Letter From the Editors
We hope that our readers had a wonderful holiday season and an
energized start to the
new year. As we step into 2025, we are excited to bring you the
latest legal developments
shaping today's fashion and advertising industries in our
special combined winter edition of
Katten Kattwalk and Kattison Avenue.
First, we introduce you to Partner Nathan
Smith, who recently joined Katten's Intellectual
Property
Department. Nathan has more than 20 years of experience with a
diverse practice and client base focused
on all aspects of intellectual property across various industries,
including fashion, retail, entertainment, life
sciences and more. Following his Q&A, we hear from Intellectual
Property Partner Kristin J. Achterhof,
who delves into the increasing number of lawsuits targeting online
businesses for ADA compliance.
Kristin provides a comprehensive overview of the defenses available
to website owners, particularly
in New York, where recent precedents offer new avenues for
dismissing such claims. Next, Intellectual
Property Associate Cynthia Martens explores
groundbreaking legislative changes in California with the
Responsible Textile Recovery Act of 2024, the first extended
producer responsibility law of its kind in the
United States. Cynthia shares the law's implications for
fashion executives and the broader international
movement toward reducing fashion and textile waste. Intellectual
Property Associate Lauren Eiten then
provides an analysis of the decision in the trademark infringement
case brought by The Pennsylvania
State University against online retailer Vintage Brand related to
the school's retro designs and logos. We
round out the issue with an article by Intellectual Property
Associate Alexandra Caleca that addresses
the
Federal Trade Commission's final Click-to-Cancel Rule, after
five years of drafting and public comment,
aimed at providing transparency and simplifying cancellations for
consumers of subscription services.
We hope you enjoy reading the valuable insights within these
pages, and as always, please don't hesitate
to contact Katten with your fashion and advertising law
questions.
Warmly,
Karen Artz Ash and Jessica Kraver
Get to Know: Nathan Smith
We are excited to introduce London Partner Nathan Smith, who joined Katten's Intellectual Property Department in January. Nathan has more than 20 years of experience representing clients across a broad spectrum of industries, including fashion, retail, entertainment and life sciences, and tenaciously advocating for their intellectual property rights worldwide. With his comprehensive skill set, proven track record and personable approach to client service, Nathan is regarded as a long-term trusted advisor. Learn more about his career trajectory, his experience navigating complex IP transactions and fashion matters, and his approach to client relationships in the interview below.
Please tell us about your career path and how it led you to specialize in intellectual property law.
During my first semester at university, all law students were randomly assigned a research project. Fortuitously, mine happened to be related to intellectual property (IP). I can still vividly remember a late night at the university library studying a case involving the musician Phil Collins and extended copyright that was pivotal at the time! From that moment on, I was hooked. Apart from a brief, misguided spell where I considered becoming an M&A lawyer, all roads led to a career in IP law. I know most lawyers say this about their practice area, but IP is a fascinating field where creativity, innovation, law and business intersect, and I'll always be grateful to the lecturer who introduced me to it. What started as a spark of interest has grown into a career helping clients protect and make the most of their valuable ideas and assets in an ever-changing world.
You have also worked with some of the world's leading fashion brands. Can you describe a notable fashion matter you worked on and the unique IP challenges it presented?
There are two which immediately spring to mind. While I was a junior associate, we acted for the British fashion retailer Karen Millen Limited in its successful unregistered design right infringement case against the Irish retailer Dunnes Stores in the Irish Commercial Court. The case centered around the design of two shirts, which we alleged that Dunnes Stores had copied from Karen Millen. This was the first time the EU Community Design Regulation had been litigated in Ireland, and following a reference to the Court of Justice of the European Union, the Irish Supreme Court upheld the Commercial Court's decision. As I was at the start of my career, this was great exposure to a high-profile international case (and the trips to Dublin were fun too!).
Another case that stands out is our successful defense of leading online retailer ASOS in a trademark infringement claim brought by Swiss high-end cycling brand ASSOS. This was extremely high-stakes litigation, and it was a phenomenal feeling when the English High Court, and subsequently the English Court of Appeal, ruled in the client's favor. We also successfully staved off the other side's attempt to take it to the English Supreme Court. Separately at the time, I was working on two cases where the English Supreme Court was involved, which is incredibly rare for IP practitioners.
How do you manage and maintain strong relationships with such a diverse client base across multiple industries?
At the beginning of my career, a partner shared words of wisdom that have stayed with me: the best lawyers don't view problems purely through a legal lens. Clients expect us to help solve their business challenges by combining legal knowledge with commercial insight. I've always tried to heed that guidance, and will always seek to immerse myself in a client's business so that I can strive to understand both the legal and commercial sphere in which they operate. When you can provide counsel that's both legally sound and commercially strategic, clients start to see you as more than just a lawyer — they value you as a trusted advisor. Of course, it also helps to build genuine connections on a personal level. At the end of the day, people want to work with people they like and trust.
Can you elaborate on your approach to global trademark clearance and the strategies you employ to secure necessary rights for your clients?
Trademark clearance is really a mix of art and science. The science comes from using the best tools and databases to uncover potential conflicts, but it's also about skillfully designing a search strategy tailored to the client's specific needs. The art lies in interpreting those results — deciding what's a real risk (from both a legal and commercial perspective) and what's not, then factoring in market realities, cultural nuances and the client's business priorities. Again, the better you know and understand a client's business (and the role the new mark will play in that business), the better you can advise on clearance strategy and risk.
Since you have a significant background in structuring, drafting and negotiating complex IP transactions, what is an example of a particularly complex transaction you worked on?
The transaction that always comes to mind is one I worked on for a Lebanese client a few years ago. We were involved in week-long negotiations in Beirut, during which the client and the counterparties would negotiate in English, Arabic and French (often switching mid-sentence). It was incredibly impressive to witness, although it made it more difficult for us lawyers who had to prepare the markup of the transaction documents at the end of each day's negotiation. In addition to the linguistic challenges, we had to carefully navigate the difference in IP law, as well as related regulatory considerations across multiple jurisdictions. It was a challenging but incredibly rewarding experience.
You have received several accolades for your work in IP law. How do these recognitions influence your practice, and what do they mean to you personally and professionally?
It's always nice to receive recognitions but it doesn't change how I approach my work. I'm more focused on the next project or next challenge than on past accolades. It's always about what's coming up and how you can do it even better than before!
Websites Under Attack — Defenses To ADA Claims For Retailers And Online Businesses
By Kristin J. Achterhof
Retailers and other businesses with an online presence continue to be targets of lawsuits filed by plaintiffs asserting claims under the Americans with Disabilities Act (ADA) and related state laws. In a nutshell, these suits — often postured as putative class action claims — assert that websites are not adequately accessible to individuals with visual impairments. Over the past few years, several of our clients, the vast majority of whom have already been actively committed to working with their internal teams and outside vendors to make their websites accessible to all, have nevertheless been hit with these claims. And while it is tempting to simply settle these cases for nominal sums, even where the complaints as filed are "cookie cutter" and the alleged website "defects" do not exist or have been easily remediated, it is important for website owners to know that they do have viable defenses against these claims. Moreover, for website owners in New York who do not also have a physical presence (i.e., a brick-and-mortar retail or other facility), recent precedent may provide an additional defense that can prove particularly effective both in settlement negotiations and in getting these claims dismissed by the court.
Defenses Available to Website Owners
One defense that has been available to website owners in New York and other states is lack of "standing," which is required by The Constitution of the United States. A plaintiff without standing — or an "injury in fact" — cannot bring a claim. In other words, it is not sufficient for the plaintiff to simply allege that they visited the site and found issues with accessing parts of it; instead, the plaintiff must allege and prove that they visited the site intending to make a purchase, and that they intended to return to the website (i.e., that there also was a "real and immediate threat of future injury"). If a plaintiff does not make these allegations in the complaint, it may be dismissed. However, the fact is that many courts may simply allow a plaintiff to replead and make the required allegations.
Another defense that has been recognized in New York and other jurisdictions is "mootness." ADA claims become moot — and a court lacks subject matter jurisdiction to hear such a claim — when a defendant demonstrates that "[i] there is no reasonable expectation that the alleged violation will recur and [ii] interim relief or events have completely and irrevocably eradicated the effects of the alleged violation." Diaz v. Kroger Co., 2019 WL 2357531, at *2-3 (S.D.N.Y. June 4, 2019) (dismissing claims as moot where Defendant remediated barriers and committed to maintaining accessibility) (quotations omitted). This defense can be effective not only in settlement negotiations, but also on motions to dismiss, where, as in Diaz, a website owner can show — typically through affidavit — that it has "remedied all of the alleged ADA violations; it has ensured that no additional barriers to accessing the Website exist; and it has committed to ensuring access on a going-forward basis." Id. at 3. Similarly, and more recently, in Toro v. Medbar Corp., 2024 WL 2308804 (S.D.N.Y. May 22, 2024), the court found claims moot where the defendant remediated barriers and contracted for ongoing monthly compliance monitoring.
New York Adopts a Defense for Online-Only Businesses
Although various courts around the country have long held that the ADA only applies to websites that have a connection to a "brick and mortar" physical facility, the federal courts in New York previously had not definitely ruled on this issue until recently. On September 30, 2024, the US District Court for the Southern District of New York provided perhaps the most compelling defense for defendants who offer goods or services exclusively online. In Jose Mejia v. High Brew Coffee, Inc., which involved a company that sold coffee exclusively online through its website, the district court analyzed the relevant structure and statutory text and held that a "stand-alone website is not a place of public accommodation" under the ADA. The court then dismissed the plaintiff's ADA claim and lawsuit on that basis. Soon after, the district court in Sookul v. Fresh Clean Threads, Inc., 2024 WL 4499206 (S.D.N.Y. Oct. 16, 2024) reached the same conclusion regarding an online-only clothing retailer, holding that standalone websites are not public accommodations after conducting an extensive textual analysis of the ADA statute. Id. at *6. Most recently, in Toro v. Vapor Boss, 2024 WL 4818439 (S.D.N.Y. Nov. 15, 2024), the court again followed the reasoning in Meija and Sookul in instructing the plaintiff to show cause as to why his claim should not be dismissed for failure to state a claim against another online-only retailer.
This series of cases establishes clear precedent that defendants without accompanying physical locations in ADA website cases pending in the Southern District of New York now have another ace up their sleeve that may help them gain an early settlement or succeed on a relatively straightforward motion to dismiss.
Wasting No Time: California Joins Europe In The Push For EPR In Fashion
By Cynthia Martens
In California, "they don't throw their garbage away, they turn it into television shows." So said Woody Allen in "Annie Hall." But when Governor Gavin Newsom signed Senate Bill 707 into law last September, the Golden State created an incentive for a different sort of recycling: the Responsible Textile Recovery Act of 2024 is the first extended producer responsibility (EPR) law of its kind in the United States, shifting the cost of textile waste onto producers to promote environmentally friendly business practices.
In sum, all producers of covered products in California must join the state-selected Producer Responsibility Organization (PRO) by July 1, 2026, and achieve the PRO's quantifiable performance standards and metrics for waste sorting and management.
The legislation arrives on the heels of a related push in Europe to reduce fashion and textile waste. Here, we review some key aspects of the California legislation in the context of a broader international movement that is at the top of many fashion executives' agendas.
Defined Terms: "Apparel, "Textile Articles" and "Producer"
The new law broadly defines apparel as "clothing and accessory items intended for regular wear or formal occasions and outdoor activities," including "undergarments, shirts, pants, skirts, dresses, overalls, bodysuits, costumes, vests, dancewear, suits, saris, scarves, tops, leggings, school uniforms, leisurewear, athletic wear, sports uniforms, swimwear, formal wear, onesies, bibs, footwear, handbags, backpacks, knitted and woven accessories, jackets, coats, snow pants, ski pants and everyday uniforms for workwear."
Meanwhile, textile articles are defined as items "customarily used in households or businesses that are made entirely or primarily from a natural, artificial, or synthetic fiber, yarn, or fabric." Examples include "blankets, curtains, fabric window coverings, knitted and woven accessories, towels, tapestries, bedding, tablecloths, napkins, linens, and pillows," but excludes single-use products such as paper towels and facial tissues.
In addition, the law specifies that a producer "means a person who manufactures a covered product and who owns or is the licensee of the brand or trademark under which that covered product is sold, offered for sale, or distributed for sale in or into the state." If there is no such person, then the producer "is the owner of a brand or trademark or, if the owner is not in the state, the exclusive licensee of a brand or trademark under which the covered product is sold, imported for sale, offered for sale, or distributed for sale in or into the state, regardless of whether the trademark is registered. For purposes of this subdivision, an exclusive licensee is a person holding the exclusive right to use a trademark or brand in the state in connection with the manufacture, sale, or distribution for sale in or into the state of the covered product." Failing that, the producer is "the person that imports the covered product into the state for sale or distribution," or, as a final option, "the distributor, retailer, or wholesaler who sells the product in or into the state."
If an apparel or textile product is delivered to a consumer in California, then the sale of the product is deemed to have occurred within the state for purposes of the law. The law provides a carve-out for entities (including affiliates) with under $1 million in annual global turnover and for exclusive sellers of secondhand apparel or textiles. Online marketplaces are within the scope of the new law through, for instance, a requirement to alert the California Department of Resources Recycle and Recovery (CalRecycle) of any sellers who processed over $1 million in apparel and textile sales through the marketplace during the previous year (unless no such sales were in California).
The PRO
CalRecycle will select a PRO by March 1, 2026, to oversee the collection, sorting, transport, repair and recycling of used apparel and textiles. CalRecycle may consider additional PROs after 2035.
Monitoring Compliance
CalRecycle will periodically post and update a list of all producers that comply with the Responsible Textile Recovery Act of 2024 on its website. Producers and the PRO are subject to audit. Administrative civil penalties for noncompliance can reach $10,000 per day or five times that if CalRecycle finds that a violation is intentional.
The Bigger Picture
EPR is in vogue among international legislators, who have asserted that low-priced, low-quality fashion products fail to absorb environmental externalities in cost, driving consumers to wasteful purchase habits.
The European Apparel and Textile Confederation (EURATEX) , published a position paper on EPR in 2020, emphasizing the importance of a circular economy, the need for a "level playing field" of shared responsibilities for manufacturers, distributors and retailers, and the risk of contradictory requirements at the national level that would impact the single market.
As of January 1, European Union member states are required to enforce the collection of used textiles such as clothing, blankets, bed linens, carpets and footwear for sorting, repurposing and recycling. Under the revised Waste Framework Directive, in trilogue negotiations with the Council and European Commission as of October 22, 2024, member states must have established EPR schemes within 18 months of the date that the updated law comes into force.
In response, on January 23, EURATEX and Refashion, a waste management association assisting textiles, household linens and footwear companies, announced the creation of the Textile PRO Forum, which aims to facilitate the sharing of EPR strategies and best practices, thereby reducing the administrative burden of compliance.
"As Europe prepares for the mandatory separate collection of textile waste and with the revision of the Waste Framework Directive entering its final stage, the EPR schemes have become a cornerstone of the European strategy for sustainability and circularity of textiles," EURATEX and Refashion said in a joint press statement, which highlighted the difficulty of complying with the EPR schemes implemented in each EU Member State. "While this diversity reflects local features, it also presents a challenge for efficiency and for businesses which will face the complexity of up to 27 different EPR models for textiles. The Textile PRO Forum addresses this need by bringing together experienced PROs and national business associations engaged in the implementation of the Textile EPRs," the associations said.
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