After a long-standing dispute over trademarks, Gucci and Guess, Inc. had their day in federal court last week. The dispute arose over Guess's use of various design elements protected under Gucci's trademark, including a blocked letter "G" pattern, and its red and green striped design. Gucci is claiming 221 million dollars in damages.
This Wednesday, the CEO of Guess, Inc., Paul Maurciano, testified before the court to defend the brand. Maurciano insisted that Guess took inspiration from various designers for the blocked G pattern appearing on handbags and footwear. According to Maurciano, "this kind of pattern is common in the world of fashion and it’s not particular to Gucci."
After Gucci's counsel showed Maurciano a series of email correspondence between Guess buyers and their manufacturers referencing Gucci's products, Maurciano claimed he had no knowledge of such emails. However, Gucci's counsel insists that Guess has had a "scheme" to knock off Gucci "for years." Gucci's counsel will continue the questioning today, and TFG will be sure to follow up with another post.
In a case that has made fashion and internet law history, Judge Harold Baer Jr. of the Southern District of New York has granted True Religion Apparel, Inc. an 863.9 million dollar award in a default judgment against cybersquatting counterfeiters.
Based in China, the counterfeiters operated a network of 282 Web sites, with false addresses like "TrueReligion4Cheap.com" and "ForTrueReligionJeans.com," that would mislead users to bogus E-commerce sites selling counterfeit True Religion apparel.
The Web sites have since been shut down and each ordered to pay 8.15 million dollars each for four counts of willful trademark infringement and one count of copyright infringement.
The Anticybersquatting Consumer Protection Act (ACPA), or Section 43d of the Lanham Act, is the governing body of laws regarding cybersquatting, which is the act of registering, trafficking, or using a domain name with the bad faith intent to profit from the goodwill of a trademark belonging to someone else. The term derives from squatting, the practice of inhabiting someone else's property without their permission.
While it is unlikely that True Religion will be successful in actually collecting all the damages, Deborah Greaves, the company's general counsel, believes the judgment was successful in shutting down the Web sites and preventing cybersquatters from further fooling U.S. consumers. The false domain names have all been transferred to True Religion, which can now maintain a true presence online.
When it comes to the impact of fashion law and fashion blogging, no other story can quite top this. Julie Zerbo is a fellow fashion lawyer and founder of The Fashion Law, a successful blog covering all things fashion, including regular posts that identify designer knock-offs and assess the potential legal consequences of such copies. Generally, the posts involve a fast-fashion retailer knocking off the fashion works of emerging or high-end designers. But a couple weeks ago The Fashion Law found itself bravely, justifiably, and respectfully taking on the House of Chanel as it took noticethat the Fall 2012 collection contained jewelry pieces that were "eerily similar" to Pamela Love's pieces from her 2011 collection.
Photo by www.asianfashionlaw.com
Why was this spotting so significant? As discussed in our previous post, the current US copyright regime grants jewelry full protection. Chanel's bracelets would therefore be subject to copyright infringement. Furthermore, Pamela Love is an emerging designer who has yet to gain the kind of influence that would enable her to defend her line against a global brand like Chanel. And frankly speaking, many would have probably assumed that her collection was drawn from Chanel's line. Such incidences can set emerging designers back as they vigorously work to build their brand and earn their rightful place in the fashion world.
The Fashion Law's post immediately caught the eye of Fashionista, a leading fashion blog, who reached out to Chanel for comment. Chanel responded with a statement that surprised the fashion world:
"For the A/W 2012 collection, Karl Lagerfeld was inspired by the ‘mineral earth’ theme that explored amethyst, crystal and quartz. The theme was captured by the design of the show which included a runway of white granite sand, by the setting which featured huge crystal and amethyst columns, and by the clothing which was in earthy hues of purple, blue and gray. In keeping with the inspiration, large and colorful crystals also adorned some of the clothing and accessories, including heavy bracelets. It has been brought to our attention that some of the bracelets that appeared in the show may resemble those of another designer. Out of respect for the concerns raised and for the artistic process generally the House has decided not to offer these bracelets for sale as part of the A/W 2012 collection."
Following Chanel's comment, Styleite, Glamour, and NBC New York all recognized the amazing work of Julie Zerbo and The Fashion Law. Regardless of whether Chanel intentionally or unintentionally created the similar bracelet designs, their decision to remove the pieces from the Fall 2012 collection is a testament to the respect that all designers and players in the industry should have for their colleagues' artistic efforts. TFG had a chance to speak to Julie Zerbo about the impact of her post:
"The Chanel-Pamela Love story was really a chance for me to give my readers an accurate view of the fashion industry. Its not always fast-fashion retailers that are inspired by others; even large, established houses are inspired by others and/or similar things as others. I'm a huge fan of both parties and am looking forward to their upcoming collections. In terms of making an impact, I don't think about that too much. I think the true talents here are Pamela and Karl. I just hope Chanel's responsible and ethical response (not offering the bracelets at issue for sale) will influence others in the industry, especially in fashion, which unlike jewelry, offers designers extremely limited protection."
We here at TFG concur. Whether you are a fast-fashion retailer or a global fashion house, encouraging originality and creativity not only contributes to the growth of the industry, but also enhances the beauty and fun of the fashion itself. And if you don't believe so, perhaps a future post by Julie Zerbo will convince you otherwise- it certainly did Karl Lagerfeld.
Fashion lawyers must have a thorough understanding of the intellectual property issues that arise in the fashion industry. Copyright, patent, trademark and trade dress laws all play into the IP strategy of fashion, apparel, and e-commerce companies. What most non-lawyers may not know is that trademark is really the only effective form of IP protection that fashion designers and apparel brands can receive. Ever wonder why logos are slapped on so many handbags, eye-wear, shoes, and apparel? That's the influence of lawyers telling designers and apparel companies that if they want to effectively protect their work, logos will allow their designs to receive trademark protection. Hence, the phenomenon that legal scholars have dubbed as the logofication of fashion. Why is this happening? Because unlike in Europe, fashion has yet to receive copyright protection in the United States. Our legal system considers fashion as a useful article, or an article that has an intrinsic utilitarian function, and copyright protection does not extend to such articles. The policy reason for excluding useful articles was so that the Copyright Act would draw a clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design and to limit the ability of manufacturers to monopolize designs dictated solely by the article’s function.
Copyright protection is a powerful tool because it begins as soon as a design is reduced into a "fixed" form of expression (i.e. painting, music, etc.) and is not as expensive as receiving other forms of protection, like patents. In fashion, only fabric prints and jewelry can receive true copyright protection. For example, Rick Owens has no claim for all the knockoffs of his original deconstructed leather jackets, but Diane Von Furstenberg has a claim for all her printed wrap dresses. Many efforts have been made to amend the Copyright Act so that it affords protection to fashion.
Advocates for copyright protection believe that this will not only protect designers and afford them time to get their designs into stores before fast-fashion retailers, but it will also encourage more "original" designs and end the cycle of line-by-line knock-offs. Opponents for copyright protection argue that the fashion industry thrives off of this cycle and copyright protection would create a huge economic burden. However, what opponents may not realize is that often times the designs that are knocked off by copyists are the works of emerging designers who are just starting to build their brand and company. Despite the debate and differences of opinion, it is clear that some form of protection is needed. The most successful legislative effort has been the Innovative Design Protection and Piracy Prevention Act, or IDPPPA. The legislation received approval from the Senate Judiciary Committee in 2010 and has been backed by the CFDA, AAFA, and many legal scholars.
The IDPPPA expands the protection offered to designs under Title 17 of the Copyright Act to also include “fashion designs” and “articles of apparel.” In sum, the legislation creates three new legal standards:
An originality standard that provides protection if designs are proven to be a “unique, distinguishable, nontrivial, and nonutilitarian variations over prior designs;
An infringement standard, defined as “substantially identical;” and
A heightened pleading standard, requiring the plaintiff in a lawsuit to prove that the design is protectable, substantially identical, AND that the defendant had access to or was aware of the protected design
Once the fashion work's originality is established according to the standards set forth in step one, the designer is offered up to three years of protection. The shorter time period is considered to be more appropriate for the evasive and cyclical nature of fashion, allowing enough time for designers to introduce their “original” and “unique” garments without fast-fashion retailers copying them, but also allowing items to go into the public domain and have trends take into effect.
In order to avoid flooding the courts with frivolous claims, IDPPPA only allows designers to claim infringement if the article of clothing is substantially identical. This is considered a higher standard than the current standard for general copyright infringement of substantial similarity. While IDPPPA is the most successful attempt at amending the Copyright Act to include fashion works, it has yet to be signed into law.
The video above is a Bloomberg Law inteview of Susan Scafidi, a fashion law prioneer who has testified before Congress as a proponent of copyright protection for fashion works and whose efforts has helped foster the success of the bill. The video shows her discussing the IDPPPA and the need for copyright protection for fashion works. TFG has had the privilege of being taught by Scafidi and her interview is a testament to her amazing teaching abilities as well as her work.
TFG will continue to offer more detailed posts about IDPPPA and IP issues in fashion. For a full copy of IDPPPA, click here.
What was supposed to be an event to highlight the fashion law practice area because a fashion law topic itself. The intellectual property group at the University of Pennsylvania Law School decided to host a fashion law symposium, only to receive a cease and desist letter from one of the leading luxury brands in the world. Why would Louis Vuitton feel compelled to kill the fashion law mood? The event flyer did not sit well with Michael Pantalony, the Director of Civil Enforcement for the French fashion house.
While clever in incorporating the symbols for copyright and trademark into the brand's signature monogram, Louis Vuitton argued the event flyer was willful infringement and dilution of the brand's trademarks. How so? The flyer misleads the public into thinking that Louis Vuitton sponsored the event. Furthermore, Louis Vuitton contends that it would "mislead others into thinking that this type of unlawful activity is somehow 'legal' or constitutes 'fair use' because the Penn Intellectual Property Group is sponsoring a seminar on fashion law and 'must be experts.'" For a fully copy of the cease and desist letter, click here.
Penn Law changed the event flyer to the following:
Nevertheless, the school countered Louis Vuitton's arguments with the following:
Trademark infringement consists of using a trademark in interstate commerce that is substantially similar to the original trademark and that would likely cause confusion.
The event flyer not being adopted as a trademark for interstate commerce of goods or service
There is no likelihood of confusion because the lawyers, law students, and fashion industry executives attending the event would not think Louis Vuitton was sponsoring the event
The event flyer falls within the noncommercial use exception
The event flyer is fair use as artwork parody, as in the case Louis Vuitton v. Haute Diggity Dog, LLC.
For a fully copy of Penn's response, click here. While both sides present valid arguments, it's clear Louis Vuitton's main goal was to make an example of the IP law group.
Thursday, April 5, 2012 
