Hurley Files Patent Suit Against Old Navy

Last Thursday, the famous surf brand, Hurley International, filed a patent infringement lawsuit against Old Navy in federal court claiming that the retailer is ripping off Hurley’s Phantom boardshorts. First launched in 2007, Phantom raised the bar in industry boardshorts for its innovative way of combining a relatively rigid waistband with extremely high stretch material. In 2010 and 2012, Hurley was awarded two patents relating to components of material, construction and stretch and how those elements work together in the Phantom- U.S. Patent Numbers 7,849,518 and 8,214,922.

It is very difficult for apparel to receive patent protection in fashion law. However, sporting gear can lend itself to more patentable features and any respective patents are extremely valuable intellectual property for a company to obtain. Since boardshorts are at the heart of the industry “we believe if we as an industry own theboardshort we have a much better chance of controlling our own destiny,” stated Mark Weber, Hursley's SVP of Marketing and Brand in an interview for Shop Eat Surf. Hurley sees the patent as a huge asset that Hurley can leverage as a point of differentiation from the rest of the retail world. 

The cited infringing Old Navy shorts

As a result, this suit should not come as a surprise to the industry. Two of the Old Navy boardshort styles cited in the lawsuit are selling for as low as $12 on the Old Navy website. The complaint stated that "Defendants act of infringement have been without express or implied license by Hurley." We will be sure to keep you updated on the progress of this case. Until then, surfs up!

Burberry Drops Suit Against Bogart Estate

The Burberry Group has decided to drop the lawsuit it filed in May against Humphrey Bogart’s heirs, in which it defended its display of the late actor’s image in a social media ad campaign. As covered in a previous post, U.K.’s largest luxury-goods company had used a famous image of the actor wearing a trench coat from the filmCasablanca on its Facebook timeline after it had obtained a license to use the photo from its provider, Corbis. The reason for posting such an image was to show the historical influence of the brand, not to sell merchandise.

Bogart LLC had responded to Burberry's lawsuit by filing a trademark-infringement suit in California, claiming that Burberry “designed, manufactured, and sold numerous apparel and accessory products” as well as created marketing materials making use of its intellectual property and argued that Burberry’s use of the actor’s photo gave the public the false impression that Bogart endorsed the company’s coats.

No reason was given as to the dismissal. We've noted in our previous post that the case was an interesting intersection of social media marketing and intellectual property laws. Had it gone to trial, the case would have had the potential of establishing a precedent and no doubt influence other fashion tech marketing stategies. However, with the dismissal, the case cannot be refiled. Social media marketing and right of publicity will remain without any bright-line rules...for now.

Burberry Drops Suit Against Bogart Estate

The Burberry Group has decided to drop the lawsuit it filed in May against Humphrey Bogart’s heirs, in which it defended its display of the late actor’s image in a social media ad campaign. As covered in a previous post, U.K.’s largest luxury-goods company had used a famous image of the actor wearing a trench coat from the filmCasablanca on its Facebook timeline after it had obtained a license to use the photo from its provider, Corbis. The reason for posting such an image was to show the historical influence of the brand, not to sell merchandise.

Bogart LLC had responded to Burberry's lawsuit by filing a trademark-infringement suit in California, claiming that Burberry “designed, manufactured, and sold numerous apparel and accessory products” as well as created marketing materials making use of its intellectual property and argued that Burberry’s use of the actor’s photo gave the public the false impression that Bogart endorsed the company’s coats.

No reason was given as to the dismissal. We've noted in our previous post that the case was an interesting intersection of social media marketing and intellectual property laws. Had it gone to trial, the case would have had the potential of establishing a precedent and no doubt influence other fashion tech marketing stategies. However, with the dismissal, the case cannot be refiled. Social media marketing and right of publicity will remain without any bright-line rules...for now.

Coach Wins $44M Judgment Against Mother-Daughter Counterfeiting Duo

It may be Friday, but things have yet to wind down in the fashion law world. Coach Inc. has joined the growing list of companies busting Web sites advertising and selling counterfeit bags. According to WWD, a Manhattan federal court just granted the company a $44 million judgment against online counterfeiters for 22 counts of trademark infringement. 

What makes this case so unusual is that the websites were operated by a mother-daughter duo, Linda and Courtney Allen, based in the United States. Often, such operations are located in foreign countries. Furthermore, it looks like the defendants have a criminal history in counterfeiting, when in 2007 they were sued by Chanel Inc. for the same illegal conduct while operating MyClassyFashion.com and UltimateDesignersHandbags.com. According to Judge Colleen McMahon, “Linda Allen plainly requires substantial deterrence because she has not been deterred by prior judgments. She persists in her contumacious behavior. This award may be crippling, but it is plainly needed to prevent Allen from going back once again into the business of counterfeiting.”

As mentioned on our previous posts on similar infringement cases, such damages are normally impossible to collect from foreign-based defendants. The value of these judgments is in ceasing operations and sending a message to the counterfeiters that their illegal conduct will not go unpunished. We are curious to see whether the damages in this case are more likely to be collected when the defendant is based in the United States. Either way, it's clear the Internet is no longer a safe harbor for such counterfeiting operations.

Louis Vuitton Case Against Warner Bros. Continues

The legal team at Louis Vuitton has proven itself to be one determined force, with absolutely no sense of humor when it comes to protecting the company's intellectual property. Whether it's setting law students straight over a flyer for a fashion law symposium containing a fake version of the LV logo or going after a major motion picture studio for a movie scene mocking counterfeit Louis Vuitton bags, it's clear that the company's trademark radar can pick up even the mildest infringement. 

Last year, Louis Vuitton filed a lawsuit against Warner Bros. over knockoff handbangs that appeared in the film Hangover Part II. In the scene, Zach Galifianakis's character carries a bag marked LVM and admonishes another character to "Be careful, that is … that is a Lewis Vuitton." To view a clip of the scene, click here. The French fashion house sued the studio, alleging that the scene harmed its brand by infringing its marks and creating consumer confusion.

For our lawyer readers, Warner Bros. relied on Rogers v. Grimaldi to support their argument, a case precedent involving the use of trademarks in expressive works like films which provides an exception when they are not used for publicity value, but instead have genuine relevance to the film's story. U.S. District Court Judge Andrew Carter found that the film's use of the LV trademark satisfied the Rogers test and dismissed the case last month, stating in the court opinion that Louis Vuitton's allegations of confusion are "not plausible, let alone particularly compelling."

On Tuesday, Louis Vuitton filed an appeal. It's unclear whether the company is seeking the same damages, which in the original suit included the film’s profits of $580 million, triple damages, and destruction of all movie and promotional material that included the airport scene. One thing is pretty clear- while Judge Carter may have found the case to be a laughing matter, Louis Vuitton has not. We will be sure to keep you posted on the progress of this case.