December 8, 2016 TFL
While Christian Louboutin v. Yves Saint Laurent – one of the most highly watched fashion law cases over the past several years – is firmly in the past, this year was still a rather significant one for fashion-related lawsuits. From the battle of the right to use the “New York Fashion Week” trademark to the multi-million-dollar dispute between Hedi Slimane and his former employer, Yves Saint Laurent, some of the industry’s biggest names have been in and out of court all year long. Here is a look at the top 10 biggest fashion industry lawsuits of the year …
1. Cheerleading Copyright Case Goes in Front of the Supreme Court
The much-anticipated copyright dispute over cheerleading uniforms went in front of the U.S. Supreme Court this year for oral arguments. A copyright infringement battle between manufacturers of cheerleading uniforms, the case pits industry leader Varsity Brands against rival Star Athletica.
Varsity Brands Inc, the dominant U.S. maker of cheerleader uniforms, filed suit against its smaller rival, accusing the company of infringing five of its designs. The case concerns whether the stripes, zigzags and chevrons characteristic of cheerleader uniforms can be copyrighted, as Varsity contends, or are so fundamental to the purpose of the garment that they should not get such legal protection. Without such adornments, a cheerleader uniform might look like any other dress, Star argued.
2. Aquazzura Files Suit Against Ivanka Trump Over Lookalike Footwear
One of the fashion industry’s favorite footwear brands, Aquazzura, filed a trade dress and design patent infringement suit against soon-to-be First Daughter Ivanka Trump and her licensee, Marc Fisher, for allegedly copying some of its best-selling and most “distinctive” shoe designs.
According to Florence-based Aquazzura’s complaint, which was filed in June in the Southern District of New York, a federal court in Manhattan, Ivanka Trump and Marc Fisher are producing footwear that “mimics every key element of the trade dress of Aquazzura’s well-known and distinctive” shoes, in particular, a $145 “exact copy” of its own $700+ Wild Thing style.
The lawsuit came after Aquazzura publicly called out Ivanka Trump on social media for creating lookalike shoes.
3. New York Fashion Week at Center of a Trademark Infringement Lawsuit
In a particularly noteworthy lawsuit, the Council of Fashion Designers of America (“CFDA”) and WME-IMG – the respective scheduler and producer of New York Fashion Week – nearly lost its intellectual property rights in the name of the bi-annual fashion event. You may recall that Fashion Week, Inc. – a company that describes itself as “producing live fashion shows that are predominantly focused on the consumer market for entertainment proposes only” – slapped the parties with a trademark infringement lawsuit, alleging that they were infringing its rights in its federally registered “New York Fashion Week” trademark.
Following an initial unfavorable ruling, IMG and the CFDA were handed a preliminary victory with Judge John G. Koeltl shooting down Fashion Week, Inc.’s request for a preliminary injunction, which would prohibit the defendants from using the New York Fashion Week mark until the conclusion of the lawsuit. Koeltl held that while Fashion Week, Inc. does, in fact, have rights in the New York Fashion Week trademark (as indicated by a few federally registered trademarks), such rights are “limited.”
The suit comes on the heels of a lengthy legal fight waged by the CFDA to overturn Fashion Week Inc.’s exclusive right to use the NYFW name.
4. Yves Saint Laurent and Hedi Slimane Embroiled in Employment Battle
Hedi Slimane launched a two-part legal battle against former employer Yves Saint Laurent and its parent company, Kering, on the heels of his departure from the Paris-based house in April. In June, Slimane filed suit in a French labor court against his former employer’s parent company, Kering, in connection with the non-compete provisions in his previous contract with YSL. Kering has said it lifted this clause, prompting Slimane to file suit, allegedly requesting that this clause still be applied and that he be compensated for the rest of the duration of the non-compete clause, which is likely for a year or so.
The court sided with Slimane in this suit, ordering Kering to pay $13 million to Slimane in a provisional court ruling in connection with the way his departure from Yves Saint Laurent was handled. Kering has vowed to appeal that ruling.
Thereafter, Slimane launched a new legal attack on the famous Paris-based brand’s owner, stemming from an additional ten million euro ($11.1 million) sum that his legal team believes he is owned in connection with the final leg of his contract with the brand, which expired earlier this year. Moreover, the complaint asserts that the $13 million sum that the French Labor Court ordered Kering to pay Slimane in July did not take into account Slimane’s ownership stake in YSL as set forth in his contract. The suit demands that Kering honor the terms of his original contract, which allegedly gave him a minority ownership stake in the Saint Laurent brand. “The talented designer is demanding that Kering abide by a partnership agreement giving Slimane certain rights, notably the right of access to information, as a minority shareholder in Saint Laurent.”
5. Judge Finds for My Other Bag Case in Louis Vuitton Case
Louis Vuitton was dealt a massive blow this year in the most recent ruling in a 2014 case filed against in by alleged parody handbag maker, My Other Bag (“MOB”). According to a rather strongly-worded decision from the Southern District of New York court early this year, Judge Jesse M. Furman held that MOB’s canvas totes, which replicate a number of particular Louis Vuitton bag styles (including the Speedy and Neverfull) and specific Louis Vuitton trademarks and copyrights, amount to parodies and thus, are not actionable sources of trademark infringement or dilution, a somewhat surprising ruling considering the case law in the SDNY.
If the lawsuit sounds familiar, that is because Hermès filed suit in 2011 against Thursday Friday, another California-based brand selling similar bags as MOB. They ended up settling that case out of court and Thursday Friday stopped printing Birkin lookalikes on its canvas bags.
Louis Vuitton plans to appeal the ruling.
6. Zara Slapped with $5 Million-Plus “Deceptive Pricing” Lawsuit
Zara was hit with a massive lawsuit this summer alleging that it is engaged in the widespread practice of deceiving American consumers through a classic bait and switch scheme in connection with its pricing. The $5 million-plus proposed class action lawsuit, which was filed by Devin Rose in the United States District Court for the Central District of California, a federal court in Los Angeles, alleges that Rose (and other Zara shoppers) “has been damaged in that Zara’s deceptive pricing practices caused him to overpay for the garments he purchased.”
According to Rose’s complaint, which sets forth claims of negligence, unfair business practices, unjust enrichment, and fraud, Zara “has been engaged in fraudulent pricing practices across the United States. On average, consumers are being charged $5 to $50 more than the lowest tag price in euros. In the aggregate, the shopping experiences of ordinary consumers like Mr. Rose, have resulted in Defendant Zara being unjustly enriched to the tune of billions of dollars.”
7. Vogue Loses Trademark Lawsuit, Courts Calls Term “Descriptive”
Vogue lost a trademark fight this year to prevent a similarly named lifestyle brand from trading on its famed reputation. The Bombay High Court dismissed a trademark infringement lawsuit that Vogue’s parent company, Advance Magazine Publishers (“Advance”), filed against Just Lifestyle Pvt. Ltd. (“Just Lifestyle”) – an Indian brand that owns the watch, jewelry, and fragrance licenses to an array of fashion brands, such as Calvin Klein, Diesel, DKNY, and Paco Rabbane, in India. Advance argued that Just Lifestyle’s use of the name “JUST IN VOGUE” in connection with retail stores and sales services is in blatant violation of its Vogue trademarks.
Siding with Just Lifestyle, the court held that the goods of Advance covered by the registered trademark “Vogue” are dissimilar to the goods sold or services offered by Just Lifestyle. With this in mind, the court held that Advance’s argument that the public will likely be confused into believing that Advance endorsed Just Lifestyle’s “JUST IN VOGUE” ventures “is far-fetched considering that magazine publishers are not ordinarily known to be retailing fashion goods and hardly is anyone likely to be misled into believing that the magazine and the fashion goods come from the same source.”
It goes on to state that the “Vogue” trademark is little more than an ordinary, descriptive word that means “in fashion.” As such, the court found that Just Lifestyle, as a retailer of fashion goods, is entitled to describe their stores as an outlet which deals in fashionable or trendy goods which are “in vogue.” Ouch.
8. The Battle Against the Flash Sale Site
This year saw brands and individuals fighting back against flash sale sites for selling fakes. In February, Gucci filed a multi-million-dollar lawsuit against a private designer shopping site, alleging that it was selling counterfeit Gucci bags. According to Gucci’s lawsuit, which was filed in the Southern District of New York court, New York-based website, Beyond the Rack “recently promoted, advertised, distributed, offered for sale and/or sold a line of [at least four] unauthorized bags bearing an exact replica of Gucci’s registered Interlocking Non-Facing GG Monogram (or a mark substantially indistinguishable therefrom) and the registered GUCCI mark, including sale via its website located at www.beyondtherack.com.”
A month later, HauteLook and Nordstrom were sued for allegedly misleading consumers about the “authentic” Rolex watches they sell. Vahdat Aghdasy filed a proposed class-action lawsuit in the U.S. District Court for the Central District of California against e-commerce site HauteLook and its parent company, Nordstrom, for common law fraud, conspiracy to commit fraud, breach of implied and express warranties, and unjust enrichment. His claims stem from HauteLook’s sale of damaged Rolex watches and those containing non-Rolex parts.
9. Kanye West, Damon Dash Victorious in “Loisaidas” Lawsuit
A New York federal judge granted Kanye West and Damon Dash a meaningful victory in July in connection with their 2015 film, Loisaidas. U.S. District Judge Katherine Forrest dismissed Latin musician Michael Medina’s trademark lawsuit, which alleged that the musicians’ film infringed at least two of his federally trademark registrations for the term “Loisaidas,” a Spanish slang term for inhabitants of Manhattan, New York’s Lower East Side.
Forrest held that “the title ‘Loisaidas’ clearly has artistic relevance to a series of short films about drug dealers seeking to acquire control of the drug trade in Manhattan’s Lower East Side.” She further noted that “the copyrighted term was ‘not arbitrarily chosen just to exploit the publicity value of [plaintiff’s music duo] but instead ha[s] genuine relevance to the film’s story.’”
The ruling not only marks a win for Kanye and co. but carries some interesting implications for future unauthorized uses of trademarked terms in connection with artistic mediums.
10. UK Court of Appeal Upholds Landmark Ruling for Cartier, Alaia Parent Company
The UK Court of Appeal held that trademark holders may be granted site-blocking injunctions against internet service providers (“ISPs”). A noteworthy win in the fight against counterfeits, the ruling comes on the heels of Cartier, Alaia, and Net-a-Porter’s parent company, Richemont, filing suit against five different ISPs – BT, Sky, TalkTalk, EE and Virgin Media – after they refused direct requests to block access to websites found to be selling counterfeit goods without a court order.
In upholding the landmark decision that was handed down in 2014, the Court of Appeal also told the ISPs that they must bear the costs for implementing the order. The High Court previously held that the UK’s failure to expand the power to order blocking injunctions beyond copyright was not a reason to remove the ability from cases of trademark infringement, particularly as EU legislation decreed it as lawful.