited U.S. decision in Tiffany v. eBay be strike 3 for the auction site?  Stay tuned.

(For background on the case, click here.) 

June 26, 2008

Burberry Orders Heelys to Heel

If you've ever been run over on the sidewalk by a kid who appears to be wearing an innocuous pair of sneakers -- no skateboards, rollerblades, or other wheeled menaces in sight -- then you've encountered Heelys.  The post-millennial generation, it seems, is too busy to stop and change gear in order to shift from walking to gliding.  Hence Heelys, the athletic shoes with an embedded wheel in the heel, allowing the wearer to simply shift his weight back, lift his toes, and roll.  (Or fall over backwards, but that's not really the idea.)

Heelys claims patent protection for the single wheel in the heel, manufacturing methods, and even the proper stance to take when heeling.  And it's not afraid to enforce those patents.

When it comes to others' IP rights, however, Heelys' freewheeling ways may be a bit off-balance.  In a recent complaint, the British luxury brand Burberry claims that Heelys has rolled over its trademark on the iconic Nova Check plaid.  And since one picture is worth a thousand puns, take a look at the evidence:

Might Heelys have simply gone mad for plaid and picked the wrong one?  Not likely, if the not-so-fine print on the box is any indication:

Checkmate.

June 04, 2008

Party Time

Summer's hottest trend is here!  No, it's not gladiator sandals or splashes of superhero-worthy primary color -- it's lawsuits claiming 3rd-party liability for copyright and trademark infringement. 

Today a French court ordered eBay to pay Hermes 20,000 euros after the internet auction site allowed a user to sell 3 Hermes handbags, 2 of which turned out to be counterfeit.  The court's decision is also supposed to appear on eBay's French homepage, but no sign of it yet.  The site does have an extensive anti-counterfeiting page, though.  (Thanks to Counterfeit Chic reader Deb Mason for the tip!)

The ruling in favor of Hermes could be just the tip of the iceberg for eBay's French operations.  20,000 euros may cover a couple of basic Birkins, but, in a separate pending case against eBay, luxury giant LVMH has demanded damages of €20 million.  According to Le Monde, a decision is due by the end of the month.

Meanwhile, on this side of the Atlantic, the U.S. Supreme Court has let stand a 9th Circuit decision in Perfect 10 v. Visa, absolving the credit card company of liability for facilitating sales of infringing goods.  As WWD's Liza Casabona notes, however, questions of contributory and vicarious liability will continue to occupy the legal landscape, with a decision in Tiffany v. eBay still undecided.  (Thanks for the quote, Liza!)

Seems that the lawyers pursuing 3rd-party liability claims on behalf of their fashion clients have come up with not only a legal strategy, but a lifestyle mantra:  After the law shows up at one party, move on to the next.  Not a bad way to spend a hot summer night.

Continue reading "Party Time" »

June 03, 2008

Still More Stripes

If your dazzled retinas keep generating afterimages of adidas' 3-stripe trademark and the USD $305m verdict against Payless, read more from Mark Albright of the St. Petersburg Times (thanks for the quote!) or listen in on my conversation about the case with Scott Drake of the Legal Broadcasting Network.  Trust me -- his radio voice alone is worth a click.

Or, for more fun with stripes, stare at a fixed point on the image below for 30 seconds and then look at a blank wall or page.  Same design, new colors?  Congratulations -- you could have a future in the Payless design department.

May 08, 2008

adidas v. Payless: 3 Stripes, You're Out

Why put on athletic shoes and go for a run when simply reading about adidas' latest victory can raise your heart rate? 

adidas v Payless

In a lawsuit claiming that Payless had engaged in unsportsmanlike conduct with respect to adidas' ubiquitous 3 stripes, an Oregon jury awarded the German athletic wear company USD $305 million, reportedly a record for a trademark infringement case.  And yes, that's over $100m per stripe.  Kansas-based Collective Brands, which owns Payless, intends to challenge the verdict.

The win for adidas comes on the heels of another victory in the European Court of Justice, which recently ruled that a Dutch court could not take into account others' desire to maintain access to a design element as basic as 3 stripes.  The decision was based on the already established link in the public mind between adidas and the 3-stripe design, when used as a trademark (as opposed to a general design element). 

Of course, the adidas stripes weren't always treated as a trademark.  For years, the International Olympic Committee allowed 3-stripe patterns much larger than the usual 20-centimeter limit on athletes' clothing, treating the stripes as simply part of the design.  In response to competitors' objections and in recognition of adidas' worldwide trademark registrations, the IOC changed its position prior to the 2006 Winter Games. 

Interestingly, the verdict sheet in adidas v. Payless shows that the jury found infringement in the case of 2- and 4-stripe models as well.  In fact, among 250+ styles, the jury only disagreed with adidas in one case -- a model that appears to have only 1.5 stripes.  Presumably 5 stripes, the longtime territory of K-Swiss, would be off-limits to Payless as well. 

K-Swiss

But hey, Payless can always base its next collection on lawyers' pinstripes.

April 27, 2008

Copying for Charity

Click for larger imageJudging from my inbox, more than a few of you have heard that Louis Vuitton has sued Danish artist Nadia Plesner over the t-shirt design at left. 

The image casts a Sudanese child from the troubled Darfur region in the role of Paris Hilton, complete with small pink-clad dog and designer handbag, in order to criticize the media's excessive coverage of attention-seeking celebutantes rather than genocidal conflict.  In Nadia's words, "Since doing nothing but wearing designerbags and small ugly dogs appearantly is enough to get you on a magasine cover, maybe it is worth a try for people who actually deserves and needs attention."  (The lack of undergarments may also evoke Ms. Hilton, but the artist doesn't mention her model's unmentionables.) 

The issue for Louis Vuitton, however, is that Nadia didn't just depict any designer bag, but a version of the iconic Multicolore toile pattern, complete with the LV initials morphed into dollar and pound signs.  The company objected to this use as trademark infringement and asked Ms. Plesner to stop selling the t-shirts.  The letter is interesting in itself, since the tone is fairly unusual for a C&D -- "Hey, we're all artists here, and Takashi Murakami and Marc Jacobs collaborated on that bag," rather than the typical demands for an accounting of all units sold, disgorgement of funds, destruction of all remaining merchandise, and the head of the offending party on a platter.  It even offers a nod to Nadia's "Save Darfur" mission.  Still, LV very clearly wanted the shirts depicting its trademarks off the market -- and Nadia responded with a defense of her freedom of expression.  (She also somewhat surprisingly started out by arguing that her drawing refers to designer bags in general and not LV in particular, but more on that in a moment.) 

After Nadia and Louis Vuitton failed to reach an agreement, the company filed the lawsuit that has drawn far more attention than Nadia's initial project.  Without deciding the case, let's take a look at why there's an impasse. 

Q.  Why do Louis Vuitton's lawyers object to the t-shirt?

A.  The simplest answer is that their job is to protect LV's trademarks.  And, legally speaking, they're supposed to object to unauthorized commercial distribution of those marks.  A trademark holder that doesn't enforce its rights can ultimately lose them, as the marks may be considered abandoned or even generic.  Every time you ask for a Kleenex instead of a tissue or make a Xerox instead of a photocopy, a trademark lawyer somewhere gets another grey hair. 

The same is true for the extremely recognizable Multicolore pattern, which has been copied over and over again and is the subject of ongoing litigation between LV and other manufacturers.  It is the responsibility of LV's lawyers to make sure that the public's association between the Multicolore design and the company is not weakened in any way.  Thus Nadia's claim that her design "is inspired by - and refers to - designers bags in general - not a Louis Vuitton bag" is the last statement that would be reassuring or persuasive to a trademark lawyer. 

Q.  But Nadia created the t-shirts for charity -- doesn't that matter?

A.  Yes and no.  We all love a good cause, and we admire people who actually take action when confronted with evil. 

From a trademark lawyer's perspective, however, unauthorized commercial distribution is a threat, whether or not the profits go to a good cause.  Even charities that hold trademarks have problems protecting their marks from other philanthropic parties with similar purposes.  A representative of a prominent health-related nonprofit organization once told my class that she spends much of her time admonishing other groups that have put her organization's logo on their educational literature or their healthy products.  As she put it, "We're a charity, but we're not in the business of giving away our trademark."  Similar issues arise when trademarks are "borrowed" for religious purposes.  Trademark owners who object aren't necessarily grumpy atheists, just concerned about their marks. 

LV's initial letter to Nadia reflects this tension between sympathizing with social concerns and protecting intellectual property -- hence the unusually moderate request and tone for a C&D. 

Q.  So why didn't Louis Vuitton just give Nadia permission to use its trademark?

A.  One strategic option for any company whose trademarks have been used without authorization is to give permission, and also exercise some control, via a licensing agreement. 

Of course, Nadia didn't ask for permission.  And Louis Vuitton may or may not have been willing to grant it if she had, since its marks are constantly copied and copied again.  Also, while Nadia's stated intent was to criticize media attention to celebrities instead of tragedies, her profits from the t-shirts go to Divest for Darfur, an organization that opposes financial investment that ultimately funds genocide.  The presence of LV trademarks on the t-shirt could mistakenly be read to imply that Louis Vuitton had made investments that were helping to fund genocide -- not a message that the company would want broadcast, even in error.  In U.S. legal terms, LV could argue that Nadia was not only engaged in dilution of its well-known marks by blurring (basically overuse by non-owners) but also by tarnishment (negative association).

Q.  What about freedom of expression?

A.  Free speech is an important right, and one that every democratic society protects in different ways.  Intellectual property law establishes exclusive rights in specific expressions, but also attempts to maintain a balance between freedom of expression and creators' rights. 

In other words, at the same time that the law protects trademarks, it creates defenses for those who wish to use them in discussion (like the use of the name "Louis Vuitton" thoughout this post).  Different countries have different trademark laws and thus different defenses to unauthorized use.  In the U.S., the general standard is "fair use," including parody, while other jurisdictions have specific rules about what is or is not allowed in terms of expression.  To complicate matters even further, fair use of a trademark and fair use of copyrighted material are subject to different standards. 

In general, under U.S. law a visual artist is safer using a trademark to comment on or make fun of the trademark owner itself (parody) than to make other social statements (satire).  After all, it may be necessary to make limited use of a trademark to make a statement about its owner, but statements about other things can be made using other vocabulary.  Of course, whether or not something qualifies as parody or other protected speech may require a judicial decision.  Nadia writes that her goal was to make a statement about media coverage, not about Louis Vuitton. 

In her response to Louis Vuitton, Nadia also mentions Zbigniew Libera, a Polish artist who created LEGO concentration camp sets with blocks donated by the Danish company.  In the finished versions of the controversial work, Libera included a statement that his work was sponsored by LEGO.  The company vehemently denied knowlege of exactly what the artist had intended and filed a lawsuit that was later withdrawn.  The story is a cautionary tale for companies who choose to support artists -- whether by donating plastic blocks or the use of their designs -- but is ultimately quite different from Nadia's choice to act unbeknownst to Louis Vuitton. 

Q.  Do you think Paris Hilton will sue Nadia?

A.  Actually, I try not to think about Paris Hilton. 

But if I did, I might wonder whether she would assert a state law right of publicity claim against Nadia, much as she did against Hallmark.  If Vanna White can win her case against Samsung for posing a robot in a blonde wig on a game show set, then Paris could consider suing an artist for selling images of an African child with Hilton-style accessories.  Paris' case would be weaker here, however, since Nadia is criticizing the media for its coverage of Hilton's attention-seeking behavior and perhaps impliedly criticizing Hilton herself, rather than simply selling greeting cards or electronics. 

Q.  How can artists like Nadia avoid lawsuits by trademark holders?

A.  There's a lot of confusion out there as to what artists can and cannot do legally with corporate logos. Unfortunately, the law in this area is not entirely clear, and greater specificity would benefit both trademark holders and artists.  There are, however, some general principles.

For an independent artist, the safest option of all is not to use others' trademarks.  Any such use is a risk, and defending a lawsuit is time-consuming and expensive, even for an artist who ultimately wins.  (Now you know why so few lawyers have become great artists -- we're trained to think about worst-case scenarios.)

That being said, corporations are significant players in modern life, and as a society we need to be able to engage in commentary and criticism, whether that takes the form of op-eds or visual art.  A trademark is shorthand for a corporate entity itself.  The law thus recognizes and protects some critical or discursive use of trademarks. 

Before an artist uses a corporate trademark, she should think about whether or not her intention is to comment on the trademark holder -- and assess the risk according to the relevant national law.  If the use of someone else's trademark is just to make a visual joke or to sell the artist's own products, then that use is lawsuit bait, and the artist may very well be liable for damages.  And by the way, some companies are more determined than others when it comes to enforcing their rights. 

Of course, an artist's intent may be to transgress boudaries and challenge the law, but she should at least figure out where the line is before crossing it. 

Q.  And how should companies respond to unauthorized use of their trademarks by artists?

A.  As we've discussed, trademark holders are required to attempt to assert control over unauthorized uses, lest they lose their trademark rights entirely.  But for most holders of frequently copied trademarks, enforcement is a matter of allocating limited resources -- and managing public relations.  It's impossible to stop every counterfeit handbag seller on every street corner in the world, or to review every art school sketch to determine whether it's fair use.  Commercial sales in large multiples tend to make trademark lawyers see red; a one-off, transformative use may be worth only a shrug and a sigh. 

Q.  Who's going to win this case?

A.  That's a question for a Danish court -- although a settlement is still possible.  In the meantime, don't try this at home. 

Many thanks to Jenny Leugemors and Jayshree Mahtani, the first two to alert Counterfeit Chic to the story!

Via TorrentFreak.

April 22, 2008

The Mother of All Inventions

Katerina Plew claims to have had a less-than-uplifting experience with Victoria's Secret and its "Very Sexy 100-Way Strapless Convertible Bra."   According to a complaint filed yesterday in federal district court, the Long Island paralegal is the real inventor of the bra -- and Victoria's Secret has merely found 100 ways to infringe her patent.

Patent no. 189,672 from 1877While few fashion-related innovations qualify for patent protection, and the process of obtaining a patent is generally too slow and too expensive for those that do, women's foundation garments are among the categories of clothing for which protection has frequently been sought.  A successful new innerwear invention won't be "out" after one season, but will win customers -- and generate profits -- for years.  Thus over the past two centuries, the U.S. Patent Office has kept abreast of new form-fitting and figure-flattering technologies, from corsets to push-up bras.  Check out Theresa Riordan's illustrated history, Inventing Beauty, for more detail.   

If Plew's case goes to trial, Judge Laura Taylor Swain will have to navigate some tricky legal curves.  Counterfeit Chic suspects, however, that there will be no shortage of law clerks offering to review the evidence. 

In the meantime, some enterprising publisher has no doubt commissioned a future bestseller:  100 Ways to Unhook a Very Sexy Convertible Bra

Thanks to Andrew Wolinsky for the tip!

April 17, 2008

Couture in Court 7

For those who prefer briefs to boxers, a periodic collection of fashionable events in the judicial system:

U.S. Polo Association's double horsemen logo

Ralph Lauren's Polo pony

In court, the beauty biz can get ugly:

All that glitters may not be gold:

And maybe it's all the printed flowers springing up this season, but textile manufacturers seem particularly allergic to copyright infringement:

Finally, the most frequently mentioned "couture in court" over the past week was probably not the subject of a lawsuit, but the outfit worn by Harry Potter author J.K. Rowling as the plaintiff and star witness in a copyright action.  The New York Times described her ensemble unusually as a "black dress and pinstriped suit," the New York Post as a brown pinstriped suit accessorized with a charm bracelet of the author's own literary characters, and Portfolio.com as a "simple grey pinstripe suit."  Maybe it's a trick of the light, or maybe Ms. Rowling has cast a confundus charm on the assembled reporters.  But if the evidence in the case is this conflicting, it's no wonder the judge has suggested that the parties settle. 

J.K. Rowling

Thanks to Amal Bouhabib for noticing the fashion law reportage!

April 11, 2008

Stars and Stripes Forever

European fashionisti are buzzing about yesterday's European Court of Justice decision in favor of adidas and its famous 3-stripe logo. 

The German athletic apparel giant sued several competitors, including H&M, in Dutch court, alleging that their use of 2-stripe designs constituted trademark infringement.  Before ruling on the infringement question, the Dutch court asked the ECJ whether apparel designers' general need for access to such a basic design element -- stripes -- could be taken account in the infringement case. 

The ECJ's answer?  No.  Infringement is determined by whether there is likelihood of consumer confusion between the adidas mark and its competitors' versions.  If there is a clear connection in the public's mind between 3 stripes and adidas -- and there is -- arguments about the need to preserve general access to stripes are irrelevant.  The case will now go back to the Netherlands to allow the court to conduct a standard consumer confusion analysis. 

Wait!  Does that mean that no designer can ever again use 3 stripes, or 2, or 1 for that matter? 

Balenciaga Fall 2007No, not really.  Designers use stripes all the time without arousing adidas' anger -- take a look at this Balenciaga jacket from Fall 2007, for example.  So long as the stripes don't confuse the public as to whether the item is an adidas product, no problem.  And since adidas sells very few USD $2,000+ blazers in exclusive department stores, this isn't likely to become an issue.  As the company noted in a press release, "We do not seek to prevent the use of decoration, but the use of striped markings that confuse consumers, or cause them to make a link with our company and its famous trademark."

Presumably the military won't have to abandon sergeants' stripes, either.

Still, at least direct competitors in the sporting goods arena are likely to avoid striped logos going forward.  Could companies monopolize other basic design elements?

Don't panic yet.  A decade ago, Converse and the Dallas Cowboys famously sparred over a star, another basic design symbol that each was using as a trademark.  They both still own multiple registrations for a five-pointed star, albeit on different goods -- the football team doesn't seem to be in the shoe business.  And neither seems too concerned about YSL's spring accessories collection.

Converse (left) and Cowboys

YSL Spring 2008

The bottom line is that yes, a company's registration of a basic design as a trademark will create limitations on others' use of that symbol in ways that might be interpreted as indicative of the source of the goods.  But use of stripes or stars as mere decoration is fine unless consumers get confused. 

Most companies, moreover, don't select basic symbols standing alone as their logos.  Why?  Because it's too much work to create an association in the consumer's mind between parallel stripes or a single star and the source company.  It's much easier to just write your company name on the product and be done with it. 

The adidas case presents an interesting issue -- but not an immediate threat to the basic vocabulary of design.  Anyone attempting to imitate adidas' 3-stripe trademark, however, may find himself wearing prison stripes instead. 

P.S.  For more on law & stripes, click here.   And if you're a sneaker fan, don't miss the new book on Adi and Rudi Dassler and the fraternal feud that gave the world adidas and Puma.   

February 17, 2008

Edible Briefs

Clad only in a hat, boots, tight white briefs, and a strategically placed guitar, the Naked Cowboy is a must-see attraction for visitors to New York City's Times Square.  But when Mars, Inc., paid homage to the street performer's star power by dressing a blue M&M in his signature costume for a video billboard, the Naked Cowboy, a.k.a. Robert Burck, was not amused.

According to a $6 million lawsuit, the candy company appropriated Burck's likeness without permission and without offering compensation.  Not surprisingly, the video disappeared from public view almost immediately.  If Vanna White can invoke her rights of publicity under California law to prevent Samsung from using the image of a robot in a blonde wig and evening gown in an ad, then surely Burck -- who apparently makes quite a good living as a street performer and is available for corporate appearances -- can prevent an animated chocolate candy from stealing his schtick. 

The M&M meltdown is just one more reason why ad agencies should run their clever references by legal before making them public.  Counterfeit Chic must applaud one element of the ad, though:  the color choice.  I'd turn blue, too, standing outside dressed like that.

Thanks to Kate Moore for the tip!

February 06, 2008

A Call to Arms: Marc Jacobs Involved in Bribery Scandal

A bribe or a business expense?  The answer often depends on the cultural context. 

When it comes to alleged payments by Marc Jacobs International to secure prime show space at the 69th Regiment Armory during New York Fashion Week, however, Attorney General Andrew Cuomo's position is clear.  A deliberately timed 31-count indictment, 24 counts of which involve Marc Jacobs, claims that since 2000 former Armory superintendent James Jackson solicited a total of more than $30,000 in illicit gifts, including money, computers, and exercise equipment, in exchange for facilitating use of the landmark building.  The official daily fee for use of the Armory is approximately $6,000. 

While Marc Jacobs' elaborate show will go on -- it's one of the hottest tickets of Fashion Week, after all -- the AG has not ruled out bringing charges against Marc Jacobs International or its powerhouse PR and production firm, KCD, which allegedly paid the bribes.

Should you be one of the lucky ones with an invitation to the Friday evening event at the Armory, consider taking along a book for the inevitable wait.  Counterfeit Chic suggests Bribes, a an in-depth historical review by Judge John T. Noonan, Jr., unfortunately out of print but still available used.  In some cases and places, bribes are even tax deductible -- though Marc Jacobs probably shouldn't claim a refund just yet. 

69th Regiment Armory

January 29, 2008

Couture in Court 6

For those who prefer briefs to boxers, a periodic collection of fashionable events in the judicial system:

DVF spotted frog design (left) and alleged Target copy

Thanks to all who wanted to make sure Counterfeit Chic didn't ignore DVF's latest salvo!

Stuart Weitzman Chitchat (left) v. J.C.Penney Miss Bisou Sydney

No, that's not all -- there's plenty more Couture in Court below the jump. 

Continue reading "Couture in Court 6" »

January 19, 2008

Judging a Rolex

Tune in as Judge David "Justice with a Snap!" Young decides a case involving a Rolex that may or may not be the real thing. 

 

The judge even has a few words of wisdom for the courtroom -- and notes that "in New York, Rolexes are a dime a dozen." 

And the streets are paved with gold, too. 

January 08, 2008

With Gently Smiling Jaws

Did you ever set out to go shopping for a polo shirt and accidentally wind up at the dentist?  No?  That's what I thought -- and that's what a U.K. court concluded in determining that the logo of a dental practice did not create a likelihood of confusion with respect to Lacoste's famous crocodile.

Click here for the opinion, which includes such gems as the following:

I am not convinced that the average consumer would want to share the characteristics of reptiles but to the extent that they are known for having many functional, perhaps even efficient, teeth, the use of a reptile has what may be considered desirable associations with dental services.

But why would an apparel giant bother to sue a bunch of dentists?  Well, with all due respect to our friends across the pond, these are British teeth we're talking about.  Enough said.

December 26, 2007

Not-So-Lucky Clover

Van Cleef & Arpels' vintage four-leaf clover design, known as the "Alhambra," has proven lucky for the jewelry giant -- and, until lately, for many others as well.  In October, New York Times reporter Alex Kuczynski wrote a feature on the popular style, noting:

Knockoffs are rampant. A New York socialite I know had her Alhambra necklace made on 47th Street for a quarter of the retail price. Heidi Klum appropriated the clover design for the jewelry she designs for Mouawad, and Web sites such as Overstockjeweler.com offer copies for $180.

Even the usually skeptical writer herself succumbed to the design's allure -- albeit in the form of a cheaper knockoff. 

Van Cleef, however, is not flattered.  In the latest in a series of legal actions against various alleged copyists, the company has sued both Heidi Klum's eponymous company and Mouawad.  (Complaint to follow, along with any eventual answer -- which will presumably claim that the design is generic.) 

Van Cleef & Arpels (left) and Heidi Klum for Mouawad (right)

There may yet be hope for a reconciliation between wealth and beauty, however.  The jewelry company and the supermodel have a common adversary in OverstockJeweler.com -- which has copied them both

Via Blogging Project Runway.

UPDATE:  Here is the complaint.

December 23, 2007

Irish Eyes Aren't Smiling

A striped shirt made history last week.

Of course, it wasn't just any striped shirt.  It was a shirt by British designer Karen Millen that, along with 2 other items, became the first article of clothing subject to a decision regarding infringement under the E.U.'s 2002 unregistered design right regulation.  Irish High Court Justice Mary Finlay Geoghegan found that the defendant, Dunnes Stores, had copied the 3 garments and rejected the defense's argument that the KM shirts and sweater lacked "individual character" and failed "to produce on the informed user a different overall impression" from other similar garments.  In reaching her decision, the judge said that the court would take into account the color, texture, and material used in the designs.

Karen Millen-Dunnes Stores shirt comparison 

Despite the significance of the case and the E.U.'s treatment of fashion as equivalent to other objects of design, the press couldn't resist making light of the subject matter or the attorneys arguing over it, including former Irish Justice Minister Michael McDowell for the plaintiff.  An article in the Sunday Independent shortly after the trial noted:

Rarely have the fripperies of fashion been dissected with such gravitas in an Irish courtroom. Over four days last week, the middle-aged [male] barristers at times struggled to suppress their chuckles as they crossed swords over ribbed stitching, layered borders, sweetheart necklines and bust-hugging fibres. They did so in a court room littered with copies of Marie Claire magazine, door stopper editions of Vogue and expensive handbags.

And when the question of whether the KM designs were in fact sufficiently new to deserve protection arose, the judge had to remind the parties that the question before the court was not whether "hypothetical husbands" would recognize the difference. 

Still, in a battle between stuffed shirts, the new striped shirt carried the day -- at least in Ms. Justice Finlay Geoghehan's courtroom.

December 11, 2007

Cops and Robbers

Attention copyists:  You may find a warm welcome in the U.K. -- or in Kent, at least, where the good cops are also bad cops.  At least allegedly. 

Oh Baby London onesie - £21IP Kat reports that designer Hannah McHalick of Oh Baby London is suing the Kent Police over their use of the slogan "I've Been Inside for 9 Months" on baby clothes.  The police have responded that their product line is different because they use the word "I've" in addition to Ms. McHalick's claimed phrase.

While the Metro news article on the case didn't identify Oh Baby London's IP argument with any specificity, Jeremy Phillips at IP Kat doubts that the phrase in question would qualify as an original literary work under U.K. copyright law.  He also questions its use as a trademark.

But what if the case were considered under U.S. law?  While it's axiomatic that words and commonplace short phrases cannot be copyrighted, courts have occasionally found infringement in cases alleging reproduction of as little as a sentence fragment.  For example, there's Andreas v. Volkswagen of America, Inc., 336 F.3d 789 (8th Cir. 2003),  in which the voiceover of an Audi commercial, "I think I just had a wake-up call and it was disguised as a car and it was screaming at me not to get too comfortable and fall asleep and miss my life," was found to infringe the work of an artist who accompanied his drawing with the words, "Most people don't know that there are angels whose only job is to make sure you don't get too comfortable & fall asleep & miss your life."  So the Oh Baby London claim wouldn't necessarily be dismissed immediately, even if the majority of cases involving short phrases find that they are not in fact sufficiently creative to be subject to copyright protection.

Kent Police onesie £12And what about trademark, the natural IP home for short phrases?  I have to agree with Jeremy that there's some question as to whether Oh Baby London's "Been Inside for 9 Months" actually indicates to consumers the origin of the clothing, and thus qualifies for trademark protection.  Not every cute, marketable phrase is a trademark, in the U.S. or the U.K.  And yes, the phrase is descriptive -- or misdescriptive -- but of the baby, not the clothing.  Of course, all this might still leave Ms. McHalick with an unfair competition claim in tort law. 

And one other thing:  If Ms. McHalick is indeed successful in claiming protection for her clever turn of phrase, U.S. courts would be no more mollified than their U.K. counterparts at the Kent Police's addition of an "I've."

Whatever the outcome of the lawsuit, IP Kat is quite right that the cops in Kent need a bit of time on the inside...of an up-to-date legal hornbook.   

November 19, 2007

Oops! She Did It Again: Britney Spears' Flying Fake

What cosmic counterfeiting conspiracy has compelled mention of Britney on this page twice in a month?  It's a vision best avoided -- as is Britney Spears' 2005 video "Do Something," which features the singer and friends in a flying pink Hummer upholstered in Louis Vuitton Murakami cherry blossoms.  Counterfeit, of course.

A French court has levied a fine of 80,000 euros (nearly USD $120,000) against Sony BMG and its subsidiary Zomba Label Group, as well as MTV Online, which displayed the clip on its website.  In addition, the court ordered the video removed from distribution, including via the internet, with additional fines of 1,000 euros per day until the companies do so. 

At that rate, Britney could've hired Takashi Murakami to draw the flowers personally....

November 18, 2007

Couture in Court 5

For those who prefer briefs to boxers, a periodic collection of fashionable events in the judicial system:

Finally, in a bit of movie madness, Paramount Apparel is suing to defend its Big Chill mark against alleged infringement by The Children's Place.  An ordinary case involving kid's coats -- but with a cinematic twist.  

Paramount Apparel has no apparent relation to Paramount Pictures, despite its oh-so-subtle film logo.  And even if it did, The Big Chill was a Columbia Pictures production.  Pass the popcorn -- this could be interesting.

November 14, 2007

Twice Bitten: Louis Vuitton v. Haute Diggity Dog

Remember last year's dogfight between scrappy startup Haute Diggity Dog and pedigreed champion Louis Vuitton Malletier?  It turns out that not only did the trial court rule that the "Chewy Vuiton" [sic] squeaky toys were a protected parody, but the U.S. Court of Appeal for the 4th Circuit agrees (albeit with somewhat different reasoning). 

LV Cerises and Multicolore

Haute Diggity Dog parodies

Pamela Reeder, co-founder with Victoria Dauernheim of Haute Diggity Dog, was kind enough to take a break from celebrating and not only send Counterfeit Chic the much-anticipated appellate decision, but also share some fascinating details and personal observations about her brush with the law.  I'm almost sleep-typing at the moment, so to do the story justice I'll have to wait for another post. 

In the meantime, you might ponder Pamela's report that LV's creative director Marc Jacobs thought the "Bark Jacobs" toys were funny -- and that several orders were placed for his namesake boutiques.  The goods were returned when LV turned out to be somewhat less amused.  (Although I can personally confirm that LV lawyers can be charming individuals with fully functioning senses of humor, and probably even love puppies, protecting a famous trademark can be an unforgiving task, especially when the label's designer is a bit of a free spirit.)

$300,000 legal bill or not, Pamela would do it all again.  She even offered some wonderful thoughts about the U.S. legal system.  But despite her continuing admiration for Marc Jacobs (and the designer raincoat still hanging in her closet), she won't be carrying a Louis Vuitton -- real or fake. 

November 13, 2007

Try It Now: Tiffany v. eBay

Just in time for holiday shopping -- not to mention engagement ring season -- Tiffany has finally proceeded to trial against eBay, claiming that the "overwhelming majority" of "Tiffany" jewelry sold on the auction site is counterfeit. 

Should Tiffany be responsible for monitoring sales and reporting fakes to eBay?  Or should eBay have to take a more active role -- or else be liable for damages, by analogy to a landlord who knowingly profits from illegal activities on the premises?  A bench trial in the Southern District of New York, presided over by Judge Richard Sullivan, is expected to answer questions pending since 2004, when Tiffany filed its original complaint.  But whether the judge is a fan of little blue boxes or of shopping victoriously, one thing is certain:  If and when he issues a decision, there will be an appeal. 

For more information and analysis, visit Peter Lattman at the WSJ Law Blog (original complaint & answer included) and Ron Coleman at Likelihood of Confusion (whose original analysis of the subject may have inspired Tiffany). 

UPDATE:  And for still more commentary, including quotes from your favorite law prof, check out Amy Scott's broadcast on Marketplace and Liza Casabona's analysis in WWD.  Thanks for calling -- and for talking to me in transit, between Amtrak announcements!

October 07, 2007

OJ Did It! Simpson Caught Wearing Fake Rolex

For O.J. Simpson, law and fashion are a lucky combination. 

When he was accused of killing ex-wife Nicole Brown Simpson and her friend Ron Goldman in 1994, the criminal jury found him not guilty, despite evidence including a bloody size 12 Bruno Magli footprint and a suspicious pair of Aris Light gloves.  Defense lawyer Johnnie Cochran made headlines with the glove found at the scene of the murders, infamously telling the members of the jury, "If it doesn't fit, you must acquit."  They did. 

O.J. didn't fare so well in a civil trial, in which the Goldman family was awarded USD $33.5 million -- which they have yet to collect.  The tide seemed to be turning for the Goldman family recently, when a California judge ordered OJ to turn over a gold Rolex Submariner watch (among other things) in partial settlement of the judgment.  The value of the watch, which O.J. had been spotted wearing in a photo on TMZ.com, was between $12,000 and $22,000.  Or so the Goldmans thought.

It turns out that the watch was a fake, worth about $125. 

The judge has since ordered the watch returned to O.J.  -- but why not sell the fake anyway?  After all, its celebrity associations are sure to draw interested bidders, and the Goldmans' lawyer has already received a $10,000 offer. 

Unfortunately for the Goldmans, the judgment exempts jewelry worth less than $6,075.  Simpson's lawyer successfully argued that allowing the sale of the watch at a higher price would create a precedent under which the Goldmans could attempt to seize any number of trivial items belonging to O.J. on the theory that they could be sold at a significant markup. 

Not to mention the fact that selling a counterfeit -- even one clearly acknowledged as such and sold as a pop culture artifact rather than as a substitute for a real timepiece -- is a crime.  Of course, O.J. can't sell the watch either, but in the U.S. it's perfectly legal to own a fake. 

At least the case has left us with one new legal rule:  If the watch is fake, you cannot take. 

October 01, 2007

Couture in Court 4

For those who prefer briefs to boxers, a periodic collection of fashionable events in the judicial system:

Willie Nelson middle finger t-shirt

Posh-Life Chanel cel phone plates

And finally, have you ever wondered why women's clothing, accessories, and even dry cleaning costs are often more expensive than men's, even for relatively generic, unisex-styled items -- despite the fact that women's apparel includes on average less material?  If so, you might actually enjoy this tariff case.  Yes, the percentages are strangely unequal, but this time it's the men's version that suffers.

September 20, 2007

Zadig & Voltaire Tee'd Off at Gap

Within global fashion community, the U.S. is notorious for permitting design piracy.  Has one of America's most recognizable brands now attempted a daring raid in foreign waters?

French label Zadig & Voltaire has sued Gap, Inc., for allegedly copying Z&V's "Tunisien" T-shirt -- and selling it in Z&V's home market, where imitation is actionable.  The French style costs 79 euros (approx. USD $110) and the American version 29 euros (approx. USD $40). 

While a number of sources have reported the dispute, perhaps the most interesting is this one.  It reads like an internal memo from Gap, with headings including "situation," "objectives," "audience," and "tactics."  The "strategy" is to argue that "[n]ot once has Gap been in a legal copyright situation like this and we will use that in the press."  Hmmm.  The "timetable" is 3 days -- so look for a publicity blitz any minute now.

Pirate ship or battleship, has Gap sprung a leak? 

Many thanks to both the gracious Frederic Glaize of Le petit Musee des Marques and fashionable law student C. Pearson McGee for alerting me to the case! 

September 17, 2007

Couture in Court 3

For those who prefer briefs to boxers, a periodic collection of fashionable events in the judicial system:

Hochman (left) v Forever 21

Weidman Anthropologie canvas bag

September 05, 2007

More Name Games: Joseph Abboud

In July, lawyers for JA Apparel fired a warning shot:  designer Joseph Abboud's noncompetition agreement had expired, and the company wanted to remind him that it owns his name.  Today's Wall Street Journal reports that JA Apparel is now taking direct aim, with a lawsuit charging both trademark infringement and breach of contract.  At issue is the designer's new line, "jaz," which he plans to promote with the tagline, "a new composition by Joseph Abboud."  Apparently this plan has struck a discordant note with JA Apparel.

Earlier post with more detail here; complaint to follow. 

August 29, 2007

Mad About Plaid

Not long ago, the phrase "counterfeit Burberry" was practically a tautology.  The brand's trademark nova check was copied on everything from cookies to credit card covers, and the pattern became so associated with chav culture that the company decided to downplay it for a while.

All is not quiet on the tartan front, however.  Another venerable outerwear company, newly rescued from bankrupcy by Iconix, has decided that a bit of plaid is just what it needs to become a "premier global lifestyle brand."  In London Fog's new ad campaign, trenchcoat-clad actors Kevin Bacon, Cheryl Hines, and Teri Hatcher flash their plaid linings in support of Bacon's charitable networking site, SixDegrees.org, and their own favorite causes. 

Burberry, however, is not amused.  In a complaint filed last Friday in federal district court, the British brand charged its American counterpart with not only infringing the iconic check but also imitating Burberry's products and ad campaigns and even lifting copyrighted images for use in advertising materials. 

Iconix responded with a statement denying the allegations and adding, "Plaid designs have been a common element of London Fog products for years." 

So, trenchcoats and tartan.  Hardly original works -- or are they?  As everyone from Victor & Rolf to Gaultier has proven, the humble trench can be the starting point for extraordinarily original garments.  While the Burberry trench is the cornerstone of the house, however, the classic version offered by both Burberry (left) and London Fog (right) is a standard fashion basic. 

What, then, of plaid?  How unique is the Burberry check?  It's certainly a registered trademark, and widely recognized as such.  Beyond that, I'll leave you to read paragraph 11 of the complaint for a detailed description or, if you prefer a more tantalizing tour of tartan, the forthcoming book from designer Jeffrey Banks.  With over 3,500 official Scottish tartans and a potentially infinite number of other plaids out there, what are the odds of the same one appearing twice -- even assuming there's some unofficial affinity between tartan and trenchcoats? 

One thing's for sure:  If Burberry and London Fog proceed to trial, that classic scarf at the bottom of your sock drawer could provide an easy escape from jury duty. 

Thanks to Sally and Anonymous for the tip!

August 23, 2007

Not-So-Heavenly Hosts

Gregerman angel - free with purchaseHow many angels can dance on the head of a pin?  Absent an answer from the medieval scholastics, one might ask the U.S. Court of Appeals for the First Circuit.

In Mag Jewelry Co., Inc. v. Cherokee, Inc., the court was called upon to decide a dispute involving ownership of an angel -- or rather, an angel jewelry design consisting of four stones and a ring.  (Isn't the human capacity for pattern recognition wonderful?) 

There's no question that defendant Target, the exclusive U.S. licensee of the Cherokee brand, and Target's supplier, Style Accessories, based their pendant design on someone else's angel.  The problem for plaintiff Mag Jewelry, however, was that Target's template wasn't Mag's copyrighted angel but the apparently identical design of a third party, Alan Gregerman -- a former supplier to Style Accessories. 

In other words, Gregerman theoretically had a case against Target and Style, but Mag Jewelry didn't, even though the Gregerman angel design (above left) and the Mag Jewelry angel design (below) appear to be exactly the same.   Why?  Because Gregerman claims to have created the design on his own, and true independent creation of even an identical work is not a copyright infringement; indeed, such independent creation will support a separate copyright.  Since Target's supplier had admittedly purchased Gregerman's design, it had no need to look to Mag's version when it decided to make copies. 

Why, then, didn't Mag Jewelry challenge Gregerman's unregistered design?  As it turns out, Mag Jewelry had done just that -- shortly after receiving its copyright registration in November 1995.  Gregerman responded that he'd actually been the first to create and market the angel design.  Mag and Gregerman ultimately reached an agreement under which both would continue producing the design "as copyrighted by Mag Jewelry Co."  In its litigation against Target, Mag attempted to characterize this agreement as a license to Gregerman, which Gregerman denied.  Mag also argued that the angels Gregerman sold to Style Accessories in 1997 and 1998 were of the Mag design rather than the Gregerman design, even though there's no apparent difference -- a claim that both the district court and the court of appeals seemed to find nonsensical. 

At the end of the day, the 1st Circuit affirmed the trial court's grant of judgment as a matter of law for the defendants and went a step further, reversing the trial court's decision not to award attorney fees.  So much for Mag Jewelry's guardian angels. 

Mag Jewelry angels $4.99

Counterfeit Chic is left to wonder, though, why Mag and Gregerman, as owners of identical designs, didn't just join forces against Target et al.  What kind of deal (if any) might the directly copied Gregerman have struck with Target?  And might a darker angel have been involved somewhere?

P.S.  The angel design at issue is not currently available on Target's website -- but perhaps this one represents its evolution?

Target angel $19.99

August 21, 2007

Couture in Court 2

For those who prefer briefs to boxers, a periodic collection of fashionable events in the judicial system:  

And finally, Counterfeit Chic finds purple dinosaur costumes are a fashion "don't," whether or not the charaters are legitimately licensed:

This Barney lookalike isn't a defendant -- but call the fashion police anyway!

August 10, 2007

Going Toe to Toe

Despite Tory Burch's lawsuit earlier this year, copies of her Reva ballerina flat (top) continue to proliferate.  From below left, check out versions from Wanted, Steve Madden, and Payless

 

Until recently Steve Madden also allowed online customers to design their own knockoffs, complete with several different choices of gold or silver metal disc.  Maybe they ran out of the ornaments -- or maybe they had second thoughts about stepping on Tory's toes. 

Continue reading "Going Toe to Toe" »

August 03, 2007

Couture in Court 1

Sharp-eyed readers may have noticed the dearth of cases in this week's Knockoff News, but Counterfeit Chic hasn't lost faith in the court system.  Instead, to highlight fashionable events in the judicial branch, there's a new feature in town:  Couture in Court.  If you prefer briefs to boxers, read on: 

And finally, the latest in a long-running, trans-Atlantic soap opera:

La famiglia Gucci has, of course, had a sufficiently colorful history to fill a book.  Literally.


August 02, 2007

Off With Their Heads!

Stories of private-label manufacturers appropriating designs or doing deals with competitors are quite common.  A complaint recently filed in Nevada offers a new twist, however. 

According to the allegations, wholesaler Shylaa Creations provided convertible dresses and skirts made from vintage saris to Instyle Trends, which sold them under its own label.  Instyle also photographed the items for a brochure, which Shylaa liked so much it wanted to use as its own.  Although Instyle denied permission, Shylaa went ahead and used the photos on its homepage -- after having first altered them by removing Instyle's marks, changing the coloring, and cutting off the models' heads.

Below is a sample of the photos filed with the complaint.  The first set is allegedly from Instyle and the second from Shylaa Creations.  Shylaa Creations does not concede InStyle's claim that its photos are slightly altered copies.  You decide.

InStyle / Shylaa Creations 

Perhaps Shylaa believed that it could avoid claims of copyright infringement by using only portions of the photos.  If the claims are true, however, heads are likely to roll. 

And if not, Ichabod Crane may have found his true love at last. 

UPDATE:   Defendant Shylaa Creations' attorney does not wish Counterfeit Chic to report the above allegations, which are contained in a federal complaint.  As is apparent from the post ("According to the allegations...." "Perhaps...." "If the claims are true...."), Counterfeit Chic takes no position as to the allegations' accuracy. 

 I do, however, take a position on the legitimacy of reporting allegations of copying.   The post stays.  

July 28, 2007

Welcome, Independent readers!

What’s the advantage to creative designers of a legal system that protects not only trademarks, but also the underlying designs?  UK Independent reporter Susie Mesure reports on the results of recent actions by Jimmy Choo and Chloe against high street copyists.  The short answer: £££.  (That’s $$$ on this side of the pond – or would be, if US law recognized such claims.)  And yes, those quotes are from your humble blogger – thanks, Susie.

Interestingly, the article also notes that, according to a survey by the law firm Davenport Lyons, only 39% of consumers believe that lookalikes or knockoffs harm the original brands, as opposed to 55% who recognize harm from fakes or counterfeits.  Then again, 33% of women lie about our weight, too.

Jimmy Choo originals

July 26, 2007

Topped Out

Topshop refuses to get its knickers in a twist over Chloe's allegations that the mass market retailer knocked off a dress from the See by Chloe line in violation of UK law.  Instead, British Vogue reports that Topshop has agreed to take the remaining dresses out of stores and to pay Chloe more than £12,000 (over USD $24,500) – without admitting to copying. 

 See by Chloe (left, £185) v Topshop (£35)

Of course, with average sales of 30 pairs of knickers per minute, Topshop can afford to remain sanguine about the occasional legal challenge to its design tactics. 

July 18, 2007

Taking Sexy Back

Converse is no stranger to being copied, but this time the athletic shoe company is accused of walking all over someone else's rights instead. 

In a lawsuit filed on Monday, custom tattoo company Bloodrose claims that Converse infringed its copyrighted "Bishamonten Back" design (full version and detail, below),

 Bloodrose Bishamonten Back tattoo

by printing the one-of-a-kind design on a pair of its Chuck Taylor All-Star hi-tops.

Converse hi-tops 

The Bloodrose client/canvas is not identified in the complaint -- but it seems the jury is in for an eyefull. 

 

June 28, 2007

The Fix is In

Manufacturers must be delighted and discounters devastated by today's 5-4 Supreme Court decision in Leegin Creative Leather Products, Inc. v. PSKS, Inc. 

The much-awaited antitrust decision overturned 96 years of precedent that had treated as per se illegal vertical price restraints, such as an agreement between a manufacturer and retailers to set minimum retail prices.  Instead, courts must now apply a "rule of reason" on a case-by-case basis to determine whether or not such price maintenance agreements constitute antitrust violations. 

Leegin Creative originated as a dispute between a manufacturer of leather goods and accessories and PSKS, which operates a women's clothing store in Lewisville, Texas, "Kay's Kloset."  Kay's Kloset began selling Leegin's "Brighton" line of merchandise in 1995.  Two years later, the manufacturer instituted a minimum pricing policy that claimed to bolster the brand's image and to promote competition on the basis of quality and service rather than price.  In 2002, Leegin discovered that Kay's Kloset had been marking down the entire Brighton line by 20%.  When the retailer refused to abandon this practice, Leegin terminated the relationship, and PSKS sued.

Writing for the majority, Justice Kennedy, joined by Roberts, Scalia, Thomas, and Alito, cited a great deal of economic literature to the effect that price maintenance agreements between manufacturers and retailers can have either procompetitive or anticompetitive effects.  In other words, unlike certain classic horizontal combinations in restraint of trade, such as price fixing among various brands or geographical market division agreements, vertical price restraints do not necessarily harm the consumer.  In reversing and remanding the case, the Supreme Court directed the lower court to admit evidence regarding the effects of Leegin's policy.

Justice Breyer's dissent, joined by Stevens, Souter, and Ginsburg, did not dispute the essence of the economic data.  Rather, the dissent noted that the relevant precedent has been in place since 1911 and that economic arguments on both sides have been part of the antitrust literature for over half a century.  In Breyer's view, if such data has not been sufficient to convince Congress of the need to alter the law and there has been no dramatic change in circumstances, then the Court should respect the principle of stare decisis and resist the temptation to overturn well-established precedent.

After announcing the decision this morning, the Court recessed until October 1 -- giving the soberly clad justices ample time to hit Fourth of July sales before the effects of their ruling become apparent.  (Not to say that judicial robes can't be quite striking on occasion....)

SCOTUS 2007

UPDATE:  More analysis is available on the Antitrust & Competition Policy Blog.

June 26, 2007

Pantsed!

In truth, I am no fan of most dry cleaners.  I have long suspected them of being in league with the less savory elements of the garment industry, losing or ruining favorite items simply so that they will have to be replaced more often.  Why else would buttons so often be lost or smashed despite explicit requests to protect them, leather items returned with pins stuck through them, or shirts pressed with so much extra starch and so many strange creases that they resemble a grammar school papier mache project?  And that's not even considering the strange triangle-shaped rips, peculiar purple spots, and all the manner of colorful lint periodically added to previously respectable garments.  Or the environmental effects of all of those chemicals and plastic covers.  (My current dry cleaner is usually conscientious, if expensive, but even that organzation has been known to err.  The test is, of course, whether an error is quickly and professionally corrected.)

Judge Roy L Pearson JrThat being said, suing one's dry cleaner for USD $54 million over one pair of pants goes too far.  Certainly Judge Judith Bartnoff thought so, tacitly ruling yesterday that Judge Roy L. Pearson, Jr., was not so much saving the world from unscrupulous cleaners as making a mockery of the justice system with his extreme lawsuit.  Yes, his suit trousers were lost.  Perhaps they were also found -- unless the grey pair proffered by Custom Cleaners were merely a poor substitute, as Pearson claims.  Either way, settlement offers of $3,000, then $4,600, and finally $12,000 should have sufficed.

We'll have to take the court's word on whether the pants that Pearson refused to accept were his original pair or a not-so-clever copy.  But one thing is clear, with all due respect to defendants Soo and Jin Chung:  No reasonable consumer would ever believe that a sign reading, "Satisfaction Guaranteed," in a dry cleaning establishment is the real thing. 

Soo and Jin Chung

June 13, 2007

C & D

With prints back in fashion and knockoffs in the news, the fashion community has begun to keep an eye out for suspicious sartorial similarities.  Check out these contributions from nitro.licious, Fashionista, and Fashion Theory, respectively:

Anna Sui v Forever 21

Tibi v Mandee

Marc by Marc Jacobs v Forever 21

And now the legal question:  If the original dresses (left) were subject to design protection in the U.S., as they are in Europe and Japan and as proposed in the recently reintroduced Design Piracy Prohibition Act, would the copies infringe that protection?

Answer:  No.  The dress designs as a whole weren't copied; only the fabric patterns are the same.

Q:  So these copies are legitimate?

A:  No, I didn't say that.  If they're actually copies, they may very well violate the U.S. law as well as that of other countries.  The question is, which type of law?

copyrightEach of these fabric prints may qualify for copyright protection, in the U.S. and pretty much everywhere else.  That's how DVF could bring her much-discussed lawsuit against Forever 21.  New legislation won't change that in any way.  Just like images created with ink on paper or paint on canvas, prints created with dye on fabric are subject to copyright protection -- and have been under U.S. law for over half a century.

Much of the time, however, this copyright is held by the company that created the fabric, not the designer who created the garment.  Some designers sell a large enough volume and are successful enough to design their own prints on a regular basis, in which case the designer holds the copyright, but most designers simply purchase material from fabric mills.  If the order isn't large enough to be exclusive, this can result in 2 designers using the same fabric -- just as if 2 individuals went to the same store and bought a few yards each from the same bolt of fabric.  This isn't noticeable if the fabric is, say, black wool crepe, but printed cotton is another matter. 

If the prints on the left were created by the designers of the original dresses (presumably Anna Sui's claim, since she's brought a lawsuit against Forever 21), then the copies may very well infringe copyright.  If, however, the printed fabrics were simply bought from the same source, no problem.   Another possibility is that the fabric prints were copied but are in the public domain, like older vintage works -- again, no problem. 

Whatever the story with these particulalr fabric prints, the original garment designs cannot be protected in the U.S.  Of course, in these examples the garment designs weren't copied, so the question of infringment would in any case be limited to copyright in the fabric prints (or possibly patent, but that's another matter). 

designWhat design protection offers is the ability to protect not just the print, but the overall design of the garment.  The idea is to give fashion designers rights to protect their designs.  At the moment, fabric designers get protection in the U.S., while fashion designers don't. 

In other words, if our intrepid fashion bloggers are correct, then the copyists responsible for the images on the right aren't exactly legal luminaries.  They engaged in unauthorized duplication of the only protected part of the original dresses -- the fabric prints -- while ignoring the unprotected garment designs. 

Call in the lawyers -- it's time to send out the C&Ds. 

June 10, 2007

Initial Interest Confusion

If name is destiny, are initials almost as important?  Fashion house Yves Saint Laurent and Steven Lee of jewelry company Goldfinger Hawaii, Inc., seem to think so. 

The detailed and informative TTABlog reports that the Trademark Trial and Appeal Board, the appellate body within the U.S. Trademark Office, recently affirmed a refusal to register the SL mark on the left for jewelry, finding it confusingly similar to the YSL mark on the right. 

Need you ask Y?

Steven Lee's failed attempt to register his initials for jewelry is similar to another dispute over initials that was recently called to my attention by Professor Tony Sebok.  Chef-owner Daniel Boulud of, inter alia, db bistro moderne in Manhattan, objects to the name chef-owner Danny Brown's more recently opened restaurant in Queens, db Wine Bar & Restaurant.  While the dining scenes in the 2 New York City boroughs are worlds apart, that's not quite far enough to escape Boulud's vigilant legal team.

Does this signal a rapid depletion of initials available as trademarks within particular industries?  Will the 2- or 3-initial logo soon go the way of the 2- or 3-letter dot com domain names, long since snapped up by quick-thinking registrants and now generally unavailable?  Perhaps not, in world where interlocking Cartier CC's (left, but you knew that already) and Chanel CC's seem to co-exist peacefully.  (One does wonder if that were always the case, or if the same result would occur if a new CC logo for jewelry were introduced today.  Counterfeit Chic hastens to assure all concerned that this site does not have any plans to enter the business.) 

In each of the current disputes, the similar marks rise and fall not only on the selected letters but also their arrangement and appearance.  The YSL and SL marks are both vertically overlapped, and db marks both use lower-case letters.  While Cartier and Chanel both consist of back-to-back C's, they typefaces are quite different -- and again, long established. 

While it seems that initials will continue to be a fertile source of new marks, entrepreneurial parents might nevertheless be wise to choose unusual names and unpopular initials for their offspring. 

June 09, 2007

Wal-Mart Blinks

A year ago today, Counterfeit Chic noted that Fendi had sued Wal-Mart for allegedly selling fakes.  Wal-Mart denied the claims, and spectators took sides.  Was the world's largest retailer offering counterfeit merchandise, or was LVMH simply trying to protect the exclusive aura of its Fendi brand by keeping grey market goods (legit trademarked items intended for one market but diverted elsewhere) off of decidedly lower rent shelves? 

Two days ago, WWD reported that the discount behemoth and the luxury titan had settled the case.  Alas, the settlement is sealed, but it is acknowledged that Wal-Mart agreed to pay Fendi a confidential sum as part of the agreement.  Given the size of the parties and the sales volume at issue, the amount presumably wasn't sofa change.   

While the payment doesn't necessarily indicate wrongdoing on Wal-Mart's part -- sometimes it's cheaper to settle than to litigate -- other aspects of the parties' agreement point in the direction of the Fendis having been fake.  The bags are long gone from the shelves.  Moreover, Sam's Club, the Wal-Mart division that carried the bags, will send letters instructing customers how to return Fendi merchandise.  A Wal-Mart official even apologized to the company's customers (though not to LVMH):

Susan Koehler, a spokeswoman for Sam's Club, said Wednesday that its statement about Fendi products not being counterfeits "was made early on.  As the case evolved, we were provided additional information.  We want to try to communicate to our members our apologies.  We want to make this right." 

Rumor has it that teams of Wal-Mart employees will also be dispatched to wash the Fendi CEO's car and mow his lawn(s) for a year.

Seems that F really was for Fake at Wal-Mart!

May 21, 2007

Crimes of Fashion

Anna WintourDid former WWD reporter Peter Braunstein, currently on trial for sexually assaulting a co-worker, plan to top off a crime spree with a "copy cat" version of the murder of Gianni Versace -- targeting Vogue editrix Anna Wintour as his victim?  Apparently so, according to the testimony of psychiatrist William Barr, who addressed the issue of the defendant's ability to form intent

It almost makes one long for criminals who just copy handbags.

Closing arguments in the case are expected as early as tomorrow.

 

April 19, 2007

Gallic Court Galled by Galliano

John GallianoJohn Galliano, chief designer for Dior as well as for his own label, is an inspired sculptor of textiles -- but his creativity in the photographic realm has been called into question.

A French court ruled that a Galliano ad campaign copied the work of well-known US photographer William Klein, and the judge ordered the designer to pay 200,000 euros (approx. USD $275,000) in compensation. 

Galliano's lawyer contends that the ads, shot by Julien d'Ys and featuring model Agyness Deyn, did not resemble images from Klein's original work and thus should not be considered copies.  The appearance of the ads, however, apparently mimicked Klein's "painted contacts" technique, in which black-and-white photo contact sheets are blown up and marked with enamel paint in primary colors to highlight the images.  Klein developed the style over 15 years ago, and his work was the subject of a 2005 retrospective at the Pompidou Center in Paris, where both parties live and work. 

Both sides are likely to appeal.  

Would a similar ruling result under US law?  Not exactly, since 25% of the award was reportedly for damages to the reputation of Klein's work, a moral rights claim that would have little resonance in American jurisprudence.  Copying the recognized style of another artist, however, recalls the case of Steinberg v. Columbia Pictures, 663 F. Supp. 796 (S.D.N.Y 1987), in which a federal district court found that a movie poster imitating the style (and some of the substance) of a well-known New Yorker magazine cover was an infringement of copyright.  Although the Galliano ads are not alleged to have reproduced specific scenes from Klein's work, the photographer's style alone is highly recognizable.  Even if an unsympathetic court might dismiss the technique as an unprotectable "idea" under copyright, a colorable trade dress or unfair competition claim might stand.  After all, Klein learned of the ads when a friend saw them and asked why he'd (apparently) done such poor work for Galliano. 

The moral of the story:  Unless you're looking for a fight, don't advertise original work with knockoff images.  At least not in French Vogue. 

A William Klein original

Thanks to Nancy Prager, Esq., for the tip -- and don't forget to check out her blog!

UPDATE:  Le Monde's detailed report of the case, courtesy of Alain Coblence.  Merci!

March 29, 2007

Seeing Double?

No, your eyes aren't deceiving you.  On the left, Diane von Furstenberg's "Cerisier" dress.  On the right, Forever 21's "Sabrina" dress.  And connecting the two, the lastest lawsuit filed by DVF in her comprehensive campaign against copying

DVF v Forever 21

But since dresses aren't subject to copyright protection, on what grounds does the designer make her claims?  The solution is in the details...of the fabric.  While the Copyright Office does not accept registrations for garments, it does register textile patterns.  In the case of the Cerisier dress, DVF holds not one but two copyrights, the first for the "Flower Lace Border" design and the second for the "Small Dentelle" design.  Together, they add up to a substantial claim for protection.  For good measure, the complaint also throws in federal and state unfair competition claims.

If these were little black dresses, this lawsuit would never have been filed.  The same goes for ordinary polka dots, gingham checks, or any other fabric design in the public domain -- even if the dress design had been extremely complex and original.  But ever since U.S. courts finally realized that the distinction between ink on paper and dye on fabric was untenable, textile patterns have been part of the subject matter of copyright. 

So while the current resurgence of prints in fashionable spring wardrobes may not be the direct result of intellectual property protection, the trend certainly has fans among legal types.  Who knows?  Perhaps paisley-print business suits are next. 

Kudos to the New York Post for its well-illustrated article, and to both Will Tennant and Debra Rivera for passing it on.

March 12, 2007

Presidential Power

CFDA President Diane von Furstenberg has declared war on counterfeiters and copyists of her signature wrap dresses and other designs, according to WWD:

"I want to say, 'Beware,'" von Furstenberg said, her voice firm, in an exclusive interview.  "There is no money, there is nothing that will stop me from going after you."

The designer's intelligence operatives in this campaign include would-be DVF customers who are tricked into buying fakes (mainly by online sellers) and who first alerted her to the problem.  She has since created an email address for such reports, stop@dvf.com.  In addition, the company allows customers to send in dresses to ascertain whether or not they are genuine, a particular problem with mid-priced merchandise like DVF's.

Although the commander-in-chief did not reveal the cost of the campaign, it's safe to say that her resources exceed that of many other designers.  Still, from DVF's perspective, a rising tide lifts all boats.  "I am doing it as myself and as the CFDA president and representative of my fellow designers."

Of course, going into battle requires a proper uniform -- perhaps the military-inspired DVF Utility (left) or Clive dresses?

February 08, 2007

Welcome ABA Journal Readers!

In the wake of questionable Coach handbags showing up on the shelves at Target last fall, Stephanie Francis Ward interviewed your humble blogger for an ABA Journal article on counterfeits' new frontier.  Were the bags in that case "gray market goods" -- legitimately trademarked items intended for a different market but diverted to Target -- or counterfeits?  Since the case settled, only Coach and Target know for sure.  But one thing is certain:  both trademark owners and large discount retailers will be keeping a closer watch on their supply chains to make sure that fakes don't creep in unannounced.

Thanks to Stephanie for the article, and to Todd Melnick for sending me the link!

February 07, 2007

Fun with Phonics

After researching the extent of Louis Vuitton's trademarks in China, a businessman there has succeded in registering "LOUYIVEITEN" and its equivalent in Chinese characters -- despite opposition from LVMH.  Wang Jun hopes to sell the marks to the French company for 120 million yuan (approx. 15.5 million US dollars). 

The registration raises questions about whether protection against trademark infringement extends to transliterations and homophones, an issue that will only increase in importance with the rise in global trade. 

Perhaps aspiring intellectual property lawyers should start polishing their skills at charades ("Sounds like...")

January 31, 2007

Purse Party Planners on Trial

Remember when police busted up parties because teenagers were playing their music too loud?  Now it's their moms who have to worry. 

A front-page story in yesterday's Washington Post reports that a father-and-son team are scheduled to go on trial today for supplying counterfeit purses to everyone from suburban hostesses to mall kiosks in the D.C. area.  Following up a tip from a purse partygoer who suspected -- shock! -- that $40 Prada bags and their ilk weren't exactly on the level , federal agents ultimately seized some 30,000 handbags from a Northern Virginia warehouse. 

Perhaps even more interesting were over 100 phony Kate Spade labels stashed in a desk drawer at the warehouse, waiting to be affixed to otherwise legally untouchable "generic" bags -- which may just happen to look exactly like the designer originals.  As the article notes:

Court documents say the Ohris were told by some malls to stop selling counterfeit goods but ignored the warnings. But Suzette Timme, general manager of the Fashion Centre at Pentagon City, where the family operated two kiosks, said mall security never noticed any problem.

"They were just selling generic bags with no labels," Timme said. 

Sounds like this time the authorities found the smoking glue gun.

Many thanks to both my former Georgetown law student Jacob Howley and my father for sending the story (told you I was a native Washingtonian!).

January 29, 2007

Ass Bite

Today's New York Times has annointed Levi's as "the most litigious in the apparel industry when it comes to trademark infringement lawsuits."  While I suspect that this dubious title may be contestable by any number of other companies, particularly were global legal activity included, Levi's does seem to be determined that its double-arc pocket stitching not become a generic inscription on competitors' backsides:

Robert Hanson, Levi's North American president, has a few choice words for alleged trademark infringers:

Instead of relying on Levi's designs for what he called a "running start," competitors should look for other devices that don't come remotely close to the Levi's trademarks," Mr. Hanson said.  "Be more innovative."

While some denim designers deny copying Levi's and characterize the lawsuits as a desperate effort to reinvigorate a tired company, others are bolder:

"Everyone is borrowing from them, it's inevitable," said Michael Silver, the founder of Silver Jeans, who has had several legal run-ins with Levi's.  "They should be happy that people are copying them," he said. 

Fashion designs themselves, of course, are not protected under U.S. law.  Even if they were, a basic idea like denim jeans would long since have been part of the public domain, as would any number of classic styles.  It seems, however, that in their zeal for copying, some clothing companies may be taking trademarks along with the designs to which they are affixed. 

It remains to be seen whether these alleged infringers have bitten off more than they can chew.

UPDATE:  You’ve just got to see The Trademark Blog’s ass-essment of this issue.  Indescribable—and NSFW!

December 17, 2006

On the Naughty List

'Tis the holiday season -- peace on earth, goodwill towards men, and all that.  Except in the Northern District of California, where Williams-Sonoma is suing Target for copying various holiday merchandise, including Christmas stockings. 

How many ways can one possibly portray Santa on a stocking?  Well, apparently quite a few -- none of which necessarily involves red-and-white gingham toes, an "undulating snow scene," and a pale blue sky with a smattering of snowflakes.  Williams-Sonoma claims trade dress protection in the design of its Pottery Barn brand stocking, below left, and argues that Target's stocking, below right, constitutes infringement.

So why don't the two home decor titans simply settle and let their lawyers go home to wrap presents?  Williams-Sonoma claims that this isn't the first time Target has celebrated a holiday by knocking off its designs (e.g. the Halloween "Scary Tree" votive candle holder, also part of the complaint).  In addition, Target is accused of trying to avoid responsibility by demanding indemnification agreements from its vendors -- even though Target itself allegedly controlled the designs.

Sounds like Cupid and the Easter Bunny had better watch their backs.

In the meantime, a word of advice to both Williams-Sonoma and Target from the fashion police:  Some things simply shouldn't be copied.  Not only because they are protected by intellectual property law, but because they're simply not attractive. 

Oh ho, you say -- so what's hanging by Counterfeit Chic's chimney with care?  A far more stylish alternative, of course. 

DCB Designs

Happy holidays!

November 29, 2006

Three Ring Circus

The Greatest Show on Earth doesn't clown around when it comes to its trademarks.  Yesterday Ringling Bros. and Barnum & Bailey filed a lawsuit in Manhattan's federal district court against cometics company Sephora and its parent LVMH for allegedly stealing the circus' famous slogan.  Will Cirque du Soleil be next to blow its big top over Sephora's holiday ad campaign? 

November 11, 2006

Further Ruminations

During the wonderful year I spent in Little Rock, Arkansas, as a law clerk to The Honorable Morris Sheppard Arnold, U.S. Court of Appeals for the Eighth Circuit, I learned a great deal about jurisprudence.  I also added a number of colorful new expressions to my vocabulary, including one of my favorites, "I [just about/haven't quite] chewed all the sugar out of that gum."  In other words, "I [have/have not] finished with that subject."

Judging by your emails, I haven't quite chewed all of the sugar out of the Chewy Vuiton [sic] case, a.k.a. Louis Vuitton Malletier SA v. Haute Diggity Dog, LLC.  In a decision handed down last week, the U.S. District Court for the Eastern District of Virginia (a.k.a. the rocket docket) granted summary judgment in favor of the defendant, a manufacturer of products for pampered pooches.  The line of dog beds and toys includes a number of humorous versions of luxury brands, including Furrari, Jimmy Chew, Sniffany & Co., Chewel #5...and, of course, the Chewy Vuiton "handbag" toys and beds at issue in the case.  (They're even labeled "parody items" -- probably a lawyer's idea.)

LV Cerises and Multicolore patterns

Haute Diggity Dog parodies

The court, in a "punny" opinion tailor-made for law school casebooks, analyzed claims of trademark infringement, dilution, counterfeiting, and copyright, concluding in each instance that either Haute Diggity Dog had engaged in legimate parody or Louis Vuitton had failed to make its case.  The most interesting part of the opinion, legally speaking, is that it is the first case to address the Trademark Dilution Revision Act, which became law on October 6, 2006. 

In trademark law, the basic standard for infringement is "likelihood of consumer confusion."  Just like famous people, however, famous trademarks are surrounded by additional security.  If a trademark is famous, e.g. Louis Vuitton, the trademark holder need not prove a likelihood of confusion, but only (under the new act) a likelihood of dilution.  This dilution may take the form of making the famous mark less distinctive because there are so many other similar marks out there (dilution by blurring) or harming the reputation of the famous mark by associating it with certain other goods (dilution by tarnishment). 

The Trademark Dilution Revision Act in some ways makes life easier for the owners of famous marks, who now need only prove likelihood of dilution rather than actual dilution, but it also clarifies a number of "fair use" exceptions to infringement.  Among these fair uses is parody, which essentially takes legal notice of our collective sense of humor.  

Although Louis Vuitton brought its action against Haute Diggity Dog well before the new law took effect, it requested an injunction against sales of Chewy Vuiton merchandise.  Since an injunction by definition affects future rather than past action, the court concluded that the new act should apply -- and thus based its analysis of trademark dilution (including the parody defense) on new rather than old law. 

Although a parody defense can be enough to drive a trademark owner barking mad (OK, tried to resist; couldn't), it is based on the fact that our cultural referents are often commodified.  We no longer sit and tell stories around the fire; we sit around watching programs and ads on television (which Marshal McLuhan reportedly called "the campfire of the global village").  If Louis Vuitton has become cultural shorthand for high-end luxury goods, it's no wonder that the owners of cultivated canines are amused by the recursive reference. 

Does that mean that LV can't protect its trademarks against blatant copying or individuals who are simply trying to trade on the famous name?  Surely not.  But if an allegedly infringing copy makes the judge laugh, things don't look good for the trademark owner.

October 30, 2006

What Would Schiaparelli Do?

Step aside, Miss Manners -- the European Court of Justice isn't convinced that matching one's handbag to one's shoes is a fashion necessity. 

In the words of a trademark judgment handed down by the court of first instance and affirmed by the ECJ:

[T]he applicant has failed to demonstrate, during either the proceedings before OHIM [Office for Harmonisation in the Internal Market] or those before the Court, that this aesthetic or subjective complementary nature has reached the stage of a true aesthetic "nececessity" in the sense that consumers would think it unusual or shocking to carry a bag which does not perfectly match their shoes.

And lest there be any confusion, the court futher noted that handbags and shoes have different purposes, "shoes being used to dress feet and bags to carry objects."  All Counterfeit Chic can say is that it's a good thing we have highly trained legal professionals writing these opinions.

And yet...what would the fabulous mid-twentieth-century couturiere Elsa Schiaparelli have to say about such a narrow sartorial mindset?  Consider the visual evidence:

And the more recent creations of Tinuola Arowolo: 

Clearly shoes are far more versatile than the distinguished members of the court have opined!

Hat tip:  IP Talk

October 16, 2006

More to the Story?

Was Wal-Mart's manager of luxury goods for its Sam's Club chain, Dee Breazeale, dismissed as a result of the allegations that some of the retailer's "always low prices" were slapped on fakes masquerading as Fendi?

Or did it have something to do with the fact that Wal-Mart had named Dee to serve on the advisory council to the National Gay and Lesbian Chamber of Commerce, provoking criticism from conservative consumers?

Presumably there's a great deal more to the story than has been reported thus far, but Wal-Mart should take note that neither cheating customers nor engaging in employment discrimination makes good (fashion) sense.

October 07, 2006

Passing the Smell Test

While Dutch and French courts have flirted with the idea of copyrighting fragrances (see here and here), England is having none of it.  In a decision handed down Wednesday, a London court confirmed, "It is common ground that it is not an infringement of copyright in the United Kingdom to manufacture a perfume that mimics the smell of a successful fragrance."  (A scent can in theory, however, be protected as a trademark under U.K. law.)

Cosmetics giant L'Oreal nevertheless succeeded in some if its trademark infringement claims on the basis of the smell-alikes' packaging and use of the plaintiffs' trademarks to compare the original and knockoff products.  Bellure NV, the first named defendant in the case, informed the court that it has ceased trading after losing similar cases elsewhere. 

Olfactory creativity, it seems, is best protected by its visual and verbal avatars.

September 14, 2006

Loose Threads

Logo

Is the sweet little grey-haired lady with the embroidery sitting on her lap somebody's dear old granny -- or is she a software pirate?

Perhaps both, according to the Embroidery Software Protection Coalition

Before the internet era, those talented with a needle and thread often bought designs from specialty shops, transferred the outlines to fabric, and used intricate hand stitching to create finished projects.  Today, embroiderers often download designs to embroider by hand, or even use software and computerized sewing machines to execute their visions. 

The issue is that many of those designs are subject to copyright, as is the software.  So when granny shares her new embroidery pattern or software with her online sewing circle, she becomes a copyright infringer.  Similarly, if an ambitious embroiderer with a high-tech machine pays for a design and then whips up multiple copies to sell, she may be violating the terms of a license which allows personal use only.

The Embroidery Software Protection Coalition has a point -- but it's sharp enforcement efforts have drawn criticism.   It is alleged that the Coalition has not only targeted those who distribute copyrighted designs or design software without authorization, but also those who have purchased the designs without realizing that there may be a copyright infringement question or who have distributed public domain works.  In addition, the Coalition has threatened to sue online protesters for defamation, even going so far as to send a subpoena to Yahoo in an attempt to identify the members of one online embroidery forum.  Enter the EFF, which successfully defended the right to stitch and bitch anonymously -- for now. 

Keep your thimbles ready, folks.  The music industry's enforcement efforts against college students are one thing, but those little grey-haired ladies are tough customers.  There will definitely be some pricked fingers before this one is over. 

Many thanks to friend and computer guru Rich Schinnell, who sent me this link earlier in the week.  (Yes, Rich, this is a real copyright issue, even if it the ESPC's demands for payment may make it look like some kind of shakedown.)  Today's Wall Street Journal also has an article on the dispute. 

September 04, 2006

School of Hard Knockoffs

When Gerard Murray founded the urban sportswear company School of Hard Knocks, he didn't expect it to become a multimillion-dollar empire.  He probably also didn't expect one of life's hard knocks to come in the form of knockoffs. 

Murray, pictured below in a Network Journal profile from 2003, wears a T-shirt with his company logo:

And here's a version from Target, imported by Multinational Trading Co., with the same theme but a more Ivy League vibe:

SOHK Sportswear has filed a complaint alleging that Target's T-shirts infringe SOHK's trademarks and violate New York state law.  While SOHK presumably doesn't claim to have coined its trademarked phrase, it has been in the apparel business under the same name for 13 years.  And now it intends to take the retail giant to school. 

August 21, 2006

MaXXXimum Confusion

Some defendants are accused of counterfeiting clothes, others are accused of counterfeiting their absence.

From the same federal district court in Florida that brought you Hooters v. Winghouse comes a lawsuit by laddie magazine Maxim against the unaffiliated Maxxim Men's Club and Steakhouse.  Typical trademark litigation to be sure, but the claim that the magazine's trademark and Dennis Publishing's reputation have been harmed by association with an establishment in which "female employees perform lewd and sexually explicit dances" strains credulity.  Confused?  Check out Maxim magazine's online "Girls of Maxim" page, which includes more than a few pole-worthy poses.

The real story lies in not only in the newsclip by WWD, but in the details reported by the Tampa Bay Business Journal.  Apparently Dennis Publishing has pending trademark registrations for restaurants (including Maxim Steakhouse), nightclubs, and entertainment service (including Club Maxim).  A profit maximization strategy indeed -- though I suspect that Maxim Stripper has little to fear, for now. 

August 09, 2006

Oxes Gored?

Some lawsuits are fought in court, others in the gossip columns. 

The New York Post's Page Six reports the following today:

Old Navy had better go to battle stations. A Baltimore punk band, Oxes, claims the kitschy clothing chain owned by Gap Inc. ripped off one of its concert fliers to use on a T-shirt sold in Old Navy stores. "This is indefensible," said lawyer Carmen Giordano, who's filing a trademark infringement suit in Manhattan federal court today on behalf of Oxes, who have opened for Cheap Trick and the Breeders. "Old Navy has exploited their hard-edged image. The connection is completely contrary to their fiercely anti-establishment philosophy . . . and sullies their image." Old Navy did not return our call.

Adds Oxes' MySpace page, "Boycott Old Navy (if you feel like it)."  Now there's a battle cry.

July 20, 2006

Knight Errant

British luxury goods company Burberry may be working to change its checks, or at least downplay them, but its revived knight logo may be just as tempting to counterfeiters.

The Times (of London, not New York) reports that Burberry just accepted a $100,000 settlement from Marco Leather (of New York, not London), which had been selling counterfeits bearing both logos.  Rather boldly, Marco Leather had also filed a U.S. trademark application for a slightly modified version of the knight and had registered a U.S. copyright for an image of the knight superimposed over the check.  (Who exactly was giving the IP advice here?)  Under an order from the U.S. District Court for the Southern District of New York, Marco Leather must abandon the trademark application, transfer the copyright to Burberry, and refrain from any similar activities. 

Checkmate, Burberry.

 

July 13, 2006

Scents and Sensibility

Last month, Counterfeit Chic noted that cases in both France and the Netherlands had extended intellectual property protection to perfume, although the issue ultimately remained unresolved in France. 

In today's New York Times, Elaine Sciolino further explores two conflicting French decisions -- is perfume "a work of the mind" or not?  Is the creation a a new fragrance the result of a "simple implementation of expertise" or something more poetic?

"It's an extremely open and controversial question," said Catherine Verneret, the lawyer for Bellure, the company that lost in the L'Oreal case.  "Perfume is not only a simple aesthetic creation.  It is also an assemblage of molecules, a technical solution to a technical problem."

***

"When I write a perfume, the scents are the words," [perfumer Jean-Claude Ellena] said.  "And with these words I construct a story.  There is breathing, and there are transitions, just as in sentences.  Perfume, first of all, is a mental construction."

In reading the article, I wondered whether the courts in the divergent French decisions had been influenced as much by the facts and circumstances of the cases as by the copyright principle.  In the case won by cosmetics giant L'Oreal, the defendant was a perfume knockoff artist.  In the later case, a perfumer who had won an earlier case against her employer for wrongful dismissal unsuccessfully attempted to claim royalties for Dior's Dune, which she claims to have created. 

Do these cases represent a jurisprudential inquiry into whether an original fragrance may be subject to copyright, or a more instrumentalist protection of the industry?  Perhaps both, but the result so far is a lingering air of confusion. 

June 26, 2006

Copyright Nose No Limits

The name of a perfume is usually trademarked, the packaging may be protected trade dress, the text on the box may be copyrighted, and certain synthetic olfactory elements or even the bottle could be patented.  But the complex liquid inside the bottle -- the "juice" -- has usually been fair game for imitators.  Until now.

Back in February, a French court of appeal held that copyright law is applicable to fragrances.  The court found Dubai-based Bellure N.V. had copied a number of L'Oreal fragrances and ordered damages in the amount of 1.48 million euros.  (Merci to Kathleen Fasanella of Fashion Incubator for a heads-up on the case and to Pierre Breese of Chroniques de la propriete intellectuelle for most conveniently linking to the judgment.)  The decision relied on chemical analysis of the olfactory doubles, as well as the scent of the perfumes (yes, a smell test) and expert testimony.

L'Oreal won again earlier this month, this time before the Dutch Supreme Court.  That court also ruled that perfume could be subject to the same copyright protections as a work of art, ordering Kecofa B.V. to disgorge profits from its "Female Treasure," a knockoff of L'Oreal's "Tresor."  Kecofa, arguing that aromas are part of nature and should not be subject to IP protections, may appeal to the European Court of Justice. 

In the U.S. scents applied to other goods can serve as trademarks, and newly created or isolated aromas may meet the criteria for patent protection.  In order to maintain the distinction between useful inventions and literary or artistic works, however, copyright protection does not extend to either processes or useful articles -- and thus aromas that might be patentable are excluded from copyright protection.  Mere discoveries, e.g. natural scents, are not eligible for either patent or copyright protection. 

It remains to be seen whether the U.S. will follow the lead of the Netherlands and France and consider copyright protection for perfumes formulated by expert "noses," who choose among thousands of potential scent notes to create pleasing combinations.  Are perfumes more like recipes, which are generally unprotected (despite recent controversies), or musical compositions? 

For now, Designer Imposters and other imitators are safe under U.S. law.  But when in Europe, don't squeeze the juice. 

 

June 23, 2006

The Sweet Smell of Litigation

For a romantic interlude (or perhaps a provocative one), check out The Trademark Blog, one of Counterfeit Chic's perennial favorites.

June 12, 2006

Faux Fendi Finale

Wal-Mart isn't the only retailer that has been accused of selling faux Fendi bags of late.  In today's WWD there appears the following notice of a settlement between Fendi and Loehmann's discount department store, which was recently acquired by a government-owned Dubai firm:

Translated from legalese, placing this ad is the rough equivalent of saying, "Loehmann's got off easy -- but don't mess with Fendi or we'll turn you into a B bag." 

 

 

June 09, 2006

Is Wal-Mart Imitating Art?

There are many metaphors for happiness and true love, but perhaps none as trendy as a Fendi bag. 

On an episode of Sex and the City set in L.A., the sexual gourmand Samantha boasts of finding a fabulous fake Fendi, everywoman Carrie goes hunting for the perfect knockoff but ultimately decides that faux won't do, and aspirational Charlotte reveals the truth about her sexless honeymoon by bursting out with the memorable line, "My marriage is a fake Fendi!"  Ultimately Samantha gets SATC foursome thrown out of her idea of paradise -- the Playboy mansion -- by accusing one of the "bunnies" of stealing the bag.

As it turns out, Samantha may have been able to stay home and go to Wal-Mart.

Today Fendi, a division of LVMH, filed a lawsuit against Wal-Mart, alleging that the giant retailer has passed off counterfeit Fendi handbags and other products as genuine.  According to the complaint, Wal-Mart has never purchased products directly from Fendi nor sought to acertain the legitimacy of the trademarked items.  In one instance, a Wal-Mart Sam's Club store in Miami allegedly sold a black, logoed "Fendi" bag, retail price $930, for $508.25 -- a nice discount, but not a price low enough to make a consumer realize that she's not necessarily buying the real thing.

Who knew that Sam Walton was a SATC fan?

Sex and the City episode 44

P.S.  Are large, international retail chains the new battlegrounds in the anticounterfeiting crusades?  This isn't the first time that a division of LVMH has alleged that shady merchandise is for sale in otherwise well-lit venues. 

May 29, 2006

A Girl's Best Friend (or Faux)

Caution:  Bad lawyer joke ahead.

Q.  What's the difference between a lawyer and a pit bull?

A.  Jewelry.

OK, back to the intellectual property & jewelry issue.  If copyright law is supposed to protect creative works, shouldn't fine jewelry and costume jewelry receive the same treatment?

Not so fast.  The answer is yes -- but it took a couple of lawsuits by storied costume jewelry manufactuers in the 1950s to make that clear.  In Trifari, Krussman & Fishel, Inc. v. Charel Co., 134 F. Supp. 551 (S.D.N.Y 1955), the defendant argued that the copied Trifari pieces were mere "junk jewelry" and not subject to copyright.  The court disagreed with the contention that costume jewelry could not be copyrighted, citing the applicable regulation listing "artistic jewelry" among protectable "works of art."  The opinion continued:

Costume jewelry may express the artistic conception of its 'author' no less than a painting or a statute....  Simply because it is a commonplace fashion accessory, not an expression of 'pure' or 'fine' art does not preclude a finding that plaintiff's copyrighted article is a 'work of art' within the meaning and intendment of the Act.

Although the court focused on the copyrightability of costume jewelry generally, rather than on the distinction between precious gems and paste suggested by the defendant, this opinion was the first to clarify the status of costume jewelry under U.S. law.  A few years later, another court reached the same conclusion in Boucher v. Du Boyes, Inc., 253 F.2d 948 (1958).  Faux jewelry may be more democratic than its "real" counterpart, but it is no less an art form.

In fact, while costume or travel jewelry often imitates more expensive pieces, sometimes the tables are turned.  In his artistic memoir, Faking It, Kenneth Jay Lane offers several anecdotes about wealthy admirers of his costume jewelry who have had it copied -- in precious stones.  Apparently no legal action ensued.

May 26, 2006

A Girl's Best Friend

Diamonds may be a girl's best friend -- but when the girl is also a jewelry designer, copyright law runs  a close second.

A recent raid on several companies in New York's Diamond District resulted in the seizure of over 100 items alleged to be "substantially similar" to designs by Judith Ripka.

Lucky for Judith that she doesn't design clothes.  Why?  Because while the Copyright Office considers clothing to useful and thus excluded from copyright protection, jewelry is more like a sculpture or work of art -- and therefore copyrightable.  (No need to slap on a logo and turn to trademark law for protection, like clothing or handbag designers do.)

In the landmark case of Mazer v. Stein, 347 U.S. 201 (1954), the Supreme Court traced this protection for 3-D works of art, including sculpture, back to 1870.  Later Copyright Office regulations cited by the Court specifically included "works of artistic craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry...." (emphasis added). 

Of course, adding an adjective like "artistic" to describe copyrightable jewelry was an open invitation to argue about what is considered artistic and what isn't (with some interesting social class implications along the way) -- but that's a post for another day. 

In the meantime, enjoy your -- or Judith Ripka's -- copyright-protected bling!

May 24, 2006

It's All About the Clothes

Paul Noth, in The New Yorker, May 29, 2006, p. 47.

May 22, 2006

Costume or Clothing?

In this week's Carnivale of Couture, the clever Style Graduate seeks examples of runway looks that could double as Halloween costumes.  Or carnival costumes, for that matter. 

This topic appears on its surface to be an innocent amusement, and perhaps a bit of a joke about the extreme fashions shown on the runway.  But beware -- it also poses a conundrum that could overload the fevered brains of copyright afficionados.

Last year, in Chosun Int'l., Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005), Judge Guido Calabresi (former dean of the Yale Law School and my esteemed torts professor) addressed the question of whether Halloween costumes are subject to copyright protection.  In 1991, the Copyright Office had stated that neither costumes nor ordinary garments are protectable as a whole, since they are "useful articles," but costumes may also contain separable design elements that could be protected in the manner of artworks. 

While the lower court had thrown up its hands at the "incoherence" of such a policy and simply dismissed the copyright infringement claim, Guido sent the case back for a separability test -- asking the district court to decide, for example, whether the body portion of a costume was a useful article of clothing but the heads and tails were distinct elements that could be protected by copyright.  According to his decision, some elements of the costumes were at least in theory copyrightable.

So if a designer sends an outfit down the runway as part of a collection, but a blogger later decides that it is more suitable as a Halloween costume, are elements of the look copyrightable?  What if the look was never intended for production, but was a unique garment produced for the show?  And for that matter, what exactly does "useful" mean in the context of couture?  (Confusing?  Of course.  Legal minds are still scratching their heads over the meaning of usefulness, separability, and so on.) 

Halloween costumes can be scary.  In the world of Counterfeit Chic, the separability test in copyright is even scarier.

P.S.  My favorite candidate for runway-to-trick-or-treat fashion?  Yohji Yamamoto's 1998 wedding gown, a wonderful play on proportion as well as the relative significance of an actual bride in comparison with the social and cultural excesses of a white wedding.  Of course, it requires 4 men with bamboo poles to hold up the hat -- but what's a wedding without cute attendants?

May 18, 2006

Knockoff Nuptials

Ever since Queen Victoria married Prince Albert, Western brides have been opting for white wedding dresses -- and a vast industry is eager to oblige.  For the New York bride-to-be, and many others across the country, the epicenter of the bridal industrial complex is Kleinfeld's.  The wedding gown emporium recently moved from Brooklyn to Manhattan, prompting the New York Times to take notice and send in "Critical Shopper" Alex Kuczynski. 

Within the satin- and lace-covered retail acreage, the proprieties must be observed.  Among these is a rule intended to foil would-be copyists masquerading as customers:

As a grandmother fumbled hopefully with a camera, the bridal consultant approached and put a hand on her arm.

"No pictures," she said, her smile settling into a thin line of reproach.

That's right.  "The use of cameras and the sketching of gowns is prohibited at Kleinfeld," reads a placard in each dressing room.  "This policy is strictly enforced."

In the world of bridal gowns, which, year in and year out are basically long and white-ish, individuality is key.  And no designer wants a one-of-a-kind sample copied by the tailor down the street, who would probably do it for a cost many multiples less.

Like other items of clothing, wedding dress designs are not protected by intellectual property law.  One designer did manage to find a loophole, however.  In Eve of Milady v. Impression Bridal, 957 F.Supp. 484 (S.D.N.Y. 1997), Judge Shira Scheindlin granted a prliminary injunction against an alleged copyist of the distinctive lace designs on certain bridal dresses.  The reason?  While clothes are not subject to copyright, fabric designs are considered protectable forms of writing, and the court found lace patterns to be a form of fabric design. 

All in all, a civilized dispute resolution -- surely more so than some of those likely to take place this Sunday at Kleinfeld's annual sample sale.

May 04, 2006

Crocs Snap at Competitors' Heels

What is it about crocodiles and fashion wars?

For years, Lacoste and Crocodile International have been battling over their respective croc logos.

Now, Crocs, the latest so-ugly-they're-cool comfort shoe company, is suing 11 competitors who have copied its perforated, slingback clog design.  The colorful shoes, molded from a proprietary resin that boasts of being everything from non-slip to bacteria-resistant, were originally marketed as a boating/outdoor shoe and are now being worn by everyone from trendy teenagers to their grandparents

Naturally, imitation follows success -- but Crocs was prepared, having applied for a number of utility and design patents, four of which issued in February and March (check out the drawing from patent no. D517,789 below).  The market must love a good crocfight -- it responded positively to news of the lawsuits, which claim trade dress as well as patent infringement. 

Now we'll just wait and see whether the claims have any teeth.

April 28, 2006

More on a Big Challenge from a Petit Main

Several months ago, Counterfeit Chic noted a legal challenge to Chanel by one of its suppliers, the small knitwear company World Tricot.  In a reversal of Chanel's role as the outraged victim of counterfeiting, the couture house was charged with having stolen World Tricot's sample design for a white vest crocheted in a flower pattern.

The middle column of today's Wall Street Journal has an update on that case, which failed to settle through mediation as recommended by the judge.  Christina Passariello's WSJ portrayal is quite sympathetic to World Tricot founder Carmen Colle, a former social worker who established the business in 1987 in order to provide jobs for poor women and immigrant refugees in the French town of Lure.  (Think Project Alabama, with a European accent.) 

Win or lose -- a judgment is expected within a couple of weeks -- Ms. Colle's David v. Goliath challenge may have cost her the business.  Chanel, which in the 2004/2005 fiscal year provided 89% of World Tricot's business, has no plans to place further orders with the company, and other couture houses have backed away as well.  To date, Ms. Colle has been forced to lay off 20% of her workforce.  The WSJ reports: 

Suing the fashion giant "was a very difficult decision," says Ms. Colle, tearing up behind her gold-rimmed glasses.  "But if I don't fight, I'm just an accomplice." 

Undaunted, Ms. Colle has founded her own retail knitwear brand, Angèle Batist, which she shows during private viewings -- and apparently includes Senator Hillary Clinton among its clients.  Brava!

April 27, 2006

Taking Liberties with Libertine

Maybe Allen B. Schwartz just wants an award of his own.

The notorious knockoff artist appears to have a penchant for award-related apparel, most notably the gowns worn by Oscar-nominated starlets.  Now a lawsuit filed last week in federal court alleges that he has also copied the work of designers Cindy Greene and Johnson Hartig, known collectively as Libertine.  The company launched in 2001 and received widespread recognition in 2004 as one of ten finalists for the first CFDA/Vogue Fashion Fund award, which supports emerging designers.  Their label and a version from Allen B. Schwartz are below -- look familiar?

Of course, Libertine's creative approach to design has been mimicked before.  Their signature reworked garments, with distressed seams and sometimes macabre screen-printed graphics, seem irresistible to both consumers and copyists -- a problem when many of the items are intended to be one-of-a-kind.  Back in November 2004, Cindy and Johnson told Vogue that their low point in fashion was "being knocked-off by someone we thought was a friend."  Schwartz, by contrast, doesn't bother with such social niceties.  Here are more examples from the Libertine lawsuit, alongside their A.B.S. counterparts:

If life in the fashion lane were a Lifetime movie, we'd ultimately learn that Allen Schwartz was a frustrated, lonely child who never quite won the big spelling bee, was teased when he tried out for track, and had to wear a too-short tux to the prom (alone, of course).  Thus psychologically scarred, his character would've turned to a life of copying -- and legally mocking -- the winners.  Cue some actual creative expression, celebrated by all, and redemption would ensue.

In reality, he's probably just a guy who figured out that he could make a lot of money copying other people's designs on the cheap -- at least unless and until Libertine or the law finally catches up with him. 

P.S.  Note to Libertine:  Love the one-of-a-kind concept, really love it.  But it can lead to some strange consumer behavior as well.  Someone actually reached into my dressing room at Barneys while I was changing to try and grab a certain dark blue velvet blazer with frayed edges and a white cityscape printed around the hem.  Have you considered a diffusion line?

March 13, 2006

Do Unto Others

A foolish consistency is the hobgoblin of little minds,

adored by little statesmen and philosophers and divines.

--Ralph Waldo Emerson

Nobody could accuse these anti-copying copyists of philosophical consistency, foolish or otherwise:

La Bas bag from Neiman Marcus $550Luxury retailer Neiman Marcus is suing pet boutique Neiman Barkus for trademark infringement (hat tip to The Trademark Blog), while at the same time distributing mail-order catalogs that contain an obvious (albeit probably legal) Bottega Veneta knockoff (left). 

On the same day that the U.S. Congress passed a new anticounterfeiting bill, a sharp-eyed Counterfeit Chic reader noticed that the U.S. military daily Stars & Stripes was offering advice to servicepeople stationed in Germany on cheap fakes available across the Czech border.  (What happened to those allegations of fakes funding terrorism?)

And Finnish Minister of Culture Tanja Karpela, an anticounterfeiting crusader, was caught on camera carrying a fake Prada bag

I'm reminded of my years studying medival canon law (quite a switch to IP & fashion, but that's a long story for another day) and of a paper that I once wrote linking the "clean hands doctrine" back to the Fourth Lateran Council in 1215.  The clean hands doctrine basically states that if you approach a court asking for relief in equity, you'd better not be guilty of similar misconduct yourself -- or you've got some 'splainin' to do.  Today the doctrine is sometimes applied to actions involving the same set of circumstances -- e.g. the case of a parent who kidnaps a child and then asks for custody.  It would certainly be interesting, though, if a plaintiff suing for IP infringement or a nation demanding international enforcement on behalf of its own industries were vulnerable to charges that it had "unclean hands." 

Gotta love that Golden Rule!  (After all, metallics are once again "in" for spring/summer.)

March 03, 2006

Spring Break Trade (Un)Dress

Just in time for Spring Break, the 11th Circuit is preparing to hear an appeal from Hooters, which claims that rival sports bar/grill Winghouse has stolen its trade dress in the form of the infamous "Hooters Girl."  The venue?  You guessed it -- Florida. 

Below are the two tackiest pictures ever to grace the pages of Counterfeit Chic.  On the left, semi-clad in her white logo tank top and orange nylon running shorts, the Hooters Girl.  (Orange.  Nylon.   Shorts.  Need we say more?)  On the right, in a black logo tank top and running shorts, the Winghouse Girl

Hooters magazine #56

In order to prevail on its trade dress claim, Hooters would have to prove that (1) the Hooters Girl, the predominant feature of its trade dress, is "inherently distinctive" or has at least come to remind customers of the restaurant (has acquired "secondary meaning"), (2) the Hooters Girl is predominantly non-functional, and (3) that the Winghouse Girl is confusingly similar. 

According to the District Court, 347 F. Supp. 2d 1256 (M.D. Fla. 2004), the claim fails as a matter of law because the Hooters Girl in uniform is primarily functional.  And we're not talking about serving food and beverages.  The judge found that "the Hooters Girl's predominant function is to provide vicarious sexual recreation, to titillate, entice, and arouse male customers' fantasies.  She is the very essence of Hooters' business."  Must be the orange nylon.

The Hon. Anne C. Conway further noted that while servers in both establishments wear tank tops and shorts, "Hooters cannot monopolize this generic theme any more than an upscale steak restaurant featuring tuxedo-clad servers could preclude competitors from using the same or similar uniform."  (Thank you for the substitute image, your honor; we'll focus on the tuxedos instead.)  Thus the court concludes that "the Winghouse Girl, with her black tank top and black running shorts, is not a 'knockoff' of the Hooters Girl."

The disposition of this case on appeal remains to be seen.  Rumor has it, however, that a record number of judicial clerks have offered to review the evidence.

February 18, 2006

Crocodile Tears

What do you call a group of crocodiles?

If you're a zoologist, it's a "float."  If you're a lawyer, it's a decades-long, multinational trademark battle.

The right-facing croc on the bottom is the logo of the French fashion giant Lacoste (est. 1933), a familiar sight for preppy Western consumers.

The left-facing crocs on top belong to the Hong Kong company Crocodile Garments, which was founded by the brother of Singapore-based Crocodile International (est. 1947).  Under the terms of a 2003 settlement, Crocodile Garments will replace the croc on top with the one in the middle by next month, and will refrain from using the color green in its logo.  Lacoste, for its part, is legally in the right only so long as its crocodile faces right; in 2004 a Shanghai court invalidated its defensive registration of left-facing crocs in China after a challenge from Crocodile International.

Meanwhile, the popularity of the crocodile as an emblem continues:  Lacoste just reached another settlement that will require a new Chinese company, Zhejiang Crocodile Garment, to stop using another similar croc logo within three years. 

For the time being, Lacoste and the Crocodile brothers appear to be united in their desire to focus efforts on counterfeiting of all species of croc logos.  But don't expect peace to reign for long in the animal kingdom.

Now can we talk about global trademarks?

P.S.  Un grand merci to Frédéric Glaize of the fantastic Petit Musée des Marques site for bringing the battle of the crocodiles to my attention and forwarding a great Flickr picture taken in Hong Kong.   (Frédéric charmingly referred to me as a "professeur de droit passionnée par la mode" -- a description that definitely belongs on my new business cards!)

January 31, 2006

There Goes the Neighborhood

Canal Street in New York will no longer be a regular stop for tourists seeking to purchase fakes if Louis Vuitton's parent company, LVMH, has its way.  The legal strategy of holding landlords responsible for illegal activity that takes place on their premises has yielded another settlement, with a group of landlords last week agreeing not only to prevent sale of counterfeit Vuitton handbags but also to hang warning signs and to allow monitors access to the shops. 

While LVMH has not yet convinced American authorities to penalize the buyers of counterfeits, as French and Italian officials began doing last year, the luxury goods manufacturer certainly wants consumers to think twice.  Following the settlement, Nathalie Moulle-Berteaux, intellectual property director for LVMH's fashion group, said:

Those seeking to purchase counterfeit Louis Vuitton goods on Canal Street must now face the danger of following a stranger down a dark alley or stairway to a hidden room, which serves as both a deterrent to shoppers who fear for their safety and a strong reminder that the sale of counterfeits is a crime.

Interesting perspective for a company that spends millions of advertising dollars creating demand for limited-edition items among female consumers.  No word on whether LVMH will actually be posting scary-looking goons down those dark alleys to deter illicit sales.

P.S.  Thanks to the bloggers of ShangriLaw (esp. La Dulcinea), Blingdom of God, and Stereoette for sending me several links on the settlement last week, as well as two articles in the Wall Street Journal this morning! 

January 16, 2006

The French Paradox

Chanel is a major global brand.  It gets knocked off.  It doesn't do the knocking off -- except maybe it does. 

Chanel currently stands accused of counterfeiting, by one of its own suppliers.  In a French court last week, World Tricot claimed that Chanel had rejected a WT knitwear sample and then gone on to produce an item of the same design.  The president of WT spotted the item in question, a white crochet vest with floral and shell patterns, in the window of a Chanel boutique in Tokyo. 

Lawsuits between manufacturers and major brands are nothing new.  The brand name company might challenge the quality of certain items, the supplier might miss delivery dates, or an unscrupulous manufacturer might produce extra items and distribute them through discount channels.  But in those cases, legal action would be most likely initiated by the design house, not the other way around.

Chanel claims that the initial sample was created according to its own instructions, presumably implying that it owns the design.  The commercial court wasn't ready to make that determination, though, urging both parties to settle their dispute through mediation to avoid potential "indirect consequences to the profession."

Or maybe the judge just couldn't believe what he was hearing. 

December 27, 2005

Endangered Gators

Earlier this month Lacoste and the U.S. Marshal Service teamed up to conduct raids on 19 retailers and wholesalers across Puerto Rico.  The raids resulted in seizure of over $1 million in counterfeit Lacoste polos and other clothing -- and pending lawsuits against 27 defendants. 

Vacation advice?  Enjoy the beach; avoid the faux wildlife. 

Lacoste trademark

December 22, 2005

Project Copycat?

In Project Runway previews the past couple of weeks, the oracular Tim Gunn has admonished the competing designers, "Don't be copycats."  Apparently someone skipped kindergarten. 

Now some insist that Project Runway itself may be a knockoff.  Two separate lawsuits claim that ideas for "America's Runway" and "America's Fashion Designer Search," respectively, were pitched to defendants later involved in the development of Project Runway.

You can't copyright an idea, only its specific expression -- but it is alleged that the show is a bit too similar to the plaintiffs' pitches to be a coincidence.  But perhaps Heidi Klum et al. should be pleased.  Nobody ever sues a flop.

Developing....

December 19, 2005

The Case of the Brown Paddington

Kudos to The Bag Snob for calling attention to intellectual property law's nasty little secret -- the power of the cease and desist letter.

Apparently the intrepid handbag blog was at the epicenter of a dispute regarding whether online merchant Sophisticated Spirit sells fakes, in particular one chocolate Chloe Paddington bag much desired by Bag Snob reader "X." 

chocolate Chloe Paddington bag

After seeing photos, Bag Snob concluded that the bag was not genuine.  Sophisticated Spirit's lawyer responded with a C&D letter requesting that Bag Snob

1) immediately remove all statements and references to "not allowed to say" from your website, (2) cease posting or allowing others to post statements or making any references to our client whatsoever, and (3) remove the Chloe photos that were taken from "not allowed to say" from your website.

As evident from the edited C&D, Bag Snob complied to avoid an expensive legal defense, but not before the original exchange was repeated (with much commentary) on The Purse Forum

I don't know whether the lust-inducing bag that launched a thousand messages was counterfeit or not, but I do have questions about the lawyer who sent the letter.

C&D letters are a useful legal tool, a first warning to alleged wrongdoers before additional legal action.  Chloe might send one to alleged counterfeit resellers, for example.  However, C&Ds can also have a chilling effect on legitimate and socially beneficial discussion, especially when the recipient doesn't have the money or time to defend against a lawsuit.  As Bag Snob put it, such actions can be "a disservice to the shopping community."  A responsible lawyer should be not only a zealous advocate for her client, but a guardian of the law itself -- and should thus refrain from overbroad demands or inappropriate threats.  (Check out the Chilling Effects Clearinghouse for an advocacy project on this issue.)

Beyond the question of misuse of C&Ds, it's not clear that sending the letter was good strategy.  Even if we assume that Sophisticated Spirit was NOT selling counterfeits, what has she gained?  Sending a C&D letter to an internet site can be like trying to put out a fire with gasoline.  There are probably more references to the Paddington dispute out there, including this post, than there would have been without a C&D.  Social groups react badly to being told to shut up.  Lawyers in the age of open internet communication should consider this when advising clients, even if it means saying, "No, I won't take your money and write a letter -- it would be bad for your business in the long run."

So, what could a good faith seller do?  First, realize that goodwill is the most valuable asset of almost any business, and work to build it.  The web is a locus of social networks that can create trust -- or the opposite.  Become part of the community and give potential buyers reason to trust (what was the seller's fashion background prior to retail?  why is the seller not likely to be fooled by shady suppliers?  how does the seller have access to scarce commodities like the latest "it" bag?  is the seller part of a trade organization with an anti-countefeiting policy?  does the seller have an open forum for feedback from buyers?).  Next, handle any disagreements quickly, professionally, and as quietly as possible. 

At the end of the day, the law can be a very blunt instrument.  (Think clubs and baby harp seals.)  Never underestimate the power of social networks and social controls, or the benefits of harnessing them.