May 8, 2014

Hermès Sues Birkin Bag Imitators For Trademark and Trade Dress Infringement

trade-dress-handbag-attorney-trademark-purse-hermes-sued-lawsuit.jpgHermès is a French luxury goods manufacturer whose handbags and purses are highly coveted. Its “Birkin” handbag has become immediately recognizable to millions of consumers (I know because seven out of seven ladies in our office immediately identified the pictured bag as a Birkin) and therefore distinctive, thereby its shape is a registered trademark with the U.S. Patent & Trademark Office. While Birkin Bags have been manufactured using various leather types and textures, its trade dress is defined by “(a) a distinctive three lobed flap design with keyhole shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.” Because each handbag is handcrafted by artisans using the finest leather, prices start at about $6,000 and reach the price of a finely engineered sports car.

Despite the high price of the Birkin Bag, it is generally recognized by consumers due to considerable coverage by the press and its inclusion in story lines of several television shows, including HBO’s Sex and the City. Because of the enormous sales, extensive advertising and promotion, and media coverage, the Birkin Bag’s shape has acquired secondary meaning and developed into a famous trademark. Even the strap/turn and lock/padlock closure is independently famous and the subject of another U.S. trademark registration.

Defendants Emperia, Inc., Anne-Sophie, Inc. and Top’s Handbag, Inc. are accused of being related sister companies in the business of importing and distributing women’s handbags. Defendants are accused of selling infringing knockoff bags to Charming Charlie and JustFab. Despite allegedly receiving cease and desist letters, Defendants continued to expand and sell additional knockoff designs. The suit seeks unspecified damages, but requests that actual damages be trebled, pursuant to 15 U.S.C. § 1117, because defendants intentionally and willfully continued their infringement despite receiving notice of their infringing activity.

To see pictures of all the accused products, click here.

It appears that third-party knockoffs of the Birkin Bag are so prevalent that numerous Youtube videos have been posted to spot the alleged fakes:

The case is Hermès International v. Emperia, Inc. et al., 14-CV-03522 (C.D. Cal. 2014).

April 16, 2014

Flying Fairy Toys Engaged In Copyright And Trade Dress Infringement Lawsuit

copyright-toy-attorney-trade-dress-fairy-spin-master.jpgFlying toy manufacturer, Spin Master, is suing its former technology company and its new business affiliates for allegedly infringing Spin Master’s Flutterbye flying toy fairy’s copyrights and trade dress by selling the competing Starfly fairy. Indeed, the two companies are no strangers to litigation and are currently engaged in a patent infringement lawsuit in Illinois involving remote controlled airplanes and helicopters. Here, Spin Master claims to have introduced the Flutterbye toy in 2013, which fairy doll incorporates a new technology that allows a customer to control the flying fairy using only one’s palm. Spin Master asserts that the Flutterbye received numerous top toy awards and has been a commercial success. The Flutterbye fairy figurine has been copyrighted and several other copyright applications are pending for the flower designs, stardust, and packaging.

Plaintiff alleges that Defendants approached Plaintiff about a possible collaboration to distribute the toy outside of the United States, which Plaintiff declined. Plaintiff contends that “after seeing the success of Spin Master’s Flutterbye fairy toy, and rather than independently creating a distinct product, Defendants Brix, CYI and Rehco together engaged in a plan to create a look-alike flying fairy product in an attempt to unfairly capitalize on Spin Master’s success.” Aside from copying original elements of the toy itself, Plaintiff claims that Defendants use confusingly similar packaging and marketing channels, including similar YouTube commercials.

Because each party's respective product packaging prominently displays their respective trademarks, it will be interesting to see if customers are confused about the source of the products. See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1045-46 (2nd Cir. 1992) (holding that prominently displayed trade names on respective products "weigh[ed] heavily against a finding of consumer confusion resulting from the overall look of the packaging") (preliminary injunction denied).

The case is Spin Master, Ltd. v. Brix ‘N Clix Co., Ltd., CV14-02808 PSG (C.D. Cal. 2014).

October 1, 2013

Hammitt Files Purse Design Trade Dress Infringement Lawsuit Against TJ Maxx And Me & You

trade-dress-attorney-purse-bag-design-patent-hammitt.jpgSeveral purse trade dress infringement lawsuits have been filed in Los Angeles over the last couple of years (see Linea Pelle lawsuit, Marc Jacobs lawsuit, and Givenchy lawsuit) as designers try to protect their handbag designs from being copied. With a little bit of careful planning and foresight, designers can avoid having to provide constrained definitions for the non-functional and protectable features of their designs, in addition to proving consumer’s recognition of the trade dress as an indicator of source, i.e., capable of distinguishing one company’s product from another’s. Although the purse’s structural design is not entitled to copyright protection, designers may obtain design patents to protect the aesthetic design features of their purses.

Hammitt appears to have no design patent protection and is attempting to assert an ambiguous trade dress infringement and unfair competition claim against TJ Maxx, designer Patricia Nash and her company Me & You Accessories, Inc. Judging from the absence of some crucial information from the complaint, including a picture of the accused infringing purse, the length of time the purported trade dress has been used, sales volume, etc., the complaint appears ripe for a motion to dismiss. Indeed, the definition of the trade dress itself appears to be overbroad and ambiguous:

HAMMIT® products are easily identified by its unique silhouettes and use of hardware, one of the most well recognized of which features Hammitt's signature rivets, which appear in linear patterns along the sides, trimmings, and/or handles of the product (hereinafter "Signature Rivet Trade Dress"). The rivets of Hammitt's Signature Rivet Trade Dress are the same size and each rivet is separated with the same amount of space on all goods with which said trade dress is utilized.

The complaint includes the pictures of the bags to the right, but it does nothing to narrow the definition, which definition is broad enough to encompass the Harley Davidson motorcycle bag from the 90's pictured below:


In trade dress cases, the defined trade dress may be generic if the "definition of a product design is overbroad or too generalized." Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. 1995). Because the California Secretary Of State business records establish the Hammit corporation was not formed until 2008, another company’s first use of the alleged trade dress or wide spread use of the trade dress by third parties will either preclude exclusive trade dress rights in the rivet design or enforcement thereof. Further, the complaint’s assertion that only “elements” of the purported trade dress are nonfunctional may prevent enforcement of the trade dress.

The Supreme Court held that "a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10, 102 S. Ct. 2182, 72 L. Ed. 2d 606 (1982). The Court later announced another test and explained that a feature is functional if "exclusive use of the feature would put competitors at a significant non-reputation-disadvantage." Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 165, 115 S. Ct. 1300, 131 L. Ed. 2d 248 (1995). Under this "competition theory of functionality," courts consider whether trade dress protection would leave a "variety of comparable alternative features that competitors may use to compete in the market." Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410, 418 (6th Cir. 2012). "If the feature is not a likely impediment to market competition, then the feature is nonfunctional." Id.; Disc Golf Ass'n v. Champion Discs, Inc., 158 F.3d 1002, 1008 (9th Cir. 1998) (considering whether "commercially feasible alternative configurations exist"). In the Ninth Circuit, when the feature also "contributes to the consumer appeal and saleability of the product," the "aesthetic functionality" doctrine "retains some limited viability." Au-Tomotive Gold v. Volkswagen of America, 457 F.3d 1062, 1070 (9th Cir. 2006); Vuitton et fils S.A. v. J. Young Enters., Inc., 644 F.2d 769 (9th Cir. 1981).

Thus it appears that Hammitt is going to have a tough hill to climb to prove ownership of an enforceable trade dress and infringement. Another obstacle on the hill may be consumer’s annoyance with Hammitt’s cleverly worded representations that lead consumers to believe its products are manufactured in Los Angeles instead of China.

The case is Hammitt, Inc. v. The TJX Companies, Inc., et al., CV13-6943 MWF (C.D. Cal. 2013).

August 16, 2013

Paris Hilton Sues Perfection Perfume For Trademark, Trade Dress, & Design Patent Infringement Over Perfume Bottle Packaging

attorney-trademark-trade-dress-design-patent-paris-hilton.jpgParis Hilton has teamed up with Parlux Fragrances to release her own perfume line and to also sue Perfection Perfume for trademark, trade dress, and patent infringement, in addition to unfair competition. Paris claims to be a worldwide owner of several trademarks used in connection with clothing, footwear, cosmetics, fragrances and watches. Speaking about watches, Paris was recently sued for patent infringement for allegedly copying watch designer de Grisogono’s patented Novantatre watch design. Back to Paris’ current case, she also claims to be an international celebrity, actress, fashion designer, musician and socialite, which has resulted in sales of millions of bottles of her fragrances. She also owns an incontestable US Patent & Trademark Office trademark registration for her Paris Hilton trademark for fragrances.

Paris contends that she has established a distinctive trade dress in the fragrances’ bottle, namely: “(i) cylindrical-shaped bottles; (ii) clear pink bottles for the women's fragrance and clear blue for the men's fragrance; (iii) a vertical black wave design overlaid on the bottle; and (iv) the brand name Paris Hilton written in black, lower case, and cursive font against a silver background.” She also contends to own trade dress rights in beauty products, consisting of (i) black tubes and (ii) the brand name Paris Hilton written in cursive lettering and displayed vertically in metallic pink (for women) or metallic blue (for men).” But we’re not done yet. The complaint also alleges trade dress rights for individual fragrances which includes: “(i) metallic pink (for women) or metallic blue (for men) boxes; (ii) a vertical black wave design overlaid on the box; (iii); and the brand name Paris Hilton written in metallic silver, lower case, and cursive font running vertically up the right side of the box.” Almost finished. And finally, she also claims trade dress rights in the packaging for boxed gift sets comprising: “(i) metallic pink (for women) or metallic blue (for men) boxes; (ii) a vertical black wave design overlaid on the box; (iii); and the brand name Paris Hilton written in silver, lower case, and cursive font running vertically up the right side of the box.”

Paris’ manufacturer, Parlux, is the owner of U.S. Patent No. D518,382, covering the ornamental features of the fragrance bottle, i.e. the transparent cylindrical bottle and cap with a helical pattern continuing around the surface of the bottle. The complaint alleges that defendant’s Los Angeles retail location sold a perfume that infringed the trademarks, trade dress, and design patent. The suit seeks unspecified damages.

PRACTICE NOTE: Trade dress is becoming a more ubiquitous form of intellectual property claim. Product packaging, for example the color and layout of the box enclosing the product, may be inherently distinctive and subject to immediate protection. A product design trade dress, which covers a product’s shape or configuration, usually requires a showing of secondary meaning to become protectable, i.e. the product design has been used and promoted sufficiently to form an association in the mind of consumers to denote the source of the product. Indeed, the Supreme Court noted, in Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000), that “[t]o the extent there are close cases, we believe that the courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.”

The case is Paris Hilton et al. v. Perfection Perfume, CV13-05852 MRW (C.D. Cal. 2013).

April 24, 2013

A’lor Loses Cable Motif Jewelry Copyright And Trade Dress Infringement Lawsuit

Jewelry-copyright-attorney-trade-dress-sued-court-los-angeles-alor.jpgLos Angeles, CA - A’lor International sued numerous jewelry designers, producers and retailers for copyright and trade dress infringement over sales various nautical twisted cable motif jewelry. A’lor filed a summary adjudication motion asking the Court to deem Defendants liable for copyright and trade dress infringement. Defendant Lau filed a motion for partial summary judgment that it did not infringe A’lor’s copyrights and Defendant Miami Lakes filed a motion regarding the trade dress infringement claims, which motions were joined by several defendants.

To succeed on its copyright infringement claims, Plaintiff must show that (1) Plaintiff owns valid copyrights in the Subject Designs; and (2) Defendants infringed on Plaintiff’s copyright. Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140 (9th Cir. 2003). The Court held that A’lor’s copyright registration certificates constituted prima facie evidence of a valid copyright, which presumption of validity defendants were unable to rebut. 17 U.S.C. § 410(c). To rebut the presumption, Defendants argued that the copyrights were invalid because they lack originality. Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003). The Court, however, found that Defendants submitted evidence of pre-existing nautical twisted cable motif jewelry sold by third parties and to provide copyright protection to Plaintiff’s would improperly give Plaintiff a monopoly on nautical rope band jewelry. Nevertheless, the Court found that Plaintiff was entitled to a “thin” copyright in the style of the clasp or other ornaments and panther heads. But once the court subtracted the unoriginal elements and considered only Plaintiff’s original contributions, no copyright infringement could be found because virtually identical copying didn't exist, the proper infringement test for a “thin” copyright.

Regarding its trade dress infringement claim, A’lor had to show that (1) the trade dress is nonfunctional; (2) the trade dress has acquired secondary meaning, and (3) there is a substantial likelihood of confusion between the Accused Designs and the Subject Designs. See Art Attacks v. MGA Entertainment, Inc., 581 F.3d 1138, 1145 (9th Cir. 2009). “Trade dress” refers to the “total image of a product” and may include features such as size, shape, color, color combinations, texture or graphics. International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993). Because the scope of trade dress protection may be broad, courts exercise particular caution when extending protection to product designs, as granting trade protection to an ordinary product design would create a monopoly in the goods themselves. Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 380 (2d Cir. 1997).

A’lor described its trade dress as “interwoven nautical cable threads composed of twisted stainless steel wire forming single- or juxtaposed multi-strand treated cable threading with soft-textured adornments and embellishments spaced through the cable.” The Court found the definition to be amoebic, namely “impermissibly general and overbroad...As such, extending protection to this trade dress would permit Plaintiff to exclude competition from functionally similar products that use stainless steel in nautical cable band jewelry...Therefore, the Court finds that the trade dress, as articulated by Plaintiff, is no more than a concept or idea.”

The case is A’lor International, Ltd. v. Tappers Fine Jewelry, Inc., CV12-02215 RGK (C.D. Cal. 2012).

September 14, 2012

Christian Louboutin’s Red-Sole Shoe Trademark Is Valid, To A Limited Extent: Second Circuit

trademark-shoe-christian-louboutin-v-yves-saint-laurent.jpgThe popular Christian Louboutin (CL) shoes’ red sole trademark is readily recognized by the consuming public. But when CL sued Yves Saint Laurent (YSL) for making red soled shoes, the district court disagreed. Finding CL’s red sole trademark unenforceable, the court denied CL’s motion for a preliminary injunction to prevent YSL’s sales of shoes with lacquered red soles.

The Court of Appeals for the Second Circuit concluded that the district court incorrectly held that a single color can never serve as a trademark in the fashion industry. The Court, however, proceeded to then modify CL’s trademark registration for any shoe with a red sole to only apply with red, lacquered outsole with a contrasting upper of the shoe. In other words, the trademark excludes any red shoe with a red sole.

YSL claimed this was not the first time it had designed monochrome footwear with red soles, which it created in the 1970’s prior to CL’s 1992 adoption of the red sole trademark. Thus, YSL filed counterclaims seeking cancellation of CL’s trademark registration because it was ornamental and functional and sought monetary damages for CL’s interference with YSL’s business relations and for unfair competition because many retailers returned YSL’s shoes after receiving CL’s cease and desist letters.

On appeal, Louboutin argues that the District Court erred in (1) holding, based on the doctrine of “aesthetic functionality,” that the Red Sole Mark was not entitled to legal protection; (2) applying the doctrine of aesthetic functionality to hold that a single color on a fashion item could not act as a trademark; (3) failing to give weight to the statutory presumption of validity deriving from the Red Sole Mark’s registration; (4) applying an improper analysis of trademark infringement and dilution; (5) ignoring allegedly undisputed proof of likelihood of confusion and irreparable harm; and (6) announcing a per se rule of functionality in a manner that violated Federal Rule of Civil Procedure 52.

First, the Court, relying on the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995), found that the red sole color is protectable as a trademark because it “acts as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.” Indeed, Qualitex concluded that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.”

Next, the Court addressed the functionality defense, which has two forms “utilitarian” and “aesthetic”. Utilitarian functionality can be shown if the feature is “essential to the use or purpose of the article” or if it “affects the cost or quality of the article.” Aesthetic functionality is established by demonstrating that providing the markholder the right to use the feature exclusively would put competitors at a significant non-reputation-related disadvantage. The Court held nothing in the fashion world allowed the lower court’s creation of a per se rule that a single color cannot serve as a trademark in that field.

Then, the Court turned to the red sole trademark and found that secondary meaning had been established, which is required to show that a single color has become distinctive, and the red sole was a protectable trademark. “We hold that the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different color, has ‘come to identify and distinguish’ the Louboutin brand, Qualitex, 514 U.S. at 163, and is therefore a distinctive symbol that qualifies for trademark protection.” The Court, however, also found that CL had not established secondary meaning in the red sole as applied to a red shoe and, under 15 U.S.C. § 1119, ordered the USPTO to limit the registration to exclude monochromatic red shoes.

The Court affirmed the denial of the preliminary injunction because YSL’s use of a red sole on a red shoe is not a trademark use and not confusingly similar to CL’s mark. The Court, however, punted on whether the red sole mark as modified was functional and remanded the case for further proceedings on YSL’s counterclaims.

March 21, 2012

Charriol Files Cable Motif Jewelry Copyright and Trade Dress Infringement Lawsuit

UPDATE 4-24-2013: District Court finds non-infringement of trade dress and copyrights on summary judgment.

trade-dress-jewelry-copyright-cable-charriol-yurman-trademark.jpgA’lor International Ltd., dba Charriol USA, is suing sixteen defendants for manufacturing and selling numerous jewelry designs incorporating a nautical cable motif that allegedly infringe Charriol’s copyrights and trade dress. Charriol claims that it has been designing unique jewelry designs for decades, which have either been registered with the U.S. Copyright Office or are pending registration. To see pictures of Charriol’s entire list of asserted designs and allegedly infringing products, click here. Through many years of sales, advertising, and media coverage, Charriol alleges that the cable motif has become its trade dress, meaning that the jewelry’s visual appearance functions as a trademark and consumers associate the appearance with the source of the jewelry. Charriol also asserts a breach of implied contract against four defendants that received samples of the jewelry and agreed to only use the designs if they compensated Charriol.

Charriol’s cable jewelry designs are reminiscent of David Yurman’s twisted cable design. Indeed, Yurman has filed numerous lawsuits for infringement of his copyrights and trade dress in the twisted cable jewelry design. In Yurman Design, Inc. v. PAJ, Inc., the defendant appealed the jury’s verdict awarding Yurman damages for PAJ’s infringement of Yurman’s copyrights and trade dress. The Second Circuit affirmed the finding of copyright infringement despite the use of cable designs by others in the jewelry industry because “the originality in Yurman's four designs inheres in the ways Yurman has recast and arranged those constituent [preexisting] elements. We have carefully reviewed the cable jewelry produced by third parties that PAJ submitted to the jury, and cannot conclude that any of Yurman's four combinations are nonoriginal as a matter of law.” The appellate court, however, reversed Yurman’s trade dress victory because his definition of the trade dress as "the artistic combination of cable [jewelry] with other elements" was overbroad or generic:

Yurman's inability to articulate its trade dress at a lower level of generality is not altogether surprising, given (1) that there are 18 different Yurman pieces in the product line it seeks to protect (eight rings, seven bracelets, and three pairs of earrings), four of which the jury found to be separately copyrightable; and (2) Yurman's concession that the pieces are composed exclusively of elements commonly used in the jewelry industry. A unique combination of elements may make a dress distinctive, but "the fact that a trade dress is composed entirely of commonly used or functional elements might suggest that the dress should be regarded as unprotectible or 'generic,' to avoid tying up a product or marketing idea."

Charriol defines its trade dress as “interwoven nautical cable threads; twisted stainless steel components; 1.0, 1.2, 1.5, 1.6, 5.5, 3.0, and 6.0 millimeter cable composition; electro-polished juxtaposed multi-strand cable threading; treated soft-textured components; poly/physical vapor deposition-treated design elements.” Assuming that it does not suffer Yurman’s overbroad or generic definition of its trade dress, it will be interesting to see how Charriol will argue that its cable jewelry design trade dress has been substantially exclusive in light of Yurman’s similar cable jewelry design.

The case is A’lor International, Ltd. v. Tappers Fine Jewelry, Inc., CV12-02215 RGK (C.D. Cal. 2012).

September 13, 2011

Skechers Sues Steven Madden For Patent and Trade Dress Infringement Over Twinkle Toes Shoes

design-patent-shoes-trade-dress-steven-madden-skechers.jpgSkechers is suing Steven Madden for allegedly copying Skechers’ Twinkle Toes shoe designs. The U.S. Patent & Trademark Office granted U.S. Patent No. D571,095 to Skechers covering its Twinkle Toes toe cap design for shoes. In addition to patent protection, Skechers claims that it is the owner of an inherently distinctive trade dress in its Twinkle Toes footwear designs. Skechers defines its trade dress as the combination of the following design elements: “a vulcanized canvass sneaker; a toe cap adorned with crystals, rhinestones, sequins or a plurality of other similar shiny elements; and, canvass uppers distinguished by colorful art designs or patterns.” For trade dress to be protectable, it must be non-functional. And Skechers asserts that the Twinkle Toes design is non-functional and simply conveys a distinctive appearance that is a source indicator.

Skechers further alleges that it has expended many millions of dollars promoting and advertising its trade dress and, based on extensive, frequent, and ongoing advertising, marketing, sales and distribution, the trade dress has acquired distinctiveness, which indicates that the shoes emanate from a single source. In other words, consumers recognize and associate the shoe design with Skechers.

Steve Madden’s “Stevies” brand shoes are accused of including “a vulcanized canvas sneaker, a toe cap adorned with crystal, rhinestones, sequins or a plurality of other similar shiny elements, and canvas uppers distinguished by colorful art designs or patterns” that infringe the subject patent. Further, Skechers contends that the Stevies footwear line so closely resembles the Twinkle toes trade dress that it is likely to cause confusion, mistake, and deception as to an affiliation, connection, or association of Steve Maddens’ footwear with Skechers. Skechers also contends that “Defendants have acted willfully, in bad faith and with the intent to confuse and mislead the public and unfairly trade on the substantial and valuable goodwill associated with Skechers' Twinkle Toes® Trade Dress and to capitalize on Skechers' highly respected reputation as a stylish, high quality footwear company.”

Design patents provide the owner with several competitive advantages. For example, design patents, during their fourteen year lifespan, can be used to legally prevent competing products from entering the market while the owner also establishes trade dress rights by attaining secondary meaning. Trade dress rights can then be used to perpetually protect the product configuration for as long as the trade dress is being used as a source identifier. Also, unlike utility patents, 35 USC § 289 allows a disgorgement of the defendants’ profits from any infringing sales. Design patents provide fashion designers protection for their clothing and shoe designs, which are considered useful articles that are not protectable by copyrights. Indeed, Steve Madden was recently sued by Jeffrey Campbell for design patent and trade dress infringement for allegedly copying the Lita shoe.

Additionally, a patented design may be infringed regardless of distinguishing trademarks or labels applied to the product that can defeat a trade dress claim. In L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993), the Federal Circuit affirmed the finding of design patent infringement but reversed the trade dress infringement claim because defendants’ conspicuous labels and trademarks applied to the shoes made confusion among consumers unlikely. Although the Lanham Act also provides for disgorgement of the infringer’s profits, a double recovery is not allowed for infringement of the same design patent and trade dress. See, e.g., Contour Chair Lounge Co. v. True-Fit Chair, Inc., 648 F. Supp. 704, 719, 1 U.S.P.Q.2D (BNA) 1353, 1364 (E.D. Mo. 1986) ("Plaintiff is also entitled to lost profits for [trade dress infringement]; however, plaintiff has already recovered these damages under its patent claim.").

The case is Skechers U.S.A., Inc. v. Steven Madden, Ltd. et al., CV11-07295 PA (C.D. Cal. 2011).

July 4, 2011

Tacori Loses Crescent Jewelry Design Preliminary Injunction Bid Against Scott Kay

copyright-preliminary-injunction-jewelry-rings-scott-kay-tacori.jpgTacori suffered another loss in its continuing copyright and trade dress infringement lawsuit against rival jewelry designer Scott Kay. The Court previously denied Tacori’s ex-parte application for a temporary restraining order, but that did not deter Tacori’s attempts to prevent Scott Kay’s sales of its Heaven’s Gate jewelry collection. Not surprisingly, the Court denied Tacori’s preliminary injunction bid, which was now focused solely on the copyright issue.

“A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Winter v. Natural Res. Def. Council, 129 S. Ct. 365, 374 (2008). Although a plaintiff must make a showing on each factor, the Ninth Circuit employs a sliding scale approach where “a stronger showing of one element may offset a weaker showing of another.” Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131-35 (9th Cir. 2011). Thus, a preliminary injunction may still issue where there are “serious questions going to the merits and a balance of hardships that tips sharply towards the plaintiff . . . , so long as the plaintiff also shows that there is a likelihood of irreparable injury and that the injunction is in the public interest.” Id. at 1135 (internal quotation marks omitted).

The Court found that Tacori may be able to meet “its low burden of establishing copyright ownership” because the “requisite level of creativity is extremely low.” In order to show copying, Tacori had to establish Scott Kay’s access to its reverse crescent design and that the Heaven’s Gates rings were substantially similar. Scott Kay admitted that it was aware of Tacori’s design, but the Court found that the parties’ respective designs were not substantially similar.

In applying the extrinsic test, the court compared the two designs and found that neither the repeating reverse crescent design nor the diamond set in the triangular spaces between the openings is original. In addition, the Court found that Tacori “failed to provide competent expert testimony for this test” as its expert did not examine the parties' rings. For the intrinsic test, the Court found it unlikely that the ordinary audience for these very expensive rings “would find Defendant’s rings so similar in total concept and feel to Plaintiff’s rings that they infringe Plaintiff’s copyrights.” Further, the Court that Tacori failed to establish irreparable harm “absent injunctive relief, that the balance of the equities tips in its favor, or that an injunction would be in the public’s interest.”

The case is Tacori Enterprises v. Scott Kay, Inc., CV11-1565 DSV (C.D. Cal. 2011).

June 12, 2011

Jeffrey Campbell Sues Steve Madden For Copying Lita Shoe Design

Los Angeles, CA – Jeffrey Campbell is taking an aggressive approach to protecting its shoe designs by recently suing Forever 21 for allegedly copying six of its shoe designs. Last week, Jeffrey Campbell filed a new design patent and trade dress infringement and unfair competition lawsuit against Steve Madden for allegedly copying Jeffrey Campbell’s “Lita” shoe design. Although Jeffrey Campbell did not have any patents for the six shoe designs in the Forever 21 lawsuit, it was granted Patent No. D634,532 for the Lita shoe design. Having a design patent provides greater protection for fashion designs than trade dress alone and the causes of action can always be combined, as Jeffrey Campbell has done here. Campbell claims that Steve Madden’s $169.95 Carnby-L shoe design “is believed to be a copy or knockoff of Jeffry Campbell’s Lita Shoe design.” Steve Madden is no stranger to trademark lawsuits involving shoes, having previously settled with Asics for allegedly copying its stripe design.


The patent provides another advantage by keeping copycats away while the product’s configuration attains secondary meaning in the consumers’ minds. Plaintiff contends that since “the release of the Lita Shoe by Jeffrey Campbell in or about the summer of 2010, the internet has been ablaze with, and blogs have raved about,” the shoe design. The significant publicity and promotion of the Lita shoe design has allegedly led to significant sales and acclaim, and widespread public recognition of the Lita Shoe Trade Dress, which is defined as:

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