"You're never fully [trade] dressed, without..."

Posted by Charles Colman

It's important for designers and apparel companies to understand that intellectual property claims can take various forms, and each "cause of action" (to use some legalese) has different requirements and challenges for both plaintiff and defendant.


We've seen some examples of copyright lawsuits, where the plaintiff need not show intent to establish infringement, but must prove (1) that her work is minimally "original" (a very low threshold), and that she has obtained -- or been wrongfully denied -- a copyright registration certificate; (2) unless the plaintiff has direct evidence of copying, which is rare, that (a) the alleged copyist had "access" to the original work, and the copyist's work is "substantially similar" to the original author's creation; and (3) that "the ordinary observer, unless he set out to detect the disparities [between the two works], would be disposed to overlook them, and regard their aesthetic appeal as the same."  (Confusingly, this last factor -- and the one most often in dispute -- is also often called the "substantial similarity" test; the identically named prong of criterion (2) should really be described as "probative similarity.")


When you move into the land of trademarks, the relevant evidentiary factors become more numerous.  Similarity matters, but so do lots of other things. And the ultimate question -- at least for a traditional trademark infringement action -- is whether there is a "likelihood of confusion" between the plaintiff's mark and the defendant's mark. In the Second Circuit, this determination is made using what is now known as the Polaroid test. (Each circuit court has its own version of the test; there is some variation among these tests, but the only real outlier is the Federal Circuit's "DuPont test.") In addition to the similarity between the two marks at issue, the Polaroid test requires the court to examine "the strength of [the] mark . . . , the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers." Of course, this means a trademark plaintiff has to produce evidence to persuade the court to rule in its favor on all-- or at least most-- of these "prongs" of the test.


So let's look at another not-especially-timely lawsuit (we'll work our way up to the present, I promise!), the widely publicized "LEGO heel" lawsuit that Balenciaga brought against Steve Madden in December 2009. Although Balenciaga is based in Paris, the lawsuit was brought in federal court in Brooklyn, under U.S. intellectual property laws. (A French court applying French law would almost certainly have been preferable for Balenciaga, but you can't just sue anyone anywhere; bring suit in the wrong place and it might, at a minimum, be thrown out for "lack of jurisdiction," "improper venue," "forum non conveniens," or other reasons. In extreme cases, the parties and their lawyers might be "sanctioned" by the court for bringing suit in a court that clearly has no ability to adjudicate the dispute.)


The Balenciaga lawsuit hinged on the similarity between the plaintiff's $4,000+ "LEGO" heel, famously worn by Beyonce during her performance at the American Music Awards in 2007, and a $100 version -- some might call it a "reiterpretation"-- sold by Steve Madden:


Balenciaga started off with its copyright claim, which was a long shot for reasons discussed in previous posts: shoes are "useful articles" generally not protected by copyright, etc. Balenciaga then moved on to its "trade dress" claim. The essence of a "trade dress" claim is that the relevant segment of the public associates a product's design with a single source (even if the public doesn't know who that source is), such that a similar design-- even absent the company's logo-- is likely to confuse the public about who made or sponsored the product. In essence, a trade dress plaintiff is making the claim that *the design itself* functions as a trademark. Trade dress claims are a tougher sell than traditional trademark infringement actions, especially in the fashion design context, because the plaintiff has to prove this mental association by the public. (In trademark law, the requisite mental association is called "secondary meaning." The requirement that a product designer prove secondary meaning in order to obtain trade dress protection was definitively established in a 2000 U.S. Supreme Court case, Wal-Mart Stores, Inc. v. Samara Bros., Inc.) Of course, you can slice and dice "the relevant public" in any number of ways: men who visit Barney's regularly know that Band of Outsiders shirts have a distinctive fold all the way down the back, but how many such men exist? How many are likely to be interviewed in a survey to be submitted as evidence to the court?


In short, trade dress claims can -- and have -- stepped in to fill the void left by copyright's refusal to protect "useful articles," but trade dress claims are hard to win, expensive to defend against, and in the writer's opinion, are an awkward way of getting at the crux of most lawsuits involving copying: namely, copying.


Before wrapping up, I should note that sometimes the trademarks, or trade dress (think back-room Chinatown bag vendors), at issue are essentially identical, and the "bad intent" of the copyist is clear: indeed, sometimes even the manufacturer of the original good can't tell the genuine article from the copy. This sort of conduct goes beyond trademark/trade dress infringement and takes us into counterfeiting territory, where the legal consequences are much more severe. But to recall a point made my last post, counterfeiters (like other denizens of the IP shadowlands) have a way of vanishing into thin air the minute trouble arises. For example, in the 2006 case of Ermenegildo Zegna Corp. v. 56th Street Menswear, a New York retailer was sued for selling counterfeit Zegna suits. After filing the complaint, Zegna "received no response, visited the store, and discovered that it was closed." Zegna successfully obtained what is called a "default judgment," but you can probably guess whether it was able to enforce that judgment. And anyway, money isn't always the point in these lawsuits; often, the company just wants the copyist to go away-- even if this means playing a perpetual game of Whac-a-Mole.


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[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 responsible writer on a particular date, and should not necessarily be attributed to this writer, his law firm, or its clients.]