This week in fashion law: How Thursday Friday is using Chanel as a pawn in its quest to dominate the world of meta-fashion
In light of recent events -- namely, Thursday Friday thumbing its nose at Chanel -- I think it's finally time to devote some serious attention to the legal issues surrounding T/F's "meta-fashion." So strap in...
As this writer has discussed in the past, the cheeky girls over at Thursday Friday produce the "Together" bag, whose "surreal design references luxury but is ultimately an anti-status symbol" (at least, according to the T/F website.) The "Together" totes, which sell for $35-$90, bear images of wildly expensive luxury handbags on each side. T/F started with the iconic Birkin bag, which drew the ire of Hermès and got T/F sued for trademark infringement and dilution. From early on, T/F was clearly setting the stage for a "parody" defense to liability, but the case settled before that defense could be addressed. Undeterred, T/F released the next item in its "Together" series, the so-called "BRAIDS" tote that features images of Miu Miu's $1750 "Hobo" bag on all sides. This week, Thursday Friday grew its stable of "Together" bags with the new "Diamonds" collection -- totes in various sizing bearing images of what appears to be Chanel's 2.55 Reissue bag (a quilted bag identical to Chanel's original version, but without the company's signature interlocking C's):
Recall that fashion apparel and accessories are by and large ineligible for copyright protection, as the federal courts have deemed them to be "useful articles." (Yes, there are exceptions to this rule -- you can read all about them in my chapter in West's "Navigating Fashion Law," which will be released in early 2012 -- but for our purposes, copyright is out the window here.) The federal government also grants utility and design patents, but these are difficult and expensive to obtain, so -- again, with some notable exceptions -- the fashion industry doesn't typically put much stock in patent protection. As a result, trademark protection is generally where it's at when it comes to fashion design. (Of course, as a regular reader of LAW OF FASHION, you already knew that.)
The archetypal trademark would be the name of a fashion house, like "Hermès," often in a stylized font and/or accompanied by an image, like the Hermès horse-drawn carriage:
Sometimes, a trademark takes the form of a stylized shorthand for a fashion house's primary trademark, like Chanel's (federally registered) interlocking C's:
Going a bit further afield, trademark protection may be available for a non-functional feature consistently affixed to a product, like the Levi's "Arcuate" back-pocket stitching pattern (also registered with the U.S. Patent and Trademark Office) that has caused so much anguish for so many rival purveyors of jeans:
(Another example arguably falling into this category is a particular color consistently used for the soles of high heels. Wait, scratch that... at least, for now.)
Sometimes, companies claim that product packaging, including the look and feel of a store, is entitled to trademark protection. (Abercrombie once sued American Eagle on such a "trade dress" theory, to no avail.) And going to the edge of trademark protection, companies sometimes claim "trade dress" protection in a product itself, on the theory that the very design of the product signifies its origin to consumers. Recall that Balenciaga made this type of product-design-as-trade-dress argument in a lawsuit against Steve Madden for a close approximation of the former's $4000 "LEGO heels." The catch in this type of case: a plaintiff must show 1) that the product design at issue is not dictated by functional considerations, and 2) that a significant portion of consumers associate the design with a single source (all of this in addition to the usual requirements to prevail in a trademark infringement or dilution lawsuit.) Sound familiar?
When Thursday Friday was young and naive, it picked an iconic bag -- the Birkin -- that featured a registered trademark (not the bag itself, but the bag's rectangular clasp.) The solid lines in the following image, which Hermès submitted to the Trademark Office for its registration, show the portion of the bag in which Hermès claimed protection (whereas the dotted lines are just for reference):
The bag's iconic status meant that Hermès would likely have little trouble proving "secondary meaning" -- i.e., the requisite consumer association between a product and its source -- in the bag's design; the federal registration meant Hermès could also hang its hat on Thursday Friday's two-dimensional reproduction of its registered mark. The presiding judge agreed with Hermès (albeit without elaboration) that these factors justified allowing the case to go forward. Thursday Friday, in its court papers, had alluded to the parody/"critique of consumerism" argument it planned to make, but recognized that it was too early in the case to get off the hook on that basis. (Since the parties settled soon after the court's denial of T/F's motion to dismiss, the court never got to address this interesting argument, to the chagrin of curious fashion lawyers.)
For T/F's next stunt, it learned from its mistakes and chose a less iconic bag -- Miu Miu's $1750 "Hobo" -- with no associated trademark registrations that would immediately raise a red flag. The Hobo's relatively limited fame meant that Miu Miu would have a much harder time showing the necessary "secondary meaning"; the lack of any registration in the bag's design or its components meant that fewer theories of recovery would be available to Miu Miu. Apparently, no lawsuit was filed, though it's impossible to say whether that had more to do with Thursday Friday's strategic choices or Miu Miu's.
Perhaps emboldened by its apparent victory with the "Hobo," T/F has now targeted Chanel, which is well known for aggressively policing its intellectual property rights. Wisely, however, T/F chose to use images of the reissued version of Chanel's 2.55 bag, which substitutes an anonymous (and likely unregistered) rectangular clasp for the previous (registered and famous) interlocking-C clasp. The result is a bag-on-a-bag that consists of a fairly plain, quilted design, produced in similar -- if not identical -- form by many other companies. For intuitive reasons, explained here, when a certain item is available from numerous sources, courts are much less likely to buy a plaintiff's argument that its product design carries the necessary "secondary meaning" among consumers.
In short, Thursday Friday is a clever, saucy little thing. While it has dared to nip at the heels of fashion's 800-pound gorilla -- at least, as far as intellectual property is concerned -- T/F has reproduced an image of a rather bland bag, with no copyrightable elements and no readily identifiable trademark, whose design has been in the marketplace for quite a while and has already been copied by many third parties. Chanel can sue, of course, but it won't be able to pack its complaint with the juicy press clippings and other allegations supporting secondary meaning that Hermès had, making it less likely the court will allow the case to move on to the discovery stage of litigation. In fact, T/F might have decided to target Chanel precisely because its legal team is so aggressive, hoping that the circumstances discussed above are compelling enough to get the lawsuit thrown out on a motion to dismiss, thereby deterring would-be plaintiffs from going after T/F in the future. ("Well, if Chanel lost, then...") Well played, ladies. Well played.
[This post and all of the content located at the linked web pages are for entertainment and informational purposes only, and do not constitute legal advice or create an attorney-client relationship among any individuals or entities. Although it should go without saying, LAW OF FASHION can only speculate as to Thursday Friday's actual strategies and intentions. Any views expressed in this post or at the linked web pages are those of the relevant writer on a particular date, and should not necessarily be attributed to this writer, his law firm, or its clients.]