In recent years, there has been more and more discussion around the laws that govern fashion—from trademark infringement to copycat design—with designers like Christian Louboutin investing serious time and money into lawsuits protecting what they see as their intellectual property.
The most recent example of the growing trend is Tory Burch, who recently filed a counter-suit against her ex-husband Chris Burch, which alleges that Burch “misappropriated confidential information” in the creation of his new label, C. Wonder, thus infringing upon signature elements of her own label’s branding.
While Burch’s suit is careful not to claim that C. Wonder is simply copying her brand—the suit is much more focused on trade secrets than copycat design—the whole kerfluffle got us thinking: How hard is it, exactly, to prove that one label is copying another? And how are designers working to protect their own work? We consulted the first U.S. law professor ever to offer a fashion law class, Fordham School of Law’s Susan Scafidi. Scafidi is an intellectual property expert and recently formed the Fashion Law Institute at Fordham, which offers education and support on all things garment-related when it comes to the law.
Ed Note: When the interview was first conducted, there were reports that Tory Burch would file a counter-suit that had more focus on intellectual property, so some of Ms. Scafidi’s answers help elaborate on how Burch’s case would stack up. Her final counter-suit did not include allegations of violation of trade dress or intellectual property, though her answers speak to the general truths about trade dress and copyright, so we’ve included them in our excerpted interview here!
StyleCaster News: We know brand imitation and copycat labels exist, but how hard is it to establish ownership over something like a bag or a dress? A logo is a logo, but what about a design?
Susan Scafidi: Much, much more difficult—orders of magnitude. A logo is a walk in the park. Trying to establish ownership of a design is more like climbing Mount Everest. A logo, a name, a symbol that you use on every item of clothing or every accessory is registered with the trademark registration office and just as long as it doesn’t look too closely like everyone else, it’s a pretty simple process … Trying to own the actual design of a bag or a dress means having to prove to the trademark office secondary meaning. That means that you have to show that when a consumer looks at that bag—say it’s a Birkin—and automatically say, “Oh! That’s a Birkin.” … Trade dress is the same principle that allows Louboutin to claim the red sole … To show that, it’s quite difficult, and really only works for well-recognized designs, and therefore, they usually belong to bigger companies that really put it into the public eye and spent a lot of money on advertising.
[…] And with copyright, you have a tiny bit [of protection]. You can protect a unique fabric print, so if you’re in fabric prints, we protect those. Jewelry is protected in the copyright because it’s not functional, it’s merely ornamental. But it’s a steep hill to climb.
That’s interesting that jewelry is protected under copyright, and not clothing.
Yeah. It’s really is. It’s really is a very fine distinction. The copyright office had, up until the 1950s, said “no” to both clothing and jewelry. Then, in the 1950s, they said, “Well, jewelry is not functional … It doesn’t touch the body, it doesn’t cover the body, it doesn’t warm the body, and so jewelry is non functional, and we can protect it.” I have feeling that it has to do with the fact that, at that time, what was very popular was gold jewelry in the shape of tiny little sculptures—a lot of pins. One would wear a pin of a women walking with a poodle, a pin of a bird. So it was really hard to say the miniature sculpture part was not protectable just because just because you were going pin it on a sweater or hang it on your neck.
How has Christian Louboutin’s recent legal victory changed the landscape? Are designers more inclined to think about trademark?
I think it cuts both ways … I think on one hand, it has broadened designers’ minds to think more about what could be a more protectable signature. On the other hand, that was a big, expensive lawsuit. So I think there’s also an awareness that even if you’ve got a trademark, you have to be ready to protect it.
Shifting gears to the Tory Burch and Chris Burch lawsuit, Tory Burch has recently filed a counter-suit that includes allegation of “unfair competition,” and there were earlier reports that she was considering “violation of intellectual property.” What do those terms mean, exactly?
“Unfair competition” is a little broad. It’s actually a business action saying that he … unfairly used his access to information about Tory Burch’s company (Burch was previously on the board at Tory Burch’s company) to compete … She’s going to say that maybe he maybe used proprietary, confidential information that he had access to … It’s a little bit of a fuzzy line, but it is definitely a defined legal claim.
The intellectual property claim … must be a trade dress claim—so it’s in the same family as the red soles claim in the sense that it’s about the overall design, not the specific name because obviously the name is very different than Tory Burch does. There are two different kinds of trade dress protection … trade dress is a subset of trademark … One is the kind that we have been talking about, the design of the handbag where it’s so iconic that it immediately calls to mind to a company—that’s called product configuration trade dress … The other kind is product packaging trade dress, which is the more traditional kind. So if you see a bottle of shampoo and next to it you see a look-alike brand and they use the same color, same font, and same shape of the bottle that could be a trade dress violation. It’s about the packaging, not the product. One of the most classic examples of trade dress packaging production is a Coke bottle … They protect that curvy bottle like you wouldn’t believe and that’s a big deal for them.
So when we move into the context of Tory Burch, what they are saying is the design of the store is product packaging because the store is essentially the wrapping of the product that they’re selling […] She probably can’t protect any one of those products individually other than her logo, but if you starts to add them up—the store looks very much alike, the fixtures in the stores look very much alike, the rugs, the walls, the color scheme, the display of the furniture, and the products look a lot alike—it all starts to add up to a trade dress claim. The standard is whether the overall look and feel of the two establishments is so similar that it is a violation of Tory’s trade dress.
So in terms of evidence, which side usually has the most work to do?
[…] In terms of who has more work, the trade dress question is only part of the case. The reason that matters in the context of this case is that what he’s claiming is they were looking for new investors in the company … And what he is claiming is that she scared off investors by saying, “Head’s up guys, we are having a trade battle with C. Wonder” when she really has no claim. And she will say, “Are you kidding me? You have to tell investors that someone is copying you and it might be hurting your bottom line. Otherwise you’re deceiving your investors.” So really that’s what the trade argument is about … If it’s a real trade dress argument, and it was really a problem and Tory Burch the company needed to follow it up, then Tory is in the right. If this was just a made-up argument and the stores look nothing alike, then Chris is in the right. […]
It’s a business claim, wrapped around a trade dress claim […] And now what they’ve done with this case, it’s really to a point that they’re standing naked in a boardroom and everyone’s watching. It is just ugly … He actually goes on to say that she couldn’t possibly have put together a management company that could run a company like this one.
How is the legal landscape different in this area from what it was five to ten years ago?
In the past five or six years, the industry has started to pay a lot of attention to intellectual property and to the need to have more protection. The industry has gotten a lot more active in this area. There are plenty of these industries that have always been that active in Washington … The publishing industry is all over Washington. Fashion is arriving fashionably late to the conversation about legislation and to the conversation about legal regulation, but it’s arriving and I don’t think it’s going to go away.