A while back I wrote about “trade dress,” a subset of Trademark law.Trade dress is a term of art that references an iconic element that is inextricably linked in the mind of a consumer to a specific brand.Think Tiffany blue box.Louboutin’s red-soled black shoes.
Recently Nike launched a lawsuit against 31 different Defendant’s over the Converse All Star Chuck Taylor brand shoes.Converse is owned by Nike.In my mind, there is no doubt that Chuck Taylors are iconic. When I think of a hipster, in my mind’s eye, they are wearing Chuck’s.I googled “hipster clothing” and up popped a HuffPo article entitled “13 Most Hipster Items.”What’s #3 on the list?“Beat up Converse” with a pic of a classic black pair of Chuck’s. (http://www.huffingtonpost.com/2014/07/16/hipster-clothing_n_5589392.html.)
Converse (aka Nike) is suing Sketchers, WalMart, H&M, and others who are “mass-producing, distributing, or selling” sneaks that knock off the look of Chuck Taylors.Nike has been sending out cease and desist letters for the last 6 years.Since the knock offs are everywhere, no one was scared off by a mean letter.Nike got fed up and sued ‘em.
An interesting aspect of this litigation is that the copycat shoes are not stealing the Converse name or logo.They have their own names.Sketchers markets theirs as “Bobs Utopia” or “Bobs Sky Line” along with other names.The basis of the litigation is that the use of the design: the shape, the similar markings, the distinctive toe cap, is a trademark infringement and confuses consumers or is so closely associated with Chuck Taylor’s that it infringes on Nike’s trademark.
Trademarking design elements is becoming more prevalent.I searched the US Patent & Trademark Office data base, and found a 1934 “Chuck Taylor” trademark, along with this description: “Shoes made of rubber, leather, fabric, and combinations thereof.”
In 2011, this was the description of the Chuck Taylor trademark, “The mark consists of the three dimensional trade dress design of the iconic and classic Chuck Taylor All Star basketball shoe for which the following primary features are claimed: (a) Multi-Patterned Rubber Toe Strip. The rubber toe strip has four layers of bands featuring intricate and distinct patterns of three-dimensional diamonds and lines. (b) Ankle Patch on the Inside Ankle. The round patch design with double dashed line just inside the boundary of the circular patch, with a star in the center. (c) Double Rand Stripes. Two parallel horizontal lines run along the rubber outsole of the shoe. The uppermost contrasting stripe runs along the edge of the rubber outsole around the entire circumference of the shoe, including on the toe cap. The second contrasting stripe appears midway along the rubber outsole and runs from the front edge of the license plate heel tab to the back edge of the rubber toe bumper. (d) Brushed Metal Grommets in Medial Side Arch. Two round brushed steel grommets are placed in a horizontal line above the inside medial arch of the shoe. (e) Brushed Metal Eyestay Grommets. A series of equally-spaced wide, round brushed metal eyestay grommets are part of the lacing system instead of hooks, loops, D-rings, or other holding and lacing mechanisms. (f) Convex Rubber Toe Cap. A raised, protruding rubber toe cap. (g) Double Stitching and Box-Like Stitch Along the Upper. (h) Top Line Collar Throat Shape. The matter shown in broken lines, namely, the license plate heel tab as well as the outline of the shoe along the upper, the tongue, the back edge, the rear panel, and the sole are not part of the mark. The broken lines serve only to show the position or placement of the primary features of the trade dress. The dashed lines indicating the Double Stitching and Box-Like Stitch Along the Upper are part of the mark.”
Converse wants to preserve its brand and its market share.The cool kids are wearing Chucks – I have a pair of pink ones.In 2014, Converse sales were up 16% topping out at 1.7 Billion.Nike doesn’t want the brand diluted by cheap copycats.
So what of the copycatters?They have a huge incentive to vigorously defend.Every time one of those mean letters got balled up and tossed into the trash, they were on notice that the product being placed into the GLOBAL marketplace was a potential trademark infringement.That’s got to translate to $$$$$$$.And, removing the knock offs from the shelves is not sufficient.Nike wants that as well as all the existing inventory (tons and tons of it) destroyed.Another boatload of $$$$$.One defense is sure to be that Converse acquiesced for years doing nothing to protect the brand and that in the 100 years that Converse has been around the shoes have become “generic” and have lost their trademark protection.
I have been annoyed by Sketchers since they totally copycatted Toms, so I hope Nike kicks Sketchers butt good and hard.
Even now, when I tell folks that I’m doing a little bit of fashion law work, they exclaim with genuine surprise. Not necessarily because it’s me doing it, more like confusion, “You mean, that’s a thing?”I am still struck with how little ‘official’ recognition the fashion law niche carries.I received an email advertisement to attend a legal seminar on “food truck, beer, and brewery law.”No one would ask, “is that a thing?” about Baguettaboutit, Chirba Chirba, Shotgun Betty & Hell Yes Ma’am.(Baguettaboutit food truck with toasted baguettes filled with deliciousness; Chirba Chirba dumpling heaven on wheels; Shotgun Betty hefeweizen from LoneRider and Belgian golden from Raleigh Brewing Company – my faves).
Fashion is a $1.2 Billion global industry.American consumers spend $250 million each year on clothing & accessories.Every American man, woman, and child, spends some money on apparel every year.Every day, every single man, woman, and child touches some type of garment.
Notably, the twice-yearly fashion weeks in New York City bring in revenue that is MORE than the economic impact to the host city of the SUPER BOWL.More than the Super Bowl. $900 million for NYFW vs. $60-600 million for football.BOOM.( Super Bowl impact $60 million say the statisticians and economists, $600 million say the NFL. Either way, fashion wins.)
Yet, there is no confusion about “Sports Law.”There are well-established law school curriculums in prestigious schools like Marquette, Tulane, and Villanova.There are two fashion law programs, one at Loyola and the other at Fordham, where I studied.These programs are very well-respected and are growing, but they are new; the first course ever was offered at Fordham in 2006.Then, as now, the impression is that this line of work is “frivolous,” “superficial.” With almost $16 Billion in gross revenue in 2013, tell that to Gap, Inc. (Gap, Banana Republic, Old Navy, Piperlime, Athleta, Intermix).
Military-style clothing has been oft-copied.Today, the Pershmerga used social media to attack H&M over the jumpsuit recently unveiled in H&M’s Autumn/Winter collection.
<------------- This is the offending garment:
The Daily Mail reports that complaints flooded in on social media accusing H&M of copying the uniforms worn by female Kurdish soldiers who are fighting ISIS. The olive-green jumpsuit is styled with a wide belt and lace-up boots.H&M's global press officer Ida Ståhlnacke said in a statement: "We are truly sorry if we have offended anyone with this piece, this was of course never our intention. At H&M we want to offer the latest within fashion and trends and we continuously listen to our customers’ requests. The last seasons we have seen an increasing demand on jumpsuits and therefore we currently offer a selection of jumpsuits in different colors and materials, such as denim blue and deep red. The jumpsuit in question is made in a light and comfortable material and is a part of a larger collection consisting of many garments in khaki green, which also is one of the trendiest colors this season. The opinions of our customers are very important to us and we will keep this feedback in mind for future collections."
I don’t live in Iraqi or Turkey; I didn’t holster an automatic weapon this morning to go fight terrorists.I live in peace; in an urban well-to-do community; I do not have the mindset of a Kurdish fighter.That said, I do not think H&M’s jumpsuit is an affront to the Pershmerga, the Kurds, or their cause. Loud applause for the Pershmerga’s soldiers, male and female.And, LOUD APPLAUSE for H&M’s Jumpsuit.It’s badass.Just like the soldiers.
This on the other hand … this from Urban Outfitters is truly reprehensible::
I've spent the last week in mediation. Mediation as an advocate for a party, then mediation as the mediator, capped off with attending an advanced mediation training program. This prompted me to write a "what to expect in mediation" handout for clients. When mediating for a client, I always have a pre-mediation meeting to carefully explain the process but a written handout reinforces the verbal. The handout is long; however these are some of the important takeaways: GOALS Your mediator’s goal is to help resolve your dispute.Your lawyer’s job is to offer advice as to reasonableness, courtroom scenarios, advantages and disadvantages of compromise, litigated outcomes, and costs.Your mediator is not so much concerned about the “equities” of the resolution; instead, your mediator is invested in facilitating a resolution. CHOICES This process of mediation is all about making choices. Your lawyer will give you information and advice, but you will need to make the decisions. These decisions are all yours – no one can tell you what to do or force you to choose one outcome or another. GIVE-AND-TAKE In a settlement, both sides have to compromise, and both usually feel they have given up too much. This is universal, regardless of the issue, the strength of the parties (or their weaknesses) or the other factors in a mediated case. No one walks away happy. TOGETHERNESS IS OVERRATED. Most of the day is spent in separate rooms, apart from the other side. Joint sessions may occur but they are rare. Joint sessions are loaded with conflict, some smoldering, some overt. Caution. THE MISSING PIECES The start of a mediation is often composed of an exchange of information, a gathering of the "puzzle pieces,” lists of items, requests for information, and corrorborating documents. PUFFING The first proposal by each side is puffery – a “best day-in-court offer.”These “first offers” get the ball rolling but they often prompt high emotions.Take a moment, count, breathe, vent, breathe, and move on to a counterproposal. THE FOREST AND THE TREES When everyone’s had a say, deals start to form. Folks move away from the past, who said what to whom, finger-pointing and blame. Disputes about the "truth" or "fiction" of individual values, individual expenses and income amounts fade, and the focus turns to specific proposals and counterproposals. This is where the settlement occurs. ARM TWISTING You may question your mediator’s impartiality when you are asked to make concessions.This is normal.Your mediator is pushing the other side just as hard, asking them just as many questions, pushing towards compromise. RULES… IN A KNIFE FIGHT? Offers to compromise are confidential. Your mediator cannot be a witness. BUT, statements by a party may be used by the other side after an impassed mediation to ask for more information, for more discovery, or in trial. So long as you designate what information you want kept confidential, your mediator has an ethical obligation not to disclose designated confidential information to the other side. DAY TURNS TO NIGHT Your mediation “day” will be long.It might be 8 or 10 hours (or even more sometimes). Your mediation day will be physically exhausting and emotionally exhausting. There will be long periods of “downtime” while your mediator is spending time in the other room with the other side.Use this time to work on another proposal in anticipation that the proposal you’ve made is rejected or tweaked. Your mediator may not provide snacks or food that you can eat.Bring snacks. WE HAVE A DEAL Once an agreement is reached, your mediator may outline the specific terms into a “Mediated Settlement Agreement.” You and your lawyer will carefully review this document and if you are satisfied with your choices and decisions, and satisfied that the Agreement correctly outlines the terms you have agreed to, you will be asked to sign the Agreement.You mediator will notarize this Agreement.This document is a contract between you and the other party, and can be enforced using contract principles.