Despite making seemingly strong copyright, trade dress and design patent infringement claims against Forever 21 in connection with a number of copied footwear designs, German activewear brand Puma has lost round one in the case.
Meanwhile, immigration and visa reform swept the industry this week, largely thanks to an initiative pioneered by the Council of Fashion Designers of America, but don’t hold your breath for results just yet. And Victoria Beckham has taken to the European Union Intellectual Property Office to file to register her children’s names as trademarks. Her efforts are likely to be more successful than Beyoncé and Jay Z’s similar attempts to register “Blue Ivy.”
After filing a strongly worded lawsuit against Forever 21 for copying some of the most in-demand shoes from its Fenty collaboration with Rihanna, Puma was recently dealt a blow in an early round. The German sportswear giant asked the court to grant a temporary restraining order, which would prevent Forever 21 from selling any infringing footwear, including the Creeper, Bow Slide and Fur Slide styles — and the court declined to do so.
In denying Puma’s request, the court held that Puma did not meet its burden in showing that a TRO was in order. In particular, Judge Philip S. Gutierrez of the U.S. District Court for the Central District of California stated that Puma did not show that it was “without fault in creating the crisis requiring ex parte relief. [Puma] concedes that [it has] been aware of Forever 21’s [copying] for some time….Nevertheless, [Puma] claims that a TRO is urgent because Forever 21 will release its next edition of the ‘Creeper’ shoe on April 6, 2017. As the designers and sellers of the Creeper shoes…[Puma] surely had ample notice of the date of their own shoe’s release, and yet waited until the day before the release to try to get an [emergency] injunction.”
As such, Forever 21 may keep selling the allegedly infringing footwear (Puma claims in its complaint that Forever 21’s Creeper, Bow Slide and Fur Slide copies amount to copyright, trade dress, and design patent infringement) — at least until the preliminary injunction hearing, which is slated to take place in a few weeks. If Puma is successful in making a case for a preliminary injunction, Forever 21 will be immediately barred from selling the shoes at issue until the conclusion of the litigation, and in the case of a permanent injunction, indefinitely.
Immigration Reform Is Not Upon Us Just Yet
Immigration was the hot topic in fashion this week with the Council of Fashion Designers of America partnering with FWD.us, an immigration reform lobbying group, to release a white paper outlining proposed changes to current visa laws to help immigrants within the fashion industry.
The New York-based organization’s ambitious plans include launching a start-up visa for foreign-born business leaders, expanding and reforming student visas, and putting a process in place for undocumented immigrants to earn legal status after passing a background check, as well as making a demand for more H-1B visas.
Even with the support of Congresswoman Carolyn Maloney, and New York City Council Speaker Melissa Mark-Viverito, the CFDA’s ambitious visa reform plan will take time. Its efforts to lobby for extended copyright protection for fashion designs — by way of an amendment to the Copyright Act — have been in the works for roughly 10 years now with no enacted legislation to show for it just yet. Progress in Washington, D.C., is a waiting game and visa reform will almost certainly prove no exception.
Kids and Trademarks: Geography Matters
Victoria Beckham has filed to register daughter Harper’s name as a trademark with the European Union Intellectual Property Office, along with the names of her three sons, Brooklyn, Romeo and Cruz. While there has been speculation that this is a move in anticipation of launching a Harper Beckham children’s wear collection, there is no indication that any Beckham children-branded products will be hitting the shelf any time soon. Instead, the filings may be intended to serve as a way to prevent others from using the names.
In the U.S., such a tactic would be problematic — from a legal standpoint. In order to federally register a trademark in the U.S., one must already be using the mark in commerce or intend to use and then prove that it is actually using it within six months or so of being notified by the U.S. Patent and Trademark Office that the mark is “allowed” for registration. This is why Beyoncé and Jay Z were unable to register daughter Blue Ivy’s name the first time they tried to do so.
The music superstars filed to register Blue Ivy’s name with the U.S. Patent and Trademark Office in 2012, largely in an attempt to prevent others from “trying to benefit off the baby’s name,” per Jay Z. They ultimately could not prove that they were using the name as a trademark. As a result, a federal trademark registration never came to be, and they have since filed a new application for registration for the “Blue Ivy” mark.
Although there is no indication that a launch of a range of products is imminent for the Beckhams either, they are in a much better position, as in the European Union, there is no need for a bona fide intent to use the mark and in fact, no need to use the mark at all, although the latter does give rise to risks, such as the risk of cancellation of the unused mark at the request of a third party.
As such, once the trademarks covering the Beckham children’s’ names are registered with the European Union Intellectual Property Office, they could effectively be used as defensive registrations to prevent others from using the names. This might be an effective tactic for designers looking to save future brand names.
Julie Zerbo is founder of The Fashion Law.