United States: New York Fashion Week: A Lineup Of The Most Fashionable Trademark And Copyright Claims

Last Updated: February 20 2017
Article by Natasha N. Reed

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.

NYFW Day 8 – Mark Jacobs

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.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
25 Oct 2017, Webinar, Boston, United States

Foley Hoag will present a 60-minute webinar on Wednesday, October 25 at 12:30 pm EDT, offering guidance for in-house counsel regarding the basics of trademark and design protection in the European Union. Attendees will learn about the opportunities and pitfalls to be on the lookout for when looking to secure, protect, and enforce an IP portfolio overseas.

1 Nov 2017, Webinar, Boston, United States

Please join Foley Hoag on Wednesday, November 1, 2017 for a webinar that covers the details of drafting an appropriate arbitration clause for your company’s commercial contracts.

9 Nov 2017, Conference, Waltham, United States

Please join us on Thursday, November 9 at the Westin Waltham Hotel for our quarterly New England M&A Forum, which brings the latest in market trends and recent legal developments to the New England M&A professionals' community.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.