Forever 21 went on a bit of a lawsuit-filing spree this week. The Los Angeles-based fast-fashion retailer filed a strongly worded suit against Adidas following a long period of the German activewear giant “aggressively enforcing its perceived trademark rights” against Forever 21.
The Los Angeles-based retailer proceeded to enforce its own trademarks, however, filing suit against a similarly named nail salon for making use of its trademark-protected name.
On a nontrademark front, copyright trolls may not be making headlines in the same way they were a few years ago, but these pesky lawsuit-filers have not gone away.
Forever 21 Slaps Adidas With Strongly Worded Lawsuit
After filing trademark-related lawsuits and opposition proceedings against everyone from Marc Jacobs to Tesla, Adidas’ litigiousness has been challenged. Forever 21 struck back against the German company with a lawsuit filed in the U.S. District Court for the Central District of California late last week. Forever 21 alleges it has received an array of cease-and-desist letters from Adidas in connection with garments bearing stripe designs, the most recent of which it received last month.
Claiming the German company is a trademark “bully,” Forever 21 asserted in its suit that “Adidas has taken its [trademark-related] claims…too far — essentially asserting that no item of clothing can have any number of stripes in any location without infringing Adidas’ trademarks. To this end, Adidas has sued clothing and footwear manufacturers who have used two stripes. It has sued those who use four. It has sued over stripe patterns involving multiple widths and colors, and it has sued over garments Adidas is not known for making. It has also threatened to sue many others on similar claims.”
The retailer, which is more often than not on the receiving end of lawsuits, further claims it “is not infringing on any Adidas trademark and has not breached any agreements with Adidas. This matter is ripe for a declaratory judgment.”
In short: Forever 21 is asking the court to issue a determination as to whether its various clothing items, including a sports bra and an array of T-shirts, are infringing on Adidas’ three-stripe trademark. Moreover, it is seeking a judgment that Forever 21 is not in violation of a settlement agreement into which the parties entered in connection with a 2015 trademark infringement lawsuit that Adidas filed against Forever 21.
While declaratory judgments serve primarily to define the legal relationship between parties and their rights in a given matter and do not provide for any enforcement, it is still a potentially significant proceeding. Given Adidas’ “aggressive enforcement” of its trademark rights, the court’s decision, which is not expected for some time, stands to impact just about any brand using stripes to adorn its wares, in theory. An unfavorable decision could very well serve to deter Adidas’ widespread efforts to attempt to shut down the potentially non-infringing uses of striped marks — namely two and four-striped uses — by other brands.
Forever 21 Nails Salon With Trademark Lawsuit
In other Forever 21 litigation news, the firm has filed a trademark suit against a Florida-based nail salon, called Forever 21 Nail Spa. According to the complaint, which was filed in the U.S. District Court for the Southern District of Florida, Forever 21 alleges that the nail salon is using Forever 21’s trademark-protected name with “knowledge of the fame and reputation of the Forever 21 trademarks with the purpose of usurping such rights and to willfully and intentionally confuse, mislead and deceive members of the public.”
The case is an interesting one because while high-fashion and luxury brands — which are consistently considered some of the most litigious since their intellectual property rights are some of their most valuable assets — vigilantly police unauthorized uses of their marks, such enforcement is expanding to mass-market brands, including those that have made their names from taking their design inspiration from others.
In filing suit, Forever 21 joins fellow fast-fashion brand Zara, which has been diligently working to weed out use of its name by others. Last year the Spanish retailer threatened to sue the owner of a small Barnard Castle, U.K.-based business named Zara Countrywear if its owner did not take drastic measures to rebrand her business immediately. Around the same time, Zara took on emerging New York-based brand Terez, formerly known as Zara Terez, filing suit against the brand for trademark infringement. The parties ultimately settled the suit out of court, with Zara Terez agreeing to rebrand.
While the fashion industry largely knows Forever 21 and other similarly situated fast-fashion brands as havens for knockoffs — and at times, legally impermissible copies — that is not stopping these brands from policing unauthorized and allegedly infringing uses of their own trademarks. (It is the trademark holder’s duty, after all, to ensure that others are not infringing on its marks).
As asserted in each of Forever 21’s trademark infringement suits to date, it “has become well-known to consumers through its hard work, innovation and substantial investment in branding.” So, just because these brands may come close to — or even impinge — on others’ intellectual property, does not mean they will not (somewhat ironically) fight back when others use theirs.
Copyright Trolls Continue to Target Brands, Retailers
Unbeknownst to many, fashion brands have become the targets of copyright trolls, parties that enforce the copyright protections available for original prints and textiles to an excessive degree — think 20-plus lawsuit filings a month. A legal trend that began impacting the fashion industry a few years ago, a particular handful of textile companies have taken to filing copyright infringement lawsuits en masse against the likes of Macy’s Inc., Forever 21, Urban Outfitters Inc. and Nordstrom Inc., among many others, claiming legal rights and infringement of seemingly basic patterns, such as florals, paisleys, geometric designs, lace designs and animal-skin patterns.
While such firms have backed down from such a high volume of monthly filings, a recent batch of copyright infringement suits, including one filed by New York-based Tianhai Lace USA against Lord & Taylor, indicates that this trend is far from dead. According to Tianhai’s suit, Lord & Taylor sold garments bearing more than 10 infringing lace designs, and “knew at the time that each reproduced, manufactured, distributed, marketed and offered for sale the [products] that the lace designs incorporated therein comprised the proprietary intellectual property of Tianhai.”
This litigation trend is particularly worrisome for brands that outsource their fabric production and/or stock garments and accessories made by third parties, as it can be difficult to ensure that the textiles used are on the right side of the law in terms of copyright.
Julie Zerbo is the founder of The Fashion Law.