Tag Archives: Fashion IP

The sincerest form of flattery

Originally posted 2011-11-08 08:32:22. Republished by Blog Post Promoter

Susan Scafidi seems genuinely shocked – no, I mean, genuinely!  – over this comment by Ralph Lauren:

Nit fun unzer

When the New York Times‘ Eric Wilson listened to Oprah Winfrey and Ralph Lauren chat for charity, one exchange stood out:

“How do you keep reinventing?”

“You copy,” he said. “Forty-five years of copying, that’s why I’m here.”

Of course, everyone knows that the signature looks of the Ralph Lauren family of brands are inspired by classic Americana — with an occasional detour around the globe — but coming from the guy who was on the losing end of the best-known design piracy case of the late 20th century, the admission strikes a chord.

Honestly, honesty?  Now, when the U.S. may be on the brink of finally passing a law that, while it wouldn’t come anywhere near the level of the French protection that wrangled Ralph, would have a similar effect in some cases?

Oh, that law!

Well, a litigation dust-up here and there notwithstanding, Ralph can afford to be honest, honestly.  I think, indeed, Mr. Lifshitz is referring not to copying other proprietary designs, but to that talent that turned him into a gazillionaire:  Mastering the art of assimilating and replicating the look and feel not, with all due respect, of “classic Americana” but a very focused upper-crust Northeastern WASP sub culture and making it his own.

I when I was in college, I observed plenty of Jewish kids from backgrounds like mine, but a generation or two deeper entrenched in assimilation, do this on a personal level.  Some pulled the copying it off, some didn’t.  (I mainly went in the other direction.)  Ralph went beyond accessorizing social climbing mobility and ethnic metamorphosis to selling them.  And he did  it brilliantly, tastefully and very, very profitably.

He’s a real gem.  Why should he lie about “stealing”?

The better question is a question on the one Susan asks at the end of her article:  ”Now, when the U.S. may be on the brink of finally passing a law that, while it wouldn’t come anywhere near the level of the French protection that wrangled Ralph, would have a similar effect in some cases?

Of course it would.  Absolutely.  But the real question is not what would effect would the substantive provisions of the IDPPPA have had, in the abstract.  It’s what effect would the cost of the IDPPPA have had on the young House of Lauren. Read More…

The DO’s & DON’Ts of Fashion Lawyers’ Advertising

Originally posted 2012-10-23 21:13:14. Republished by Blog Post Promoter

Tomorrow night TONIGHT (October 24th) at Fordham Law School I will be speaking on a panel with fashion lawyers Bernice K. Leber of Arent FoxTed Max of Sheppard Mullin and Jeff Trexler of Fordham about “Fashion Lawyers’ Advertising.”  It’s “a Fashion Law Ethics & Professionalism CLE program”!  The distinguished panel will discuss “strategies for maintaining professional standards while promoting a practice in this newly defined and growing field.”

DATE: Tuesday, October 24, 2012
TIME: 6:30-8:30 pm
PLACE: Fordham Law School, 140 W. 62nd Street, Room 430 B/C

Click here to register if you’re a lawyer.  Click here to register if you’re something else.  Don’t ask, just click.

I am going to really have to be a “fashion lawyer” for this, I think.  I presume that means I will have to wear something nice.  Or extra nice!

And, of course, this is the “advertising.”  Seems ethical and professional, no?

We can discuss it tomorrow night, uptown.  See you there!

Bratz, foiled again! (Bumped and updated)

Originally posted 2010-07-23 11:10:54. Republished by Blog Post Promoter

First, December’s 15, 2009′s story:

Remember the Bratz dolls case, and the phenomenal legal fees application that followed?

It’s back!   The Ninth Circuit Court of Appeals stayed the trial judge’s order basically liquidating the Bratz.  Here’s what the WSJ Law Blog reported last week:

The Ninth Circuit on Wednesday ruled that Bratz maker MGA Entertainment can continue selling its dolls, despite the stinging defeat it suffered last year a jury when a Riverside, Calif., jury awarded Mattel, Inc. $100 million in damages in a closely followed copyright-infringement lawsuit. . . .

The judges on the appellate panel, Alex Kozinski, Kim Wardlaw and Stephen Trott, questioned whether the trial judge went too far by awarding MGA’s Bratz doll franchise to Mattel and wondered why he didn’t instead award Mattel a royalty or ownership stake in the company.

I never played with dolls due to a household manliness mandate, and I’m already uncomfortable blogging about this for the fourth time, so let’s just note it and go back to what I was doing with this here mitre box and also I’m going to do some re-grouting on some tiles somewhere before bed.  Which I sleep in wearing a rustic burnoose emblazoned with my varsity letter. With the windows open.

Bratz-tip to Jaded Topaz!

UPDATE:  In response to certain inquiries, a clarification:  No, I did not actually earn a varsity letter in high school or otherwise.   But the one on my night-burnoose is “mine.”  It’s a kind of … trophy I took from the still-quivering hulk of the middle-linebacker I brutally beat up and left for dead in a Chicago alley, okay?

Now, today’s update:

No surprise here in light of the earlier ruling, but stunning nonetheless:  The Ninth Circuit kayos the award!  Choice quote — Kozinski, of course — via Bloomberg:

Even assuming that MGA took some ideas wrongfully, it added tremendous value by turning the ideas into products and, eventually, a popular and highly profitable brand.  It is not equitable to transfer this billion-dollar brand, the value of which is overwhelmingly the result of MGA’s legitimate efforts, because it may have started with two misappropriated names.

That’s going to ruin a lot of Big IP summers on Cape Cod this weekend.

UPDATE:  For Mattel, it only gets worse:

[Today a] U.S. jury decided that MGA Entertainment Inc is the rightful owner of the once-billion dollar line of pouty-lipped Bratz dolls.

The astonishing loss for the world’s largest toy maker concluded a case that began in 2004, when MGA’s line of dolls was all the rage among teen and preteen girls. Mattel accused Van Nuys, California-based MGA of stealing its designs by hiring away a key employee.

Mattel CEO Robert Eckert sat stone-faced, staring straight ahead as the verdict was read on Thursday in a Santa Ana, California, federal courtroom. He said afterward that he was disappointed by the verdict.

“We remain committed to protecting the intellectual property that is at the heart of business success,” Eckert said in an email.

What?  MGA’s intellectual property?

The opinion’s here.

… and Europe Strikes Back: Google Loss Upheld by French Court

Originally posted 2005-03-17 21:11:00. Republished by Blog Post Promoter

A friend painfully close to the case forwarded this link reporting that Google has lost its appeal of a judgment for “trademark counterfeiting” against the French travel companies Luteciel and Viaticum:

GOOGLE LOSES FRENCH TRADEMARK APPEAL

A French appeals court upheld a ruling against Google’s advertising policy in a decision published Wednesday, ordering the Internet search engine to pay 75,000 euros in damages to two companies whose trademarks it infringed.

The court found that Google was guilty [sic] of “trademark counterfeiting” and ordered it to pay the damages originally awarded to French travel companies Luteciel and Viaticum, as well as costs.

(Why “sic“? Because in civil cases, there is no such thing as “guilt” — only findings of liability or non-liability. Even in Europe. Even in France. I felt you should know that.)

Here are some key points in the decision, translated rather clumsily on the site linked to above:

  • “[I]t is necessary to point out that its liability is only sought with regards to the second capacity and this capacity alone” In other words, this is solely an issue of secondary, i.e., contributory, trademark infringement.
  • “Considering that no circumstances of force majeure existed that may exempt it from liability, where and insofar as it is proved that two other service providers in the field of paid positioning, the companies OVERTURE and ESPOTTING were faced with the same problem and managed to resolve it promptly and that GOOGLE FRANCE also managed to do so, although with some delay” This again goes to the killer point that middleman-type providers have here: The claim that “we can’t police the whole world” is (a) not credible when others do and when (b) you manage to do it when you really, really, really have to and (c) you’re making a mint.
  • “Considering that . . . GOOGLE FRANCE, even if it had legitimately not been aware that the companies were the holders of the contentious marks, could not offer the purchase of the words ‘bourse aux voyages’ or ‘bourse de voyages’ or even ‘bdv com’ in its keyword suggestion tool, on the pretext that they were high among the most often requested key words, without carrying out a serious study of the potential rights of third parties over these words ” It’s not only a matter of what the U.S. courts call “willfull blindness” (which can result in a third party such as an auction site or a flea market being held contributorily liable for infringement) — there’s evidently an affirmative duty on the part of providers of services such as Google to inquire, at least under certain facts, if there are trademark issues.

No, this is not the applicable law in the U.S., but it matters for a few reasons. One is that the factual findings here will undoubtedly influence Google’s posture in future U.S. litigation. Another is that Google will have to make changes in the way it does business — which it already has begun to do, anyway — and this will affect both its overall service platform and its ability to say what it can, can’t, will and won’t do in the U.S. And the other is that, as is well known, there’s really no such thing as U.S. law, anyway. (And in a Googled-up, wired-up, hyperlinked world, isn’t that really what we all want?)

Okay, that might be bit much. But then, evidently, was Google’s share price in early February. Buying opportunity tomorrow, gang! I’m riding the stock all the way — when you got a position like I do (ten shares), you don’t want to go and panic the market…

UPDATE:  From Reuters “news” service, March 2010:

The European Court of Justice (ECJ) said on Tuesday advertisers were free to buy keywords identical to trademarks of rivals as long as consumers were not confused on the provenance of goods and services by the way ads were displayed online.

The court said that in cases where ads could confuse consumers, brand owners should invoke their rights against the advertisers concerned, not against Google — unless Google failed to act on a complaint or actively manipulated keywords.

It’s Abboud time!

Originally posted 2010-01-15 13:39:40. Republished by Blog Post Promoter

What, this old thing?

A year and a half ago I reported on designer Joseph Abboud’s attempt to sell his trademark “designer label” name to JA Apparel Corp., then count to three and go right back into competition with the company — using his own name.  The Southern District of New York granted JA Apparel’s motion for a preliminary injunction, which I smarmily celebrated in that post.

What I didn’t tell you (because I didn’t know — even now I can’t find a link reporting this fact) was that, on appeal, the Second Circuit vacated that decision and remanded it back to the District Court on the ground that the agreement was, in fact, “ambiguous.”  I regret the omission.

But at least now we have resolution [Ha! -- well, okay -- of a sort, anyway -- RDC].  On remand, per The Trademark Blog, here’s the District Court ruling for this season, featuring far more subtle styling:

Following remand, the parties submitted hefty briefs, containing their proposed findings of fact and conclusions of law with respect to those issues raised by the Second Circuit, namely, any extrinsic evidence of the parties’ intent regarding the sale of Abboud’ s name, and whether Abboud’ s proposed advertisements for his new clothing line, containing his name, constitute trademark fair use. . . .

[T]he Court concludes:

  1. In the June 16, 2000 Purchase and Sale Agreement, Abboud did not sell, and JA Apparel did not purchase, the exclusive right to use the “Joseph Abboud” name commercially. Rather, Abboud sold, and JA Apparel purchased, the “Joseph Abboud” name as a trademark and related intellectual property (which can include brand names or commercial names);
  2. Abboud’ s proposed uses of his name in connection with his new ‘jaz” line, as shown in Defendants1 Exhibits 187 and 188, and Plaintiff’s Exhibit 43, would qualify as fair use under Section 33(b) (4) of the Lanham Act, 15 U.S.C. § 1115(b) (4), provided Abboud includes a disclaimer of any affiliation with JA Apparel and products sold under the Joseph Abboud trademarks on Defendants1 Exhibits 187 and 188 or any similar ads. Such disclaimer shall be no smaller than the accompanying text in which Abboud uses his name;
  3. Abboud’s proposed uses of his name in connection with his new ‘jaz” line, as shown in Plaintiff’s Exhibit 42, would constitute trademark infringement under Section 32 (1) of the Lanham Act, 15 U.S.C. § 1114(1), not otherwise insulated by the fair use defense, and thus, a breach of the June 16, 2000 Purchase and Sale Agreement;
  4. Plaintiff’s claims for (a) dilution, unfair competition, and false designation of origin under Sections 43(a) & (c) of the Lanham Act, 15 U.S.C. §§ 1125(a) (1) & (c) (I), N.Y. Gen. Bus. Law  §§ 360-61, and the common law, and (b) false and deceptive trade practices under N.Y. Gen. Bus. Law §§ 349-50, are hereby dismissed; and

Yes, I know.  Without reading the decision–also quite hefty–you don’t know what to make of all that in terms of legal analysis and, it seems, precedent, though it does appear to be a good decision for fair use.  More analysis will come (maybe even here).  But at least one excerpt, part of the section addressing the “ambuigities” problem and discussing the “rule against surplusage,” is pretty interesting. Read More…

Covering your assets.

Over the weekend, all the nerdiest news outlets reported that Volpin Props—a company that makes props and replicas “mostly videogame related,” according to the outfit’s Facebook page, “but anything goes!”)—received a cease-and-desist letter from Couristan, Inc., a rug and carpeting concern… for possibly the nerdiest/coolest reason imaginable (under the circumstances): Volpin had made for two attendees of the recent DragonCon—held at the Atlanta Marriott Marquis, a hotel with a wide variety of some very, very busy carpeting—custom camouflage outfits in the same pattern as one of the busier carpets at the venue. See a terrific photo here.

Does not wear carpet.

Does not wear carpet.

This probably would have been fine. That is, making custom carpet-camouflage costumes for a couple of conventioneers likely would not have gotten Volpin on Couristan’s radar. Or maybe it would have garnered Volpin praise from the carpeter. But Volpin didn’t just make the costumes; it reportedly put the fabric up for sale at Spoonflower.com, a site that sells fabrics, wallpapers, decals, gift wrap, etc. And that got Couristan’s attention—and Volpin got a C&D letter.

Because of course. And I mean that: Assuming that Couristan holds the copyright to the carpet pattern—and, man, what a pattern it is!—then Volpin can’t sell a fabric with that same pattern, else it infringe on Couristan’s intellectual property rights. And, to Volpin’s credit, the company’s principal—Harrison Krix, himself of Atlanta—has asked (on Facebook, where much of the public commentary has been posted) that people “not send Courtisan [sic] Inc or Marriott any nasty messages concerning this. I’m in complete agreement with their decision.”

(If you have three or four hours free, you might read the nearly 500 comments on Volpin’s Facebook posts about carpet-flage-gate. Then check out photos of all the carpeting at the Atlanta Marriott Marquis.)

 

Luxury goods rental

Originally posted 2008-02-28 15:29:48. Republished by Blog Post Promoter

“Bag Borrow or Steal™ – Borrow or Rent the Latest Authentic Designer Handbags Purses Jewelry and Accessories.”

You know they — the Big IP guys — are sitting in conference rooms trying to figure out how to stop this.

Soon enough when you buy a Gucci bag, it will come with a non-transferable “licensing” agreement!

My actual prediction:  They will make IP claims preventing the display of their merchandise in connection with promotion of this service, claiming, preposterously, a LIKELIHOOD OF CONFUSION as to affiliation, sponsorship, ownership… something.

The skinny on fair use

Originally posted 2009-10-06 22:37:52. Republished by Blog Post Promoter

How much dumb can possibly be fit into a size two?  Walter Olson rounds it up:

Ralph Lauren lawyers: don’t you dare reproduce our skinny-model photo in the course of criticizing our use of skinny models [BoingBoing]

Ralph Lauren Model

Ralph Lauren Model

With photoshop, evidently, quite a bit!  Here’s an excerpt from the original Boing Boing post, by Cory Doctorow:

Last month, Xeni blogged about the photoshop disaster that is this Ralph Lauren advertisement, in which a model’s proportions appear to have been altered to give her an impossibly skinny body (“Dude, her head’s bigger than her pelvis”). Naturally, Xeni reproduced the ad in question. This is classic fair use: a reproduction “for purposes such as criticism, comment, news reporting,” etc. . . .

As Wendy Seltzer from the Chilling Effects project said, “Sounds like a pretty solid fair use case to me. If criticism diminishes its effectiveness, that’s different from the market substitution copyright protects against. And I’ve rarely seen a thinner DMCA form-letter.”

Yeah, but a thinner cover girl you’re not going to see either.  I fear no C&D letter but don’t do model pictures at LIKELIHOOD OF CONFUSION®; you can check it at Doctorow’s post (or just click Olive Oyl above).  Do not adjust your sets:  That picture is for “real.”

Rooby Lifshitz is selling a bizarre concept of attractive, to say the least — as is, in its own inimitable (which is to say, similar gag-reflex-inducing) way, Greenberg Traurig.  Both are bad to the bone.

UPDATE:  The latest from Marty; and now Instanpundit has picked up the story and even the ABA Journal itself.

Jihadi Faux?

Originally posted 2006-04-07 12:39:52. Republished by Blog Post Promoter

Counterfeit Chic reports that the world really does revolve around intellectual property!

Last week in Maryland, a traffic stop yielded a cache of counterfeit Nike sneakers, LV and Coach handbags, additional illegal merchandise — and a CD titled “Jihad Freedom for the Slaves.”

OK, well. As Susan says, “Not dispositive, but at least suspicious.”

Goodbye, dolly

Originally posted 2009-01-17 23:52:25. Republished by Blog Post Promoter

Bratz litigation.

Best of 2010: Gucci v. Frontline Processing: Giving credit for infringement where it’s due

Originally posted 2010-12-28 08:30:01. Republished by Blog Post Promoter

First posted July 12, 2010. [stextbox id="info"]This is an adaptation of a summary and analysis of the recent decision in Gucci America, Inc. v. Frontline Processing Corp., 2010 WL 2541367 (S.D.N.Y.), discussed here casually earlier. Jane Coleman’s definitive online treatise Secondary Trademark Infringement has recently been updated and the impact of this decision integrated into the text; a full update is planned for September. The complete analysis of Gucci, including full citations, can be found here.[/stextbox]

The essential role played by credit card companies in online trademark infringement was recognized in Gucci America, Inc. v. Frontline Processing Corp. In that case, the court allowed contributory infringement claims to go forward against companies that had established credit card processing for an online counterfeit merchant. The payment for the counterfeit goods sold on its website was part of the infringing process, the court reasoned, drawing on Judge Kozinski’s dissent in Perfect 10, Inc. v. Visa Intern. Serv. Ass’n, and most of the infringing sales – of which the companies allegedly knew or should have known – were consummated using credit cards.

Gucci v. Frontline arose out of successful trademark infringement litigation brought by Gucci, the well-known manufacturer of luxury goods, against an online merchant operator of a website called “TheBagAddiction.com,” in which the owners admitted to liability for selling counterfeit Gucci products. Thereafter, Gucci turned to the three companies that had helped the merchant obtain credit card services, alleging both vicarious and contributory liability for trademark infringement. One of the three defendants, Durango Merchant Services acted as a middleman, while the other two, Frontline Processing Corporation and Woodforest National Bank, provided credit card processing services to the merchant.

In rejecting the defendants’ motion to dismiss, the court allowed the contributory liability claims to go forward as to all three defendants, but on different legal theories in accordance with their roles. As to Frontline and Woodforest, the court found the pleadings sufficient to allege contributory trademark infringement, based on their knowledge and control over the infringing activity on the website. As to the middleman, Durango, the court found the pleadings sufficient to allege contributory infringement based on an inducement theory.

As to Frontline and Woodforest, the court also found the pleadings stated a claim for contributory trademark infringement, based on the defendants’ knowledge and control over the infringing activity on the website. Citing eBay and Perfect 10, the Gucci court reiterated the direct control and monitoring test, stating that

[e]ven if a defendant does not seek out and intentionally induce a third-party to commit trademark infringement, it may still be held liable for the infringement if it supplied services with knowledge or by willfully shutting its eyes to the infringing conduct, while it had sufficient control over the instrumentality used to infringe.

Moreover, an allegation of the defendants’ general knowledge that infringement is taking place is not sufficient. “[A] service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods,” the court emphasized, citing further language in Tiffany that “’Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.’”

Both credit card processing companies either knew or should have known that they were servicing an infringing site, under the facts alleged, the court concluded. In both cases, a Durango agent had a dual role as both an employee of his company and a sales representative for the two credit card companies, and the court consequently accepted the allegations charging the companies with his knowledge. Thus, regarding Frontline, Gucci alleged that that company was aware of customers’ written acknowledgement of purchasing “replicas” as directed by the Durango agent. Read More…

IDPPPA ok?

Originally posted 2011-08-01 21:56:29. Republished by Blog Post Promoter

That’s the  Innovative Design Protection and Piracy Prevention Act, back up for another shot at the big leagues.

We need more laws right?

And just like last year, Susan Scafidi, the original to-die-for fashion-IP blogger, is in favor.  And though I haven’t heard from her lately on this, I’m guessing Staci Riordan is still fairly, uh…

“Con.”

But maybe not.  Interestingly, you have to pretty much go to the frozen north for an in-depth blog article about this statute — in this case, the Canada Fashion Law blog, whose Ashlee Froese interviewed my new blog-buddy and quasi-namesame Charles Colman on the topic.  He suggests that this year’s bill is not just a knockoff of the 2010 version, and that many of the concerns of the previous bill’s critics have been addressed in the current version.  An excerpt:

Some members were troubled by language in the bill – “likely to be mistaken” – that seemed to pull the infringement inquiry back toward trademark law [i.e., as in "likely to be confused" -- RDC (duh)], contrary to its apparent purpose.  We also spent a lot of time examining what might be considered the “core” language of the bill – the threshold requirement that a qualifying design display “a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs” – and whether that requirement was too stringent… or not stringent enough. . . .

I wasn’t involved in the debate at that time, but my understanding is that the [American Apparel and Footwear Association] was primarily concerned about frivolous lawsuits.  (Of course, this is a point of controversy anytime proposed legislation would create a new cause of action.)  The bill’s advocates eventually managed to get the AAFA on board, in large part by changing the required showing for liability from “substantial similarity” (the standard applied in copyright infringement lawsuits) to a higher standard that would require a plaintiff to prove that an alleged knockoff is “substantially identical” to her design.

“Her design”?  Interesting.  Charles seems to know which side his bread is buttered on! Read More…