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
Technology One-Ups Counterfeits--
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.
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
Saved By The Trinkets
Hello loves,
Are any of you an aspiring luxury handbag designer?
Recently, I had to do some extensive research on, how a designer goes about
acquiring protection for their original designs. As many of you may already
know, you are not able to gain protection for any feature of your design that
is “functional”. Function, meaning that in order to make the object what it is,
certain aspects are needed. An example of a functional aspect is the standard
buttons on a coat. However, if a designer goes as far as to 1) create a sculptured
button that is an original idea, 2) that can stand alone as a piece of art if
separated from the coat; those decorative/ornamental, buttons can be gain
copyright protection.
How does this apply to handbags? Before law school I often
wondered how despicable individuals, were able to take a handbag and create
look alike knockoffs. Well, know that I am completely judging anyone who would
take someone else’s idea and try to pass it off as their own. Even in the
fashion industry this is still considered stealing!
First, if you are a designer of handbags, you are able to
copyright and or trademark all parts of your handbag that is NOT functional,
but conveys information. Therefore, all elaborate designs that are your
original creation such as graphics, embroidery, unique designs in fabric and
very unique jacquard weaving, can be federally protected. Brand logos are protectable, too,
Second, high end handbags have
trinkets on them that are removable. If you take a closer look, these trinkets
usually resemble the designer’s federally protected trademark in a three
dimensional form. Some bags also have a silk lining that reflect the designer’s
trademark.
Third, get to work. Go forth and be creative. Put your
designs out for the public to purchase.
Until next time…
SPOT THE FAKE...
B.A.F.F.L.E.D. Fashion Law
Big Brands Keep Fighting Fakes--
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.
Counterfeits are making waves in the fashion industry and it's nothing good. In recent months, designers have had to step their protection game up in several ways, just to keep the infringers at bay. As reported earlier this week, Christian Louboutin, Jimmy Choo, Celine and others have sought a slew of design patents to protect their creations.
The lack of copyright protection in America makes protection a bit of a challenge. Trade dress, trademark, and patents are heavily depended on, but take some time to secure. Stella McCartney had to sue Steve Madden for infringement on her "Falabella" bag--a bag already holding 2 design patents for its continuous chain design. Tory Burch also came up big recently in fighting for her "Isis Cross" trademark. She won $38.9M in a lawsuit against Lin & J to protect her trademark. Despite claiming victory over YSL, Louboutin is still awaiting trademark validity from the EU. This stems from their 2013 battle with Van Haren infringing on the red soles.
While keeping us showered with designs for the new season, designers have to keep an eye on the counterfeit market. According to NetNames, a London-based brand protection firm, counterfeiting is getting a consistent boost from e-commerce, channeling sales up about 15%. Much of the items are sourced through China--nearly 70%. The raw materials are there. The factories are there. And, the labor is pretty inexpensive. An NYC couple was was just charged with conspiring to traffic counterfeits after being caught with over 130,000 counterfeit items in their rented warehouse. Many of the goods were said to have been sourced from China. It's the largest source, but certainly not the only.
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
Fashion Law and the Local Economy--
Fashion law is in fact taking over the globe. But, its impact is local in nature, too. Despite there being an ongoing battle for protection of fashion designs at the national level in the U.S., many large cities, are doing their part to protect brands as well as their local economies.
While fashion trends change almost faster than the seasons, brands are made to last forever. Creators set out to achieve longevity. In recent years, there have been a number of efforts to curb harm to brands. Whether it be through the sale of fakes, thereby infringing on trademarks, or even penalizing the consumers of fakes, local governments are taking no prisoners in preserving the integrity of fashion.
What's been happening?!
What's set to happen next?
Local governments are pressed to keep up the services they've been able to provide. We need smooth streets and snow plowed, right? Losing out on tax revenue is no help. Locales with counterfeit districts, like Canal St. in NYC are watching for dealers who skimp residents of their service money and are issuing penalties left and right. Cities with flea markets are heavily watching the products coming through their borders, too. Many large flea markets have been the scene of busts when local or federal authorities uncover fakes sold by vendors.
Surely fashion industry leaders like Susan Scafidi and Diane von Furstenberg will continue working with the CFDA on federal legislation as well.
We'll continue watching the counterfeit scene. You should do the same. Fakes are never in fashion.
Fashion law is in fact taking over the globe. But, its impact is local in nature, too. Despite there being an ongoing battle for protection of fashion designs at the national level in the U.S., many large cities, are doing their part to protect brands as well as their local economies.
While fashion trends change almost faster than the seasons, brands are made to last forever. Creators set out to achieve longevity. In recent years, there have been a number of efforts to curb harm to brands. Whether it be through the sale of fakes, thereby infringing on trademarks, or even penalizing the consumers of fakes, local governments are taking no prisoners in preserving the integrity of fashion.
What's been happening?!
- Both coasts are equipped with amazing fashion law programs to help train upcoming lawyers in this billion-dollar industry. The Fashion Law Institute at Fordham and the Fashion Law Project at Loyola dig deeply into fashion law issues. Being in the garment districts of the nation's 2 largest cities doesn't hurt either.
- In 2011, the New York City Bar Association established a fashion law committee. Many bar associations across the country have held symposiums on the topic since then.
- In 2013, NY Councilwoman Margaret Chin introduced an ordinance to penalize counterfeit purchasers. It's not far-fetched--Italy, France, and England all penalize consumers for purchasing fakes. The NYC measure didn't pass, but it definitely got the attention of counterfeiters and the impact tax avoidance has on the local economy. She introduces a subsequent effort to prohibit the storage or sale of fake goods in any NYC building. She's not giving up on this.
- Chicago makes necessary use of its Trademark Violation Ordinance, which revokes the business licenses of retailers possessing and selling counterfeits. O'Hare Airport, recently named the busiest in the U.S. has uncovered millions in fakes at their international gates as well.
- North Carolina isn't playing any games either. The Secretary of State's office led police throughout NC on Operation Faux Pas, seizing more than $12million in fakes across the state.
What's set to happen next?
Local governments are pressed to keep up the services they've been able to provide. We need smooth streets and snow plowed, right? Losing out on tax revenue is no help. Locales with counterfeit districts, like Canal St. in NYC are watching for dealers who skimp residents of their service money and are issuing penalties left and right. Cities with flea markets are heavily watching the products coming through their borders, too. Many large flea markets have been the scene of busts when local or federal authorities uncover fakes sold by vendors.
Surely fashion industry leaders like Susan Scafidi and Diane von Furstenberg will continue working with the CFDA on federal legislation as well.
We'll continue watching the counterfeit scene. You should do the same. Fakes are never in fashion.
B.A.F.F.L.E.D. Fashion Law
The Latest in Fashion Law: News & Updates--
A lot has been going on in fashion law lately, so we want to make sure you're up to speed. Here's the latest:
Ralph Lauren forced to destroy knockoffs
In October, Converse sued a bunch of designers who infringed on their famous Chuck Taylor shoe. Now, as part of their settlement, RL has decided to destroy their 36 infringing styles, along with all molds and materials used to make them. Trademark protection is everything. Even big brands get caught up in it.
Seahawks are protecting their fans
Just in time for the Super Bowl, the Seattle Seahawks are working to trademark the number "12" and "boom". After successfully registering "Legion of Boom", efforts to secure "12th man"and just the number "12" in jersey font have proven a bit more difficult because of marks already in use. The Seahawks aren't giving up, though. They're working to find as much specificity as possible to protect what's pushed them to their 2nd Super Bowl in 2 years. Good luck!
Federal Agents Seize Super Bowl Fakes
While Seattle is trying to protect their brand, the NFL is working to do the same for theirs. Just this past weekend, near Phoenix, about $1million in knockoff NFL merchandise was seized by the feds. Merchandise included watches, other jewelry, and even flasks. Yikes.
"Faking It" exhibit continues at FIT
New York's Fashion Institute of Technology recently launched an exhibit in their museum examining the history of copying, both authorized and unauthorized, as the $600billion counterfeit industry continues to threaten designers. Faking It: Originals, Copies and Counterfeits displays genuine and copied items from designers like Louis Vuitton and Coco Chanel--2 designers who have actually stood on opposite sides of the issue. Following Charles Fredrick Worth's debut of a label in his designs in 1903, brands like Louis Vuitton have worked tirelessly to protect themselves against fakes. Meanwhile Madam Chanel once said "One should not bother to protect that which dies the minute it is born". Is she right?
Patrons of the exhibit get to check out bags, suits, dresses and more, all while comparing the real to the fake. A little fashion law history is laid out as well. The exhibit lasts until April 25th.
Louis Vuitton and Google partner to fight fakes
Continuing their quest to forever protect their well-known brand, LVMH is now working with Google to keep the conglomerate safe on the internet. After filing many lawsuits against Google for harboring ads and sales of infringing merchandise, the 2 major brands have signed a cooperation agreement, promising to end their legal dispute. The deal provides for each side to combine their resources to keep counterfeit LV items from being marketed and sold via the internet giant.
Is this the start of stronger crackdowns? Let's keep watching.
A lot has been going on in fashion law lately, so we want to make sure you're up to speed. Here's the latest:
Ralph Lauren forced to destroy knockoffs
In October, Converse sued a bunch of designers who infringed on their famous Chuck Taylor shoe. Now, as part of their settlement, RL has decided to destroy their 36 infringing styles, along with all molds and materials used to make them. Trademark protection is everything. Even big brands get caught up in it.
Seahawks are protecting their fans
Just in time for the Super Bowl, the Seattle Seahawks are working to trademark the number "12" and "boom". After successfully registering "Legion of Boom", efforts to secure "12th man"and just the number "12" in jersey font have proven a bit more difficult because of marks already in use. The Seahawks aren't giving up, though. They're working to find as much specificity as possible to protect what's pushed them to their 2nd Super Bowl in 2 years. Good luck!
Federal Agents Seize Super Bowl Fakes
While Seattle is trying to protect their brand, the NFL is working to do the same for theirs. Just this past weekend, near Phoenix, about $1million in knockoff NFL merchandise was seized by the feds. Merchandise included watches, other jewelry, and even flasks. Yikes.
"Faking It" exhibit continues at FIT
New York's Fashion Institute of Technology recently launched an exhibit in their museum examining the history of copying, both authorized and unauthorized, as the $600billion counterfeit industry continues to threaten designers. Faking It: Originals, Copies and Counterfeits displays genuine and copied items from designers like Louis Vuitton and Coco Chanel--2 designers who have actually stood on opposite sides of the issue. Following Charles Fredrick Worth's debut of a label in his designs in 1903, brands like Louis Vuitton have worked tirelessly to protect themselves against fakes. Meanwhile Madam Chanel once said "One should not bother to protect that which dies the minute it is born". Is she right?
 |
| Afternoon Dress by Charles Fredrick Worth (1903) |
Patrons of the exhibit get to check out bags, suits, dresses and more, all while comparing the real to the fake. A little fashion law history is laid out as well. The exhibit lasts until April 25th.
Louis Vuitton and Google partner to fight fakes
Continuing their quest to forever protect their well-known brand, LVMH is now working with Google to keep the conglomerate safe on the internet. After filing many lawsuits against Google for harboring ads and sales of infringing merchandise, the 2 major brands have signed a cooperation agreement, promising to end their legal dispute. The deal provides for each side to combine their resources to keep counterfeit LV items from being marketed and sold via the internet giant.
Is this the start of stronger crackdowns? Let's keep watching.
B.A.F.F.L.E.D. Fashion Law
Victoria's Secret Loses Its Pink--
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?
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?
B.A.F.F.L.E.D. Fashion Law
How to Spot Fake Merchandise--
This topic has been visited a few times--on this site through various posts, and by some of our fashion law friends. However, a reminder is always good, especially as e-commerce continues to dominate. We want to make sure you're fully aware of what you're buying, and why you shouldn't be buying items not properly sourced to the right designer.Here's some guidance on purchasing the right pieces:
It's improperly placed
If it's not in an approved retailer, is positioned in a mall kiosk, or is sold on a street corner or out of a trunk--it's fake!
The price is too good to be true
Real luxury goods come at a cost. When you enter their stores, they'll tell you you're making and investment, not a purchase. If the price is way beyond right, it's not real. No hardworking designer--established or rising--is short selling their work.
It doesn't look quite right
Does the design look just a tad bit off? Are the letters skewed? Are the letters wrong?! If anything about the item is not right--it's fake. Artists are perfectionists, and they don't let imperfect products hit the market. If an item looks off, don't buy it.
The signs are obvious
This is when logos are incorrect. Trademarks are terribly infringed, and real artistry is compromised. You know you are dealing with a fake when all of the 3 above are present. You can also be sure when the seller can barely give you facts about the brand. Frequenting designer shops--even department stores--you'll find knowledgeable sales associates who know about what their selling. When you can't get a straight story on what you're buying, keep your money.
It's produced in the gray market
Gray market goods skirt the line of infringement. Their crafty, shifty ways to make goods seem legit. They're not. Gray market goods are produced at legitimate factories, but under illegitimate terms. These goods are categorically fake. Don't support them. They're made contrary to the factory's terms with the designer, skim designers of their rightful money, and impair brand quality in the market. How would you want your hard work treated? As Fashion Law Trailblazer Susan Scafidi points out in this news spot on Superfakes, these items often fund organized crime and terrorism.
The Rating System
(1) The real thing(2) The real thing....but the designer finds something about it imperfect for sale
(3) A great fake; looks real, but it's not. We still discourage purchase of these.
(4) A terrible fake. Sellers and buyers should know and do better. Smh.
Be careful when shopping and make sure your purchases are legit on all levels. For more, check out our 3-part series on The Battle Against Counterfeits.
B.A.F.F.L.E.D. Fashion Law
The Battle of Counterfeits in Big Cities: Part 1--
Is your city struggling with the counterfeit market? Mine is. Chicago, like many other cities is doing its best to protect the intellectual property of fashion designers. Because the counterfeit industry is a billion-dollar market, both the federal and local governments must stay on their toes in this battle.
The Legislature and Fashion Law: Partners Against Crime
Just recently, NYC Councilwoman Margaret Chin again filed an ordinance to punish purchasers of counterfeit goods. Canal Street in New York, as well as various other locations are widely known for their stock of counterfeit goods. Many put this shopping spot on their itinerary when heading to the Big Apple. Will this legislation deter tourists from heading to NYC?
Although her legislation has not reached the point of passing, she's quite adamant about the need. Designers surely agree. Concerns have come up about the reason for punishing the consumer, but the sale of counterfeits is already a punishable offense. And to be honest, consumers know when they're buying a fake. There are so many signs. Chin said. “If you go into a back room, basement or van, you probably know what you’re doing is not legal.” Well put Councilwoman.
As we've noted before, designer products are in the market in 4 classes:
(1) The real thing
(2) The real thing....but the designer finds something about it imperfect for sale
(3) A great fake; looks real, but it's not. This item is a counterfeit.
(4) A terrible fake. Sellers and buyers should know and do better. These are knockoffs, when Coach "C"s become Gs, Gucci "G"s look like Cs, and maybe this bag is sold at a mall kiosk. Tell tale signs are evident it's not real.
This diagram from our friends at Fox Rothschild helps determine a fake Louis Vuitton. We'll share more tips as this series continues.
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Law Enforcement Does Their Part: My beloved Chicago is also fighting the battle against fakes. From September 2011 through the same time in 2012, Chicago saw more than 100,000 fakes seized, totaling to more than $5million. In conjunction with the U.S. Immigration and Customs Enforcement's Office of Homeland Security Investigations, the Cook County Sheriff has worked to follow the trail of the counterfeit, often leading them to flea markets and even purse parties. They are then often able to follow the trail back to the source.
The trail of the counterfeit is what makes this phenomenon so interesting. The route is quite interesting and includes pieces like contracts, licensing, and labor agreements.
Stay tuned for next week's Part 2 on counterfeits in big cities, where we'll trace the trail of counterfeits to their source.
The Legislature and Fashion Law: Partners Against Crime
Just recently, NYC Councilwoman Margaret Chin again filed an ordinance to punish purchasers of counterfeit goods. Canal Street in New York, as well as various other locations are widely known for their stock of counterfeit goods. Many put this shopping spot on their itinerary when heading to the Big Apple. Will this legislation deter tourists from heading to NYC?
Although her legislation has not reached the point of passing, she's quite adamant about the need. Designers surely agree. Concerns have come up about the reason for punishing the consumer, but the sale of counterfeits is already a punishable offense. And to be honest, consumers know when they're buying a fake. There are so many signs. Chin said. “If you go into a back room, basement or van, you probably know what you’re doing is not legal.” Well put Councilwoman.
As we've noted before, designer products are in the market in 4 classes:
(1) The real thing
(2) The real thing....but the designer finds something about it imperfect for sale
(3) A great fake; looks real, but it's not. This item is a counterfeit.
(4) A terrible fake. Sellers and buyers should know and do better. These are knockoffs, when Coach "C"s become Gs, Gucci "G"s look like Cs, and maybe this bag is sold at a mall kiosk. Tell tale signs are evident it's not real.
This diagram from our friends at Fox Rothschild helps determine a fake Louis Vuitton. We'll share more tips as this series continues.
.jpeg)
Law Enforcement Does Their Part: My beloved Chicago is also fighting the battle against fakes. From September 2011 through the same time in 2012, Chicago saw more than 100,000 fakes seized, totaling to more than $5million. In conjunction with the U.S. Immigration and Customs Enforcement's Office of Homeland Security Investigations, the Cook County Sheriff has worked to follow the trail of the counterfeit, often leading them to flea markets and even purse parties. They are then often able to follow the trail back to the source.
The trail of the counterfeit is what makes this phenomenon so interesting. The route is quite interesting and includes pieces like contracts, licensing, and labor agreements.
Stay tuned for next week's Part 2 on counterfeits in big cities, where we'll trace the trail of counterfeits to their source.
B.A.F.F.L.E.D. Fashion Law
The Battle At Red Sole: A Win-Win, Ultimately--
Just yesterday, the U.S. Court of Appeals for the 2nd District ruled on the Louboutin v. Yves Saint Laurent (now Saint Laurent Paris) case in regards to the ever popular red soled shoe.
Here is a review of what happened:
Just yesterday, the U.S. Court of Appeals for the 2nd District ruled on the Louboutin v. Yves Saint Laurent (now Saint Laurent Paris) case in regards to the ever popular red soled shoe.
- The Appellate Court affirmed in part and reversed in part the ruling of the District Court.
- The Court affirmed the ruling which denied Louboutin a preliminary injunction to stop YSL from selling their monochromatic shoes--covered in red on top and bottom.
- The Court reversed the finding of Louboutin's trademark to be invalid by the District Court--saying a color can, in fact, serve as a trademark in the fashion industry.
- The Affirmation
- Both the District Court and Appellate Court denied Louboutin an injunction to stop YSL from selling their all red shoes. The reason being, on the District Court level was largely because a color couldn't be used as a trademark-- so Louboutin couldn't stop YSL from selling their shoe. On the Appellate level, the injunction denial was affirmed because the trademark approved for Louboutin is one for red soles contrasting the "upper" of the shoe. The YSL shoe did not have a contrasting sole and upper.
- The Reversal
- This helps explain the affirmation a bit. The Appellate Court reversed the lower court's ruling, finding the Red Sole Mark invalid. This was reversed because of the "secondary meaning" developed by the Louboutin red sole in the market. As the Appellate Court noted from precedent: Secondary meaning is acquired when, in the minds of the public, the primary significance of a product feature...is to identify the source of the product rather than the product itself. Ultimately, consumers have been trained through marketing and promotion to associate red soles contrasting their uppers as high-fashion Louboutin shoes. With a modified understanding of the mark, Louboutin prevailed.
- The Steps Ahead
- In a nutshell, both sides can be seen as winners. Louboutin has protected their contrasting red sole as a valid trademark in the fashion industry. It is used to identify their brand, as required for trademark registration, but does not limit competition in the market. YSL can continue marketing their monochromatic shoe. The red sole trademark is not infringed when used in a way contrary to a red sole contrasting a non-red upper.
- The Court reminded us about some of the main principles of trademark law, providing:
- By placing the color red in a context that seems unusual and deliberately tying that color to his product, Louboutin has created an identifying mark firmly associated with his brand which, to "those in the know" instantly denotes his shoes' source, Louboutin.
- It is the first principle of trademark law, that an owner may not use the mark as a means of excluding competitors from a market.
- Allowing red soles in all circumstances to be the trademark possession would limit shoe marketing. Modifying the mark to apply only in a specific manner promotes competition--a primary crux in trademark law.
- The fashion industry, like other industries, has special concerns in the operation of trademark law.
- Although there is no copyright protection in the fashion industry generally, trademark is essential to the industry and cases like this are major for this creative market.
As promised, we've been watching this one for some time now. If you've missed out on how we got to this point, check out these Flashbacks to get up to speed:
For more on what's going on in fashion law...and there's quite a bit, consult the Fashion Law Files!