Staci Riordan reports on the big shoe-vs.-shoe design lawsuit everyone’s talking about — invoking copyright plus one Lanham Act and two New York law varieties of “unfair competition” that seems to fold in a trade dress claim (huh?) — between a couple of shoe designer guys, such as they are.
Regarding manly, Republican, footwear, I do know; but from ladies’ shoes I don’t. I can’t even pronounce the name of the plaintiff. So I leave the legal analysis to her and, with all due respect, the fashion analysis to … of course … The Manolo.
What struck me, though, was that the fight is over what seem to be called “Lego shoes.” I spent half an hour on the Internet trying to figure out if that name is “authorized” or just a nickname, based on the designer’s — oh, ok, Balenciaga‘s — homage to, uh, Lego.
Balenciaga’s unnavigable brochureware website is certainly not helpful. Ultimately I came up empty, concluding that in fact Balenciaga is not a LEGO licensee and does not use the brand itself in connection with commerce in the shoes.
This seems to be confirmed, and yet treated in an odd way, by the complaint itself, in which Balenciaga (I think I got it down now) alleges as follows:
11. In February 2007 Plaintiff Balenciaga showcased its distinctive Closed FrontCage Sandals with Ankle Pads during its Fall 2007/Winter 2008 runway collection. These shoes are also known by their more fanciful names the “Sportiletto” and/or the “LEGO Shoes”. (Balenciaga’s LEGO shoes are depicted in Exhibit A).12. Balenciaga’s LEGO Shoes exhibit unique aesthetic features. Balenciaga’s LEGO Shoes embody an original arrangement of elements.13. The Balenciaga LEGO shoes were designed for Plaintiff Balenciaga by Nicolas Ghesquiere, a French citizen.14. Balenciaga began selling its distinctive LEGO Shoes in the United States in the fall of 2007.15. Balenciaga’s LEGO shoes garnered much press coverage in the United States, and were featured in various U.S. fashion magazines, including Vogue and ELLE.
Well, yeah. But here’s the thing. Right: There is no claim in the complaint that Balenciaga is a licensee. True, the word “LEGO” is in all caps per the style in trademark practice (hence the all-caps name of this blog) — a tacit acknowledgment that we’re talking about, well, someone’s trademark here. But there’s no mention at all of whose trademark that just might be.
So I do think it’s a little strange, and a little discomfiting from an IP point of view, that Balenciaga’s papers adopt the popular, but evidently unauthorized, “LEGO shoes” name for their offering. They define the subject of their lawsuit in the complaint as “Balenciaga’s LEGO shoes,” “distinctive LEGO shoes,” etc. All this would certainly give anyone reading the papers, at least, the distinct impression that there’s a trademark in this case for “LEGO shoes.” And they could be forgiven for thinking that the owner of that trademark is… Balenciaga!
All right, this is probably not a use in commerce under the Lanham Act. I’m not saying Balenciaga is, exactly, infringing or even diluting the LEGO trademark, or that its lawyers are. Besides, this use, in pleadings, is almost certainly privileged.
But guess what: There are real authorized LEGO shoes. Yet if you were litigating the issue and commissioned a consumer survey today for the term “LEGO shoes” — go ahead, run a search while you’re at it — what source of such a posited product would be the one with secondary meaning in the term?
LIKELIHOOD OF CONFUSION anyone?
So, forget which shoe looks like which! Given Lego’s propensity for claiming rights in stuff, isn’t it surprising that those blockheads haven’t weighed in with their usual snappy routine? Why isn’t Lego dropping the hammer on third parties that market the shoes using the LEGO trademark (or using just plain Legos!)? How come Lego isn’t screaming about how this dilutive use is being reinforced by Balenciaga’s fast-and-loose “acquisition” of the LEGO mark in its papers, amplified by the widespread reporting of the lawsuit?
Shouldn’t LEGO, hardly ever shy about trademark rights both real and imagined, be claiming some kind of rights in, or about, the “LEGO shoes”?
Not once you see them. Sorry, Manolo.