DOUBLE fashion law roundup: fashion heavyweights (and a trashy Loub owner) administer beatdowns; UK = police state?; whale vomit

Posted by Charles Colman

Because LAW OF FASHION didn't get around to posting a round-up last week, there is almost too much fashion law news to handle in one post.  Still, as always, LOF will endeavor to keep you informed.  For more frequent fashion law updates, join the LOF LinkedIn Group, follow LOF on Twitter, etc.

 

Intellectual Property


"Louis Vuitton v. Hyundai: Deconstruction of a Bad Trademark Decision" (Harvard Berkman Center / Citizen Media Law Project)

"[A while back, Hyundai ran an ad consisting of] a series of brief vignettes conveying luxurious items in non-luxury settings: a yacht parked next to a small suburban ranch house, cops in a squad car snacking on caviar, chandeliers for streetlights, lobsters and roast pigs in what looks like an office breakroom, and – most importantly for our purposes – a group of people playing basketball with a ball that appears to have what Louis Vuitton calls its 'Toile Monogram' pattern on it. Baroque music plays throughout, and a sonorous voice asks the audience, 'What if we made luxury available to everyone? Would it still be called luxury? Or maybe we'd need a word for it. Oh, here's one: "Hyundai." The all new Hyundai Sonata.' Get it? The ad asks us to ponder whether luxury is defined by its exclusivity to an upper caste, or whether we can all experience the creature comforts of 'luxury' regardless of social strata, when a vendor makes high-quality goods at a convenient price point....  [Louis Vuitton was not amused by Hyundai's fleeting use of its Toile Monogram pattern.  (It rarely is.)  It sued Hyundai for trademark infringement and dilution, among other things.]  Looking at this in a vacuum, the case for Hyundai seems pretty easy: The use of the Toile Monogram was nominative fair use – Hyundai sure looks like it is referring to Louis Vuitton to me. Louis Vuitton is a brand associated with luxury, so putting the brand on a basketball was achieving the same ends as putting the yacht next to the ranch house: it juxtaposed symbols of luxury with symbols of everyday life. So it may surprise you to learn that Southern District granted Louis Vuitton's motion for summary judgment, even in the face of this broad exclusion for expressive uses. How did this happen?...."


And in other trademark bullying enforcement news...


"The Gucci vs. Guess Courtroom Drama Continues: Marc Fisher Cries, Admits to Buying $75,000 in Gucci Merchandise" (Fashionista)

"Tearful CEOs, quippy judges, and a no-nonsense, tough-as-nails prosecution lawyer: seriously, the Gucci v. Guess courtroom case couldn’t be juicier if it had been scripted for television.... The latest development in the ongoing drama is testimony from Marc Fisher, the CEO of Guess footwear licensee Marc Fisher Footwear, who has been consistently fingered as an integral part in [Guess's supposed] 'massive knockoff scheme.' According to WWD, Fisher actually started tearing up when his lawyer, Darren Saunders, recounted Gucci’s knockoff accusations. [Later on,] Gucci’s lawyer, Louis Ederer, showed the court a binder nearly a foot thick, filled with photos of Gucci products, spanning the past five years. Fisher’s defense? That the company does not just collect Gucci products to use as 'inspiration,' but that they have as many photos for several other brands, which they use as 'references' for their designs.... Things got even more interesting when Ederer presented a report showing Fisher’s Gucci purchases over the last six to seven years. The tally? A whopping $75,000 in Gucci merchandise...."


"Commerce Report Puts Focus on IP" (Women's Wear Daily; sub. required)

"Outlining the importance of intellectual property, or IP, protections, the Obama administration released a report on Wednesday that also emphasized the job and export contributions made by clothing stores, cosmetics companies and apparel and textile manufacturers, and ways to protect their trademarks and other rights.... The report will be used as a tool to help press for intellectual protections in trade negotiations and provide supporting data for the administration’s new International Trade Enforcement Agency, which could bring cases against countries where counterfeiting and digital piracy is rampant, according to Deputy Commerce Secretary Rebecca Blank...."


"The Fashion of the Future Could Be a Boon for Patent Lawyers" (LAW OF FASHION; this very post)

The past couple weeks have seen quite a bit of coverage of "high-tech" fashion and beauty, which of course means more work for "fashion lawyers" on the (admittedly, sometimes neglected) patent side of "fashion law."  Thus, see Ecouterre's story, "Vibrating 'Lorm' Glove Helps Deaf-Blind People Send Text Messages," Mashable's article on electricity-generating rain boots and airbag-like scarves, and the article that might have started this whole journalistic trendlet, the Wall Street Journal's "Next: Bikinis That Stick To Skin And Jackets With a Jolt."  Oh, and beauty, which has always been about scientific innovation to some degree, is also stepping up its game.


Meanwhile, in licensing news, Jason Wu expands into sofas, candles, and... faucets (let's hope the talented young designer heeds the cautionary tale of Pierre Cardin); Missoni licenses its trademark and patterns to Converse (apparently feeling unfulfilled despite its recent licensing dalliance in Philippine real estate); and fragrance aficionados may no longer have to put whale vomit on their skin (but only if the nice and inventive folks at the University of British Columbia deign to license their newly-discovered, decidedly loss gross alternative to said aficionados' parfumiers of choice.)

 

And also:

 

"[Under Settlement Agreement with Nike,] Reebok to Stop Selling Tebow Jerseys" (WSJ)


"Customs Seizes Over $340,000 in Counterfeit Estée Lauder Perfumes" (Case Clothesed)


"Coach claims Pelham [Alabama] nail salon sold fake handbags" (The Birmingham News)


"Did Jessica Simpson Totally Knock Off Christian Louboutin?" (Styleite)

 

"White House IP Czar Releases the 2011 Annual Report on Intellectual Property Enforcement" (InfoJustice)

 

"Louis Vuitton Presses 'Hangover II' Handbag Lawsuit [citing Hyundai decision]" (Hollywood Reporter / THR Esq.)


"High Court Seeks Word From Nike In Trademark Case" (IP 360; sub. required)


Localism, Sustainability, Ethics, Labor, and Trade


"NYC Releases Fashion Report: Fashion Week, Fast Fashion See Biggest Growth" (Fashionista)

"In 2010, NYC officials launched Fashion.NYC.2020, a study to determine the state of the fashion industry in NYC (and, thus, the U.S.) and how things look for the future. The final report, based on surveys and interviews with over 500 industry professionals, has just been released with lots of stats and analysis about how we’re doing.... Some things we’ll see more of over the next few years: [1] Fast fashion getting faster: We’re really into fast fashion. Where H&M, Uniqlo and Forever 21 grew 13%, 23% and 25% respectively, specialty retailers grew only 2% over the same time period. [2] Online shopping. Online sales are projected to grow 10% annually compared with 2% for overall retail sales. [3] Marketing through new media and social networks. [4] Technology that crowdsources the design process. [5] Sustainable fashion, though it’s not expected to have a significant impact on NYC’s fashion industry...."

 

Re: number 5, tell that to Vaute Couture!  Meanwhile, it seems H&M has had its ear to the ground on sustainability...


"H&M Wants You To Buy Its Eco-Friendly Evening Gowns" (Jezebel)

"H&M's capsule collection of evening wear made from sustainable fabrics hits stores [on April 12th]. Dresses made of organic cotton and hemp and recycled polyester will retail for around $60-$300, which is a good deal pricier than H&M's usual wares."

 

But does H&M have motives besides saving the earth and/or jumping on the sustainability bandwagon?  As Jezebel explains, "The [new organic] collection is seen as H&M testing the waters for the new chain of more expensive stores it wants to start, which it recently announced would be named '& Other Stores.'"  Clever... if not exactly noble.


"Imports Down, Made in America Pushed" (Women's Wear Daily; sub. required)

"Apparel and textile imports to the U.S. fell 6.4 percent in February to 3.9 billion square meter equivalents from a year earlier, a report from the Commerce Department’s Office for Textiles and Apparel showed Thursday, as the Obama administration continued to tout Made in America and export opportunities [U.S. Trade Representative Ron] Kirk said U.S. trade officials have found that more U.S. companies are relocating back to the U.S. to produce their goods [asserting that] 'while it is cheaper to get the workers [in Asia]…our productivity has gone up….Businesses are finally deciding, ‘You know what? I think I’m just going to make this here in North America and in the U.S.’ It is the beginning of a trend.'..."


"Walmart Launches Groundbreaking Initiative to Empower Women Working in Factories in India, Bangladesh, China and Central America" (Press Release)

"[On April 5, 2012] Walmart launched its Women in Factories program, a five-year initiative that will empower 60,000 women working in factories that supply products to Walmart and other retailers in India, Bangladesh, China and Central America. The program, which is being implemented in collaboration with local NGOs, will teach critical life skills related to communication, hygiene, reproductive health, occupational health and safety, identifying personal strengths and gender sensitivity. Up to 8,000 women will also receive leadership training to develop the work and life skills necessary for personal and career development...."


One more cynical than I might query whether this is a preemptive PR move implemented in the wake of apparel factory faintings, strikes and general labor unrest, resulting imprisonment, and/or government-requested boycotts in places like Cambodia, Bangladesh, and Honduras.  One about as cynical as I would ask whether Wal-Mart's initiative is admirable... or patronizing.  Hygiene lessons?


And also:

 

"[UPDATE:] 8 Law Firm Workers Who Say They Were Fired for Wearing Orange Shirts File NLRB Complaint" (ABA Journal)


"Supermodel Sara Ziff Forms Model Alliance to Save Models and Fashion" (Back Stage)


"Slow Fashion Movement Picks Up Speed in Iceland" (Fashionista)


"Younger [Jewelry] Consumers Care About Social Issues, Panel Agrees" (JCK Magazine)


"Product Dumping: How [Some Asian Companies] Are Killing Made-in-Nigeria Goods" (Vanguard (Nigeria))


"USTR Report Cites Trade Barriers [in Latin America, against U.S. apparel, footwear, and textiles]" (WWD)


"Walmart on Fast Track to Incorporating Eco-Friendly 'Better Cotton'" (Ecouterre)


"New Practice Focuses on Human Rights, Intellectual Property" (WaPo Capital Business)


"Harrods will not be able to open in India" (LiveMint)


Advertising and Marketing Law


"‘Pornographic’ American Apparel ads banned [in the UK]" (Marketing Week)

"American Apparel has been rapped by the [UK's] Advertising Standards Authority for a series of 'pornographic and exploitative' ads that inappropriately sexualise young women.... A previous American Apparel ad was banned in 2009 for sexualising children.... Meanwhile, H&M’s ad campaign to launch the exclusive range of David Beckham underwear has avoided censure despite complaints that it was offensive and irresponsible. Ads featured the footballer modelling an exclusive range of men’s underwear."

 

This writer's training in U.S. law (and specifically, in the First Amendment, which does protect commercial speech, albeit to a lesser degree than purely expressive speech) makes all of this seem incredibly bizarre and slightly Orwellian.  That the UK's "Advertising Standards Authority" (who are these people, anyway?) launched an investigation in response to three (3!) complaints may bespeak a broken system.  Fortunately, despite the unwarranted probe, the ASA showed some common sense in ultimately allowing the Beckham ads to stay up, noting that "there was no explicit nudity in the image, and that the ad was for an underwear range."  The ASA further redeemed itself (to the extent possible) by even more recently refusing to ban an H&M ad showing a woman dancing in her bra.  Yet again, according to Marketing Week, a mere "handful of viewers [had] complained that the TV and digital outdoor ads promoting a push-up bra were unsuitable to be seen by children."  Why is it that "the children" always seem to be wheeled out by opponents of commonsensical things, like underwear ads featuring semi-nude models or, say, same-sex marriage?  Okay, perhaps this self-righteous American lawyer has no ground to stand on; see "May 'Jesus Is Not a Homophobe' T-Shirt Be Banned from Public High School as 'Indecent' and 'Sexual'?" (The Volokh Conspiracy).  Looks like Canada doesn't quite have its s#*t together, either: "Muslim Woman's Bra Photo Sparks Controversy" (HuffPost Canada).


"Kitson Mislabeled Real Fur As Faux" (NY Mag / The Cut)

"The Humane Society investigated items sold at L.A. boutique Kitson and found that at least three pieces advertised as faux fur contained actual fur, 'from various animals, including possibly a coyote, gray wolf and raccoon dog'" Kitson stated that their mislabeling was an accident, telling WWD that they regretted 'incorrectly listing the fur content on its items.'"


This is a big no-no.  Remember the FTC's newly refined fur guidelines... 


"Someone Is Suing Vibram (Maker of Those Weird Five Finger Shoes) for Making ‘False’ Health Claims" (Fashionista)

"It was bound to happen sooner or later. There’s been a rash of lawsuits against “toning” sneaker companies who make all sorts of various health claims that turn out to be false (see: Reebok and Skechers), and now those very weird-looking Vibram FiveFinger shoes are in the legal spotlight. [One] Valerie Bezdek filed a class action lawsuit against the company, and 'takes issue with Vibram’s claim that "scientific research" shows that their FiveFingers shoes, which range from about $80 to $125 per pair, will provide "all the health benefits of barefoot running" to anyone who runs in them and that traditional running shoes do not provide such health benefits.' Bendek’s suit [alleges] that the claims aren’t proven...."

 

Vibram has issued the following official statement: "As with any innovation that ignores conventional thinking, there will always be some skepticism. Vibram’s FiveFingers footwear is no different. For years now, consumers, amateur athletes and even professional athletes using FiveFingers have chosen to share their success stories with the broader community. As a result, Vibram has seen an enthusiastic and health-conscious fan base grow and flourish.”  Members of the LAW OF FASHION ® LinkedIn group, at least, appear to agree with the company.  But Vibram is no stranger to the courtroom, hauled up the courthouse steps against its will; recall that the company sued Fila last year for making its own "five-fingered" shoes.  This writer and his law firm got some nice ink in WWD's Footwear News when the lawsuit hit.


"Tiffany's Rubedo Line Stirs Debate Over Meaning of 'Metal'" (NY Times)

"Tiffany & Co. is trumpeting that, in honor of its 175th anniversary, modern-day alchemists have made a new precious metal to adorn the wrists, fingers and necks of its wealthy clientele.... But metallurgists say there are two problems with those claims: Rubedo [as Tiffany has named it] is not a metal, and it’s not all that new.... [One professor] said it would be nearly impossible to prove that Rubedo is a unique mixture of metallic components, adding, 'It may be one of the 14 million alloys that people have cooked up over the decades.'... Many Rubedo trinkets, which are being sold this year only, are imprinted with the signature of Charles Lewis Tiffany and 1837, the year he founded the store, but K is a mystery that bothers some jewelers. 'We really value the hallmark because it indicates the purity of the metal,' said Christina Malle, a goldsmith. 'In this case there’s no information that indicates any degree of consistency. Is it 9 percent or 1 percent gold? How do we know? It’s confusing to the consumer.'..."

 

"Confusing to the consumer"?  Uh-oh...


"The Push for Daily Sunscreen" (WSJ)

"The sunscreen in foundation or tinted moisturizer isn't enough for everyday protection. And the sunscreen in cosmetics mostly offers protection against one type of ultraviolet ray, and makeup isn't applied as thoroughly or frequently as needed.... New guidelines by the Food and Drug Administration aim to protect consumers from skin cancer through greater testing and clearer labeling on sun-protection products, including cosmetics with sunscreen. The guidelines take effect June 18, though it will take time to clear out-dated products from store shelves...."


If you haven't been following the FDA-Cosmetic Industry relationship (and honestly, who has, apart from compliance professionals?), there has been much ado lately about so-called "cosmeceuticals," an industry term that isn't used in federal regulations.  Recently, top U.S. officials overseeing the cosmetics industry explained, as BloombergBusinessweek put it, that "the claims companies make that the products contain active ingredients may classify them as drugs[.]"


All Business


"Vena Cava Saved by [Li & Fung subsidiary] LF USA" (NY Mag / The Cut)

"[A]ccording to a press release issued by the brand this morning, Vena Cava is back from the brink thanks to a new licensing partnership with Li & Fung subsidiary LF USA, which also owns large American brands like Rachel Zoe, Sofia Vergara, Ellen Tracy, Daisy Fuentes, and Keds Apparel. Vena Cava founders Sophie Buhai and Lisa Mayock will continue to oversee the creative side of the brand, while LF USA will handle the business end...."


Interestingly, the Chinese fashion powerhouse recently inked a deal with Polo -- not Ralph Lauren, mind you, but the U.S. Polo Association that has been battling Ralph Lauren over polo-related trademarks for years.  The Polo Ass'n-Li & Fung deal makes a future alliance with Ralph Lauren seem unlikely, which leads one to wonder why L&F -- to use some lawyerese -- "conflicted itself out" of a potentially much more lucrative licensing deal with a much bigger fashion player... If you happen to know (and wouldn't be breaking any laws or breaching any contracts by revealing your knowledge), please dish to ccolman (at) lawoffashion (dot) com.


"Coty Offers to Buy Avon Products for $10 Billion in Cash" (Bloomberg)

"Coty Inc., the seller of perfumes by Heidi Klum and Beyonce Knowles, offered to buy Avon Products Inc. (AVP) for about $10 billion as Chairman Bart Becht works to more than triple its sales. The unsolicited cash proposal of $23.25 a share is 20 percent higher than Avon’s closing price on March 30. Coty, based in New York, said in a statement today it won’t pursue a hostile takeover. Avon in a separate statement rejected the bid, saying a deal wouldn’t be in the best interests of shareholders...."

 

And then there was this:


"$10B Bid for Avon Shakes Up Industry" (Women's Wear Daily; sub. required)

"Let the battle begin. Avon Products Inc. may have torpedoed Coty Inc.’s $10 billion takeover offer Monday, but rather than a final shot, the moves are seen as the opening salvos in a broader struggle that could eventually overturn the beauty world and redefine direct selling.... Coty said Monday it has “no intention of pursuing an acquisition on a hostile basis,” but nonetheless took the aggressive step of bringing its offer directly to shareholders after it failed to get any traction with Avon’s board.... Avon countered that Coty was being 'opportunistic' and trying to get a 'free look' at its books...."

 

Then this:


"Coty Chairman Bart Becht to Address Avon Investors" (Women's Wear Daily; sub. required)

"Last week, Coty made public its $10 billion bid for the beleaguered direct seller, but Avon quickly rejected the offer. Despite Avon’s dismissal of the deal, Becht said Coty would make its case to Avon shareholders.... The central question now, said one source in contact with investors, is, 'Will Coty increase its bid?'  Coty also could choose to shift its focus to another direct seller.... One Wall Street analyst said Coty needs another distribution pipeline as the life cycle of fragrances, particularly those linked with a celebrity, continues to shorten...."

 

This should keep you entertained for a while (if you're into that sort of thing -- you know, hostile takeovers and the like.)  Especially since, according to WWD, "Valuing Avon's Worth [Is] No Simple Matter."


"In Bonobos, Nordstrom Finds the Perfect Fit Online" (NY Times / DealBook)

"It is a symbiotic deal. Bonobos will get $16.4 million in cash and more than 100 stores to sell its clothes, while Nordstrom will get gain expertise on e-mail marketing and online branding.... As consumers grow increasingly comfortable online, price-wise and technology-focused, established brick-and-mortar players and fledgling e-commerce sites are finding they need each other....


"Judge Strikes Down Colorado ‘Amazon Law' Reporting Rule on Constitutional Grounds" (Bloomberg BNA)

"A federal judge in Colorado [has] struck down as unconstitutional the state's reporting requirements imposed on out-of-state vendors that sell to Colorado consumers but do not collect and remit state sales and use taxes.... [Judge Robert] Blackburn's ruling permanently enjoins the Colorado Department of Revenue from enforcing the act and its related regulations against retailers who sell to Colorado customers but do not have a physical presence in the state.... Mark Couch, spokesman for the Colorado Department of Revenue, said the department was reviewing the ruling and did not have further comment. [But plaintiff Direct Marketing Association] is preparing to continue its case against the law in the U.S. Court of Appeals for the Tenth Circuit "as we expect Colorado to fight against this win[.]'"


"Supreme Court Declines to Hear De Beers Antitrust Appeal" (JCK Magazine)

"On April 2, the U.S. Supreme Court declined to hear an appeal of the De Beers antitrust settlement. The court gave no further comment on the case, which is listed as David T. Murray vs. Shawn Sullivan et al. However, it’s possible a second appeal may be presented to the court, according to a press statement from the Jewelers Vigilance Committee...."


For background information on this now-epic case, see JCK Magazine's earlier coverage.


And more:


"New York State Reinstates Sales Tax Exemption for Clothing and Footwear [under $110]" (NY Times)

 

"Brunello Cucinelli To Launch IPO April 16" (WSJ)


"Swatch buys Swiss case maker [Simon Et Membrez], boosts production" (The Guardian)


"Antwerp Diamond Bank Files Motion to Dismiss Lazare Kaplan Claim" (JCK Magazine)


The Best of the Rest (also, the Worst)


"Louboutin Shoes [Used As] Weapon In S.F. Beating Mystery" (ABC News)

"Never get between a woman and her designer shoes.  That is the lesson learned the hard way by San Francisco restaurant manager Matt Meidinger, who alleges he was struck in the head with Christian Louboutin shoes by a blond woman who fled the scene in  a cab.  The lesson for the shoe-wielding suspect?  In an age of Facebook, Twitter and Instagram, you’re never anonymous...."

 

Who would have thought that Louboutins would come up again on this blog until the Second Circuit issues its much-awaited ruling in The Case?


"Four women charged in Ohio Amish hair-cutting attacks" (Chicago Tribune / AP)

"Federal prosecutors have expanded a hate crimes case against followers of Ohio Amish sect leader Samuel Mullet Sr., charging four more women with participating in a beard and hair-cutting attack last year. In all, 16 members of the group including Mullet now face charges in attacks that officials said were intended to humiliate the victims, since the Amish believe married men and women must abstain from cutting their hair...."

 

"Prince Ordered by Judge to Pay Nearly $4 Million to Perfume Maker" (Hollywood Reporter / THR Esq.)

"A New York judge Friday ordered pop star Prince to pay $3.95 million to a perfume maker for failing to promote the 3121 line of scents.... Revelations accused Prince of refusing media interviews and doing in-store events. 'Since July 2007, despite repeated attempts by Revelations, there have been virtually no communications from anyone who could commit to or coordinate any promotional efforts by Prince,' the lawsuit stated.... Prince also wouldn't distribute samples of the perfume at concerts, as he promised.... One bright side for Prince: The judge confirmed that punitive damages are not warranted because there wasn't any evidence that the artist acted with malicious intent...."


Just have to point out that LAW OF FASHION ® first took note of this lawsuit in August 2011, in the wake of a similar "failure to promote" lawsuit against Jersey Shore's Mike "The Situation" Sorrentino.  I wrote about that suit for Styleite here.  Oh, and then there's this:


"Will.I.Am Sued for Allegedly Bailing on a Clothing-Line Contract" (NY Mag / The Cut)

"Rapper will.i.am (of Black Eyed Peas fame) has reportedly been sued for $2 million by a clothing company called I.Am.Clothing for allegedly bailing on a contract he signed with them back in 2010. The company claims that will.i.am is refusing to uphold his agreement to help design and market their clothes through the year 2016...."


"Filene's 'Running of the Brides' to go up for auction" (along with a perpetual, royalty-free license for the Filene's basement trademark) as part of Syms bankruptcy filing (NJ Business Attorney Blog)

 

Also, via filenesbasement.com: "If you are interested in purchasing the rights to the Company's brands, trademarks and other intangible assets please contact...."

 

"How The RIAA & MPAA Are Like The Anti-Innovation German Weavers' Guild Of The 16th Century" (techdirt)


"Reggie Bush has new endorsement gig [with Barc Skincare], but this time without Kim Kardashian" (NY Daily News)


"Gilt Groupe Founders Reveal How Their Booming Brand Keeps Its Air Of Exclusivity" (Fast Company)


"Knocked Up Nails Launches Safe Nail Polish for Moms-To-Be" (Fashionista)


Now, it just has to figure out its trademark registration situation...


[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities.  Any views expressed in this post or at the linked web pages are those of the writer on a particular date, and should not necessarily be attributed to this writer, his law firm, or its clients.  Neither LAW OF FASHION nor any person or entity associated with it can warrant the thoroughness or accuracy of the content here or at the linked sites.]