B.A.F.F.L.E.D. Fashion Law
A Potential Way For More Designers To Monopolize Specific Style Characteristics…
You want to know why Christian Louboutin is the only shoe designer who can use the color red on the soles of its shoes when the shoe itself is any color but the color red? I can sum it up for you in three words –Trade Dress Protection— a form of United States trademark law. Want to learn more about how Christian Louboutin was able to stop Yves Saint Laurent and any other design from making shoes with red soles unless the entire shoe will be red? First, let me give you a quick trademark law breakdown.
The purpose of trademark law is to prevent consumer confusion. Labels let consumers know what to expect from a particular brand. Trademarks can be any word, symbol, sound, color, phrase, or combination used to identify and distinguish one source from another and help consumers identify the product in question.
Trade dress protects the overall commercial look and feel of a product or service. Its range is extensive, and the protection extends to various elements of a product or product packagings such as the shape, design, color, and more. Trade dress takes its security one step further, and it allows trade dress protection for establishments with a distinct look and feel of a product or establishment. Still, like trademark protection, to be eligible for trade dress protection, the design must be distinct and nonfunctional. Essentially, distinct means unlike any others in the market place and nonfunctional as in the design is not required for the product or design to work.
So now that we have gotten through that trade dress law blitz, let's get back to the questions before us:
(1) How was Louboutin able to stop Laurent and any other designer from making shoes with red soles unless the entire shoe is red?
(2) Why aren’t more designers using trade dress protection to create a monopoly in a specific brand recognizer for their designs?
(3) Is your brand eligible for trade dress protection?
In short, Louboutin’s iconic red sole has built up significant source recognition, which has resulted in the sole qualifying for secondary meaning. Furthermore, the design feature is distinct from amongst the fashion house's competitors. When people see a shoe with a red sole, they almost instinctively think that Christian Louboutin made the shoe. The soles, therefore, help the designer distinguish itself from its competitors. Trade dress protection at its core is about distinctiveness and source recognition.
In the groundbreaking lawsuit between Louboutin and Laurent, Laurent wins the battle, but Louboutin won the war. The court ultimately determined that Louboutin was entitled to trade dress protection for their signature red soles. Yet YSL was allowed to make shoes with red soles as long as the entire shoe is red. The court further found that the Louboutin's trade dress, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited "secondary meaning" as a distinctive symbol that identifies the Louboutin brand. Secondary meaning is the key to trade dress protection. Secondary meaning is a legal term of art that represents a designation given to trade dress that by itself is not necessarily inherently distinctive. However, the general consumer of that product has grown to associate that symbol with the brand its self. One generally does not acquire secondary meaning overnight.
To take advantage of trade dress protection, a designer would need to (1) identify its signature designs and colors and (2) use the designs and colors in a manner that makes the designer's brand distinguishable from others similarly situated in the marketplace. The best way for a designer to posture their brand for trade dress protection is to implement these design characteristics early on in its lifetime. Building brand recognition is a slow grind, and the road to trade dress protection is a long road. The length of the process leaves many designers vulnerable to design pirates.
Ultimately, whether your designs are eligible for trade dress protection will depend on whether your designs have source-identifying characteristics. Acquiring trade dress protection can be a long process, and the protection offered can be minimal. For example, in Louboutin, the court found that the red sole alone was protectable when the shoe itself was not all red. To obtain trade dress protection for your designs, one would have to wait until you have acquired secondary meaning. Additionally, you will need to use other forms of intellectual property protection for the design parts that trade dress protection will not protect. The narrow protection trade dress protection provides, paired with the cost and amount of time it takes to obtain trade dress protection, make it an unattractive choice for many designers.
B.A.F.F.L.E.D. Fashion Law
B.A.F.F.L.E.D. Fashion Law
Just when the counterfeit market thought it was gaining, particularly with retail experiencing a stumbling block, technology has stepped in to do what it does best--change the game. To fight back against fakes in the market, the folks at Entrupy created a scanner to determine the real from the fake.Obviously you can train a machine to do almost anything these days. Now, this machine-learning system can scan an item and with up to 98.5% accuracy, determine whether it's the real deal or just another really good copy. As you know, goods are in the market in 4 different classes. This device will be able to separate the 1s from the 2s with almost complete certainty. Because of its advanced technology, it will also be improving its accuracy with every use.
Entrupy won't be marketed to the individual consumer, but primarily geared toward retailers looking to ensure they are selling genuine products, and not gray market goods--those made in legit factories, but outside contracted terms. This device will also put gray marketers on the defense, forcing them to find ways to defeat the system. The goal of the scanner is to ensure trust in what consumers are purchasing.
"We built Entrupy as a scalable and versatile platform in response to the rapidly growing counterfeiting issue and need for trust when it comes to product transactions." Vidyuth Srinivasan, Entrupy's co-founder told Digital Trends.
This device will most certainly give the gray market a run for its money. It may press legislators to act on further protecting designs as well.
For more on gray market goods, click here.
B.A.F.F.L.E.D. Fashion Law
Until now, no case hailing from the niche of fashion law had stepped onto the U.S. Supreme Court stage. A decision this week has changed that.
The Star Athletica v. Varsity Brand case has become a trailblazer for copyright in the fashion industry. Just yesterday, the SCOTUS found decorative items--specifically those common on cheerleading uniforms--to be protectable under copyright law. This ruling is contrary to years of cases in lower courts, where opinions have continuously determined decorative elements of clothing were inseparable from the garments themselves.
In the only apparel-related case to ever come across the docket, the Supreme Court made a determination which could change the fashion industry forever. Law360 noted, "The question before the justices was how courts should decide when such “separability” exists, an issue that has split lower courts. Fashion companies pushed for a looser approach that would allow them to protect more apparel with copyrights; consumer advocates called for a tighter approach, meaning less protection and more competition."
The fashion companies won.
With this ruling, designers now have a gateway to protecting the artistic elements of their designs, and drawing a long-awaited distinction between their unique work, and a useful item (clothing). Surely this case will set the stage for more litigation, as designers will have firm ground to stand on when exercising their vigilance in protecting their work. It may also set the stage for shocking the conscious of the counterfeit market.
This has been quite the fight for those of us knee-deep in the fashion law industry. What will fashion law conquer next?
B.A.F.F.L.E.D. Fashion Law
Fashion Forward: Wearable Technology, Design Patents, Privacy, and the latest Fashion Law Cases--
It's time again for some fab fashion law symposiums! Well, it's actually always time, but the next one is fast approaching. The fashionable folks at the Beverly Hills Bar Association are hosting a wonderful panel discussion this coming Thursday! Some fashion law faves will be presenting, so we know it's sure to be a good time.
Check out the details below and register NOW!!
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B.A.F.F.L.E.D. Fashion Law
Zara was just sued by the socially-conscious brand, Reformation for infringing on their model-moniker-bearing sweatshirt design. Reformation previously sold a plain grey sweatshirt with model Cindy Crawford's name across the chest. Zara is now selling a similarly styled shirt--but bearing the model Elle Macpherson's name. 
B.A.F.F.L.E.D. Fashion Law
B.A.F.F.L.E.D. Fashion Law
Counterfeiting is about 2% of world trade--equating to about $1trillion, according to the International Chamber of Commerce. Make no mistake, many purchasers of counterfeits were never going to purchase the real thing anyways. But, some were, and got bamboozled. Whether they were looking for the real thing or just something to pass at a quick glance, the harm done by fakes doesn't change. There's a cost far greater than the black market price. B.A.F.F.L.E.D. Fashion Law
Fab shoemaker Christian Louboutin is always working to protect his brand. His latest attempt has been obtaining a design patent for his spiked toe design. He's already overcome the red sole battle, and is now continuing on in making sure there's no confusion as to what belongs to him and only him.
In addition to the spiked toe patent, CL has about 10 others. His design patents include some of his lace-up boots and stuffed flats...surely more are to come. Be careful doing your fall and winter shopping. There's likely to be fakes out there. Christian isn't the only one protecting his brand with every design protection option possible. Jimmy Choo, YSL (a former Louboutin opponent in court), and Celine are just a few others also taking the protection to the next level.With the counterfeit market grossing in the billions, no chances can be taken!
B.A.F.F.L.E.D. Fashion Law
In a recent London-based lawsuit, the famous lingerie line lost their ability to use the "Pink" trademark. Victoria's Secret, an L Brands line, was sued by Thomas Pink, an English brand specializing in dressing men for work and formal events. While you can find Thomas Pink items in America at various retail stores like Macy's, the brand thought VS's use of "Pink" brought confusion to the market.A trademark is a symbol used in the market to signal the source, and often quality, of goods. Popular trademarks are often registered with their respective nation's trademark office, and provide protection to the brand. Thomas Pink accused Victoria's Secret of infringement based on confusion, claiming the separation of brands may not be distinct enough to shoppers seeking ties and dress shirts--not hoodies and panties.
The men's line was delighted to find a judge agree the trademarks were too similar for comfort in this global market. “We are delighted with the outcome of this case, and will continue to protect the considerable investment that has been made into building Thomas Pink into a leading luxury clothing brand,” Jonathan Heilbron, the company’s chief executive officer said. This outcome could set the pace for stricter regulation of trademarks. Brands are taking advantage of both vertical and horizontal integration, so the selection and use of names in a global market largely dependent on internet and social media is increasingly difficult. Of course Victoria's Secret believes the clear distinction in customer base alleviates any confusion between the 2, but for now, they'll have to figure out some other mark for their varsity line. Any ideas?