Here's How You Can Protect Your Brand From CopycatsFashion Law Institute in Forbes, April 24, 2012
In light of high profile copyright and trademark cases like those of Gucci vs Guess and Christian Louboutin vs Yves Saint Laurent, I spoke with Eleanor Lackman, a partner at the law firm Cowan, DeBaets, Abrahams & Sheppard. Lackman specializes on issues involving copyrights, trademarks and intellectual property. She has provided legal counsel on trademark infringement to various prestige ready-to-wear and accessories labels.
Below, Lackman gives important advise on protecting your label from would-be imitators and she also gives her thoughts on the hot topics involving Gucci, Guess, Christian Louboutin and Yves Saint Laurent.
Where do you draw the line between counterfeit and creative inspiration?
Something that is counterfeit is very easy to define — it’s using an identical or substantially identical mark on goods in order to pass them off as genuine (whether or not the purchaser is fooled by it). This is a serious problem that goes beyond fashion into other consumer goods, pharmaceuticals and even airplane parts.
An argument for inspiration is most likely to be found in the context of designs and designers have influenced others over the years, but they’ve usually added something new to the product to show their independent creativity. In the real world, knowing what motivates someone is usually the last thing anyone finds out, but when the public starts describing something as a knock-off or a rip-off, you know that’s not the type of language people use to laud someone’s creativity…
Can designers who find copies of their clothes at fast-fashion stores file design infringement lawsuits? Or is the practice too common and too difficult to monitor?
Forever 21 has been sued dozens of times over allegations of taking designs off the runway and making near-exact copies. Often these claims are brought under copyright law based on the fabric pattern used in the product. While clothing designs are generally not protectable by US copyright law (despite protections in a few other countries, like France, and recent efforts to get Congress to pass a law that would add additional designs to the section of the Copyright Act that protects boat hulls), a designer can protect components of its design such as fabric and lace design. Designers sometimes can also get protection under design patent or trade dress law. However, given the prevalence and ease of taking photos from runway shows, sending them to overseas factories to make knock-offs and putting the items up on the internet, monitoring and enforcement can be very difficult. Organizations like the IACC (International Anti-Counterfeiting Coalition) and INTA (International Trademark Association), as well as the Fashion Law Institute at Fordham Law School, are helpful resources for learning about ways to help curtail the problem.
How can a company protect itself and its products from imitators?
Registering copyrights in fabric, lace and other components of a design is a fast and relatively inexpensive step. Registering trademarks (including logos) should also be considered in the context of brand strategy, particularly as they can be recorded with customs to help stop shipments of infringing goods at the border. However, whether and what to register are questions for the business to weigh. The organizations I just mentioned are also helpful resources for understanding how IP law can help and what its limits are. And of course, the best thing to do is to speak with an IP lawyer who has experience in your industry, particularly with both securing IP right protection in copyright and trademark law, and in pursuing infringers and counterfeiters.
In the case of Gucci vs. Guess, how would you argue for Gucci?
The core questions in this case are trademark infringement – which is decided by looking at a multi-factor test to determine if there is likely consumer confusion – and dilution – which is determined by looking at the fame of the prior trademark and whether the defendant’s use is likely to make it less distinctive or likely to tarnish the brand, even if there is no confusion in the marketplace.
Based on my review of the complaint and the court’s ruling in February on summary judgment, if I were arguing for Gucci I would focus heavily on the factor of “intent” underneath the multi-factor test, including the fact that several Gucci trademarks are involved in the product line in this case, not just one. There are also obvious factors to push on, such as the type of goods each party makes; they both make clothing, footwear and accessories. Gucci’s dilution claims also appear to be quite strong, especially for some of the most famous marks and designs that it owns and which are instantly recognizable as Gucci’s.
If I were arguing for Guess, I would focus on the factors of actual confusion and sophistication of consumers, the latter of which asks whether purchasers are likely to make their purchasing decisions hastily or with care. The items are offered at very different price points, so consumers may readily know that when they pay under $100 for a pair of shoes at a Guess store, they’re not buying a Gucci product that would be priced at multiple times that amount. The question you raised earlier about inspiration could provide grounds for an effective argument, if the judge or jury isn’t showing signs of thinking that Guess crossed the line. On the dilution claim, the best pushback might be to distinguish between the truly famous, universally known Gucci marks and those that may be known only to the specific niche of consumers of high -priced fashion.
What are your thoughts on the Louboutin-YSL case? Can you copyright a color?
It’s important to understand that this is not a copyright case because copyright protects only expression that is reduced to paper, a canvas, a hard drive or other type of fixed media. It does not protect ideas, so a color in the abstract cannot be copyrighted. In contrast to copyright, which focuses on creative expression, trademark law was designed primarily to protect consumers from being confused as between manufacturers or sellers, and to reduce acts of unfair competition among competing sellers. So the question in this case is not whether you can copyright a color, but whether the red sole can be a “trademark,” for Louboutin. Color marks have been protected for years — think of the Tiffany blue box, Owens Corning pink fiberglass insulation, and T-Mobile magenta—but they generally require some showing that consumers associate the color with a brand, as opposed to finding it merely to be decorative or visually pleasing. With respect to the Louboutin case, the district court’s ruling, which suggested that color could not be a trademark in the fashion industry, did not need to be so broad in order to resolve the issue. This ruling leaves in its wake precedent that could have unintended consequences for other cases to come. In my view, there is no reason why a color, particularly a specific color in a specific position, can’t be a trademark merely because it is used on an article of fashion. In fact, there was strong evidence in the record suggesting that consumers do identify the red soles – not as just decorative – but as being an indicator of Christian Louboutin. The ultimate trademark infringement question with respect to YSL, if Louboutin could show trademark rights, was whether its use of a somewhat different red for monochromatic shoes (there were purple with purple soles and navy with navy soles in the same line, too) would be likely to confuse consumers into believing that Louboutin sponsored, endorsed or approved the YSL shoe. On appeal, the court may be very likely to adjust the district (lower) court’s ruling to hold that the red sole can be a trademark and ask that the court to focus on the question of consumer confusion, which follows a multi-factor balancing test, including weighing whether YSL’s use of red is ornamental or decorative in a way sufficient to dispel concerns about confusion.