Fast-fashion retailers, previously unscathed in their offerings of fashion copies, are coming under fire more and more thanks to the increasing litigiousness of activewear giants.
Meanwhile, the highly watched battle for the “Kylie” trademark is still underway and Burberry made headlines this week in connection with a $250 million deal to license its name to Coty, as brands continue to rely on the practice to raise revenues.
Active Giants Aggressively Fight Fakes
As ath-leisure dominates consumer purchases, the market’s giants are upping the ante in the fight against fakes. Puma made headlines this week when it filed a copyright, trade dress and design patent infringement suit against Forever 21. The German brand alleges that the fast-fashion company illegally re-created three of its most popular Fenty by Rihanna footwear designs: the Creeper, Blow Side and Fur Slide styles.
Puma claims that Forever 21’s copies give rise to three different forms of intellectual property infringement. The brand maintains design patent protection for the ornamental aspects of its Creeper sneaker; namely, the thick rubber outsole with vertical ridged ribbing. Puma also alleges that it enjoys trade dress protection for the three shoes, as they each serve as “a specific identifier of Puma’s products and serves to distinguish Puma’s products from those of others.”
Finally, the company asserts copyright protection in certain elements of all three of the shoes. Interestingly, the complaint cites the brand new “separability” standard established by the Supreme Court in the Star Athletica v. Varsity Brands case, making it one of the first — if not the first — case to make use of it. If this suit is any indication, Puma will hardly be the last brand to rely on this new standard in fighting fast-fashion copies.
Because most fast-fashion copies are perfectly legal — due to the structure of copyright law in the U.S. and its failure to protect useful article in their entirety — the case at hand is particularly noteworthy, and indicative of a larger trend. Given the resources available to the industry’s activewear giants, they are in a position to litigate and do so frequently. Moreover, they often have an arsenal of intellectual property protections — much more so than the average high-fashion brand. As indicated by the recent slew of lawsuits, many of which have been filed by Adidas, these brands are happy to enforce those protections liberally.
Kylie v. Kylee: The Trademark Battle Continues
After being handed an unfavorable decision from the U.S. Patent and Trademark Office (USPTO) in July, Kylie Jenner is on a mission to secure federal trademark protection for her name in the class of goods that covers garments and accessories. Much was made of the reality television star’s latest trademark failure, with nearly all publications confusing two recent matters — one between Jenner and Kylie Minogue, and another that involved Jenner and little-known Los Angeles-based brand Mimo, which holds a trademark registration for “Kylee” in connection with clothing and accessories.
As WWD wrote in February, Jenner’s trademark application for “Kylie Jenner” in the class that covers clothing was not rejected by the USPTO because of Minogue’s existing oppositions. Instead, the trademark body refused to federally register the mark because it held that it was too similar to Mimo’s already-registered “Kylee” mark in the same class.
As a result, Jenner has moved to have Mimo’s mark canceled, alleging that the brand not only fraudulently obtained the mark (by claiming it used the mark in commerce when it never did) but has not used the mark in the past three years, thereby abandoning it. The Petition for Cancellation is currently pending before the USPTO, but the takeaway here is that 1) in order to qualify for federal trademark protection in the U.S., which is a first-to-use jurisdiction (as opposed to first-to-file), you must actually use the mark in the class(es) of goods and services you wish to claim in your trademark application, and 2) in order to maintain federal trademark protection, you must continue to use the mark in order to avoid “abandonment” status.
Licensing: An Enduring Practice
Burberry made headlines this week after inking a deal with cosmetics giant Coty to manufacture, distribute and market its cosmetics collections. Coty will pay roughly $225 million in a deal that gives it the exclusive global license to the Burberry name in connection with its beauty endeavors. A noteworthy business move, particularly in light of the rise of premium beauty and the fall of revenues directly tied to apparel sales, licensing proves interesting from a legal standpoint, as well.
Little more than a legal transaction, licensing is essentially the practice of contracting with another party to obtain and use intellectual property rights, in exchange for an agreed payment (a fee or royalty). Simply put, a license grants the licensee rights in property without transferring ownership of the property and thereby allows it to use the brand’s name and related property without risking infringement actions.
A particularly common practice for luxury and high-fashion brands, licensing enables brands to trade on the goodwill and esteem associated with their brand name (their trademark) in order to bring in revenue. While in recent years many brands have moved to rein in their licensing deals and bring them in-house in order to maintain a greater level of control, the practice of licensing is still a frequently utilized and surefire way for brands to profit. Coty, for instance, holds beauty licenses for Gucci, Prada, Miu Miu and Calvin Klein fragrances, among others. Eyewear giant Luxottica maintains eyewear licenses for brands, including Chanel, Burberry, Dolce & Gabbana, Prada and Versace.
Julie Zerbo is the founder of The Fashion Law.