It’s that time of the year again when New York City becomes the most fashionable place on the planet. While I would argue that Manhattan is always fashionable, New York Fashion Week adds a bit of extra excitement, glamour and coolness to the mix. Fashion Week kicks off this Thursday, February 9 through Thursday, February 16, and as usual, the fashion world is all abuzz over who will be the designer-to-watch. With eight fully-packed days of runway shows and events, attendees (or more likely, their personal assistants) are furiously looking over the Fashion Week schedule to decide which shows to add to their iPhone calendars. Interestingly, the schedule itself has actually become a hot topic this year. Many were surprised to see that several designers were curiously “MIA” from this year’s roster, while other designers (well, actually, only one – rapper turned designer Kanye West) decided to hijack the schedule by planning a runway show on the same day and time as another designer, without first consulting with Fashion Week organizers.
With all this talk about the schedule, I couldn’t help but take a look to see which fashion brands are slated to do runway shows this year. As an IP lawyer, the very first thing I noticed is that some of the brands arguably have similar names, like Creatures of Comfort and Creatures of the Wind, Jil Sanders and Jill Stuart, and Vivienne Hu and Vivienne Tam. Uh oh, I think the likelihood of scheduling confusion may be slightly higher this year. And speaking of likely confusion, I also noticed that many of the designers have had their own fair share of experience dealing with trademark infringement claims, as well as copyright claims, brought by or against them. So, I thought it would be fun to do a rundown (by schedule) of some of the most fashionable trademark and copyright claims that previously kept some of this year’s Fashion Week designers up at night.
NYFW Day 1 – Rag & Bone
Rag & Bone is set to debut its Fall ready-to-wear collection during Fashion Week’s opening night. Known for its trendy line of women’s apparel and footwear, the brand is named after the 19th century English “rag and bone” men who scavenged items of others to resell them. As fate would have it, in 2009 an Oregon-based shoe company called Danner alleged that Rag & Bone was indeed a bone-grubber, for selling combat boots that not only looked strikingly similar to Danner’s boot design, but under the name “Danner Combat Boot by Rag & Bone.” Danner brought claims in Oregon District Court for trademark infringement, arguing that consumers were likely to be confused as to the source and sponsorship of Rag & Bone’s combat boots. Not surprisingly, Danner did not allege infringement of the boot design itself, likely due to the fact that its combat boot design is relatively common and therefore difficult to protect under trademark or patent law. Further, copyright law does not protect utilitarian articles like shoes (except to the extent the designs on the shoes are “separable,” an issue currently pending before the Supreme Court). The parties eventually settled their dispute.
NYFW Day 2 – Jeremy Scott
Los Angeles-based celebrity designer Jeremy Scott has outfitted everyone from Rihanna to Lady Gaga. Scott is the creative director for Moschino and also has his own fashion label branded under his name. Scott is set to display his Fall collection on Day 2 of Fashion Week. In 2015, Scott and Moschino were both sued by graffiti artist Joseph Tierney (aka “Rime”) for allegedly copying Rime’s “Vandal Eyes” graffiti mural and using it as a print pattern for dresses in Moschino’s 2015 Fall/Winter collection. One of the dresses was famously worn by pop star Katy Perry at the 2015 Metropolitan Museum of Art’s Costume Institute Gala. After losing a motion to dismiss and motion for summary judgment, Scott and Moschino eventually decided to settle the dispute for an undisclosed amount, proving that graffiti art, just like any other artistic expression, can indeed be protected by copyright.
NYFW Day 3 – Banana Republic
Banana Republic is set to premier its new Fall collection on day 3 of Fashion Week. In 2011, Jen Stark, a Miami-based visual artist, sued Banana Republic for displaying artwork in its flagship London store that was allegedly substantially similar to Stark’s copyright-protected works entitled “Circle” and “Triangle.” Stark brought suit for copyright infringement in the District Court of Northern Illinois, despite the fact that the alleged infringement took place in London. Stark alleged that Banana Republic had access to her works via the many galleries where she exhibited in the United States. In essence, Stark alleged that at least some part of Banana Republic’s alleged infringing actions may have occurred in the United States. According to the case docket, Ms. Stark withdrew her claims against Banana Republic, suggesting that that the parties may have reached a confidential settlement.
NYFW Day 4 – Diane von Furstenberg
Diane von Furstenberg (known by everyone in fashion as just DVF) is no stranger to Fashion Week or to advocating for increased intellectual property rights for fashion designs. DVF has aggressively pursed alleged infringers of the DVF brand for years. In 2007, DVF famously sued fast fashion retailer Forever 21 for copyright infringement, alleging that Forever 21’s $32 “Sabrina” dress displayed a pattern that was an exact replica of the copyright-protected pattern used on DVF’s $325 “Cerisier” dress. According to the case docket, the parties eventually settled their dispute. This case is a classic example of using copyright law to protect certain aspects of fashion designs, like original prints and patterns.
NYFW Day 5 – Oscar de la Renta
Fashion aficionados are waiting with anticipation for the premier of Oscar de la Renta’s Fall collection during day 5 of Fashion Week. The Fall collection will be the first designed by Laura Kim and Fernando Garcia, the newly appointed co-creative directors for Oscar de la Renta. Oscar de la Renta is arguably one of the most famous fashion brands in the business, and the company takes enforcement of its trademarks seriously. In 2008, the company sued Elizabeth Arden over the sale of fragrances bearing the Oscar de la Renta trademarks and trade dress in Wal-Mart Stores. The fashion label accused Elizabeth Arden of selling a perfume made for distribution only as a free gift with other Oscar products. The complaint stated that selling the Oscar fragrance in Wal-Mart was “inconsistent with the image and reputation of Oscar de la Renta and its licensed fragrance products.” In response, Elizabeth Arden argued that it purchased the fragrances in question from YSL Beauté for resale to mass retailers in the United States, and that YSL Beauté (not Oscar) was in fact the registered owner of the trademarks through a license deal for the fragrance and beauty category. Thus, according to Elizabeth Arden, any issue that Oscar had with respect to the sale of Oscar-branded fragrances in Wal-Mart should be directed to YSL Beauté. At that time, YSL Beauté had been acquired by L’Oréal, with Elizabeth Arden acting as the new distributor. So ensued a year of complex litigation and settlement discussions between the parties, resulting in a settlement where Oscar was able to regain control of its trademarks in the beauty and fragrance category. The lesson learned for brand owners from this litigation is to negotiate terms in a license agreement that allow the brand owner to maintain ownership of the licensed marks and control over the channels of distribution.
NYFW Day 6 – Naeem Khan
Naeem Khan is one of my personal favorite designers showcasing Fall fashions this year during Fashion Week. He is slated to display his latest designs on Day 6 of Fashion Week. Kahn, who has dressed the likes of Michelle Obama and Kate Middleton, is known for intricate, ornate and colorful patterns and designs. While Khan has recently been in the press for refusing to dress our new first lady, he also made some heads turn when he posted a message on Facebook accusing J. Crew of copying one of his dress print patterns. It doesn’t appear that Khan took any action against J. Crew, and based on his post, maybe he decided to take J. Crew’s design as a compliment.
NYFW Day 7 – Anna Sui
Anna Sui’s brand includes clothing, footwear, beauty products, accessories and even home goods. She is known for her edgy and colorful print designs. Many will be looking forward to Sui’s colorful Fall prints on Day 7 of Fashion Week. Unfortunately, like DVF, Anna Sui was also embroiled in a lawsuit with Forever 21 over the alleged copying of several of her print designs. In 2007, Sui filed a complaint against Forever 21 for copyright infringement, alleging that Forever 21 copied various floral designs from Anna Sui’s Spring 2007 Ready-To-Wear Collection. After more than 2-years of litigation, the parties eventually settled the matter.
Marc Jacobs is expected to close Fashion Week on Day 8 with a bang! The brand made news this year with the addition of Frances Bean Cobain (daughter of Courtney Love and Kurt Cobain of Nirvana) as the new face of Marc Jacobs’ Spring Summer 2017 campaign. However, in 2015 Marc Jacobs also made news when the brand was sued by fashion giant Adidas. Adidas alleged that Mark Jacob’s 4-stripe design on its clothing infringed the Adidas 3-stripe design mark. According to news articles, the parties quickly settled their differences and Jacobs ceased using the 4-stripe design, showing that once again, Adidas continues to strongly enforce its famous trademark.