The DLA Piper Fashion, Retail and Design Group distributed a special edition of its e-magazine, Law à la Mode. The edition coincides with the 135th INTA (International Trademark Association) Annual Meeting in Dallas, Texas. Given the nature of the conference, the special edition focuses exclusively on branding issues such as securitizing trademarks, IP rights in shop formats and brand protection considerations for entrants into emerging markets. Please click here to read the e-magazine.
Last night, we attended a DC Bar fashion law panel discussion, "For the Love of Fashion: Protect Yourself," at Baker Hostetler in Washington DC. It was a very informative and comprehensive discussion from in-house and outside counsel, including DLA Piper's Lisa Norton, who is Of Counsel in the Patent Prosecution group, on trademark, copyright, and patent protection as well as current hot-button developments in fashion law and anti-counterfeiting.
The famous Kardashian sisters are making news again, but this time not for their well-known reality television show Keeping Up With the Kardashians. Kim, Kourtney and Khloe Kardashian launched a line of personal care and makeup products in 2012 under the mark KHROMA, and their beauty care products are currently sold at nationwide retaliers including CVS, Ulta, Sears and Kmart. However, the Kardashian sisters are being sued in federal court for trademark infringement for use of the mark KHROMA.
For centuries, the idea that strong intellectual property protection spurs innovation and encourages creativity has been the lynchpin of IP laws, not to mention the mantra of IP lawyers. In The Knockoff Economy, the authors challenge that belief as they explore industries which receive weak, if any, IP protection, yet still manage to innovate and thrive. Authors Kal Raustiala and Christopher Sprigman cover a wide variety of industries including fashion, fonts, cocktails, magic, football, and the financial services industry. Several trends which have allowed creativity to flourish outside the IP framework emerge over the course of the book, including the unique nature of certain industries, trends and fads, social norms, open-source methods, and first-mover advantages. The authors do not argue for a broad change in IP laws, but instead provide a window into how creativity and innovation differ in every industry.
The book begins with the fashion industry, where, the authors argue, copying actually speeds up the creative process. The fashion cycle rewards innovation, and success requires constant reinvention as first-adopters seek out newer designs once a prior design has become mainstream. This same trend can be seen in the culinary world where copying can be an indicator of success. The authors provide the example of the molten chocolate cake which started out in a high-end restaurant and can now be found on the menu of thousands of family restaurants around the world. While the rest of the world is finding ways to prevent copying, the authors show us several industries where imitation truly is the sincerest form of flattery.
The eight recipients of the British Fashion Council's (“BFC”) NEWGEN MEN, sponsored by TOPMAN, initiative were announced earlier this week. DLA Piper is partnering with the British Fashion Council to provide tailored legal and commercial advice to the designers who have been selected.
The aim of the NEWGEN MEN program is to assist emerging designers in growing their business and in helping to raise their profile through designer business support and showcasing opportunities at London Collections: Men, 7-9 January 2013. DLA Piper joins the initiative to provide business and mentoring support to London’s brightest emerging menswear fashion talent.
The BFC was set up in 1983 to promote British fashion internationally and co-ordinate this promotion through fashion weeks, exhibitions and showcasing events such as NEWGEN MEN. The BFC supports designers beginning at college level and extending to talent identification, business support and showcasing schemes to help British designer businesses develop their profiles and business globally and promote British fashion and its influential role in Creative Britain and Creative London.
Ruth Hoy, global co-chair of DLA Piper's Fashion, Retail and Design group commented as follows: "We are delighted to be working in collaboration with the British Fashion Council to provide much needed support to these emerging designers as they navigate their way through the intellectual property and commercial law landscape. This tie-up is part of our firm's commitment to the growth of British fashion and our hope is that we can make a difference for these designers as they move forward in their careers. As a global law firm, we are uniquely placed to be able to provide them with the support they need wherever in the world they do business. We are very excited by this appointment."
The work will be undertaken by DLA Piper's Fashion, Retail and Design group which comprises lawyers from around the globe. Located both in fashion capitals such as London, Milan, Paris and New York, and in developing hubs such as Hong Kong, Sydney and Moscow, the 100+ member group works together to help its clients manage threats and exploit business opportunities.
By James Stewart
It is an exciting time for fashion law in the Second Circuit. On the heels of a landmark trademark decision holding that red soles could serve as a source identifier, the Second Circuit now approaches fashion law from a different perspective—copyright.
As mentioned in previous posts, fashion designers today rely primarily on trademark, patent, and anti-counterfeiting laws as the sources of protection for their designs. In some instances, designers invoke narrow copyright protection for their works.
Prom and pageant dress designer Jovani Fashion Ltd. (“Jovani”) brought a copyright infringement action against Fiesta Fashions (“Fiesta”) in the District Court for the Southern District of New York for allegedly copying decorative aspects of Jovani’s designs. Jovani’s claim of copyright protection is founded upon the idea that the design at issue combines features which serve both decorative and utilitarian purposes, but can be separated from the article and function independently. The District Court dismissed the action for failure to state a claim upon which relief could be granted.
My September 5, 2012 article, "2nd Circuit Says Yes to Louboutin's Red Sole Trademark," poses the question: "is this decision a true victory for Louboutin or YSL?" Tamlin H. Bason's article in Patent, Trademark & Copyright Law Daily seems to suggest that both sides are claiming victory.
Reproduced with permission from Patent,Trademark & Copyright Law Daily, (Sept. 12, 2012). Copyright 2012 by The Bureau of National Affairs, Inc. (800-372-1033) <http://www.bna.com>
By Tamlin H. Bason
Both parties claimed victory after the U.S. Court of Appeals for the Second Circuit Sept. 5 determined that Christian Louboutin's trademark on red soled shoes was valid and that Yves Saint Laurent's monochrome red shoe did not infringe the registered mark. Christian Louboutin S.A. v. Yves Saint Laurent America Holding Inc., 2d Cir., No. 11-3303-cv, 9/5/12).
Right on time for New York’s Fashion Week, the United States Court of Appeals for the Second Circuit ruled today that “Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe” has acquired secondary meaning as a distinctive source-identifier for Louboutin’s luxury brand. More than one year after a U.S. federal district court denied a preliminary injunction against Yves Saint Laurent (YSL) and issued a decision invalidating Louboutin’s red sole trademark, the Second Circuit has rendered Christian Louboutin’s iconic “Chinese red” soles to be a valid, protectable, and enforceable trademark.
Reposted from Law à la Mode, Edition 6 - Summer 2012
By Alexander S. Birkhold (New York)
The recent formation of the Model Alliance, an organization seeking to enforce and expand existing legal protections for models in the United States, has prompted increased US scrutiny of employment and image rights issues in the fashion industry.
Welcome to the Summer edition of DLA Piper’s Law à la Mode, the industry e-magazine which is brought to you by our Fashion, Retail & Design Group. Please click here to view the e-magazine or here to view as a PDF.
With the world's eyes on London this Summer, this edition has been complied by DLA Piper's London editorial team. Putting our British fashion-foot forward, we explore DLA Piper's recent collaboration with Central St Martins College of Arts and Design, as well as considering "When is a free handbag considered a bribe?" under the UK's new and pervasive Bribery Act. Moving further afield, we take a look at the European Commission’s ambitious plans for the European digital marketplace, and our Istanbul colleagues introduce us to the opportunities (and risks) of using Turkey as a manufacturing base. Our US team explore new guidelines for working with models, while our team in Sydney has some top tips to keep in mind when opening an online store. This edition also includes all our regular features, including "A Word from the Industry's Mouth" where we meet Victoria Chang, Belgian lawyer turned Fashion blogger. Finally, following on from our special edition of Law à la Mode to mark the 134th INTA Annual Meeting in Washington, DC, we give you an insight into our exciting INTA event: "Around the retail world in sixty minutes: Reflecting on the top branding issues for retailers in 2012".
We do hope that you enjoy this Summer edition of Law à la Mode. If you have any comments please get in touch with the Fashion, Retail and Design Group via our email: firstname.lastname@example.org.
DLA Piper’s global Fashion, Retail and Design Group is made up of lawyers from around the globe, who combine legal expertise with a passion for the fashion, retail and design sectors.
By Rebecca Kay
This Tuesday, members of DLA Piper's Fashion, Retail and Design Group assembled in Washington with retail clients from around the globe, for a working lunch entitled "Around the retail world in sixty minutes: Reflecting the top branding issues for retailers in 2012". As well as being a fantastic opportunity to catch up with industry peers, the event was a fascinating insight into topical issues and concerns.
The Spring Edition of Law à la Mode is now available online: click here to view the e-magazine.
Fashion is an integral part of how consumers construct their personal identities and choose to portray themselves in their everyday lives. From a societal perspective, we correlate luxury fashion brands with success and exclusiveness. We notice individuals with red-soled stilettos or LV patterned brown leather purses because we know that while these individuals could have chosen from a variety of options, they chose to identify themselves with expensive emblems of status. This aura of exclusiveness is the value that luxury brands provide to their consumers: few can have it; the others merely aspire to it.
Social media stands in stark contrast to this image. Social media platforms are inherently noisy, crowded and easily accessible from a variety of platforms. This dichotomy begs the question: will using social media tarnish the value of luxury brands by making them too accessible by the masses?
By: Caroline Olstedt Carlström (Stockholm)
The new digital landscape and its embrace by the corporate world create new challenges for all marketing professionals at a pace that has never before been encountered. In fact, organisational procedures and legal standards are struggling to keep up. Few jurisdictions have marketing regulations in place that are up-to-date with the latest digital possibilities. Social media can be an effective tool for marketing and brand awareness, but it also poses great challenges for marketing professionals navigating new issues.
On September 15th, the International Chamber of Commerce (ICC) presented its new 2011 Consolidated ICC Code of Advertising and Marketing Communication Practice (the “Code”). The Code raises the standards for consumer protection globally and also includes new online rules. It is recognised as the gold standard for self-regulation and now offers best practice guidance across all sectors, technologies and platforms and guides marketing professionals as they deal with many of the most challenging topics, such as Online Behavioural Advertising (OBA), marketing in digital interactive media, privacy protection, environmental claims and marketing to children.
By: Michelle Schaefer and Alexandra Marzelli (Washington, DC)
In September, the U.S. Federal Trade Commission (“FTC”) — the consumer protection agency tasked with regulating U.S. advertising practices for consumer goods — warned companies selling apparel and footwear in the U.S. that all health and fitness claims must be substantiated by competent and reliable scientific evidence. This warning came from the FTC’s lawsuit against Reebok International Lmtd. (“Reebok”), for alleged deceptive practices related to certain footwear including running sneakers, walking sneakers and flip-flops. Reebok was charged with making “unsubstantiated claims” that the footwear provides extra tone and strength to key muscle groups (including the buttocks, hamstrings and calves) and strengthens various muscle groups by a certain percentage. Under the settlement, Reebok agreed to pay $25 million in refunds to consumers. Reebok has stated that the settlement does not indicate agreement with the FTC’s allegations and it will continue to sell the products at issue, but will market them differently.
Those involved in the fashion and retail industries are well aware of the challenges associated with combating the global proliferation of commercial-scale counterfeiting and piracy. With legal rights and remedies often varying on a country-by-country basis, enforcement of intellectual property rights on an international scale can often be fraught with unexpected hurdles and inconsistent outcomes. The Anti-Counterfeiting Trade Agreement (“ACTA”) aims to change that.
On October 1, 2011, eight countries signed ACTA, namely Australia, Canada, Japan, Morocco, New Zealand, Singapore, South Korea and the U.S. A signing ceremony was held in Tokyo by the Government of Japan. Representatives of the E.U., Mexico, and Switzerland attended the ceremony and confirmed their continuing support for ACTA. Those three sovereignties are in the process of finalizing domestic procedures in preparation to sign, and their signatures are expected by May 1, 2013. Collectively, these eleven countries represent more than half of the world’s trade.
By: Stefania Baldazzi and Annalaura Avanzi (Milan)
In 1967, the well-known Italian fashion designer Elio Fiorucci founded the fashion brand Fiorucci S.p.A. After more than two decades of success in Italy and around the world, Mr. Fiorucci sold the company and all of its creative assets to the Tokyo Company Edwin Co. Ltd in 1990. The sale encompassed all the Fiorucci trademarks, including numerous marks containing the element “FIORUCCI.”
In 1999, Edwin Co. registered the mark “ELIO FIORUCCI,” by filing an application with the Office for Harmonization for the Internal Market (OHIM), which is a body of the European Commission, for a broad category of goods, including cosmetics, apparel, footwear and leather products.
By: Radiance A. Walters (Washington, DC)
Red-soled stilettos for only $39.99? French luxury shoe designer Christian Louboutin continues the fight to protect its iconic “Chinese red” soles. This past August, a U.S. federal district court denied a preliminary injunction against Yves Saint Laurent (YSL) and issued a decision that questioned the validity of Louboutin’s red-sole trademark. On October 17, 2011, Louboutin’s lawyers appealed that decision to the U.S. Court of Appeals for the Second Circuit. Shortly thereafter, premier jeweler Tiffany & Co. filed an amicus brief in support of Louboutin, furthering the fight to protect color as a trademark. The International Trademark Association (INTA) also filed an amicus brief on November 14, 2011 taking the position that the District Court erred in rejecting the U.S. presumption of validity attendant to Louboutin’s federal trademark registration. Further, INTA argues that the District Court incorrectly construed the Louboutin’s registration as a broad claim to the color red instead of the narrower claim to “lacquered red sole on footwear,” which is what the registration actually covers. The Court of Appeals is left with the daunting task of determining whether and when color may function as merely a design element versus a source-identifying trademark.
By: Job Seese (New York)
Our Spring 2011 issue discussed a pending U.S. legislative bill that would expand copyright protection to fashion designs – something that generally is not available under existing U.S. law. Known as the Innovative Design Protection and Piracy Prevention Act (IDPPPA), the bill was first introduced in the Senate in August 2010. However, the bill was never taken up by the full Senate and effectively died at the end of that Congressional session. Currently, a legislative bill of the same name is pending before the U.S. House of Representatives Subcommittee on Intellectual Property, Competition and the Internet.
By: Bartolome Martin (Madrid)
Some decades ago, the Spanish Tourism Authority’s advertisements across Europe proudly touted that “Spain is different.” In reality, this may indeed be true. Spain is an idiosyncratic country where universality and localism are good friends, crisis and luxury seem to have a passionate relationship, and customs from the past walk hand in hand with the latest trends. This self-contradicting spirit, cultural individuality and inherent diversity are without a doubt reflected in the Spanish fashion market.
By: Tamar Duvdevani (New York)
Aspirin. Thermos. Escalator. Cellophane. What do all of these items have in common? If your answer is “objects that MacGyver needs to get out of a sticky situation,” you may be correct, but that is not what we were looking for.
Each of these commonplace, generic terms for the objects that they define were once valuable intellectual property before they lost protection through “genericide,” the process by which trademark rights are diminished or lost as a result of overuse in the marketplace. Genericide can happen in a variety of ways. A trademark owner’s failure to police its mark, for example, can result in widespread use of the term by other sellers, thereby reducing the trademark’s ability to identify source. In other instances, a term intended by the seller to be a trademark for its novel product is understood by the public to be a generic name because there is no other word in the vernacular to describe the product. Both of these fates can be avoided by thoughtful branding strategies.
DLA Piper's Fashion Retail Design Group recently published Law a la Mode - Edition 4 Winter 2011, a legal fashion-style magazine that is distributed to clients and friends of the firm worldwide. Law a la Mode has a revolving editorialship and Edition 4 is the first to be edited by the U.S. offices.
Members of the U.S. editorial board include Ann K. Ford, Gina Durham, Tamar Duvdevani, Kiran N. Gore, Melissa Reinckens, Debbie Rosenbaum, Michelle Schaefer, Radiance A. Walters, and Job Seese (New York, Washington DC, and Chicago).
The magazine is available here.
We welcome your thoughts and comments on our latest edition.
by Ann K. Ford (Washington DC), Kiran N. Gore (New York) and Debbie Rosenbaum (Washington DC)
Social media in the retail fashion space takes many forms. For example, Bergdorf Goodman, one of America’s most well-known high-end department stores located in the heart of New York City, tweets upwards of 50 times a day providing fashion tips, insider information about brands and designers sold at the store, and details about sales, discounts and promotional offers. Although a newspaper once characterized the store as “snotty” and “imposing,” Bergdorf Goodman has started to rebrand itself as “warm and welcoming”, with its Twitter handle @bergdorfs leading the change. Perhaps the most notable aspect of this social media strategy is that the department store has effectively handed over its entire corporate identity to a single individual: Cannon Hodge, Bergdorf’s social media manager.
by Louis Puts (Brussels)
Online marketplaces such as auction sites are often used as platforms for selling unlawful fashion products. On 12 July, 2011, the CJEU rendered an important decision concerning the unlawful offers of cosmetic products with L'Oréal's trademarks on eBay. For the first time, the decision has clarified the circumstances under which online marketplace operators may be held responsible for unlawful trade-marked products offered for sale on their platform site, under trade-mark law, the E-Commerce and the IP Enforcement Directives.
The State of Franchising Industry
The United States is the birthplace of both the business model of modern franchising and the legal framework of franchise regulation. Over the past 5 decades, American consumers have come to rely on franchised businesses in every aspect of their daily lives, including food, lodging, hair salons, automobile service, home care and children’s and senior services. Franchised businesses consistently outperform comparable non-franchised businesses, creating jobs and economic activity in local communities across the country. According to a recent study conducted by PricewaterhouseCoopers for the International Franchise Association Educational Foundation, there are over 825,000 franchised businesses in the United States, representing 300 different business sectors. These franchises employ nearly 18 million Americans, accounting for 1 out of every 8 jobs. The franchise industry contributes over $2.1 trillion to the U.S. economy, and has grown by 40% over the past decade.
The Autumn Edition of Law à la Mode is now available online: click here to view the e-magazine.
With a Belgian editorial team for this edition, we wanted to give a flavour of an up and coming fashion capital in the heart of Europe. With a mix of cultures from Europe and beyond, Belgium is fast becoming a key location for new design and innovation in fashion. More than just moules, frites and beer, we are fortunate enough to have some of the most renowned fashion academies in Antwerp and Brussels generating internationally known designers such as Dries Van Noten, Ann Demeulemeester, Martin Margiela and Olivier Theyskens.
As Belgium is also the hub of EU policy development and creation, we share with you our thoughts on the trends around policy making - steering you through the agenda and potential activity (page 4).
Sustainability being the buzz word of the moment in relation to product development, we have an insight from our UK team on the interplay between the sustainability debate and the fashion industry (page 5).
Fashion designers and companies can seek to protect their jewelry and other accessory designs through copyright, trademark and/or design patent registrations. Copyrights, trademarks, and patents are separate and independent forms of law and protection; therefore, protection can be obtained in one or all of the three ways discussed in more detail below.
The fashion world may have received yet another stifling blow from the federal court's decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., et al., in which the court refused to grant Louboutin's request for a preliminary injunction against YSL on claims of alleged trademark infringement resulting from YSL's red-soled fashion heels arguably similar to Louboutin's. The court ruled that Louboutin's claim to "the color red" and its 2008 U.S. federal registration covering "women's high fashion designer footwear" were "overly broad" and "inconsistent with the scheme of trademark registration established by the Lanham Act." The court further reasoned that, "[a]warding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants."
In light of the court's analysis, it is arguable whether this decision has, in fact, encouraged or stifled fashion innovation. On the one hand, this decision may have opened the door for other shoe designers to start using the color red or another arguably distinctive color on the soles of their fancy (or not-so-fancy) footwear, which in turn may further competition in the marketplace, as the court intended. On the other hand, this decision could potentially discourage fashion designers from maximizing their creativity and innovation in designing apparel and footwear out of fear that third-party copy cats will seek to imitate or trade off of their designs.
Undoubtedly, the court's decision presents both opportunities and risks in the fashion industry that are yet to be revealed. However, as for those fashionistas who paid a pretty penny for Louboutin's signature red soles and for Louboutin himself, does this decision have the potential to negatively impact the value and/or notoriety of Louboutin's precious footwear?
Guest blog post by Melanie Garcia. Melanie is a Summer Associate in the Washington, D.C. office of DLA Piper LLP. She is a J.D. Candidate at the Georgetown University Law Center.
Unhappy customers have been embracing the Internet for years to vent their frustrations with companies. Lately, several bloggers have capitalized on websites that lampoon popular companies and companies are beginning to fight back.
Recently, Forever 21 threatened to sue fashion blogger Rachel Kane for diluting its brand and trademark with her blog, WTForever21.com. Forever 21, a global retail chain of clothing and accessories for young men and women, reportedly sent cease-and-desist letters to Ms. Kane regarding her blog. On WTForever21.com, Ms. Kane posts and satirizes images of clothing from Forever21.com. For example, on April 14, 2011 Ms. Kane posted a picture of earrings from Forever 21 with the following caption, “Those bead curtains that provide no privacy and serve no other purpose than to get tangled around each other, or in your hair when you walk through them, came back from 1973 and decided to become earrings.” While this is understandably offensive to the company, it seems Forever 21 has chosen not to pursue further action against Ms. Kane.
There are many reasons why Forever 21 may have chosen not to bring a suit against Ms. Kane.
It is clear that social media is changing the communications landscape. Therefore, forward-thinking companies across the globe are embracing social networking websites and blogs to build brands, cultivate customers, research products, and improve global business management. However, few have truly considered some of the important social media implications that are relevant to the fashion and retail industries. Because social media is inexpensive, instantaneous and prolific, it presents new and different concepts for the fashion industry, particularly in light of the fact that these concepts are new to these industries which had previously thrived on a perceived air of exclusivity.
Social media in the business context is content created by people – individuals both inside and outside a company – on web-based platforms intended to facilitate interaction with peers and public audiences. Well-known examples of social media include Facebook, Groupon and Twitter. But numerous niche fashion-centric communities are also emerging on websites like gotryiton.com and stylemob.com. Thus, while independent designers and large retail chains alike can benefit from a social media presence, these emerging opportunities also pose new problems and challenges. Therefore, the way to leverage social media and mitigate possible liabilities is to proactively establish clear rules and standards for its use.
So how does a company manage its social media presence and ensure that employees are clear with respect to goals and limitations? First, it is paramount that the company develop a policy on employee use of social media. At a minimum, this policy should include:
- A prohibition on the sharing of confidential or proprietary information;
- Standards for whether employees will be allowed to make public comments about the company and which employees may make such comments;
- Consequences for employees who do not adhere to the policy.
A company should also plan to create a meaningful social media presence for its brand. Such a communications strategy should be updated to include:
- A social media “voice” and presence that is personal and genuine – a tone that exists outside of your advertising campaigns and corporate talking points;
- Engagement with customers and followers - today, these individuals are the newest fashion insiders with influence on the Internet.
Please note that this article is the first in an on-going series that will consider various social media platforms, explore legal challenges and ultimately provide guidelines and best practices for the various entities in retail, design and fashion. We look forward to delving further into these exciting new issues with you.
The Summer Edition of Law à la Mode is now available online: click here to view the e-magazine.
As some fashion operators choose Hong Kong for their IPOs, in this Summer edition of Law à la Mode you can read about how the introduction of a competition bill in Asia’s fashion hub may have an impact on its ever booming fashion and luxury market (pages 6-7). If legal updates are what you are looking for and you love shoes, you can’t miss the article on the red soles dispute (pages 10-11) and a report about trade mark distinctiveness for sneakers (pages 12-13). Our opinion articles explore the theme of fashion trade secrets (page 4) and reputation management of brands (page 5). Talking about (super)brands, see how you can benefit from extended protection in Russia (pages 8-9).
Again, we spoke with representatives of the fashion business (“A word from the Industry’s Mouth”, pages 14-15), including Kirstie Clements, editor of Vogue Australia. Moreover, this issue sees the addition of a new column devoted to fashion and social media, in which we will consider the pros and cons of establishing a presence in the social media arena and attempt to give some legal guidance to avoid potential pitfalls (page 16).
Law à la Mode brings together the latest news, comment and legal updates in the fashion, retail and design sector.
Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., et al. Case No. 11-CIV-2381-VM (April 7, 2011, S.D.N.Y.)
Christian Louboutin ("Louboutin"), famed French fashion designer, sued Yves Saint Laurent ("YSL") for infringing on his ever-so-popular trademark - women's high fashion footwear with the infamous red-lacquered bottoms. Louboutin seeks $1 million in damages for alleged trademark infringement and counterfeiting.
Since 1992, Louboutin has been selling his fancy footwear with the alluring red bottoms, which cost anywhere from $450 to $3,500 a pair. Louboutin claims that YSL has been selling women's shoes with red outsoles, costing about $600 to $800 a pair, since January 2011 that are nearly identical to his women's shoes in the same upscale department stores, which include, but are not limited to, Saks Fifth Avenue, Barneys, and Bergdorf Goodman.
Under U.S. trademark law, color can be protected and registered if it is not functional, ornamental or decorative and has acquired distinctiveness for the relevant goods and services (color cannot be inherently distinctive). For example, a color would be considered functional if it is essential to the use or purpose of the article or affects the cost or quality of the article (i.e., the color black for outboard boat motors or the color yellow or orange for safety signs). Furthermore, a color would be considered ornamental or decorative if competitors use the same or similar color for their products (i.e., floral pattern design of morning glories and leaves for tableware are merely decorative). Therefore, color can only acquire distinctiveness upon a showing of exclusive and continuous trademark use in commerce for more than five years and concrete evidence that the color is perceived as a mark for the relevant goods or services by consumers.
In this case, the United States Patent and Trademark Office found that Louboutin's red-lacquered soles acquired the requisite distinctiveness for trademark protection, granting it U.S. Registration No. 3361567 for "lacquered red sole[s]" covering "women's high fashion designer footwear" in International Class 25. Therefore, given Louboutin's long-standing trademark use for nearly twenty years and the widespread consumer recognition of red bottom soles as Louboutin's signature coupled with this U.S. trademark registration, it appears that Louboutin has a pretty strong case for trademark infringement against YSL if, indeed, YSL's red-outsole women's shoes are "confusingly similar" to Louboutin's trademarked footwear.
One of our group's newest sector-focus groups is DLA Piper's Fashion, Retail & Design Group. We wanted to share the group's inaugural quarterly e-magazine, Law à la Mode, which brings together the latest industry news, comment and legal updates.
Our Fashion, Retail & Design Group is made up of lawyers from around the globe, who combine legal expertise with a passion for the fashion, retail and design sectors.
Be sure to check out our group's article about Copyrighting Fashion Design in the United States!
While design, patent and trade dress laws have long been used to enforce fashion rights, copyright laws in the United States have thus far been unavailable. Last summer, New York Senator Charles E. Schumer introduced legislation that could change this. In December, the Senate Judiciary Committee passed the Innovative Design Protection and Piracy Prevention Act, or Senate Bill S. 3728 (IDPPPA), and the next step is for the full Senate to vote on it.
The IDPPPA calls for the extension of copyright laws to the fashion industry, a commercial sector that has existed without protection in the United States to date. The legislation is supported by the American Apparel & Footwear Association (AAFA) and the Council of Fashion Designers of America (CFDA). The bill covers apparel, footwear, and accessories such as scarves, belts, and handbags.
The IDPPPA takes a very narrow approach to applying copyright law. First, IDPPPA will provide a three-year term of protection to new and original fashion designs commencing from the time the item is displayed publicly. Second, it will protect only “unique” designs that are truly distinguishable. Third, it will only cover designs created after its enactment, leaving earlier designs in the public domain.
Last Friday, we attended an INTA roundtable on Trademark Law in the Fashion Industry at Arent Fox in Washington D.C. It was a great discussion, and we want to send a special thanks to INTA for organizing and Arent Fox for hosting. As our team engages in more work in the fashion industry, we aim to keep our clients up-to-date with the latest trends in fashion law.
From this roundtable discussion, we gathered three takeaways that we wanted to share.
First, for fashion companies, the company name and logo are the most valuable assets, so fashion companies should federally register their name and logo to ensure nationwide protection and exclusivity. Since U.S. law does not currently afford much protection for fashion designs, designers can at least utilize trademark law to protect two aspects-- its company name and logo.
Second, major fashion brand companies, such as Chanel and Louis Vuitton, are moving into different (and arguably unforeseeable) markets. For example, Chanel now sells guitars and Louis Vuitton sells chopsticks under its trademarks. With these companies expanding into these, at one point, unforeseeable and far-fetched markets, claims of trademark infringement are even more foreseeable.
Third, fashion is cyclical, which means it is constantly evolving and revisiting past innovations, so it is unclear whether proposed legislation, such as the Innovative Design Protection and Piracy Prevention Act, will encourage or stifle fashion innovation.