Fashion IP Blog
March 26, 2015
T-Shirt Design Highlights Copyright and Trademark Issues Related to Clothing
Elektra Gorski began producing t-shirts featuring the wordplay slogan “Lettuce Turnip The Beet” in 2011. Three years later, Gymboree began producing and selling its own version of the t-shirt. Gorski sued them for copyright and trademark infringement and Gymboree tried to get the case dismissed.
Gymboree argued that Gorski failed to identify protectable elements in the T-shirt, which the court partially agreed with, stating that “[s]hort phrases, no matter how distinctively arranged, are not protectable elements.” None of the similarities elements between the t-shirts were protectable, since the similarities were in the phrase itself. Although Gorski was able to get copyright protection for her actual t-shirt design (which Gymboree did not copy), she couldn’t get trademark protection for the phrase, which was the element used by Gymboree.
Click here to read the Court’s Order and to see pictures of the t-shirt designs.
January 27, 2015
When is a Patent the Right Choice? A Case Study of Alexander Wang
U.S. intellectual property law does not have the best reputation in the fashion world. Designers bemoan that there is little they can do against endless knockoffs. Most fashion companies accept trademarks as their only protection. Some seek additional protection by copyrighting their prints, but it is rare for a fashion designer to successfully protect his works with patents.
There are many reasons for this phenomenon. To begin with, it can take between eight to twenty months to obtain a patent, which makes this an impractical method for an industry that cycles new products every couple months. Secondly, although it may be possible to protect specific aspects of a design with a patent, this can be more complicated with designs as a whole, since designers must prove that their designs are new and nonobvious. When seeking a design patent, designers must also prove that their design is ornamental as opposed to functional.
Alexander Wang has found a way to make the patent system work for him and his designs. For example, when Wang began tying his brand to a hardware-heavy aesthetic in 2012, he filed for and was granted a utility patent for the studs on his bags and clothing. His patent application emphasized the specific grooves and channels on the studs. Recently, Wang also obtained a design patent for “bags with corners,” which protects his handbags with metal-covered corners.
What these examples illustrate is that, although patents may not be the right choice in every situation, they can be a great tool to protect aspects of your designs that you expect to be part of your brand for a long time.
January 26, 2015
A Guide to Fashion Licensing
In the fashion world, licensing can be a great way to expand the possibilities of your business. Though it offers great opportunities, this option is not without risks and you should invest time to carefully think about a potential licensing agreement. Use the following checklists when evaluating a licensing opportunity:
Forms of fashion licensing:
- Licensing-out a brand name, logo, product design, or fabric design into an associated product category
- Licensing a brand name to accessory manufacturers and perfume makers
- Licensing print or textile design copyrights for use on furniture, luggage, or other products
- Collaborating with a well-known brand in another industry to create a new product-line (wallpaper, for example)
Potential Advantages of Fashion Licensing:
- Gain status and credibility with a different group of customers (for example, the successful collaboration between Moschino and McDonalds in 2014, which sold out handbags, iPhone cases, sweaters and backpacks)
- Increase brand recognition
- Target new audience
- Expand into new categories and geographies
- Test a new market (for example, Stella McCartney’s collaboration with Gap Kids before launching Stella McCartney Kids)
- Increase profile and brand awareness
- Revenue without manufacturing or marketing risks (for example, H&M’s collaborations with fashion designers)
- Producing innovative and attractive fashion items
Potential Risks of Fashion Licensing:
- Damage or dilution of the brand (for example, Calvin Klein sued Warnaco in 2000 for diluting the Calvin Klein brand by producing sub-standard products and trading with discounted retailers)
- Sending a mixed message through collaboration with an ill-matched brand
- Restricting the granting of future licenses or breaching earlier licenses
- Extensive contracts and potentially protracted negotiations
- Works being tied up and never used
Advice for Fashion Licensing:
- Choose a partner carefully
- Choose a complementary brand
- Ensure that the terms of the license are clear about the scope of the license, including duration, categories of goods licensed, and applicable territories
- Make certain which rights have already been granted to third parties
- Discuss key terms of the collaboration at the earliest stage possible
- Decide early how ownership of the intellectual property will be held
- Work out which party is responsible for registering intellectual property
May 23, 2012
High Fashion Brings Low Damages
Earlier this week, the fashion designer Gucci won a $4.6 million verdict against Guess, another clothing company, after a nearly three-year battle over Guess’s alleged infringement on various trademarks owned by Gucci. While this may seem like a big win for the famous designer, the award granted Gucci was just a fraction of the $120 million initially sought against Guess; and once attorney’s fees are added into the mix, it seems like Gucci would be lucky to break even.
In a suit for $120 million against a well-known and extremely profitable company like Guess, how can the Court see such insignificant damages as sufficient? It seems that the issue in Gucci’s case was the damage calculations used to determine the sought-after recovery. Gucci argued that it had lost out on “hypothetical royalties” that Guess should have paid them for all the infringing goods it produced. Unfortunately though, this assumes that Guess would have produced such goods despite having to pay royalties which is highly unlikely, especially in light of Guess’s statement at trial that it would not have done so. The presiding judge viewed these damage calculations as far too speculative as they pointed out earnings that Gucci may have received instead of pointing outactual loss due to Guess’s infringement. Thus, Gucci gets less than 4% of its expected recovery and Guess gets little more than a slap on the wrist.
May 17, 2012
Louis Vuitton Prevails in Multiple Counterfeiting Cases
Legal protection of fashion design within the United States has often been regarded has having a much worse bark than bite. In Louis Vuitton v. Eisenhauer Road Flea Market though, the Western District of Texas proved that fashion-based infringement cases can leave some serious teeth marks on a defendant’s wallet. There, both the owner and manager of a public flea market were held liable for a $3,600,00 jury verdict for trademark infringement committed not by the owners themselves, but by a regular tenant of the premises. The court entered judgment of the jury’s verdict, finding that “contributory” trademark infringement was established due to the defendants’ failure to prevent multiple vendors from selling counterfeit goods, despite Louis Vuitton’s multiple requests to do so. Furthermore, this “willful blindness” led the court to enter injunctive relief that required the owners of the flea market to conduct regular inspections of all tenants’ selling practices as well as including lease provisions that specifically prohibit counterfeit Louis Vuitton merchandise from being sold.
Along a similar vein, Louis Vuitton also prevailed in a separate suit against a web-hosting company in Louis Vuitton v. Akanoc Solutions, Inc. in which the defendant was found guilty of contributory trademark infringement due to a client’s selling of counterfeit goods and their knowledge of such conduct. The Ninth Circuit Court of Appeals concluded that the server owner’s failure to take action in response to Louis Vuitton’s multiple requests to restrict the infringing party from engaging in such infringement.
Moral of the story: The owner of any commercial premises (including “cyber” premises) may be liable for contributory trademark infringement if he “knew or should have known” of any counterfeit products being sold by a tenant/client there. If you are such an owner, take extra steps to ensure that no tenant/client of yours is engaging in such infringing conduct and create explicit provisions within all lease/use agreements prohibiting such conduct. Furthermore, it may be prudent to post signs on the property/host site that specifically prohibits any counterfeit products from being sold there. On the other hand, if you own a trademark that is being infringed upon by any seller, notify the owner of the premises/server upon which the seller operates immediately. If no action is subsequently taken by said owner, it may be possible to hold him jointly and severally liable for any and all damages incurred, thus side-stepping the ever-present problem of the insolvent counterfeiter.