Main

Fashion Archives

April 15, 2009

New Fashion Committee

EASL is proud to announce the formation of a new committee on Fashion Law, co-chaired by David H. Faux and Cathryn A. Mitchell. This committee will keep its members apprised of new developments in copyright, trademark, and other applicable business laws that particularly apply to the business of fashion. Already, the co-chairs are planning events in survival skills for designers and designers’ representatives in a down economy, updates on the efforts to gain copyright protection for designs, and more. They are also looking to expand options and opportunities for committee members to be involved and informed. If interested, please join the committee by responding to Carolyn Clayton at cclayton@nysba.org, or contact Dave (davefaux@dhf-law.net) and Cathy (cam@cll.com) for more information.

January 20, 2010

Back door to fashion copyright protection?

By Marie-Andree Weiss

In a case filed on December 18, 2009 in the New York Southern District Court, Nygård International Partnership claims that the Canadian Broadcasting Company (CBC) copied without authorization plaintiff's copyrighted performance/material.

Here are the facts of the case, as stated in the complaint: Nygård opened a store in Manhattan last November, and organized a fashion show featuring Nygård merchandise as part of the opening celebration. Nygård invited only a limited number of preapproved media members, and had them all sign an agreement limiting their rights to record the show. CBC had not been invited to the show, and thus had not signed the agreement. One of its employees nevertheless allegedly made an unauthorized recording of the event, even after having been asked by a Nygård employee to leave the store. A cameraman who may be a CBC employee also made an unauthorized video recording of it.

Count 1 of the Complaint claims that defendant infringed Nygård's exclusive rights in its copyrighted works. Which works are they, the fashion clothes or the fashion show?

Plaintiff applied for copyright registration for the show. Searching the copyright office database reveals that it holds two copyright registrations for a motion picture of the fashion show, one contained on four DVDs, and one contained on one DVD. Nygård claims that the distribution of images of its fashions prior to their release in the marketplace would give its competitors an unfair advantage, and could cause Nygård to lose control over its intellectual property.

But which intellectual property is it? Nygård's competitors are fashion houses, not media companies. It seems that by claiming copyright protection of the movie picture depicting the fashion show, Nygård is trying to indirectly protect its fashion creations. As we know, clothes, even highly fashionable ones, are not protected by U.S. copyright laws, because they are useful articles

By claiming copyright protection of the recording of a fashion show, featuring fashion clothes not protected by U.S. copyright, could fashion designers protect their creations? If successful, this case could allow protecting fashion clothes using a back door, or perhaps one should say, a stage door.

What could be the outcome of this case? In a similar case, Sarl Louis Féraud Inter v. Viewfinder Inc. (S.D.N.Y 2005), the S.D.N.Y. dismissed French Fashion house plaintiffs Féraud and Balmain's action to enforce two judgments issued by the Tribunal de Grande Instance de Paris against Viewfinder, an American company. Viewfinder's Internet site had reproduced photographs of plaintiff's fashion shows.

One of Viewfinder's arguments had been that the French judgment was repugnant to the New York public policy because it was inconsistent with American intellectual property law. Fashion designs are indeed protected by French copyright law: article L.112- 2 14° of the French Intellectual Property Code (thereafter French IP Code) specifically lists as protected works "creations of the seasonal industries of dress and articles of fashion." Interestingly, fashion shows, although not expressly protected by the French IP Code, are protected under its article L112-1 which grants protection to the "rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose." This rather large definition encompasses fashion shows. Until recently though, French Courts had not explicitly held that fashion shows were protected, even though legal IP scholars, such as Professor Pierre-Yves Gautier, argued that they ought to be. The Criminal Chamber of the Cour de Cassation, France's Supreme Court, finally held in February 2008 that a fashion show is protected by French IP laws, and thus the persons who reproduced it illegally were indeed guilty of the crime of counterfeiting (Cass. Crim. February 5, 20008, number 07-81.387).

Since plaintiffs could not copyright their dress designs in the U.S., Viewfinder's argued that its photographs could thus not be found to violate plaintiffs' property interests under U.S. law. The S.D.N.Y refused to enforce the French judgment, stating that doing so would have been repugnant to the public policy of New York State under C.P.L.R. § 5304 (b)(4). However, it did not decide that enforcing the Paris court's judgment would be repugnant because the French intellectual property laws differ so from those of the United States, but because enforcing it would violate Viewfinder's First Amendment rights. Even if the plaintiffs' designs were copyrightable, U.S. copyright law provides "as a matter of First Amendment necessity, a "fair use" exception for the publication of newsworthy matters (Viewfinder, 406 F.Supp.2d at 284). The Court noted that "fashion shows are a matter of great public interest, for artistic as well as commercial purposes" and that "the extensive coverage given to such events in various mass media makes clear that there is widespread public interest in these matters."

This argument did not fare well with the Court of Appeal for the Second Circuit (Feraud v. Viewfinder, 489 F.3d 474 (2nd Cir. 2007), which vacated the lower court's order for failure to conduct the full analysis necessary to reach the conclusion that Viewfinder's First Amendment rights would be violated. The Second Circuit noted that the First Amendment does not provide a categorical protection, and it must co-exist with intellectual property laws: "the fact that an entity is a news publication engaging in speech activity does not, standing alone, relieve such entities of their obligation to obey intellectual property laws."

As for the 'fair use' argument, the Second Circuit cited Harper & Row, 471 U.S. at 557, 105 S.Ct. 2218, where the Supreme Court had found that publishing "newsworthy matters" is not necessarily fair use. This precedent may be helpful to Nygård, should the defendants invoke fair use as a defense. Regardless, this interesting case should be monitored closely by those interested in finding a way to protect fashion designs in the United States.

Link to Nygard complaint:
http://www.scribd.com/doc/24376395/Complaint-Copyright-Trespass-CBC

Link to French IP Code:
http://195.83.177.9/code/liste.phtml?lang=uk&c=36&r=2494

Link to Sarl Louis Feraud Int'l v. Viewfinder, Inc. (2nd Cir. 2007): http://vlex.com/vid/sarl-louis-feraud-int-l-viewfinder-28797792

March 3, 2010

Fashion Law Committee Trade Show Calendar

By David H. Faux
EASL Fashion Law Committee

A Fashion Trade Show calendar is now available for members of EASL’s Fashion Law Committee. This calendar lists all the trade shows by date, location, and website that are occurring in New York City in any given month. The calendar will be updated regularly.

Please contact Biana at bianachka06@yahoo.com for access. Please also be aware that we are still in the “experimental” stage of launching this calendar, restricting access from the general public, and keeping it updated. If there are glitches, that is because there are supposed to be glitches in the beginning. Let Biana Borukhovich or I (davefaux@dhf-law.net) know about them.

A special thanks to the Fashion Law Society at Touro Law Center.


March 28, 2010

Let's Dance All The Way To The Copyright Office: Can The Mardi Gras Indians Costumes Be Protected By Copyright?

By Marie-Andrée Weiss

The New York Times reported this week the plight of the Mardi Gras Indians (http://www.nytimes.com/2010/03/24/us/24orleans.html). They create beautiful costumes by hand, often at great expense, to wear during festivities three times a year in the streets of New Orleans, like beautiful butterflies. Of course, they are very popular with photographers, and these photographs are sometimes used on calendars or posters, without their creators being able to benefit financially.

That is because under U.S. law, these costumes are considered clothing, and as such, useful articles that cannot be protected by copyright. Photographs of these costumes cannot be considered derivative works.

Could these costumes be protected by copyright?

According to the recent New York Times article, Ms. Ashlye M. Keaton, an attorney representing the Indians, is trying to find a way to protect their rights. What avenues may be open for these costumes to be protected?

Are these costumes useful?

"Useful articles" are defined by 17 U.S.C. § 101 as "having an intrinsic utilitarian function that is not merely to portray the appearance of the article." As beautiful and outrageous as these costumes are, they still carry out a useful function, keeping the body of its wearer warm, and protecting him from being seen naked in public, which, even during Mardi Gras, is illegal in New Orleans. So, they are "useful" in some ways.

Can the artistic qualities of the costume be separated from their utilitarian nature?

Useful articles, however, may be protected by copyright only to the extent that "their design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the article" (17 U.S.C. § 101).

The House Report for the bill which became the 1976 Copyright Act (House Report no. 94-1476) noted that a design cannot be protected by copyright under the bill unless the product contains "some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article." So even a useful article can be protected if its creator can show that some of its aesthetic features are "separable" from its utilitarian aspects.

Courts apply a "conceptual separability test" in order to determine whether copyright protection may be granted to a useful article, by assessing whether the primary ornamental aspect of the work is conceptually separable from its subsidiary utilitarian function (Kieselstein-Cord v. Accessories by Pearl, Inc. 632 F.2d 989). Well, I just spent some time admiring pictures of Mardi Gras Indians costumes posted online, and many elements of the costumes are visually separable from the utilitarian aspect, the costume as a body cover. As a matter of fact, some of the costumes are reminiscent of halos bordering icons, and constitute a frame around the dancer's body.

What if the costume is designed to provoke an emotion?

In Masquerade Novelty v. Unique Industries, the Third Circuit held in 1990 that a mask portraying the nose of an animal is not a useful article for the purposes of §101, as its utility is not to portray an animal nose, but rather to make people laugh when they see someone wearing the mask.

So, could "emotional usefulness" be a criterion as well? The Mardi Gras Indians costumes play a crucial social role in conveying strong emotional reactions when watching the dancers celebrating Mardi Gras, an euphoric holiday created in Europe as a day of celebration before plunging into the rigors of both Lent and cold weather.

Let's argue then, that the Indians' costumes are something truly beautiful, and these costumes can be certainly considered beautiful by many people. Anyway, courts do not judge people's tastes, as "it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judge of the worth of pictorial illustrations, outside of the narrower and most obvious limits"(Bleinstein v. Donaldson lithographing Co. (188 U.S. 239)).

Could a photograph be used to protect the costumes?

Ms. Keaton is quoted in the New York Times as trying to protect these costumes by copyright so that the photographs of these costumes could be then considered derivative work. Yet would it be possible to use copyrighted photographs of these costumes in order to protect the costume themselves?

A photograph, just as a sketch, is a two-dimensional rendition of a subject, and can be protected by copyright as long as it is original. Would a three-dimensional reproduction of the picture be protected? After all, the Second Circuit found that the sculptor Jeffrey Koons had infringed a photographer's copyright when creating a three-dimensional sculpture of one of his photographs, which depicted a couple on a bench holding puppies (Rogers v. Koons, 960 F.2d 301). Taking that route may be a way to prevent a third party from reproducing a costume, but would not prevent a photographer from taking another picture of the same costume, as photographing a particular subject does not prevent others from doing the same.

In Galiano v. Harrah's Operating Co., Inc., a Fifth Circuit case (416 F.3d 411), a uniform designer had received copyright protection for sketches she had made of casino employee uniforms as part of the creative process of designing these uniforms. These sketches were classified as "two-dimensional artwork." The casino continued to order the uniforms from the manufacturer, even after its business agreement with the designer had ended. The designer sued the casino for copyright infringement, claiming that the finished garments were derivative works. She was unsuccessful, and the Fifth Circuit (to which Louisiana belongs) concluded that she did not own a valid copyright to the clothing designs.

By the way, is it a costume or a sculpture?

Ms. Keaton is also arguing that these costumes could be considered sculpture. In 1984, the Ninth Circuit reversed a district court that had granted summary judgment on the grounds that a swimsuit created by the appellant Mr. Poe was useful. So a swimsuit, or, for that matter, any other garment, may or may not be useful, and whether it was an utilitarian article of clothing or a work of art has to be resolved by the trier of fact. (Poe. V. Missing Persons, 745 F.2d 1238).

Right of publicity

The New York Times notes that the Mardi Gras Indians are tired of seeing their images being used in commercial ventures, such as calendars or posters, without receiving any money themselves for the commercial exploitation of their images. But isn't this a commercial use of not only the costumes, but also of their personal identity? As such, they are entitled to have their rights protected by the right of publicity, which is the right to control the commercial use of one's image. Louisiana has adopted the right of publicity through common law. In New York State, it has been recognized by statute, NY Civ. Rights Law §§50 51.

Of course, using that route would not prevent the copying of the costumes by another party, as the right of publicity and copyright are distinct rights.

What gives?

Fashion designs are still not protected in the United States, but maybe it is time to amend the Copyright Act to protect at least one-of-a-kind costumes.

September 9, 2010

IDPPPA: The Copyright Compromise

By Biana Borukhovich, EASL Fashion Law Committee Member

Is the third try a charm? That is what Senator Schumer and the fashion industry are pondering. As some of you may know, Representative Robert W. Goodlatte and other representatives, such as Hillary Clinton, introduced the Design Piracy Prohibition Act (DPPA) into Congress, twice. This bill was designed to Amend Title 17 of the Copyright Act to offer copyright protection to fashion designers. Nevertheless, this bill has been pending in the Senate since August 2, 2007.

However, a new name and a few additional provisions have offered new hope for these representatives. On August 6, 2010, Senator Schumer introduced the Innovative Design Protection and Piracy Prevention Act (IDPPPA), which can be found at http://thomas.loc.gov/cgi-bin/query/z?c111:S.3728. This bill was introduced to offer similar protection to fashion designers for their original creations. Both the DPPA and IDPPPA offer copyright protection to designers for 3 years for their original designs, but not for articles in the public domain. Moreover, neither bill speaks to fashion designers' liability for "independent creations" of similar designs.

Conversely, the IDPPPA has offered a few new set-asides from the DPPA. Under the new bill, fashion designers do not have a registration period during which they must apply for copyright protection. In addition, the new bill provides that a claimant can only plead the facts with particularity, which is a heightened standard compared to that of the DPPA. Under this standard, the complainant must meet three elements: (1) the design must be original, (2) the defendant's design is substantially identical and (3) the defendant had the opportunity to have seen the design before it was released publicly. Hence, such a standard would deter fraudulent and futile lawsuits that the previous bill might have encouraged.

In my opinion, this new bill seems more practicable at this point in time. Although I am all for the passage of the DPPA, at the same time, in an economy such as the one the U.S. is struggling with right now, we must take precaution in passing bills that might affect the job market. Hence, I think that the IDPPPA offers equilibrium between the designers and the "secondary" designers, a.k.a copycats, because it offers protection for fashion designers without offering over breadth provisions that would cause chaos in the fashion industry and unnecessary litigation. What do you think?

December 10, 2011

Counterfeit Goods: Life After Seizure

By Connie Gibilaro

On November 15, 2011, Belal Amin Alsaidi, a 30 year old Virginia store owner, pleaded guilty to trafficking counterfeit goods. Alsaidi admitted that he sold counterfeit shoes and apparel at two of his stores from May 2007 through March 2009.

According to the U.S. Department of Justice (http://www.justice.gov/opa/pr/2011/November/11-crm-1492.html), Alsaidi admitted that he purchased over 1,400 packages of counterfeit merchandise from an individual in New York. The merchandise included knockoff apparel from brands including Nike, NFL, Lacoste, True Religion, and Coogi. Alsaidi faces a maximum penalty of 10 years in prison and a $2 million fine. The punishment illustrates law enforcement's attempt to deter potential counterfeiters from committing this crime.

So, what will happen to all of these seized items?

Alsaidi's indictment seeks to seize the counterfeit items and the profits from any sales. Government officials could burn the knockoff Nike apparel according to the 2010 Joint Strategic Plan on Intellectual Property Enforcement (http://www.whitehouse.gov/sites/default/files/omb/assets/intellectualproperty/intellectualproperty_strategic_plan.pdf), which states that infringing goods can be destroyed under the supervision of the Customs Border and Protection (CBP). However, the 2011 U.S. Intellectual Property Enforcement Plan (http://www.whitehouse.gov/sites/default/files/ipec_anniversary_report.pdf) did not mention that counterfeit goods can be destroyed after they have been seized. In fact, the word "destroy" does not appear in the entire 2011 plan. This might show the government's intent to preserve counterfeit goods.

The United States wouldn't be the first country to put infringing merchandise to good use. The Musée de la Contrafaçon (http://www.placesinfrance.com/counterfeit_museum_paris.html), or Counterfeit Museum, is a museum in Paris, France that exhibits more than 350 items and where each counterfeit is paired with its authentic original. The Union des Fabricants, an organization of manufacturers, established the museum in 1951 to portray the detrimental effects of counterfeiting on industries and world economies. However since no such museum exists in the United States, it is unlikely that Alsaidi's counterfeit apparel will be displayed for the American public anytime soon.

A central purpose of the Musée de la Contrafaçon has been to educate people on the differences between authentic goods and their infringing counterparts. It is unclear whether the United States IP Task Force (http://www.justice.gov/dag/iptaskforce/)supports similiar goals. According to the Department of Justice (http://www.justice.gov/), the mission of the IP Task Force is to "build on previous efforts in the Department to target intellectual property crimes and to address technological and legal landscape in this area of law enforcement."

The IP Task Force seems to be more concerned with enforcing intellectual property rights than informing the public on how to identify fake goods. Regardless, Alsaid's case portrays how the Task Force plays an integral role in the battle against counterfeiting.

Top 10 Seized Counterfeit Goods (Crime Inc.: Counterfeit Goods - CNBC http://www.cnbc.com/id/37824347):

1. Footwear

2. Consumer Electronics

3. Apparel

4. Handbags/Wallets/Backpacks

5. Media

6. Computers/Hardware

7. Cigarettes

8. Watches/Parts

9. Jewelry

10. Pharmaceuticals

Ad That Is Too Scandalous for Europe...

By Tyler Davis

They say any publicity is good publicity, but that is not always the case.

Britain's Advertising Standards Authority (ASA) has shut down Marc Jacobs' ad, for its Oh' fragrance Campaign, as it is just too scandalous. A recent ruling determined that the ad violated both the Social Responsibility and Harm and Offense codes (http://www.cap.org.uk/The-Codes/CAP-Code/CAP-Code-pdf-versions.aspx) in the UK. It depicts Dakota Fanning wearing a candy pink dress and eyeing the camera seductively, while the 17 year old holds a bottle of the perfume between her thighs (http://www.dailymail.co.uk/femail/article-2059097/Dakota-Fannings-sexually-provocative-perfume-ad-banned.html).

Who gets to decide when fashion and advertising cross the line? England has burdened the ASA (http://www.asa.org.uk/)with this job. According to its website, the ASA operates to "ensure ads are legal, decent, honest, and truthful;" and it functions on a complaint and ruling process. The general public is free to make comments and complaints to the ASA website regarding any ad campaign in England.

Fashion brands face legal and legislative obstacles when creating and publishing ads in global markets. What works in some venues, may just not be fashionable in another. It is important for everyone in design, marketing, and PR to communicate with in-house or outside counsel on matters of legality for copy and print in advertisements.

The ASA cited the ad as portraying "the young model in a sexualized manner," and that the positioning of the perfume bottle was sexually provocative. "We considered the ad could be seen to sexualize a child. We therefore concluded that the ad was irresponsible and was likely to cause serious offense."

So is fashion taking it too far? Marc Jacobs thinks not, and voiced his opinion on the matter stating many positive remarks about Ms. Fanning, "it's really unfortunate that people have taken anything negative from what we believe is a really good campaign, and one that so perfectly embodies the fragrance."

Fashion is art, and art is expression. Is letting the public decide what's acceptable the best way to regulate fashion advertising?

Eben-Seizure Scrooge: "Operation In Our Sites" Strikes Again on Cyber-Monday

By Jen Mecum

For the second year in a row, just in time for the holiday online shopping rush, "Operation In Our Sites" stormed the Internet, executing federal seizure orders against 150 domain names of websites selling and distributing alleged counterfeit goods and copyrighted works illegally.(http://www.forbes.com/sites/billsinger/2011/11/28/bah-humbug-operation-in-our-sites-nabs-150-websites-on-cyber-monday/)

The initiative, spearheaded by U.S. Immigration and Customs Enforcement (ICE) (http://www.ice.gov/), was launched in June 2010 to combat intellectual property piracy problems cropping up in online stores.

Undercover federal agents made purchases of various products, such as DVDs and sunglasses, that were advertised by their online retailers as bearing bona fide trademarks. The legal trademark and copyright holders were asked to verify the authenticity of such products. If the products did not pass muster, a federal seizure order was executed to essentially freeze the website. All seized websites (http://www.forbes.com/sites/billsinger/2011/11/28/bah-humbug-operation-in-our-sites-nabs-150-websites-on-cyber-monday/) bear a seizure banner and warning that willful copyright infringement is a federal offense.

Though Attorney General Eric Holder claims that the seized websites "are selling counterfeit goods for their own personal gain while costing our economy much-needed revenue and jobs," (http://www.wired.com/threatlevel/tag/operation-in-our-sites/) the initiative has been met with much opposition. One critic denounces the initiative as stretching due process "to its breaking point" by shutting down the websites, effectively giving the businesses no way to stay afloat while they defends their rights. (http://www.thewhir.com/blog/David_Snead/113011_Operation_in_our_sites_redux) Another critic argues that ICE is abusing its power to seize physical tools and products by enlarging its power to include seizure of domain names.(http://www.techdirt.com/articles/20110521/14304814372/why-operation-our-sites-is-illegal-needs-to-be-fixed-asap.shtml)

January 14, 2012

VERSACE AUCTIONS OFF INTERNSHIP FOR CHARITY

By Kim Swidler

The House of Versace has joined with charitybuzz.com to auction off an internship at its New York City offices during the summer or fall semester of 2012 (http://www.charitybuzz.com/categories/55/catalog_items/2919122).

The internship provides no compensation, and neither travel costs nor accommodations are included. However, the fashion house says that the winner can earn college credit and values this experience at $10,000.00.

What will the recipient of this prize be doing? Charitybuzz.com states that "the winner will help organize and execute any NYC-based events (usually one per season) all while gaining internship experience in the high-energy and exciting world of fashion at one of the world's most dynamic and creative fashion houses."

The auction ends on January 19, 2012 at 3:40m EST and, as of this writing, the bid is presently at $3,250.00 plus "shipping/handling costs" and sales tax for New York and California residents.

Proceeds of the auction are to benefit Oceana (http://na.oceana.org).

Kim Swidler invites your comments on this and other future fashion blogs. Please share your thoughts.

January 20, 2012

Weekly Issues in the News

By Geisa Balla

On January 18, 2012, more than 10,000 of the world's favorite websites, including then English Wikipedia, Reddit and Google, made their opposition to the Stop Online Piracy Act ("SOPA") and the Protect Intellectual Property Act ("PIPA"). The English Wikipedia blacked out entirely on January 18, 2012, in protest of SOPA and PIPA. As one of the largest and best-coordinated online protests, this media blackout had a lot of people talking, and did in fact seem to change the minds of some of the bill's sponsors. "Earlier this year, [the Protect IP Act] passed the Senate Judiciary Committee unanimously and without controversy," wrote Republican senator Marco Rubio of Florida, a co-sponsor of the bill, on his Facebook page. "Since then, we've heard legitimate concerns about the impact the bill could have on access to the Internet and about a potentially unreasonable expansion of the federal government's power to impact the Internet. Congress should listen and avoid rushing through a bill that could have many unintended consequences."
http://www.nytimes.com/2012/01/19/technology/web-protests-piracy-bill-and-2-key-senators-change-course.html?_r=1

On January 19, 2012, the United States Department of Justice shut down Megaupload.com, one of the most popular file-sharing services on the web. The Department of Justice charged seven individuals and two corporations, Megaupload Limited and Vestor Limited, with running an international organized criminal enterprise, and generating more than $175 million in criminal proceeds and causing more than half a billion dollars in damages to copyright owners. In its press release, the Department of Justice states "This action is among the largest criminal copyright cases ever brought by the United States and directly targets the misuse of a public content storage and distribution site to commit and facilitate intellectual property crime."

http://www.justice.gov/opa/pr/2012/January/12-crm-074.html

Five employees filed a class action lawsuit against Forever 21 in the San Francisco Superior Court on January 18, 2012. The employees allege that Forever 21 systematically failed to pay them for hours worked, and denied them meal breaks. Forever 21's loss prevention policy mandates bag searches before employees clock out, and plaintiffs here allege that Forever 21 routinely searched their bags after they clocked out, and failed to pay them for that time.

http://www.huffingtonpost.com/2012/01/18/forever-21-lawsuit-class-action_n_1214359.html?ref=style&ir=Style

Mike Sorrentino, Jersey Shore's "The Situation", has been sued by an apparel company, Serious Pimp, for breach of contract. Serious Pimp and Mr. Sorrentino entered into an agreement whereby Mr. Sorrentino would promote Serious Pimp's line of t-shirts in exchange for a $25,000 advance payment. Serious Pimp now claims that Mr. Sorrentino took the money and failed to comply with his contractual obligations.

http://www.tmz.com/2012/01/13/the-situation-serious-pimp-lawsuit-t-shirts-michael-sorrentino/

Kim Kardashian filed a lawsuit against The Gap in July of 2011, alleging that The Gap created confusion in the marketplace and violated her rights to her name and likeness when it used model Melissa Molinaro in a TV commercial. Ms. Kardashian claimed that The Gap violated her legal rights by using this particular model that looked strikingly similar to Ms. Kardashian. The Gap's defense strategy in its litigation against Kim Kardashian seems to hinge on the value of Ms. Kardashian's reputation and value to her various endorsement deals. The case is now in the discovery stage, and it appears that The Gap is seeking to unveil financial records to reveal Ms. Kardashian's true financial value from her various endorsement deals.

http://www.hollywoodreporter.com/thr-esq/kim-kardashian-gap-reputation-lawsuit-282648

January 21, 2012

Is It Just Me? Federal Magistrate Invalidates Federal Registration for "We Not Me" Trademark

By Gordon M. Daniell

Giving designers and practitioners alike an example of the phrase "say what you mean, and mean what you say," a Federal Magistrate in the Southern District of Oregon granted summary judgment for the Defendants (Adidas, The NBA, The Boston Celtics Basketball Team and Kevin Garnet); voiding an attorney's registered trademark for the phrase "We Not Me" for use on clothing, because the attorney failed to demonstrate a bona fide intent to use the phrase on the all of the goods listed on his application for federal trademark registration. Yet all was not lost for the Plaintiff, as Judge Paul Papak found that the Plaintiff had used the phrase in a trademark sense on hats and t-shirts, and could proceed on this ground.

For those in the Fashion, Apparel and Trademark worlds, the case is useful for two reasons: 1)It serves as a reminder to Trademark practitioners to ask clients about what their intentions are with the marks, and 2) to make clients aware of the dangers of failing to properly account for intended uses. For designers, it gives an excellent guide for claiming rights through use of a company's trademark outside of the garment's label or hang tag.

For Practitioners, a Cautionary Tale

As initially reported in the New York Law Journal (http://www.law.com/jsp/nlj/PubArticleNLJ.jsp?id=1202537395046), the case revolves around "Naperville's Idea Man" W. Brand Bobsky, an attorney, real estate broker, and philanthropist in Naperville, IL. (http://www.brandrealtyco.com/about.cfm) Bobsky first developed the phrase "We Not Me" in 2000, and throughout the next several years, took steps to bring the concept to a wide audience. He printed the phrase on lapel pins, key chains, beer cups, and encouraged its use by celebrities, including Regis Philbin and Oprah Winfrey. Bobsky filed for Federal Trademark registration in 2004, under the "INTENT TO USE" ("ITU") section of the Lanham Act, which allows applicants with a bona fide intent to use the mark in commerce on goods or services to file for protection based on that intent. The application claimed an ITU on several types of products initially, but was amended after Bobsky, seeking to enforce his rights in "WE NOT ME", was threatened with a fraud claim by Adidas' Inhouse Counsel. Amended, the claim extended only to hats. He filed a second ITU application, this time including "hats, clothing namely shirts and sandals." He continued to use the mark on hats, as well as on the sleeve of shirts and on sandals.

Judge Papak voided Bobsky's claims to the first application, ab initio because Bobsky could not provide or show through testimony that he intended to use the mark in commerce on all of the goods listed in either of the applications. Citing case-law as well as McCarthy on Trademarks, the court noted that proving intent to use a mark in commerce commonly requires a written "plan of action", and that statements of subjective intent are not sufficient in themselves to prove intent. The court noted further that, without that documentation, the burden shifts to the applicant to show why those documents do not exist. Bobsky could not produce a plan of action, and testified that he thought the list of goods in the first application "came with the territory." The court found further that even though Bobsky had used the mark on hats in the second registration, he could not show that he had intended to use the mark on all of the goods listed. Again turning to Bobsky's testimony, Judge Papak ruled that because the applicant must have a bona fide intent to use the goods on all of the goods or services listed in the application, and Bobsky could not show that he did (and testified even that he did not), the second application was also ruled void ab initio.

This creates a red flag for practitioners filing trademarks on behalf of their clients. Taking the time to consult with qualified Trademark counsel regarding the client's marks and mark strategy will pay dividends should the mark come to litigation. Practitioners should ask the hard questions about whether, how, and on what the client intends to use the mark, and should make sure to counsel the client that he/she/it should retain all business plans, minutes of meetings, and emails, which could later be used to prove intent.

For Designers, the Gift that Keeps on Giving

Clearly, Judge Papak meant his December 29th opinion to be a holiday gift to those in the world of Design and Apparel. The second half of his opinion provides an easy to understand discussion of how a designer may use its logo on clothing as a mark, without its becoming a merely "ornamental design."

Despite the registrations for "We Not Me" having been found void ab initio, the phrase does appear on hats as well as shirts and sandals. Thus, assuming the phrase is used as a trademark on those goods, Bobsky would be able to continue in his claim against Adidas et. al. under the Lanham Act.

The court turned its analysis to whether Bobsky had engaged in "trademark use." Unfortunately, not everything that appears on a label may receive trademark protection. Those rights come from its use to identify the product, as something exclusive of all other products in the market. This type of use must exist in order to find trademark infringement. To make things more complicated, designs may serve as ornamentation, but also as a trademark. Putting a mark or logo on garments that someone else produces can constitute trademark use; and the question of whether or not the mark/logo/design is used as a trademark will be one of fact. There is no specific place where one must put one's logo, and even putting the logo across the front of the garment (see NFL, NCAA, NASCAR, or the U.S. Army, for example) can still create trademark use as long as it identifies the logo's owner. Citing the Trademark Manual of Examining Procedure, Judge Papak noted that "the size, location, dominance and significance of the alleged mark as applied to the goods are all factors which figure prominently in the determination of whether it also serves as an indication of origin".

Bobsky used the phrase in one small spot on the sleeve of his shirts bearing the ® symbol of a registered trademark, and another medium sized logo over the breast. His use on hats was a similar, slightly larger logo relative to the overall size on the rear of the hat, with the logo on the front. Judge Papak found an issue of fact existed as to whether the use in question was enough to constitute "trademark use." The sandals found less success, as the logo was the only ornamentation, and was much larger relative to the size of the sandals, and possessed no ® symbol.

For Designers, this case offers some guidelines of using a logo outside of its common place on a tag buried at the back of a garment. Trademark rights may be had, even if the logo serves a decoration, as long as it also serves to identify the designer's brand. To suggest source, rather than be a nice design, the mark must be kept relatively small, should have an ® or "TM" symbol, and should not be intertwined with a design, or included in a pattern that covers the entire garment. Think of it as putting the tag on the outside or using it like a corporate polo-style shirt. The logo is there, but isn't there for its design qualities.

The case number is CV IO-630-PK.

September 28, 2012

Pearls of Wisdom for the FTC? - The FTC is Seeking Comments on its Jewelry Guides

By Sarah Robertson (Robertson.Sarah@dorsey.com), Fara Sunderji (sunderji.fara@dorsey.com), and Susan Progoff (progoff.susan@dorsey.com)

The Federal Trade Commission (FTC) is currently seeking comments to its Jewelry Guides. The Guides help businesses avoid deceptive claims and unfair trade practices for precious metals, pewter, diamonds, gemstones, and pearl products. The current version of the Guides, see http://www.ftc.gov/bcp/guides/jewel-gd.shtm, was last comprehensively reviewed in 1996, but four amendments have been made since then. This time around, the FTC is welcoming comments on any related topics, but it is specifically soliciting thoughts on the following issues: (1) the marketing of lead-glass-filled composite stones (e.g., "composite" rubies); (2) use of the word "cultured" in marketing laboratory-created diamonds and gemstones; (3) disclosures relating to freshwater pearls and treatments to pearl products; and (4) content descriptions of alloys and alloy products containing precious metals in amounts less than the minimum thresholds currently reflected in the Guides.

Comments can be submitted at https://ftcpublic.commentworks.com/ftc/jewelryguidesreview/. The comment period closes on September 28, 2012.

For information about EASL's Fashion Law Committee, contact Co-Chairs David Faux (davefaux@dhf-law.net) and/or Lisa Willis (lmw@cll.com).

Senator Schumer Reintroducing the Copyright Design Protection Legislation

By Sarah Robertson (Robertson.Sarah@dorsey.com), Fara Sunderji (sunderji.fara@dorsey.com), and Susan Progoff (progoff.susan@dorsey.com)

Senator Charles Schumer (D., N.Y.) introduced a modified version of the controversial Design Piracy Bill into the Senate on Monday, September 10, 2012. The Senate Judiciary Committee has now favorably reported the bill to the Senate. A copy of the bill as revised, S. 3523, the "Innovative Design Protection Act of 2012," can be found here. http://www.opencongress.org/bill/112-s3523/show. With Congress only expected to be in Session for a few more weeks prior to the election, it is unclear what progress the reintroduced Bill will make.

For information about EASL's Fashion Law Committee, contact Co-Chairs David Faux (davefaux@dhf-law.net) and/or Lisa Willis (lmw@cll.com).

October 19, 2012

Jovani Fashion v. Fiesta Fashions

By Barry Werbin

The Second Circuit, in an unpublished Oct. 15th short opinion, addressed fashion design functionality and copyright in JOVANI FASHION v. FIESTA FASHIONS, No. 12-598-cv. Jovani sued Fiesta for copyright infringement of its design of a prom dress. To avoid the "utilitarian" functionality defense to copyrightability under Copyright Act Section 101's definition of a ""useful article," Jovani alleged that the dress merited copyright protection because its design constituted a combination of features "that can be identified separately from and are capable of existing independently of, the utilitarian aspects of the article," specifically, "the arrangement of decorative sequins and crystals on the dress bodice; horizontal satin ruching at the dress waist; and layers of tulle on the skirt." The Second Circuit's response: "We are not persuaded." Dismissal followed.

The Court held that in the context of clothing designs, "[p]hysical separability can be shown where one or more decorative elements 'can actually be removed from the original item and separately sold, without adversely impacting the article's functionality.'"....That is plainly not the case here. Jovani has not alleged, nor could it possibly allege, that the design elements for which it seeks protection could be removed from the dress in question and separately sold."

The Court also addressed "conceptual separability," where a designer exercises artistic judgment "independently of functional influences," rather than as "a merger of aesthetic and functional considerations." In this case, the Court found that the artistic judgment exercised with respect to the alleged design elements "does not invoke in the viewer a concept other than that of clothing... these design elements are used precisely to enhance the functionality of the dress as clothing for a special occasion. In short, here the aesthetic merged with the functional to cover the body in a particularly attractive way for that special occasion." The Court's discussion also addressed the seminal Barry Kieselstein-Cord case (Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d at 993) and Halloween costume cases (such as Chosun Int'l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 328 (2d Cir. 2005) and Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d at 455).


February 7, 2013

U.S. Supreme Court Holds Covenant Not To Sue Moots Counterclaim For Trademark Cancellation

By Sarah Robertson, Susan Progoff, Fara Sunderji and Jena Tiernan of Dorsey & Whitney LLP

The United States Supreme Court in Already, LLC v. Nike, Inc., Appeal No. 11-892, 568 U.S. __, 2013 WL 85300 (January 9, 2013), held that a covenant not to enforce a trademark against a competitor's existing products and any future "colorable imitations" moots the competitor's action to have the trademark held invalid.
Nike designs, manufactures and sells a line of shoes under the trademark AIR FORCE. Already sells a line of competing shoes under the trademarks SOULJA BOYS and SUGARS. Nike brought suit for trademark and trade dress infringement, and Already counterclaimed to have Nike's trademark registration cancelled.

Eight months after Nike filed its complaint, and four months after Already counterclaimed, Nike issued a covenant not to sue, in which it "unconditionally and irrevocably" agreed not to make "any" claim or demand against Already or any of its related business entities, distributors, employees or customers for trademark infringement, unfair competition or dilution based on the appearance of "any of Already's current and/or previous footwear product designs, and any colorable imitations thereof. . ." After issuing the covenant not to sue, Nike dismissed its claims against Already with prejudice and moved to dismiss Already's counterclaim as moot. The district court dismissed the counterclaim, holding that because there was no evidence that Already sought to develop any shoes that would not be covered by the covenant, there was no longer a controversy to support declaratory judgment jurisdiction. The Second Circuit affirmed.

The Supreme Court affirmed the dismissal of Already's counterclaim. There must be an actual controversy at all stages of a litigation. Here, Nike dismissed its claims with prejudice and issued its covenant, which called into question the existence of any continuing case or controversy. The Court found that Nike's covenant is unconditional and irrevocable. It prohibits Nike from making any claim or demand. It extends to Already's distributors and customers. It covers existing designs and any colorable imitation. Further, because Nike has taken the position with the court that there is no prospect of any new shoe design that would potentially infringe its trademark and not fall within the scope of the covenant, Nike would be hard pressed to assert to the contrary in the future.

Already claimed that it would be harmed because (1) investors would be reluctant to invest so long as Nike is free to assert a trademark claim; (2) in view of Nike's decision to sue in the first place, Nike's trademarks will hang over Already's operations like a Damoclean sword; and (3) as one of Nike's competitors, Already inherently has standing to challenge Nike's trademarks. The Court found none of these injuries was sufficient to create Article III standing.

In a concurring opinion, Justice Kennedy clarified that the burden in this case was on Nike to show that the case was moot, not on Already to show that a justiciable controversy remained.
________________________________________

Prom Dresses Decorate the Second Circuit, but Receive No Copyright Protection

By Sarah Robertson, Susan Progoff, Fara Sunderji and Jena Tiernan of Dorsey & Whitney LLP

On October 15, 2012, the Second Circuit affirmed the dismissal of Jovani Fashion Ltd.'s (Jovani) copyright claim against Fiesta Fashions for copying its prom dress design. The Second Circuit rejected Jovani's argument that the "arrangement of decorative sequins and crystals on the dress bodice; horizontal satin ruching at the dress waist; and layers of tulle on the skirt" are copyrightable based on a theory of conceptual separability. For conceptual separability to apply, the designer must have exercised artistic judgment separate and apart from the functional purpose of the article. However, the dress in this case could not be copyrightable because "the aesthetic merged with the functional to cover the body in a particularly attractive way for that special occasion," and thus the prom dress at issue fell squarely into the definition of a useful article. The court's opinion focused on the two main functions of clothing: decorating the body and covering it. Interestingly, the court distinguished Halloween costumes, which can contain copyrightable elements if they invoke a character rather than adding to the clothing function of the costume. The Second Circuit's opinion reaffirmed that fashion designs are not protected from copying under the current law.

Intentional Infringer Subject to Suit in IP Owner's Home Court

By Sarah Robertson, Susan Progoff, Fara Sunderji and Jena Tiernan of Dorsey & Whitney LLP

The Ninth Circuit Court of Appeals recently decided a jurisdictional case that should make it easier for IP owners to bring infringement actions in the owner's home state instead of where a remote defendant may be located. In Washington Shoe Company v. A-Z Sporting Goods, Inc., 105 USPQ2d 1138 (9th Cir. 2012), the court held that a defendant who operated a single store in Arkansas was subject to suit for copyright infringement in Washington State, where the copyright owner was located. The defendant, A-Z Sporting Goods (A-Z), purchased shoes from Washington Shoe, the plaintiff and copyright owner. One of Washington Shoe's sales representatives visited A-Z's store, noticed that A-Z was selling infringing shoes and subsequently Washington Shoe's counsel sent A-Z two cease and desist letters. When A-Z received the letters, it removed the infringing shoes from its store but sold its remaining inventory of those items to a thrift store.

The Ninth Circuit applied the "purposeful direction" or "effects" test, analyzing whether A-Z (1) committed an intentional act, (2) that was expressly aimed at Washington, the forum state, and (3) that caused harm that A-Z knew would likely be suffered in Washington. The court answered all three questions in the affirmative. A-Z intentionally purchased and sold the infringing boots. Although these acts took place in Arkansas, they were expressly aimed at the copyright of Washington Shoe because A-Z knew or should have known after receiving the cease and desist letters that its intentional acts would affect Washington Shoe's copyright. A-Z also either knew or should have known that Washington Shoe was a Washington corporation. The economic harm caused by the copyright infringement occurred both in Arkansas, where the infringing sales took place, and in Washington, where the copyright holder was located. Thus, A-Z could have "'reasonably anticipate[d] being haled into court' in Washington." As a result of this decision, willfully infringing a copyright may provide sufficient minimum contacts requisite for personal jurisdiction in the copyright owner's home forum.

Patent Infringement Suit Over Yoga Pants

By Sarah Robertson, Susan Progoff, Fara Sunderji and Jena Tiernan of Dorsey & Whitney LLP

Lululemon, maker of fashionable yoga and exercise pants with an adjustable waistband, recently sued Calvin Klein Inc. and its supplier, G-III Apparel Group Ltd., in the United States District Court for the District of Delaware for infringement of three design patents covering Lululemon's adjustable waist pants.

As it is unusual for a patent infringement suit to involve an article of clothing, particularly something as fashionable as Lululemon's yoga pants, the case attracted a great deal of attention. A confidential settlement agreement reached before either defendant responded to the complaint has prevented the parties from disclosing details of the dispute's resolution.

Fendi Awarded At Least $12 Million Against Counterfeiter

By Sarah Robertson, Susan Progoff, Fara Sunderji and Jena Tiernan of Dorsey & Whitney LLP

The Second Circuit Court of Appeals in Fendi Adele, S.R.L. v. Ashley Reed Trading, Inc., No. 11-3025, 2013 WL 48688 (2d Cir. January 4, 2013), affirmed summary judgment, holding the defendants liable for willful counterfeiting for their sale of counterfeit FENDI bags. The district court awarded Fendi $12 million in trebled damages, prejudgment interest, costs and attorneys' fees based on the defendants' profits from selling counterfeit FENDI bags in 2005 and 2006. The defendants appealed the judgment, alleging that the district court committed various evidentiary errors. Fendi cross-appealed, claiming that, based on the district court's finding that the defendants were liable for counterfeiting from 2001 through 2004, in addition to the years on which the damages award was based, the award should be increased to account for the defendants' profits during those years as well.

The Court of Appeals held that the defendants were properly found to be willful counterfeiters. The evidence showed that after receiving a cease and desist letter from Fendi in 2001, the defendants were clearly on notice that they might be selling counterfeit FENDI merchandise. After being put on notice, the defendants failed to inquire about the authenticity and original sources of the products they purchased. The defendants' suppliers provided them with "sanitized" invoices that did not disclose the original sources and in some cases, refused to provide any paperwork. The defendants failed to maintain records of their transactions with suppliers and did not maintain any documentation of their purported side-by-side comparisons of their merchandise with genuine FENDI products. In addition, what the court characterized as "most telling," the defendants returned their remaining FENDI merchandise to their supplier when Fendi filed suit, so that the merchandise could not be inspected, and did not keep any records relating to these goods or their return. Based on this evidence, the court held that no reasonable jury could have found that the defendants acted with sufficient care. Accordingly, the court affirmed the finding of liability for willful counterfeiting.

As the defendants were found to have sold counterfeit FENDI bags from 2000 through 2006, the court found the district court's award of damages for only 2005 and 2006 to have been facially inconsistent. Consequently, the Second Circuit vacated the damage award and remanded the case to the district court to determine whether it would be equitable to award damages only for 2005 and 2006, or whether damages should be awarded for the entire period for which the defendants were found to have sold counterfeit FENDI products.

Sale Of Counterfeit UGG Products Leads To Domain Name Transfer And Asset Freeze

By Sarah Robertson, Susan Progoff, Fara Sunderji and Jena Tiernan of Dorsey & Whitney LLP

In an unpublished decision in Deckers Outdoor Corporation v. Does 1-100, Docket No. 12 C 10006 (N.D. Ill. January 16, 2013), the court converted a temporary restraining order into a preliminary injunction against a collection of individuals and business entities residing in China and other foreign countries who operate websites selling counterfeit UGG merchandise. The defendants' websites used domain names that incorporated the UGG trademark and depicted their products using Deckers' copyrighted images. After being served with the temporary restraining order, the defendants did not appear in the lawsuit and did not contest the preliminary injunction motion. The court enjoined the defendants from further violating Deckers' trademark and copyrights, ordered the transfer to Deckers of the defendants' domain names and froze defendants' PayPal and other accounts associated with the defendants' websites.

February 21, 2013

Ashby Donald and others v. France

By Barry Werbin

A fascinating and unusual decision of first impression (published only in French) from the European Court of Human Rights (ECHR) involves the rights of photographers to use photographs taken at French fashion shows. Under French law, the fashion houses own the copyrights to any photos taken at a show. In the case, Ashby Donald and others v. France [ECtHR (5th section), 10 January 2013], the Court clarified for the first time that a copyright infringement conviction based on illegally reproducing or publicly communicating copyright protected material can be deemed an interference with the rights of freedom of expression and information under Article 10 of the European Convention.

The petitioners were three fashion photographers (one being an American), two of whom republished on their own fashion website for their own purposes photos taken by one of the other plaintiffs at fashion shows without permission of the fashion houses. They were ordered by a Paris court to pay fines and damages to a clothing designer and five fashion houses, totaling €255,000. After losing an appeal to the French Supreme Court, the photographers appealed to the ECHR.

Article 10 provides for an EU right to freedom of expression, that "may be subject to such formalities, conditions, restrictions or penalties as are prescribed by law and are necessary in a democratic society..." en.wikipedia.org/wiki/Article_10_of_the_European_Convention_on_Human_Rights. French copyright law has an exception "allowing the reproduction, representation or public communication of works exclusively for news reporting and information purposes." echrblog.blogspot.com/2013/01/copyright-vs-freedom-of-expression.html.

The ECHR found for the first time that national copyright laws may have to yield in proper circumstances to this EU law of freedom of expression (similar to the First Amendment in the context of a fair use debate), but noting that "[t]he Court hereby confirms its approach that while freedom of expression is subject to exceptions, these exceptions must be construed strictly, and the need for any restrictions must be established convincingly." Id.

However, based on the facts of this case, the ECHR held there was no violation of Article 10 because the use of the photos was "not related to an issue of general interest for society and concerned rather a kind of 'commercial speech.'" Id. It also emphasized that national laws are entitled to wide deference. In addition, the ECHR found the fines and substantial damages award not to be disproportionate to the legitimate goals of the French copyright law, noting that the petitioners presented no evidence that the monetary awards had "financially strangled" them. Id.

So we are not alone in the U.S. in struggling with finding the right balance between copyright protection and freedom of expression in a modern Internet age.

If you read French, you may access the opinion at: hudoc.echr.coe.int/sites/eng/pages/search.aspx?i=001-115845

An excellent blog by a German professor that interprets and translates parts of the opinion is available at: echrblog.blogspot.com/2013/01/copyright-vs-freedom-of-expression.html. Of interest is the professor's note that "the Court's judgment is a clear illustration of the difference between, on the one hand, expression and content contributing to an issue of public debate or a debate of general interest for society, and on the other hand, 'commercial speech'. Speech, messages, pictures and content which are merely money driven do not enjoy the added value of the protection guaranteed by Article 10 of the Convention."

July 18, 2013

Child Model Legislation

by Anny Mok and Lisa Willis

On Wednesday, June 12, 2013, a bill recognizing runway and print models under the age of eighteen as "child performers" passed both houses of the New York state legislature. See a summary of the Assembly bill here. The bill is awaiting Governor Cuomo's signature to officially become law. Previously, New York law recognized child actors, writers, musicians, comedians, and dancers as "performers," but not models. Models were excluded from this category, although the statute defined a performer as someone who "renders artistic or creative services."

While the NYS Department of Labor protects other child performers through regulations regarding education, health, and finances, some argue that child models, who are covered by the Department of Education regulations, did not receive comparable protection. Supporters of the bill contend that this limited protection, and under-enforcement of the existing Department of Education regulations, have led to systemic unsatisfactory working conditions and harmful outcomes for this vulnerable group, including onerous work schedules, lack of financial transparency, models foregoing their education, development of eating disorders, and sexual harassment and abuse.

With the new bill, child models will now receive the same protections and benefits afforded other child performers, includingchaperones for models under sixteen, tutors, limits on work hours and mandatory trust accounts.

The Model Alliance, a not-for-profit organization that advocates for improvement in the working conditions of models, and co-sponsor of our On the Heels of the Week event, was the primary force behind the new bill. Sara Ziff, model and founder of the Model Alliance, participated on our panel, as did Paula N. Viola, an FLC member, former model, and Model Alliance supporter and Doreen Small, a member of the Model Alliance advisory board. Sara, Paula and Doreen all appeared at the press conference announcing the legislation. To view the press conference and for more information about the legislation, visit the Model Alliance's website at www.modelalliance.org.

For more information and background about the issues facing young models, see Craig Tepper's article in the upcoming Summer issue of the EASL Journal.

Unpaid Internship Lawsuits

By Nadine Etienne

There has been a rise in the fashion industry of individual and class action lawsuits brought by and on behalf of unpaid interns. On February 1, 2012, a class action was filed against Hearst Corporation in the Southern District of New York on behalf of a class of unpaid interns, alleging violations of federal and state labor and employment laws. The plaintiffs interned at various magazines under Hearst Corporation such as Harper's Bazaar, Marie Claire, and Cosmopolitan. Judge Harold Baer from the S.D.N.Y. recently denied class certification for plaintiffs' NY Labor Law violations claim because of a lack of commonality and predominance. The only common factor among the interns who worked at Hearst since 2009 was the fact their internships were unpaid. The named plaintiffs in the Hearst case are seeking leave for appeal. More recently, on June 13, 2013, two former interns, Lauren Ballinger and Matthew Lieb, filed suit against Condé Nast in the S.D.N.Y., claiming labor violations occurring during their respective internships at W magazine and The New Yorker. Additionally, on February 15, 2013, Dajia Davenport, a former unpaid intern at Elite Model Management, filed a class action against the agency in the S.D.N.Y for $50 million for wage violations.

The Rise of Design Patents: Spanx v. Times Three Clothier

By Amelia Wong

On March 5, 2013, Spanx, Inc. filed suit in the U.S District Court for the Northern District of Georgia seeking a declaratory judgment that its tanks and camisoles do not infringe defendant Times Three Clothier, Inc.'s ("Yummie Tummie") design patents for its shapewear. The lawsuit was filed in response to Yummie Tummie's cease-and-desist letter to Spanx claiming that Spanx infringed certain design patents related to its 3-panel slimming camisole design patent.

Yummie Tummie in turn sued Spanx in the Southern District of New York on April 2, 2013, alleging infringement of six design patents.


Polo Ralph Lauren Wins Twin Matches from United States Polo Association

By Sarah Robertson, Susan Progoff, and Fara Sunderji

Two recent decisions were issued in a war that has raged on and off since 1984 between PRL USA Holdings, Inc. (PRL) and United States Polo Association (USPA). PRL and USPA have been battling for years over the right to use a logo consisting of a polo player on a horse and the word POLO as trademarks for clothing and other products. The dispute officially began in 1984, when USPA and its licensees sought a declaratory judgment against PRL that various types of merchandise bearing USPA's horse and rider logo did not infringe PRL's horse and rider logo. PRL counterclaimed for trademark infringement. The court denied USPA's request for a judgment of non-infringement and enjoined USPA and its licensees from using any confusing marks, and from making commercial use of the name UNITED STATES POLO ASSOCIATION or any other name that emphasizes the word POLO in a manner that is likely to cause confusion with PRL or its trademarks. However, the 1984 order specifically permitted USPA to conduct a retail licensing program using its name, a mounted polo player or equestrian or equine symbol that is distinct from PRL's Polo Player logo, and other trademarks that refer to the sport of polo.

In 2000, PRL brought suit against USPA and its master licensee affiliates seeking to bar the use of USPA's name and its Double Horsemen Mark on apparel and related products. This lawsuit was settled in 2003 with a settlement agreement that set forth the terms under which USPA could use its name and certain designs on apparel, leather goods and watches. The settlement agreement incorporated certain provisions of the 1984 order.

In 2009, USPA filed another complaint against PRL seeking a declaratory judgment that it had the right to sell fragrance products bearing the trademarks U.S. POLO ASSN., the Double Horsemen Logo and 1890, the year the association was founded. PRL and its licensee, L'Oreal, who intervened in the action, counterclaimed for trademark infringement and sought a preliminary injunction. On May 13, 2011, Judge Sweet in the Southern District of New York issued an opinion holding that USPA's use of a logo consisting of two mounted polo players and its use of composite word marks in which the word POLO predominated infringed PRL's marks. The May 13th opinion also found that USPA acted in bad faith in adopting its Double Horsemen mark for fragrances, and enjoined USPA's use of the Double Horsemen mark and the word POLO for fragrances and related products, in addition to enjoining its use of any PRL trademark for any product or service in a manner that is likely to cause confusion.

On February 11, 2013, the Second Circuit Court of Appeals, in a summary order, affirmed the District Court's May 13, 2011 opinion (Appeal No. 12-1346-cv). On appeal, USPA argued that the District Court erred in finding that USPA acted in bad faith in light of USPA's previously granted right to use its Double Horsemen Logo and U.S. POLO ASSN. in connection with apparel. Dismissing this argument, the Court of Appeals concluded that USPA's authorization to use the mark in one industry does not necessarily mean that it acted in good faith in using the mark in a different industry. USPA also claimed that because of the similarities between fragrances and apparel, it had the right to expand the use of its mark into fragrances. The Court rejected USPA's position. Finally, USPA challenged both the District Court's application of a presumption of irreparable harm in deciding to enter an injunction, and the scope of the injunction as excessively broad. The Court found both of these arguments to be meritless. The District Court did not rely upon a presumption of irreparable harm. Rather, it found irreparable harm in PRL losing control over its reputation and goodwill through USPA's infringement. The Court found the injunction's scope to be appropriate in view of USPA's history of repeated infringement.

At the same time the appeal was moving forward, PRL moved in the District Court to have USPA held in contempt of the May 13, 2011 injunction because of USPA's sale of sunglasses bearing the Double Horsemen Logo. The court found the injunction clearly and unambiguously prohibited USPA from using any image that is likely to cause confusion with PRL's Polo Player logo, irrespective of the product on which the logo is used. After reviewing the parties' marks, the court held that PRL showed by clear and convincing evidence that the Double Horsemen mark that USPA was using on its sunglasses was a simulation of PRL's Polo Player trademark and therefore was prohibited by the injunction. Because PRL had known of USPA's use of the Double Horsemen logo since 2010, however, the court held that PRL had acquiesced in USPA's use of that mark, a factor that was relevant to the consideration of an appropriate sanction. Due to PRL's acquiescence, the court found PRL to be entitled only to the future profits from the sale of any sunglasses bearing the Double Horsemen logo for a period of 60 days after the date of the court's order on the motion for contempt.

Anti-Counterfeiting Update

By Sarah Robertson, Susan Progoff, and Fara Sunderji

Recently, the designer Tory Burch was awarded relief in two different cases pending before the United States District Court for the Northern District of Illinois. In Tory Burch LLC v. The Partnerships and Unincorporated Associations Identified on Schedule "A," Civil Action No. 13 C 2059 (March 27, 2013), Judge Kendall granted an ex parte temporary restraining order against an inter-related group of Chinese-based individuals and business entities alleged to be working in concert to manufacture and sell counterfeit TORY BURCH merchandise, which was offered through hundreds of websites and online marketplaces. The court also authorized the transfer of the defendants' domain names to Tory Burch and froze the defendants' financial assets that were subject to the court's jurisdiction, such as PayPal accounts and other means by which the defendants received payment for their counterfeit products. As the defendants had provided false addresses to the domain name registrars, the court permitted them to be served by e-mail and electronic publication. Finally, the court granted the plaintiff's motion for expedited discovery of the defendants' bank and payment system accounts, finding good cause for such discovery because the defendants were located overseas and had gone to great lengths to conceal their identities.

In the second case, Tory Burch LLC v. The Partnerships and Unincorporated Associations Identified on Schedule "A," Civil Action No. 13-cv-1396 (April 8, 2013), the court entered a default judgment against a group of defendants who were selling counterfeit TORY BURCH merchandise online. In addition to granting the same kind of injunctive relief to Tory Burch, the court in this case awarded the plaintiff statutory damages of $2 million from each defendant, and directed that all monies held by PayPal in the defendants' accounts be released to the plaintiff as partial payment of the damages award. The plaintiff also received ongoing authority to serve the court's order on any banks, other financial institutions and financial service providers in the event that a new account controlled by the defendants is identified and, upon receipt of the court's order, the financial institution or provider is required to transfer any funds in any such account to the plaintiff.

Adidas and Reebok obtained similar relief from the United States District Court for the Southern District of Florida in Adidas AG v. Adidascrazylight2.com. Civil Action No. 13-21230-CIV-ALTONGA (April 16, 2013), in which Adidas and Reebok sought a temporary restraining order and preliminary injunction against a series of partnerships and unincorporated associations that operate websites selling infringing ADIDAS and REEBOK merchandise. The court granted a temporary restraining order prohibiting the defendants from advertising or selling counterfeit or infringing merchandise and from disposing of any products or evidence relating to the manufacture or sale of such merchandise. In addition, the court directed the defendants to discontinue all use of the plaintiffs' trademarks in connection with the defendants' websites, and in any domain names, metatags, source code, advertising links, search engines' databases or cache memory, and in any other form that is visible to computer users. The defendants were also enjoined from transferring the domain names in issue during the pendency of the lawsuit and the domain name registrars were directed to transfer the domain names to the plaintiff for deposit with the court. The court further ordered the privacy services for the domain names in issue to disclose the owners of the domain names to the plaintiff.

Those Red Soles are Back in Court

By Sarah Robertson, Susan Progoff, and Fara Sunderji

Earlier this month, Christian Louboutin filed another lawsuit claiming infringement of its red soles. This time, the target is Charles Jourdan Fashion Footwear, which sells shoes to retailers such as DSW and Designer Shoe Warehouse. Citing to the now famous Second Circuit opinion, Christian Louboutin S.A.S v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2nd Cir. 2012), the complaint declared that "The United States Court of Appeals for the Second Circuit conclusively found that Plaintiffs' marks have achieved strong secondary meaning and are entitled to be protected against infringing uses when such use, as by Defendants herein, is of a Red Sole in contrast with the remaining parts of the shoe. Thus, this is the law of the case." Christian Louboutin S.A.S v. Charles Jourdan Fashion Footwear, LLC No. 13-CV-3776 (S.D.N.Y. June 4, 2013) (internal citations omitted). The parties reportedly settled the matter on July 15, 2013.

Juicy Couture Proves U.S. Infringement, but Court Refuses Injunction Elsewhere

By Sarah Robertson, Susan Progoff, and Fara Sunderji

Juicy Couture recently brought suit in the United States District Court for the Southern District of New York against a group of six defendants, five of which were based in Hong Kong, for trademark counterfeiting, infringement, and cybersquatting arising out of the defendants' use of the trademarks JUICY GIRL, JUICYLICIOUS, and JG in connection with the sale of women's clothing. Juicy Couture, Inc. v. Bella International Limited, Civil Action No. 12 Civ. 5801 (March 12, 2013). The court found that since 1995, the defendants had been operating a chain of retail stores primarily in Hong Kong, China, and Macao, in which they sold several different brands of clothing, although their primary brand was JUICY GIRL. The defendants used social media, such as Facebook, Twitter, and Sina Weibo, which was directed largely to China, to promote their products. Although the vast majority of the defendants' sales were made outside the U.S., they sold less than $3,000 of JUICY GIRL merchandise into the U.S. through their website www.juicygirl.com.hk. This website is maintained and operated in Hong Kong, but it accepts orders from around the world through PayPal.

Applying the factors from Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), the court held that there is a likelihood of confusion in view of the strength of the plaintiff's JUICY, JUICY GIRL and related JUICY formative marks, the similarity between the parties' respective marks, and the similarities of the products, trade channels and consumers involved. The court also found irreparable harm flowing from the plaintiff's inability to control its reputation, and that the balance of hardships tipped in the plaintiff's favor in view of the small volume of the defendants' sales that take place in the U.S. Accordingly, the court granted a preliminary injunction against the defendants' use of the JUICY GIRL mark in the U.S.

The plaintiff also sought an order disabling the defendants' Hong Kong website. Although one of the six defendants was based in the U.S., that defendant did not exercise any control over the defendants' operations, let alone the type of control that would allow the court to ignore the foreign status of the remaining five defendants. In addition, there was a parallel lawsuit pending in Hong Kong in which the defendants claimed to be the prior users of the JUICY GIRL trademark. An extraterritorial injunction issued by the U.S. court might conflict with the defendants' valid rights in Hong Kong, an issue still to be determined by the Hong Kong court. Further, the defendants' sales in the U.S. were so minimal that they did not create a substantial effect on U.S. commerce. Based on these facts, the court denied a preliminary injunction as to the defendants' activities outside the U.S., but allowed the plaintiff to renew its request if discovery discloses facts that warrant the court's reconsideration of the issue.

FTC's Textile Rules are Changing

By Sarah Robertson, Susan Progoff, and Fara Sunderji

The Federal Trade Commission (FTC) is in the process of revising and updating its Textile Rules that operate in association with the Textile Fiber Products Identification Act, 15 U.S.C. § 70. The proposed changes may impact provisions on fiber naming, country of origin identification, e-commerce, and guarantees. Interestingly, however, the FTC is considering allowing manufacturers to create hang-tags that disclose fiber names, trademarks and non-deceptive performance claims, without disclosing a product's complete fiber content, as currently required. To prevent consumers from being misled about the limited amount of information presented on such hang-tags, the FTC has proposed a requirement for manufactures to include a disclaimer, such as "This tag does not disclose the product's full fiber content,'' or ''See other label for the product's full fiber content." The FTC sought public comments on all of the proposed changes through July 8, 2013.

FCPA Investigates Actions Against Ralph Lauren

By Sarah Robertson, Susan Progoff, and Fara Sunderji

On April 22, 2013, the U.S. Department of Justice (DOJ) and the U.S. Securities and Exchange Commission (SEC) each announced that Ralph Lauren had resolved parallel investigation actions brought against it under the Foreign Corrupt Practices Act (FCPA). Ralph Lauren's pro-active self reporting and cooperating with the SEC made the process go as smoothly as possible.

The charges stemmed from alleged actions taken by Ralph Lauren's indirect, wholly-owned, subsidiary in Argentina. Over a five-year period beginning in 2003, the subsidiary allegedly retained a customs broker to assist with clearing its merchandise. During that period the General Manager of the subsidiary allegedly approved the payment of bribes to permit clearance of items without the necessary paperwork, of prohibited goods and to avoid inspections.

Ralph Lauren learned about the conduct in 2010 when implementing a new FCPA policy under the direction of its board of directors. After employees reviewed the new policy, they informed company officials. The company then terminated its custom broker and took a series of steps which included: 1) amending its anti-corruption policy; 2) enhancing due diligence procedures for third parties; 3) enhancing its commission policy; 4) amending its gift policy; 5) conducting in-person anti-corruption training for certain employees; and 6) eventually terminating its retail operations in Argentina.

Ralph Lauren also cooperated with regulators. The company self-reported, produced all documents, voluntarily furnished translations of documents, made witnesses available for interview, and conducted a world-wide risk assessment.

Under the terms of the DOJ non-prosecution agreement, Ralph Lauren agreed to pay a penalty of $882,000. Under the terms of the SEC agreement, the company agreed to pay disgorgement of $593,000 and prejudgment interest.

While the DOJ frequently resolves anti-corruption actions under non-prosecution agreements, this represents the SEC's first ever non-prosecution agreement in the FCPA context.

Following the investigations, Argentinean tax authorities asked for the names of the Argentinean government officials involved to assist with their own criminal investigation, thus indicating the FCPA's global impact.

November 20, 2013

Fashion Law Legislative Update

By Hilary F. Jochmans

The headlines coming out of Washington DC recently have focused on the shutdown, the near default and the general toxic political environment. However, now that the government is once again open for business and we have averted defaulting on our debts, Congress can consider other legislative matters of particular interest to the fashion and retail communities, such as comprehensive tax reform, including on-line sales tax regulation, immigration, copyright reform, and the focus of this summary: trade.

Trade Promotion Authority

Granted by Congress, Trade Promotion Authority (TPA) allows the White House to submit trade agreements to Capitol Hill for a straight up-or-down vote without amendment. It is often seen as the key to completing trade deals, since other countries can be comforted that the U.S. Congress cannot change the final negotiated deal.

This authority has lapsed and President Obama is now seeking a renewal in order to conclude, by the end of the year, the Trans-Pacific Partnership (TPP). This regional free trade agreement, with 11 other countries in the Asia-Pacific Rim, would be the largest such deal in history and have major implications for the textiles, apparel, and footwear industries in the areas of labor, quotas, and tariffs.

TPA needs to be considered by the Senate Finance Committee, led by Democratic Senator Max Baucus from Montana, and the House Ways and Means Committee, led by Republican Dave Camp from Michigan. Interestingly, both of these elected officials have announced that they are retiring at the end of this Congressional year. To date, legislation re-authorizing TPA has not yet been introduced.

General Information

You may remember the old lottery commercial - "You've got to be in it to win it!" Well, that same axiom applies to government and politics. If there are issues you care about, then it is imperative to communicate this to your elected officials. Over 3,000 bills have been introduced in Congress this year, and the representatives need to hear from their constituents about which ones are of importance to them. You can learn who your representatives are and how to contact them, as well as track legislation at: www.congress.gov.

November 21, 2013

Victoria's Secret Accused of Some Serious Hanky Panky

By Erika Maurice

Hanky Panky Ltd. (Hanky Panky), a small New York-based underwear company, has accused the lingerie goliath Victoria's Secret and its parent company, Limited Brands, Inc. (Victoria's Secret), of trademark infringement. In its complaint filed on October 31, 2013 in the Southern District of New York, Hanky Panky states that Victoria's Secret inappropriately used the name "After Midnight" to launch a new collection of products consisting of an "aphrodisiac" candle, massage oil, perfume product and room spray, which are virtually identical to Hanky Panky's "After Midnight" line of sensual products. Hanky Panky, a company that rose to fame by selling its 4811 lacy thong panty to the likes of Cindy Crawford, claims that it registered the "After Midnight" mark in 2012 and has since invested substantial time and money into the mark which has evolved secondary meaning. "To make matters worse" the complaint continues, Victoria's Secret has also used Hanky Panky's advertising slogan, "Release Your Inner Flirt" in connection with the sale of its new sleepwear, which, according to Hanky Panky, "betrays a studied and deliberate misappropriation of [its] valuable intellectual property." Hanky Panky claims that it has been using the "Indulge" slogan since 2003 and later registered the mark in 2007.

Hanky Panky alleges that Victoria's Secret's misappropriation of its marks has caused harm to its reputation and will lead the public into believing that the two companies are affiliated. Additionally, Hanky Panky stated that, due to Victoria's Secret's relatively larger size and marketing power, Victoria's Secret's use of the marks could lead to reverse confusion and somehow mislead the consuming public into believing that Hanky Panky is infringing on Victoria's Secret's brand. Hanky Panky further claims economic damages, asserting that Victoria's Secret alleged misappropriation prevents it from capitalizing on the time and expense invested in the "After Midnight" and "Indulge" marks, which has thwarted its "economic opportunities", and caused loss of sales and profits. The complaint continues to list two counts of trademark infringement for the misappropriation of both the "After Midnight" and "Indulge" marks, as well as additional counts for false designation of origin and common law unfair competition. In addition to money damages, which includes the cost of corrective advertising to mitigate any consumer confusion, Hanky Panky is seeking an injunction and has also asked the court that all infringing material be handed over to Hanky Panky for destruction. Victoria's Secret has yet to make a public comment or respond to the allegations in the complaint.

Shoes, Shoes, and More Shoes: The Battle over Intellectual Property Protection for Shoe Designs Wages on After Louboutin v. YSL

By Melissa B. Berger

Although not receiving nearly as much publicity as the fight between Christian Louboutin and Yves Saint Laurent over red soled shoes, numerous other federal lawsuits continue to be filed regarding the degree of intellectual property protection that should be afforded to shoes and their design elements. This blog summarizes a sampling of those cases filed during September and October of 2013.

Converse, Inc. v. Autonomie Project, Inc.

On September 9, 2013, Converse, Inc. (Converse) filed a Complaint in the District of Massachusetts against Autonomie Project, Inc. (Autonomie) (Case No. 13-cv-12220), alleging federal trademark infringement, false designation of origin, unfair competition, and dilution, as well as common law trademark infringement, unfair competition, and dilution, and unfair business practices under Massachusetts law.

Prior to initiating this lawsuit, Converse sent a cease and desist letter to Autonomie. Having not received its requested response, Converse now maintains that it has common law and federal trademark rights in various aspects of the trade dress used in connection with the "Chuck Taylor All Star" shoes, "including but not limited to the design of two stripes on a midsole, the design of a toe cap, the design of a multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other," covered by four federal trademark registrations.

Converse alleges that, since 1917, it has sold over one billion pairs of shoes bearing this aforementioned trade dress, which "has become a famous and well-known indicator of the origin and quality of Converse footwear." Converse also emphasizes that its trade dress is "the subject of widespread and unsolicited public attention," including "acclaim in books, magazines, and newspapers" and "frequent appearances in movies and television shows." For instance, Converse cites to books that describe its trade dress "as an icon of American footwear and the most famous athletic shoe in history." Converse therefore alleges that its trade dress has acquired both fame and secondary meaning and that it has "a distinctive appearance using unique and non-functional designs."

Converse alleges that Autonomie, without any authorization from Converse, has been selling, and continues to sell, footwear bearing design elements that are confusingly similar to Converse's trade dress. Converse alleges that, on its website, Autonomie even makes numerous comments acknowledging that its products are very similar in appearance and style to Converse shoes, and even more specifically to the Chuck Taylor All Star shoe. Converse has consequently alleged that Autonomie's infringement is "intentional, willful, and malicious."

Converse asserts that Autonomie's activities are likely to cause consumer confusion and have caused, and will continue to cause, Converse substantial and irreparable injury to its goodwill and reputation. As relief, Converse seeks a preliminary and permanent injunction enjoining Autonomie's alleged activities, an order requiring the destruction of all products and materials related to the alleged infringing products, as well as an award of Autonomie's profits, actual damages, enhanced profits and damages, attorneys' fees and costs, and even punitive damages. Autonomie did respond to Converse's Complaint, which Answer was due on October 30th.

Tommy Hilfinger U.S.A., Inc. and Tommy Hilfiger Licensing LLC v. Jumbo Bright Trading Limited

Just two days after the Converse suit was filed, on September 11th, Tommy Hilfiger U.S.A., Inc. and Tommy Hilfiger Licensing LLC (together, Tommy Hilfiger) filed a Complaint for Declaratory Judgment in the Southern District of New York against Jumbo Bright Trading Limited (Jumbo Bright), which distributes Charles Philip brand footwear. This filing was in response to a number of cease and desist letters that Tommy Hilfiger received from Jumbo Bright regarding its use of a vertical stripe pattern, known as the "Ithaca Stripe," on the inside of its shoes (Case No. 13-cv-06386). Jumbo Bright asserted, in those letters, that it owns common law trademark rights to what Tommy Hilfiger describes as a "vertical stripe pattern used on the interior lining of its footwear, along with three vertical stripes on the shoe rim near the heel" and that Tommy Hilfiger's use of its vertical stripe pattern infringes upon those common law trademark rights.

As a result, Tommy Hilfiger is seeking a declaration from the court that Jumbo Bright's stripe pattern does not function as a trademark because it is merely ornamental, is aesthetically functional, and lacks secondary meaning. Tommy Hilfiger asserts that Jumbo Bright cannot own common law rights in said stripe pattern, as it is merely decorative, fails to serve as a source indicator or to distinguish Jumbo Bright's goods from those of others, and furthermore, that granting any trademark rights in such a design would hinder fair competition within the footwear industry.

Tommy Hilfiger supports its claims by emphasizing that Jumbo Bright previously filed two applications with the U.S. Patent and Trademark Office (USPTO) to try to protect its vertical stripe pattern, both of which were rejected as lacking inherent and acquired distinctiveness and as being merely ornamental or decorative in nature and therefore failing to function as a trademark. Furthermore, despite Jumbo Bright's attempts to overcome these initial refusals, the USPTO maintained its rejections, to which, it appears, Jumbo Bright did not respond. Both of these applications have since been deemed abandoned by the USPTO.

Tommy Hilfiger further claims that, even if Jumbo Bright's stripe pattern was entitled to trademark protection, Tommy Hilfiger has prior use of its "Ithaca Stripe" pattern over Jumbo Bright's usage. Tommy Hilfiger therefore seeks declaratory judgment that its use of the "Ithaca Stripe" pattern does not constitute trademark or trade dress infringement, is not likely to cause any consumer confusion as to source, and does not constitute false designation of origin or unfair competition. Jumbo Bright appears to have executed a waiver of service and its Answer is therefore due on November 12th.

AirWair International Ltd., v. Cels Enterprises, Inc. d/b/a Chinese Laundry

A week after the Tommy Hilfiger suit was filed, on September 18, 2013, AirWair International Ltd., the producer of Dr. Martens footwear (AirWair), brought a suit very similar to Converse, against Cels Enterprises, Inc. d/b/a Chinese Laundry (Cels) in the Northern District of California (Case No. 13-cv-04312). AirWair is alleging federal trademark infringement, false designation of origin, and dilution, as well as California Statutory unfair competition and dilution, and common law unfair competition, in connection with Dr. Marten's registered trade dress, featuring "yellow stitching in the welt area of the sole and a two-tone grooved sole edge," as well as "a distinctive undersole design consisting of a unique horizontal grid pattern." AirWair claims ownership of five trademark registrations covering its trade dress, all of which, it states, have been in use in the United States since 1984.

AirWair asserts that its trade dress has acquired distinctiveness, is non-functional, and is world famous, that Dr. Martens has become one of "the world's greatest and most recognizable brands," and that its boots and shoes are "iconic." AirWair alleges that Cels is selling, under its Chinese Laundry brand, footwear that is confusingly similar to and contains trade dress that is "substantially indistinguishable" from, or "substantially identical to," AirWair's registered trade dress. AirWair also alleges that Cels' copying and infringement is done with knowledge, is deliberate, constitutes unfair competition and an attempt to trade upon Dr. Martens' popularity and reputation, and constitutes a false designation of origin. AirWair further alleges that it has suffered and will continue to suffer reputational damage, as well as lost sales and profits, as a result of Cels' alleged unlawful activities. AirWair further states that Cels has been unjustly enriched by its "unlawful use and imitation of AirWair's registered Trade Dress" and that Cels' actions are likely to "dilute, blur and tarnish the distinctive quality" of that trade dress and to "lessen the capacity of AirWair's marks to identify and distinguish the company's products."

AirWair is therefore seeking a preliminary and permanent injunction of Cels' alleged unlawful activities, as well as an Order requiring Cels to either destroy, or turn over to AirWair, any and all products containing the infringing trade dress, means of making such products, packaging, marketing materials, and any other goods related to its alleged unlawful activities. AirWair has also requested an accounting of Cels' profits arising from its alleged unlawful activities, an award of either actual damages sustained by AirWair or statutory damages, an award of treble damages, pre- and post-judgment interest on all damages awarded, as well as attorney's fees and costs. As of October 29th, the docket did not reflect that a Summons has been returned executed or, consequently, that an Answer has been filed.

Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v, Shoe Confession LLC, Perry Ellis International, Inc., PEI Licensing Inc., and other Doe defendants

Yet another Complaint, this time alleging design patent infringement, in addition to trade dress infringement and unfair competition, was filed on October 11, 2013, by Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II ("Sketchers") against Shoe Confession LLC, Perry Ellis International, Inc., PEI Licensing Inc., and other Doe defendants (collectively, the "Perry Ellis Defendants") in the Central District of California (Case No. 13-cv-07573).

This suit concerns Skechers' shoe entitled the "Skechers Go Run." Sketchers alleges ownership of "exclusive and protectable trade dress rights" in what it terms a "sole bottom trade dress" and an "outsole periphery trade dress" for its Skechers Go Run shoe, which Skechers asserts has acquired distinctiveness and has "an ornamental configuration that uniquely identifies the shoe as emanating from a single source, Skechers." Skechers is alleging that the Perry Ellis defendants' "Pro Player Phaze 2M" shoe infringes its trade dress by using the same repeating cleat and nub patterns used by Skechers, which "deceive[s] consumers into buying defendants' shoes in the mistaken belief that defendants' shoes emanate from Skechers and are genuine Skechers shoes."

Skechers also alleges willful infringement of each of its four U.S. design patents covering various ornamental features of the sole bottom and outsole periphery of its Skechers Go Run shoe. Skechers states that the USPTO, in issuing these patents, has acknowledged that Skechers' designs are "novel, nonobvious, and ornamental." Skechers states that the Pro Player Phaze 2M shoes "embody the patented invention[s] disclosed in" Sketchers' patents and that the shoe so closely resembles the inventions disclosed in its four patents that "an ordinary observer would be deceived into purchasing the Pro Player Phaze 2M shoe in the mistaken belief that it includes the invention[s] disclosed in" those patents.

Skechers' Complaint also includes a claim that "Defendants are willfully, fraudulently, oppressively, maliciously and unlawfully attempting to pass off, and are passing off, their infringing footwear as those approved and/or authorized by Skechers," a violation of common law unfair competition, which Skechers alleges has resulted in irreparable injury to its business reputation. As a result, Skechers seeks preliminary and permanent injunctions enjoining the Perry Ellis defendants from engaging in the alleged activities and an order directing the destruction of all goods and "instrumentalities used in the production" of such goods, as well as a recall of any and all goods and materials infringing any of the Skechers patents. Skechers further seeks treble damages, plus interest, for each claim of trade dress and patent infringement, as well as the Perry Ellis defendants' profits from any sales of the alleged infringing footwear, punitive damages, restitution, and attorneys' fees and costs. As of October 29th, no Answer had been filed in this case.

In conclusion, as all of these cases make clear, the controversy regarding the proper level of intellectual property protection that should be afforded to shoe design is still alive and kicking in the courts in the wake of Louboutin v. YSL.

Hoodlove, LLC v Roc Apparel Group, LLC

By Emma Brady

On August 26th, New Jersey-based company, Hoodlove, LLC (Hoodlove) filed a lawsuit in the United States District Court for the Southern District of New York against, among others, New York-based Roc Apparel Group, LLC (Roc Apparel), alleging trademark infringement, dilution, unfair competition, and false advertising, all in violation of federal and state laws. The mark in question are the words "Hood Love" (Hood Love Mark), which was federally registered by the plaintiff for use in connection with clothing, including baseball caps, headwear, t-shirts, and sweat shirts, in May 2010. The complaint states that Hoodlove is a "for-profit company that focuses on the social and economic development of poverty-stricken communities commonly known as 'the hood.'"

According to the complaint, the defendant, Roc Apparel, distributes and sells the brand "Rocawear", launched by and associated with, rap artist Jay-Z. Hoodlove contends that Roc Apparel has misappropriated the Hood Love Mark to promote and sell apparel on its website and elsewhere without authorization and is likely to cause confusion and to deceive customers and potential customers into believing that the goods are in fact those of Hoodlove or are otherwise connected or associated with Hoodlove.

Hoodlove seeks an injunction restraining the defendants from engaging in trademark infringement, dilution and passing off by distributing and selling the allegedly infringing apparel as well as an award of monetary damages.

Former Donna Karan Intern Sues for Unpaid Wages

By Nadine Etienne

On August 28th, Valentino Smith, a former Donna Karan intern, filed a class action lawsuit against Donna Karan International Inc. and Donna Karan Studio LLC for failure to pay wages pursuant to the New York Labor Law in New York Supreme Court. (On November 8th, the caption of the complaint was amended from Valentino Smith against Defendants Donna Karan International, Inc. and Donna Karan Studio LLC to Valentino Smith against the Donna Karan Company Store LLC and the Donna Karan Company LLC.) Smith worked as an undergraduate intern at the company's Seventh Avenue headquarters in 2009, but now claims he was mischaracterized in contravention of New York Labor Law.

According to the U.S. Department of Labor (DOL) Fact Sheet #71, an unpaid internship must meet a set of criteria that benefits the intern in order to be considered lawful. Specifically, the internship must be similar in training to an educational institution, must be for the benefit of the intern, must not displace regular employees, and may not inure to the employer's immediate advantage. The DOL does not require the internship to entitle an intern to a later permanent position. Additionally, the intern must understand that the position is unpaid.

The New York Minimum Wage Act and Wage Orders Fact Sheet for For-Profit Businesses (Minimum Wage Fact Sheet) applies the DOL's criteria as well as its own in determining an employment relationship. The Minimum Wage Fact Sheet requires intern supervision by persons who have sufficient knowledge of the industry. Interns may not be eligible for employee benefits, and should receive training in skills transferable to any business and not just the specific job with the employer. The Minimum Wage Fact Sheet also requires that internship job postings and advertisements clearly discuss education or training rather than employment.

Recently, in Glatt v. Fox Searchlight, Judge William Pauley issued a ruling in favor of unpaid interns to pursue their class action against Searchlight for unpaid wages in federal court. (No. 11 Civ. 6784 (S.D.N.Y. June 11, 2013)). Conde Nast also has a pending wage and hour lawsuit in federal court from two former interns who worked at The New Yorker and W Magazine. (Lauren Ballinger and Matthew Leib, et al., v. Advance Magazine Publishers, Inc. d/b/a Conde Nast Publications, No 13 Civ. 4036 (S.D.N.Y. June 13, 2013)). In October, Conde Nast announced that it is ending its internship program. The wage and hour suit against Donna Karan may spawn further class action litigation and may have a similar affect on internship programs offered by New York fashion houses.

February 7, 2014

On the Heels of the Week: Privacy, Fashion, and the Internet

Tuesday, February 11, 2014
5:00pm - 8:30pm

- Location -
Kenyon & Kenyon LLP
1 Broadway
New York, NY 10004

As consumers stroll through the doors of their favorite designer flagship or visit their favorite online clothing store, they may not be aware of how much information is being collected about them and their shopping habits. More than ever, retailers are collecting analytic data on consumers that include typical consumer information (name, address, phone number) as well as consumer arrival and shopping habits. Both brick-and- mortar and e-tail fashion retailers can now track consumer in-store and online movements, noting when they visit, what items they stop to admire, and even gathering data on gender, ethnicity, and facial expressions.

Collecting consumer information can be an invaluable tool for retailers, however, it is not without legal implications. EASL's Fashion Law Committee invites you to its third annual "On the Heels of Fashion Week" CLE program, where we will examine these and other privacy issues that arise from the collection and use of consumer information in a retail environment. We will discuss:

* How can fashion retailers collect and use consumer information while balancing the rights of consumers?
* What must be disclosed to consumers about the recording and use of their personal data?
* What type of consumer information is considered Personally Identifiable Information (PII)?
* Is it legal to ask customers for their zip codes or email addresses at checkout?

~Moderator~
Jessica B. Lee, Esq., Loeb & Loeb LLP

~Speakers~
Khaliah Barnes, Esq., Administrative Law Counsel, Electronic Privacy Information Center Barry M. Benjamin, Esq., Partner, Kilpatrick Townsend & Stockton LLP Joseph V. DeMarco, Esq., Partner, DeVore & DeMarco LLP Shelley E. Kohan, Fashion Institute of Technology Daniel Marques, Consulting Chief Technology Officer/Technology Advisor

Program Agenda:
5:00 - 6:00 - Refreshments
6:00 - 6:30 - Overview of federal and state privacy laws
6:30 - 7:00 - Recent privacy cases
7:00 - 7:30 - Sample retail/fashion marketing trends that implicate privacy issues
7:30 - 8:00 - Creating a privacy policy
8:00 - 8:30 - Q&A

This program is sponsored by the Fashion Law Committee of the Entertainment Arts & Sports Law Section of the New York State Bar Association.

To Register Visit: FashionLawCLE

Under New York's MCLE rule, this program is approved for a total of 2.0 credit hours in Professional Practice. his program is NOT a transitional program and does not qualify for newly admitted attorneys.

March 20, 2014

2-4-6-8 Varsity Cannot Copyright

By Barry Werbin and Bryan Meltzer
Herrick, Feinstein LLP

Whether colors and designs placed on useful or functional objects are protected under the Copyright Act is one of the more troublesome issues in copyright law. Tackling this legal fine line, the Western District of Tennessee recently found that cheerleading uniforms featuring geometric, color and other design elements are not copyrightable. Varsity Brands, Inc. (Varsity) is one of the largest designers and manufacturers of cheerleading and dance uniforms. In Varsity Brands, Inc., et al. v. Star Athletica, LLC, 10 Civ. 2508 (W.D. Tenn. March 1, 2014), Judge Cleland found that the designs and colors placed on cheerleading uniforms produced and designed by Varsity, which Varsity alleged were infringed by Star Athletica, LLC (Star), could not be conceptually or physically separated from the cheerleading uniforms themselves because such designs and colors were at the core of "cheerleading-uniform-ness." As a result, Judge Cleland held that even though Varsity held copyright registrations for the designs at issue, it could not maintain its claims against Star for copyright infringement.

As Judge Cleland recognized, "[c]lothing possesses both utilitarian and aesthetic value." If a design "'can be identified separately from, and is capable of existing independently of, the utilitarian aspects'" of the clothing, the design may be copyrightable. But when the design is not separable from its utilitarian function, it will not be copyrightable. Noting that there is "considerable disagreement regarding the proper standard to apply when considering whether the elements of protectable [pictorial, graphic and sculptural works] are separable from their utilitarian function," Judge Cleland based his analysis on two key clauses found in 17 U.S.C. §101: first, "whether the court can conceive of the allegedly copyrightable features as separate from the utilitarian article" (i.e., conceptual separability), and second, whether the design can "exist independently of the utilitarian article" (i.e., physical separability).

With respect to conceptual separability, Judge Cleland found that the uniform designs, which included combinations of braids, chevrons and stripes, did not "invoke any concept other than that of clothing," especially since the copyrighted design sketches depicted the designs on the uniforms worn by cheerleaders. In other words, "a cheerleading uniform is 'a garment specifically meant to cover the body in an attractive way for a special occasion" and "[t]he artistic judgment that is exercised applying stripes, patters, and chevrons, 'does not invoke in the viewer a concept other than that of clothing.'" Id. The court noted in particular that without the colors and designs, a cheerleading uniform ceases to be recognized as a cheerleading uniform, and that the designs actually made the garments into utilitarian uniforms. Accordingly, Judge Cleland found that the designs of the cheerleading uniforms merged with their utilitarian function.

Turning to physical separability, Judge Cleland similarly found that "removing the lines, patterns, and chevrons from the [cheerleading uniforms] and placing them on a different canvas [did] not remove their association as cheerleading uniforms" since the "fabric evokes the image and concept of a cheerleading uniform." In other words, the designs could not exist independently of the uniforms.

Since he found that the designs were not conceptually or physically separable from the utilitarian aspect of the uniforms, Judge Cleland held that the designs were not copyrightable and granted Star's motion for summary judgment, dismissing Varsity's claims.

Judge Cleland's decision is significant because it shows that even copyrighted designs will not be protected if the designs are not "separable" from their functions. Yet how to assess such "separability" remains a challenge for courts. For example, if school logos and other designs were used not only on cheerleader uniforms, but also on school signage, pennants and the like, those designs could be viewed as "separable" as they would not be limited to use on cheerleader uniforms to define such garments as utilitarian uniforms.

The decision will surely upset fashion designers and the entire uniform industry, which may be left with scant copyright protections, and may be troublesome to some copyright practitioners as well.

The decision:Varsity cheerleader decision.pdf

About Fashion

This page contains an archive of all entries posted to The Entertainment, Arts and Sports Law Blog in the Fashion category. They are listed from oldest to newest.

Fine Arts is the next category.

Many more can be found on the main index page or by looking through the archives.