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Couture in Court

Originally posted 2012-02-29 23:27:24. Republished by Blog Post Promoter

Fabulous filings for fashionistas — and those who just want to look like them!

No cheerleading for Varsity Brands

Copyright Society LogoIs copyright going to come to the rescue concerning the acknowledged fashion-design protection gap in U.S. intellectual property protection?

Is the Sixth Circuit’s decision in Varsity Brands et al v. Star Athletica the harbinger of things to come in that regard — good, bad or otherwise?

Answers from the Copyright Society’s Philadelphia seminar this week:

  • No.
  • Unfortunately, probably yes.  In that order.

Now, what happened in Varsity Brands?  Well, that’s the problem, isn’t it?  Here, at least, was the question presented, as the court put it:

Varsity Brands Copyright Registratin 1-319-226

Original? Copyrightable? Functional? Cheerful?

Are cheerleading uniforms truly cheerleading uniforms without the stripes, chevrons, zigzags, and color blocks? That is the question that strikes at the heart of this appeal. Plaintiffs-Appellants Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc. (collectively “Varsity”) have registered copyrights for multiple graphic designs that appear on the cheerleading uniforms and warm-ups they sell. Defendant-Appellee Star Athletica, LLC, also sells cheerleading gear bearing graphic designs that, according to Varsity, are substantially similar to the designs for which Varsity has valid copyrights. Star asserts that Varsity’s copyrights are invalid because the designs at issue are unprotectable “design[s] of . . . useful article[s].” 17 U.S.C. § 101 (2012). The district court concluded that a cheerleading uniform is not a cheerleading uniform without stripes, chevrons, zigzags, and colorblocks, and therefore Varsity’s copyrights are invalid. Varsity now appeals, and we take up the question that has confounded courts and scholars: When can the “pictorial, graphic, or sculptural features” that are incorporated into “the design of a useful article” “be identified separately from, and [be] capable of existing independently of the utilitarian aspects of the article[?]”

Having heard from at least a few scholars, they appear to be somewhat confounded still, and not unsurprisingly.

Read More…

Hooters Overreaching on Trade "Dress": You can look but you’d better not touch

Originally posted 2005-01-27 09:21:00. Republished by Blog Post Promoter

IP News Blog at Pierce reports that the high-class joint Hooters has lost an attempt to claim trade dress rights in the colors worn by their high-class waitresses. What was this “trade dress”? According to Randall Zidones, who posted the item, “The girls at [competitor] Winghouse wore red shorts and white tank tops, similar to the orange shorts and white tank tops of the Hooters Girls.”

Orange shorts and white tank tops, “trade dress”? When will it end?

When judges stop it. Looks like one did.

UPDATE: She really did, bless her heart. According to the original news report picked up by Zidones, U.S. District Judge Anne C. Conway actually entered a directed verdict after Hooters put in their case! Not only that, but the defense’s counterclaim went to the jury and Hooters got socked with a $1.2 million jury verdict that the Hooters was in breach of an earlier agreement between it and Winghouse to settle all trademark claims. Terrific legal work by a gent named Don Conwell, a leader in the technology litigation bar, who practices in Florida.

Best of 2008: Tackiness not grounds for refusal to register

[Posted December 1, 2008.]

Otherwise, why would John Welch be reporting this appeal?:

December 4, 2008 – 10 AM: In re Chippendales USA, LLC, Serial No. 78666598 [Refusal to register the apparel configuration shown below for “adult entertainment services, namely exotic dancing for women in the nature of live performances” on the ground that the design is not inherently distinctive].

Frankly we would have relied on tackiness for the refusal if we were the PTO, because when we see this classy outfit we think “Chippendales” every time.  “Inherently distinctive?” I’d say!



Then again, that’s how we worked our way through law school, so we’re biased. (UPDATE: Marty raises an eyebrow — obviously doesn’t remember what LIKELIHOOD OF CONFUSION® himself  used to look like.)

More interesting is the concept of apparel configurations as the subject matter of a trademark.  Indeed, as the applicant’s brief by friend Stephen Feingold (of our former firm Day Pitney — didn’t realize he’d handled my favorite Yiddish IP case!) makes clear, that question is indeed a matter of first impression. Read More…

H.R. Pufnstuf, Call Your Lawyer

Via Techlaw Advisor [UPDATE:  shuttered], a link to a very smart copyright blog from a member of the firm that cleaned my clock in 1998. The item by Bill Patry, Clothing and Costumes Redux, is surely everything you ever needed to know about whether dressing up in funny costumes is going to be a ticket to federal court, in light of (or despite, as he suggests) two recent decisions. (Oddly, however, he does not address the Barney decision, nor the H.R. Pufnstuf kerfuffle stuff from a few years ago.)

It’s not every day that I say this, but Patry’s blog is one H-E-double-hockey-sticks of a good IP blog, if you’re into that sort of thing (and who isn’t*)? I bookmarked it and you should, too.


Chippendales cuffs-and-collar TM “distinctiveness” claim goes “gently” into that dark night

Reuters reports on a high-class trademark story I’ve been following since my own dancing days:

The male erotic dancer company Chippendales stumbled on Friday when an appeals court ruled that it could not trademark [sic] the bow tie and shirt cuffs that the men wear.  The US Court of Appeals for the Federal Circuit said in a ruling which included a sketch of a fit gentleman shown from the waist up wearing only a bow tie and shirt cuffs that the US Patent and Trademark Office was correct in refusing to trademark [sic] the Cuffs and Collar costume.

“A fit gentleman”?  Fit?  Yes, certainly.  But “gentleman“?

Well, “gentleman” has long ceased to mean “gentleman,” after all.  I hear radio actualities where the cop says, “Then the gentleman proceeded to pistol-whip the granny and proceeded down toity-fifth street where he encountered the officers and was apprehended.”

And then, of course, there’s the “gentleman’s club,” inside of which the one thing you are not likely to encounter is, I can only speculate, a gentleman.  There are websites like that too, I hear.

But more on that sort of thing shortly.

Yes, of course this “fit” bloke is a “gentleman”:  Didn’t you read what the story said?  Look what he’s wearing:

Chippendales Outfit Denied Trademark Protection

Not an inherently distinctive trademark. Not that there’s anything wrong with that.

A bow tie!  And detachable collar and French cuffs!  Sure, the collar and cuffs are attached to nothing but air, but still — what could be more gentlemanly than that?

Which is all very well and good… but evidently not enough to constitute protectible  inherent distinctiveness [see below re this correction — RDC].  Sliding in half a day ahead of me, Patently-O explains why (and provides a link to the opinion, here):

In particular, the Board noted that strippers often wear revealing would-be professional costumes such as a stethoscope, utility belt, or chaps with a ten-gallon hat.  In this case, the Chippendales Cuffs & Collar costume appears directly derived from a Playboy Bunny costume [which also features a bow tie, detachable collar and French cuffs attached to nothing].  Based on these facts, the Board held that the Chippendales outfit failed the test for inherently distinctive trade dress outlined in Seabrook (CCPA 1977).

On appeal, the Federal Circuit first looked to determine whether the costume is part of the product design or only product packaging.  That distinction is legally important because of the Supreme Court ruling in Wal-Mart v. Samara Bros (2000) that product design is never inherently distinctive.  Here, the court held that the costume is product packaging — with the product being “adult entertainment services.” . . .

Here, the Appellate Court rejected the Board’s implicit holding that no costume on an adult entertainer could be inherently distinctive.  However, the Appellate Court agreed with the Board that the Cuffs & Collar costume was a “mere refinement” of the well-known Playboy Bunny costume.  As a result, the Cuffs & Collar costume failed the third Seabrook element and therefore lacks inherent distinctiveness.

Well, if “gentleman” doesn’t mean what it once did, don’t get me started on “adult” . . .

Either way, though, getting aced out by the Bunnies — that’s got to hurt.  I do feel somewhat vindicated by the ruling rejecting the proposition that “no costume on an adult entertainer could be inherently distinctive.”  Because I think I said something like that in my original post on this topic, or the comments to it.

Either way, it appears that the Chippendales boys are going to have to dance their way into the sunset, and the hearts of middle-aged women everywhere, without the coveted circle-R prestige that comes with “inherent distinctiveness.”  Sorry . . . gentlemen.

UPDATE:  Speaking of gentlemen — see Welch at the TTABlog on this story, and the comments here.

Then see the gentlemen below!!

Louboutin gets the boot

mdbheadshotfinalIn a case that has everyone seeing red —

No, let me start over. And without the jokes. Because in a decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. — a case about colored outsoles of high-end ladies’ footwear — the Honorable Victor Marrero of the United States District Court for the Southern District of New York made nearly every color, foot, and/or shoe pun imaginable, and I don’t want to step on His Honor’s toes. (Sorry, that was my last one.)

The angels want to wear theseThe factual background, in brief: The plaintiffs are one Christian Louboutin, a fashion designer, and his eponymous companies. Those companies sell, among other things, expensive shoes for women. In or around 1992, Monsieur Louboutin had an idea—he would sell shoes with colored outsoles (that is, the outermost layer of the sole; usually the least interesting part of a shoe). Specifically, he would sell shoes with red outsoles. This was something (arguably) that no one had done before. Over time, those who care about such things/notice the bottoms of shoes came to associate red outsoles with Louboutin. So Louboutin did another smart thing: He applied for federal registration of a trademark, and on January 1, 2008, the PTO granted him Registration no. 3,361,597 for a mark consisting of “a lacquered red sole on footwear.”

Come 2011, and Yves Saint Laurent (the luxury fashion house co-founded in 1962 by… well, French fashion designer Yves Saint Laurent) is selling four styles of shoes, each with colored outsoles. Each model of shoe comes in red (among other colors). But it’s the red that matters, because Louboutin has a registered trademark for a lacquered red sole on footwear. Not a lacquered colored sole on footwear—just a lacquered red sole on footwear. So YSL’s blue, yellow, and other colored-soled shoes are in the clear.

(This is a good point to mention that according to the decision, there is evidence that shoes with red outsoles have appeared occasionally in YSL’s collections dating back to the 1970s. This fact did not matter, but it’s interesting to note. Maybe it would have made a good… yes, footnote.)

Louboutin sued YSL, asserting several causes of action, all of which live or die with the protectability of Louboutin’s claimed mark. (Spoiler alert: They all die.) YSL counterclaimed, most significantly, for cancellation of the PTO registration, arguing that a color for a shoe sole (lacquered or otherwise) can not be protected as a trademark. Louboutin moved for a preliminary injunction, which prompted the court’s early consideration of the merits of the plaintiffs’ claims (and specifically the likelihood of success on the merits thereof). Judge Marrero found Louboutin decidedly unlikely to succeed.

By now, anyone with even passing knowledge of the intersection of trademark law and colors should be shouting, “Qualitex! QUALITEX!” Read More…

Joke of the First Amendment, Part II

We wrote in January about a Seventh Circuit oral argument wherein the panel took apart the unfortunate practitioner that tried to make a Constitutional silk purse out of a sartorial sow’s ear. The returns, now, are in (via David Lat), as reported on How Appealing. Thus spake Judge Posner (link to Blau added):

Of course there can be speech printed on clothing, political symbols such as a swastika or a campaign button affixed to clothing, and masks and costumes that convey a political or other message. Merely wearing clothes inappropriate to a particular occasion could be a political statement. For that matter, parading in public wearing no clothing at all can, depending on the circumstances, convey a political message. But the picture and the few words imprinted on the Brandt T-shirt are no more expressive of an idea or opinion that the First Amendment might be thought to protect than a young child’s talentless infantile drawing which Brandt’s design successfully mimics. Otherwise every T-shirt that was not all white with no design or words, with not even the manufacturer’s logo or the owner’s name tag, would be protected by the First Amendment, and schools could not impose dress codes or require uniforms without violating the free speech of the students, a proposition sensibly rejected in the Blau case.

The Constitution is not a suicide pact. Judge Posner wisely suggests it is also not a stupidity pact, nor an arrangement of mutually assured boorishness. But speaking of Lat’s blog, well, take a look at this item about a far less distinguished jurist, and remember: With lifetime tenure for Article III judges, and their salaries rapidly shrinking in comparison to what very successful lawyers (who should be your candidate pool for judges) make, one never does know: Stupidity may yet get the upper hand.

White-laced and wonderful

Now that all the excitement is past us, we can soberly link back and read Susan Scafidi’s reflections on the intellectual property implications what has now been officially confirmed as the most important wedding dress in our lifetimes.

So, let’s do that.

The dark side clouds everything

I am fascinated with IP disputes over costumes, and have written about a few of them.  I have also linked to this piece by Bill Patry, which would seem to be the definitive treatment.  It is, after all, by Bill Patry.

Now is six years later though and perhaps we live in a galaxy far, far away — so what say we about those copyright claims by George Lucas with respect to the Stormtrooper getups from Star Wars?


Oh no! He's wearing the same outfit!

Well, impressed LIKELIHOOD OF CONFUSION® is with this article from the Case Clothed law student blog from New York Law School.  It’s a nice bit of analysis about the copyright claims.  On the other hand, this part — hey, kids, you publish it, you get commentary from old meanies! — about trademark I found… troubling:

Even if the costumes are not protected by copyright, the STORMTROOPER is also protected by trademark. Many characters (like Mickey Mouse and Superman) are trademarked [ugh — RDC — see below!] to ensure that rights in the characters will still be protected even when the copyright protection ends and the stories end up as part of the public domain. The problem that Lucas will have enforcing the trademark is that only the word Supertrooper is trademark, not the actual character.

Well, okay.  The link in there is meant to get you to the trademark registration for STORMTROOPER, shown at right, and yes, it is just a registration for the word mark.  But, first things first.

Who says you can really extend copyright in a literary character through trademark?  Well, as I discussed briefly with respect to the case of Popeye, plenty of people do, but it’s not so clear they’re right.  Consider this scholarly law student treatment of the issue, which is thorough if a little unsatisfying in its conclusion (he likes the idea of judges making policy — which I don’t).  For lighter fare but perhaps even more filling, look at this analysis in a cleverly-titled blog post — also by a student (truly wonderful the mind of a child is!) — called “Trademark is soooo the new copyright”:

[C]opyright and trademark were established for very different reasons.  The purpose of copyright is to incentivize the production of creative and artistic works, while the purposes of trademark are “to aid the consumer in differentiating among competing products,” and “to protect the producer’s investment in reputation.” . . .

The case of Popeye reflects a troubling trend in intellectual property: companies invoking trademark as an unlimited extension of copyright.  The law clearly defines the purposes and extents of copyright and trademark, so it is unsettling to see when these intents are not followed through in practice.

Yes, unsettling.  But so is this from the first item at Case Clothed — again:

Many characters (like Mickey Mouse and Superman) are trademarked to ensure that rights in the characters will still be protected even when the copyright protection ends and the stories end up as part of the public domain. The problem that Lucas will have enforcing the trademark is that only the word Supertrooper is trademark, not the actual character.

See, Steve Baird?  This is just my point:  When even bright law students use the word “trademark” as a verb, you can be sure they are confusing having an enforceable trademark with obtaining a trademark registration. Read More…