FASHION LAW. Kirby B. Drake, Partner Tiffany Johnson, Associate August 17, Klemchuk LLP

Transcription

1 FASHION LAW Kirby B. Drake, Partner Tiffany Johnson, Associate August 17,

2 WHAT IS FASHION LAW? Patents Trademarks Trade Secrets Copyrights International Law Licensing Contracts Employment/Labor Law Criminal Law

3 Cheney Bros. v. Doris Silk Corp. (2nd Cir. 1929) Early fashion law case Unsuccessful attempt to protect dress designs through property law Emphasizes need for legal protection for apparel or fashion [ ] perhaps by an amendment of the Copyright Law."

4 TRADEMARKS AND FASHION Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc. U.S. Reg. No U.S. Reg. No

5 TRADEMARKS AND FASHION Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc. Red sole trademark valid/enforceable Red sole trademark limited to situations in which red lacquered outsole contrasts in color with adjoining upper of the shoe

6 TRADEMARKS AND FASHION Converse, Inc. v. International Trade Commission (ITC) U.S. Serial No U.S. Serial No U.S. Serial No

7 TRADEMARKS AND FASHION Additional Converse Trademarks U.S. Serial No U.S. Serial No

8 TRADEMARKS AND FASHION Converse, Inc. v. ITC Initial Determination provided: a violation of section 337 of the Tariff Act of 1930, as amended,... with respect to U.S. Trademark Registration Nos. 3,258,103; 1,588,960; and 4,398,753, but not as to the asserted common law trademarks.

9 TRADEMARKS AND FASHION Converse, Inc. v. ITC Factors to Assess Secondary Meaning: (1) degree and manner of use; (2) exclusivity of use; (3) length of use; (4) degree and manner of sales, advertising and promotional activities; (5) effectiveness of effort to create secondary meaning; (6) evidence of deliberate copying; and (7) evidence that actual purchasers associate trade dress with a particular source

10 TRADEMARKS AND FASHION Converse, Inc. v. ITC Evaluating Reliability/Credibility of Surveys (1) Examine proper universe; (2) Representative sample drawn from proper universe; (3) Correct mode of questioning interviewees; (4) Recognized experts conducting survey; (5) Accurate reporting of data gathered; (5) Sample design, questionnaire, and interviewing in accordance with generally accepted standards of objective procedures and statistics in field of surveys; (7) Sample design and interviews conducted independently of attorneys; and (8) Interviewers, trained in field, have no knowledge of litigation or purpose for which survey is to be used

11 COPYRIGHTS AND FASHION Star Athletica, LLC v. Varsity Brands, Inc. Design elements found on Varsity Brands cheerleader uniforms (e.g., chevrons and stripes) can be separated from useful article itself

12 COPYRIGHTS AND FASHION Star Athletica, LLC v. Varsity Brands, Inc. Features of useful articles eligible for copyright protection only if: Perceived as two- or three-dimensional work of art separate from useful article, and Qualifies as protectable pictorial, graphic, or sculptural work-either on its own or fixed in some other tangible medium of expression- if it were imagined separately from useful article into which it is incorporated

13 INNOVATIVE DESIGN PROTECTION ACT OF 2012 Introduced on September 10, 2012 by Senator Chuck Schumer Extends intellectual property protection to fashion Revises design protection under the Copyright Act, 17 U.S.C et seq. Three-year term of protection for original articles of apparel

14 PATENTS AND FASHION LAW Utility Patents Less common for fashion but offers strong protection if obtainable 20 years of protection from filing date Novel, nonobvious, and useful Design Patents 15 years of protection from issue date Limited to protecting new and nonobvious ornamental designs

15 PATENTS AND FASHION LAW

16 PATENTS AND FASHION LAW Owner: Spanx U.S. Design Patent No. D Owner: Apple, Inc. U.S. Design Patent No. D727197

17 PATENTS AND FASHION LAW Owner: Emily Huskinson-Heath, Ring Wrap U.S. Design Patent No. D679,214 Owner: Yves Saint Laurent U.S. Design Patent No. D782,818

18 TRADEMARKS AND JEWELRY Tiffany & Co. v. Costco Wholesale Corp. Causes of Action (1) Trademark infringement; (2) Dilution; (3) Counterfeiting; (4) Unfair competition; (5) Injury to business reputation; and (6) False and deceptive business practices and false advertising.

19 TRADEMARKS AND JEWELRY Tiffany & Co. v. Costco Wholesale Corp. Costco enjoined from using the mark TIFFANY as a standalone term Trebled profits of $11.1 million Punitive damages of $8.25 million

20 TRADEMARK AND COPYRIGHT Louis Vuitton Malletier, S.A. v. My Other Bag Louis Vuitton 2016 Klemchuk LLP My Other Bag s Zoey

21 TRADE DRESS AND DESIGN PATENT Aquazzura v. Ivanka Trump trump- hettie- shoe- aquazzura- wild- thing- lawsuit /

22 INTERNATIONAL TRADEMARKS L Oréal v. Bellure april- 2014

23 COPYRIGHTS AND STREET ART Rime v. Moschino cannot- be- copyright- protected- claims- moschino- jeremy- scott 2016 Klemchuk LLP

24 Questions? 24