Fashion Apparel Law Blog : Fashion Apparel Law Lawyer & Attorney : Sheppard Mullin Law Firm : Fashion Legal Issues

On October 15, 2012, the United States Court of Appeals for the Second Circuit issued its opinion in Jovani Fashion, Ltd. v. Fiesta Fashions , Docket No. 12-598-cv, 2012 WL 4856412, holding that the prom dress artwork of fashion designer Jovani Fashions, Ltd. (“Jovani”) lacked copyrightable elements, and thus, could not be infringed by a competitor’s design. Though not a precedential decision, the opinion serves as both an important reminder of the absence of copyright protection afforded the fashion world and a streamlined instruction on the scope of and limits on copyrightable elements in works of fashion.

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By Robert Magielnicki

On October 1, 2012, the Federal Trade Commission issued revised “Guides For The Use Of Environmental Marketing Claims” – the “Green Guides,” 16 CFR Part 260. The Green Guides originally were issued in 1992 and were revised in 1996 and 1998. The review resulting in the latest revisions began in November 2007.

The Green Guides set forth the FTC’s views concerning environmental claims and are intended to help marketers avoid making environmental marketing claims that are unfair or deceptive and thus violative of Section 5 of the FTC Act. The Guides are administrative interpretations of the law and thus do not have the force and effect of law. However, the FTC can take action under the FTC Act if a marketer makes an environmental claim that is inconsistent with the Guides.

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By Tyler Baker and Ted Max

On September 5, 2012, the United States Court of Appeals for the Second Circuit issued its long-awaited and highly anticipated decision in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., Docket No. 11-3303-cv. The Second Circuit reversed the lower court decision, in part, holding that Christian Louboutin’s “red outsole” trademark was valid and enforceable, and affirmed in part, holding that such trademark protection was limited to uses in which the “red outsole” contrasts with the color of the remainder of the shoe. As a result, the appeal of Christian Louboutin (“Louboutin”) was not successful and the fashion atelier Yves Saint Laurent (“YSL”) was not enjoined from using a red sole as part of a monochrome red shoe. The ruling, deciding a novel and hotly debated issue of U.S. trademark law regarding aesthetic functionality, is a victory for both sides in some respects, yet certainly leaves the door open for future debate and lawsuits about the scope of the Louboutin mark’s protection.

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By Victoria Lee and Ted Max

In this hyper-digital age, the designer brand's focus has gradually shifted from primarily print advertising media to reaching consumers through the Internet and many forms of social media with branded entertainment in the form of short fashion films. The fashion film trend pairs fashion brands with famous directors and actors to produce beautiful and easily-accessible short films, which feature the brand and highlight certain seasonal fashion designs or product lines. These films impact an advertising and marketing message while also appealing to consumers’ artistic sensibilities.

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Though the news of Nike's exclusive deal with the NFL broke some time ago, the agreement will officially go into full effect this month and the look of Monday Night Football is about to change. Replacing adidas, this will be the first time that Nike, who was a NFL supplier in the mid-nineties and has maintained individual deals with players, will exclusively supply all 32 teams. The deal, for which Nike reportedly paid $1.1 billion dollars, covers the entire player's uniform including jerseys, belts, pants, socks and gloves.

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By Tyler Baker

Luxury brand titan Louis Vuitton recently achieved a significant victory over counterfeiting of its designer products. In an action brought in the U.S. District Court for the Western District of Texas, Louis Vuitton sued the Eisenhauer Road Flea Market, its owner, Bruce L. Gore, and its manager, Patricia D. Walker, for contributory trademark infringement, alleging that the defendants had failed to prevent vendors from selling fake Louis Vuitton goods at the flea market. See Louis Vuitton Malletier v. Eisenhauer Road Flea Market, Inc., No. SA-11-CA-124 (W.D. Tex.). Louis Vuitton stated that counterfeit “LV” products were abundant at the flea market and that Louis Vuitton had given Gore and Walker sufficient opportunities to discipline their vendors that engaged in phony sales. Louis Vuitton alleged, notwithstanding this notice, that Gore and Walker chose to be “willfully blind” to such infringing activity. Gore testified that he warned market tenants not to sell counterfeit goods, only to have those vendors nonetheless engage in distribution of bogus items after they said they would not.

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By Shannon King

The multi-million dollar trademark and trade dress dispute between Italian fashion label Gucci and American designer Guess?, Inc. ("Guess?") marches on toward trial as Judge Shira Scheindlin of the United States District Court for the Southern District of New York largely rejected Guess?'s motion for summary judgment to dismiss Gucci's claims on February 14, 2012. The Court granted summary judgment and dismissed Gucci's claims for monetary relief on the basis of federal trademark dilution as to two designs but left the majority of Gucci's infringement claims untouched.

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THE SITUATION IS ASKED NOT TO COVER HIS SITUATION WITH ABERCROMBIE ANYMORE

Abercrombie & Fitch issued a press release offering The Situation (of MTV's The Jersey Shore fame) "substantial payment" to stop wearing Abercrombie's clothes. The company's main concern is brand dilution. The press release explains the company is worried that The Situation's "association with our brand could cause significant damage to our image" and that this association "is contrary to the aspirational nature of our brand, and may be distressing to many of our fans." Whether this was a clever public relations strategy to generate publicity about the brand during the important back-to-school season or whether it is a legitimate branding issue that had something to do with the dip in Abercrombie's stock following the press release remains unclear. What is clear, however, is that people are talking about it. Common wisdom is there may be no such thing as bad publicity; however, it cannot be ignored that Abercrombie's stock fell sharply the day following the press release.
 

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As we previously reported here, Christian Louboutin ("Louboutin") filed a lawsuit against Yves Saint Laurent ("YSL") in early April, alleging that YSL and its affiliated companies violated Louboutin's red sole trademark by selling women's shoes with red uppers and outsoles alleged to be virtually identical to Louboutin's red sole trademarks.
 

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Social media has become a part of everyday life. As Shakespeare has written: "This news is not old enough, yet it is every day news." The minutiae of every moment is narrated through status updates. Digital photographs are taken and instantaneously posted minute-by-minute on the Internet for the world to see. This lightning fast use of social media raises new and different intellectual property challenges which have not been previously addressed by courts. On January 14, 2011, the Southern District of New York addressed a particularly interesting copyright question raised by the use of Twitpic – a service that allows users to post pictures to the Twitter microblogging and social networking website. Agence France Presse v. Morel, 2011 WL 147718 (S.D.N.Y. Jan. 14, 2011). 
 

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"There's an app for that.™” The fashion world, and indeed, the general consuming public, is well familiar with this phrase. The expression has become so ubiquitous that Apple has even successfully registered it for trademark protection. But what is the import for the fashion industry? What does "that" refer to, and what are its legal ramifications? What’s behind the simple swipe of a finger that allows consumers to sit front row at fashion shows around the world?
 

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Online piracy and internet counterfeiting are unfortunate realities in our Information Age. On the Internet, a counterfeiter can sell consumers a pair of counterfeit Louboutins or a fake Hermes Birkin bag purchased with the simple click of a mouse. Other online pirates can sell consumers unauthorized copies of their favorite television show, movie, or music with impunity. In response to the onslaught of online counterfeiters, Senate Judiciary Committee Chairman Patrick Leahy (D-Vt) and senior Republican member Orrin Hatch (R-Ore) have introduced the Combating Online Infringement and Counterfeits Act ("COICA")(S. 3804)[1], a bipartisan bill that would give the Justice Department an expedited means to track and shut down unlawful domains devoted to the unauthorized downloading, streaming, and sale of copyrighted content and counterfeit goods. On November 18, 2010, the Senate Judiciary Committee unanimously voted in favor of COICA and sent the bill to the full Senate for consideration.
 

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On November 30, 2010, the Judiciary Committee of the United States Senate unanimously passed the Innovative Design Protection and Piracy Act (“IDPPA”) (S. 3728), which was introduced by Senator Charles Schumer (NY) on August 6, 2010.
 

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High fashion eyewear company Revolution Eyewear, Inc., won a total victory in a patent infringement case filed against the company and its president, Gary Martin Zelman, by Aspex Eyewear, Inc. The U.S. District Court for the Southern District of Florida granted Revolution’s motion for summary judgment of non-infringement of United States Patent RE 37,545 (‘545 patent) in Aspex Eyewear, Inc., et al. v. Marchon Eyewear, Inc., et al., No. 09-61515. The Court ruled that Aspex was legally barred from pursuing its patent infringement claims against Revolution’s bottom-mounting magnetic clip-on eyewear. The Court also granted summary judgment in favor of the other defendants, which sell bottom-mounting eyewear under a license from Revolution.
 

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As the perfume industry has blossomed into a $20 billion dollar a year business, it has encountered a formidable adversary in the form of "smell-alike" fragrances. Such perfumes are unlicensed "copies" of popular fragrances that are meant to appeal to those who wish to possess premium scents without the premium prices. Smell-alikes have achieved a significant percentage of the perfume market because there is a lack of copyright protection concerning fragrances in most countries. To combat this problem, European perfume manufacturers have been battling in court for protection of their scents for the past decade.
 

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Abercrombie & Fitch has taken quick action to protect its signature fragrance "Fierce" against pop diva, Beyonce Knowles' proposed naming of her forthcoming perfume by Coty, Inc. after her alter ego, "Sasha Fierce". According to the complaint for trademark infringement filed by A & F on September 19, 2009, A & F has held a registered trademark for the mark "Fierce" for fragrances since May 2003, and "Fierce" is the scent wafting from all A & F stores as it is dispersed either though a scent machine or by constant spraying of the cologne by A & F employees. The goal being that every A & F garment is infused by the citrus scent.
 

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The Finnish textile and clothing company Marimekko announced recently that it reached a settlement with Dolce & Gabbana S.r.L. and Dolce & Gabbana Industria S.p.A. over the use of its trademarked Unikko floral design pattern.

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In an age of "knock-offs," patent protection is an avenue that can be used by the fashion and apparel industry to protect products.  Every week, the United States Patent and Trademark Office grants dozens of patents on a diverse range of apparel and fashion accessories (for example, shoes, hats, handbags and clothing among other items).  Most of these patents are "design patents."  Under United States Patent Law, there are two broad categories of patents:  "utility patents," which protect the way an invention is used and works, and "design patents," which protect the ornamental appearance of a useful article.

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Piracy is not just a problem on the high seas or the internet: fashion designers have fallen victim, too.  Current copyright laws protect only the artwork of a design, such as labels, logos, prints and embroidery.  Leave off the label or change the logo slightly, and manufacturers and copy-cat designers have free reign to duplicate the cut, shape, style, and silhouette of an item of clothing or an accessory.  This widespread practice of design piracy by popular retailers is legal…for now.

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A recent case involving fragrance manufacturer Davidoff and retailer CVS addressed the importance of quality control procedures related to fragrance product packaging.  In Davidoff v. CVS Corporation, Davidoff, the trademark holder for his line of "Cool Water" fragrances, alleges that CVS violated the Lanham Act by selling counterfeit Cool Water products and by selling decoded gray-market products.  On June 25, 2007, the Southern District of New York granted Davidoff's request for preliminary injunction enjoining CVS from selling any counterfeit and gray-market Davidoff goods, finding that Davidoff had shown a likelihood of success on the merits of his case.

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