It’s interesting that Re/Max sent its last cease and desist letter August 25, 2010.
Harvard law professor Jeannie Suk writes an opinion piece in the NY Times about the Louboutin lawsuit, connecting the red sole trademark litigation with the absence of copyright protection for fashion:
It is time for Congress to address directly the fusion of practicality and beauty that makes fashion such a compelling medium of expression and a profitable creative industry, one that merits its own limited industry-specific protections. Otherwise, colorful as they are, lawsuits like the red sole case are likely to compound the uncertainty that results from the absence of statutory delineation of fashion design protection — and invites more lawsuits.
Johanna Blakley, managing director of USC’s The Norman Lear Center, argues in her TED talk (via Marty Schwimmer) that it is the absence of copyright law that is responsible for the vibrancy and success of the fashion industry:
Because there’s no copyright protection in the fashion industry, fashion designers have actually been able to elevate utilitarian design, things to cover our naked bodies, into something we consider art. Because there’s no copyright protection in this industry, there’s a very open and creative ecology of creativity. Unlike their creative brothers and sisters who are sculptors or photographers, or filmmakers or musicians, fashion designers can sample from all their peers’ designs, they can take any element from any garment from the history of fashion and incorporate it into their own design.
Fashion design is difficult to do well, and it can be demoralizing to see your hard work and inspiration used by someone else without permission. On the other hand, it would be dispiriting and make design even harder if you had to constantly worry about infringement or have to consult your copyright attorney to get clearance for each season’s new designs.
Portland furniture designer Christopher Douglas alleges that Leslie and Leigh Keno (famous from Antiques Roadshow) and furniture manufacturer Theodore Alexander USA, Inc. have infringed the trademark of his Flipper Screen.
In May, adidas filed another trademark infringement complaint, this time against Lands’ End. A comparison of the shoes alleged to infringe in adidas’s complaint.
See complaint here. Lands’ End’s skate shoe falls within adidas’s 2 to 4 stripe zone of trademark protectability (adidas won a $300 million verdict against Payless for a similar shoe), but I’m not convinced that the “stripes” on the Lands’ End Trekker shoes are actual source identifying stripes confusingly similar to adidas’s stripes. Rather, they look like they may be part of the shoe’s construction connecting the lower part of the shoes to the lacing.
Venerable trademark law blogger Marty Schwimmer went to England and all he got for his son was a scarf and a trademark opinion.
Seattle trademark lawyer Michael Atkins doesn’t take vacations, but rather goes on infringement safari hunts. A recent big game infringement kill from China:
I haven’t traveled as far recently and my discoveries are far less glorious. Here’s a perplexing (to a trademark lawyer) business name in Palm Springs:
In 2008, adidas won a staggering $300 million jury award against Payless ShoeSource for the infringement of its 3-stripe trademark used on athletic shoes. Payless manufactured similar sneakers, but used 2 and 4 stripes. Perhaps emboldened by its new-found 2-4 stripe zone of trademark protection, adidas is going after another shoe company, Radii, for its 4 stripe piping and 3 strap high-tops. I can no longer find the “420 Piped” model on Radii’s website, but you can check out this unboxing of a 420 Piped shoe:
Some thoughts: 1) the piping that adidas considers a stripe looks like it’s part of the strap construction. Straps appear to be a feature common to most Radii shoes. If integral to the shoe’s strap construction, the piping is not necessarily being used as a source indicator. Perhaps a descriptive fair use defense is available here; 2) if this guy in the video is a typical consumer that buys Radii shoes, the degree of sophistication is high (think Entourage‘s Turtle) and distinct from the lower level consumer sophistication that would be typical at a discount shoe store like Payless; 3) three straps is confusingly similar to three stripes? Really?; and 4) “420” and “Piped” possibly have a meaning that could be considered unsavory to some. Adidas gives a cursory mention of tarnishment in its Federal dilution claim, but there’s no mention of the meaning of “420.” Maybe adidas or its lawyers are not hip to the lingo kids are using these days. Or maybe many adidas buyers wouldn’t consider “420″ a harmful association.
And speaking of leaf, Adidas also sued Herbalife, a nutritional supplement company, for the alleged infringement of its three leaf logo, known as the “Trefoil” design. Adidas alleges that in exchange for not opposing the trademark registration of Herbalife’s own three leaf logo, known as the “Trileaf” logo, Herbalife agreed to not use the logo for shoes, athletic apparel and gear, and would always use the three leaf logo in close proximity to the word “Herbalife.” According to adidas, Herbalife has been using the logo to sponsor teams and athletic events where the logo is used onuniforms and sports equipment, specifically a Major League Soccer team, the Los Angeles Galaxy. Both adidas and Herbalife have trademarks on the jerseys (it seems, however, that most consumers would understand that Herbalife is a sponsor and advertiser for the soccer team, not the maker of the jersey). Apparently, adidas is the manufacturer of all Major League Soccer jerseys and in its role as the designer and producer of jerseys refused to produce a Galaxy jersey design with the Herbalife Trileaf trademark. Herbalife claimed adidas’ refusal to include the Trileaf logo was an improper self-help remedy and interfered with Herbalife’s sponsorship agreement with the LA Galaxy ownership. I don’t know if the self-help tactic worked or if Herbalife voluntarily decided to go without the Trileaf, but currently it’s not featured on Galaxy jerseys.
The Oregonian has more about the Radii lawsuit. The CEO of Radii has this to say:
Radii CEO Arisohn contended that Adidas officials initially approved a shoe design. But after it was under production, “we got an email from their attorney saying, oops, we made a mistake those won’t work.”
The basic nature of shoe design puts Radii in conflict with Adidas, Arisohn said in the email.
“Shoes are made up of lines,” he wrote. “It’s really hard to design shoes without lines and sometimes lines, that were never meant to be anything close to Adidas’ trademark lay in a way that just allows Adidas to sue.”
The ABA Journal (the magazine for the American Bar Association) has written about the Dervaes Family and the fight to keep its “Urban Homestead” trademark registration. Although the story is good, even more interesting are the comments, which feature multiple arguments by someone named “marie” and Sundari Kraft, the author of The Complete Idiot’s Guide to Urban Homesteading. Marie, a passionate defender of the Dervaes family, pleads that its enforcement efforts are quite benign:
First of all, according to the Dervaes, the letters were not a “legal notice” as it was sent by Jules Dervaes, not an attorney. According to the Dervaes it was a informational letter telling others about the newly acquired trademarks. It was others who have attributed motives and the scope of the letter and misinterpreted its contents.
If the letters she is referring to (there are may also be other letters sent by the Dervaes Family’s attorney that are more strongly worded) are anything like the letter posted on the Dervaes Family’s Path to Freedom website, the “information” provided is not all that friendly, or suggestive:
In addition, Dervaes Institute owns numerous trademarks which should be properly acknowledged if used. These protected names and images include the following registered trademarks:
PATH TO FREEDOM®
GROW THE FUTURE®
LITTLE HOMESTEAD IN THE CITY®
Also, THE TEN ELEMENTS OF URBAN HOMSTEADING copyright has been filed with the Library of Congress.
If your use of one of these phrases is not to specifically identify products or services from the Dervaes Institute, then it would be proper to use generic terms to replace the registered trademark you are using. For example, when discussing general homesteading or other people’s projects, they should be referred to using terms such as ‘modern homesteading,’ ‘urban sustainability projects,’ or similar descriptions.
Even though the words “cease” or “desist” are not present in this letter, the intent is clear: the Dervaes Family is asserting exclusive legal rights to “urban homestead” and “urban homesteading” and directing others to substitute other terms for its registered trademarks.
This entire comment string clearly shows many of the problems with today’s trademark registration system and the problems it causes. All too often obvious terms are registered. The USPTO should, IMO more aggressively enforce the registration process and the presumptions (which currently favor registration) should be reversed. The declaration at the bottom of each application should be more strictly viewed by the courts. The applicant should be required to actually sign it (not his/her attorney). How could the applicant in this case, for example, assert that they have any exclusive rights in the term?
The biggest issue here, however, is in the enforcement side. Take-down notices are easy to write and the recipients default to complying to avoid liability. This places the burden upon the third party who in the meanwhile had their site, blog, etc, terminated.
Trademarks are an exception to free speech. The original intent was to prevent consumer confusion. They are not, and should not be considered to be, a property right. I am personally becoming concerned at the degree to which the pendulum seems to have swung in favor of IP rights holders in general. It does not bode well for society and all of the overly aggressive tactics being used will hopefully soon come home to roost.
(I’m not sure, however, that the prevention of consumer confusion is trademark law’s sole reason for being. Trademark law may have always been intended to prevent unfair diversion of business and goodwill.)
TiM Atty raises the point that the examination process is fallible and that cancellation petitions function as a backstop against that fallibility:
Marie, I don’t know whether you practice in TM law or not but, if not, I’m impressed by your researching of the subject. However, I felt I had to comment on your statement in 30 that “The USPTO NEVER legally registers a generic word. That’s a legal impossibility.” That statement is either completely incorrect, or I’m misunderstanding your use of the word “legally”. The USPTO registers generic terms regularly, and it’s completely legal. The TM Examiner’s can make mistakes either by not researching a term thoroughly or not having access to the industry information in order to provide the evidence for the genericness refusal. It’s an evidence-based process and there is nothing illegal about registering a generic mark, it’s just a mistake. But that’s part of the reason for cancellation proceedings. So people in the industry can cancel a generic term if they have standing.
What is a cancellation proceeding? An owner of a trademark may file a petition of cancellation with the Trademark Trial and Appeal Board, which is an administrative court that makes decisions about federal trademark registrations, to cancel another party’s registered trademark if that registration harms, or will harm, its own mark. Depending on how long the mark has been registered, the cancellation petitioner can challenge the registered trademark for different reasons. If the mark is not yet incontestable (the registration is less than 5 years old), the challenger may seek cancellation of a registration because it is similarly confusing to the challenger’s mark or the mark is descriptive and has not acquired distinctiveness.
A registration may be cancelled at any time, even if it has become incontestable (has been registered for 5 years or more), for the following reasons: it’s functional or generic; it’s been abandoned; the registration was obtained fraudulently; it’s immoral, deceptive, scandalous or disparaging; falsely designates the origin of alcoholic drinks; incorporates or uses any governmental insignia; or uses the name, likeness or signature of a living person; or if it misrepresents the origin of goods or services. Collective and certification marks may also be cancelled for reasons specific to those types of marks.
Kelly Coyne and Erik Knutsen, authors of “The Urban Homestead,” petitioned to cancel the “Urban Homestead” and “Urban Homesteading” registrations on the grounds they were descriptive, generic, didn’t have acquired distinctiveness and were obtained fraudulently. Their petition:
Cancellation proceedings before the TTAB are similar to court proceedings and the owner of the challenged registration has an opportunity to respond. The Dervaes Family’s answer:
Dervaes Answer to Cancellation Petition
Judge Marrero of the SDNY district court has denied Louboutin’s preliminary injunction request against Yves St. Laurent’s use of a red sole in its monochrome red pump ladies shoe.
Christian Louboutin v Yves Saint Laurent
Marty Schwimmer summarizes the issues and makes the following points:
The court has now dismissed Louboutin’s motion. It is a long decision that makes a lot of points that are, imho, color depletion and shade confusion arguments. However at the core of the holding, the court seizes on YSL’s point about the competitive need in fashion to be able to, for example, sell monochrome shoes, and sell red monochrome shoes, and sell red dresses that go with red shoes, and holds that red soles are functional. On to the Second Circuit.
The thought occurs: maybe, Louboutin’s trademark is a red lacquered sole when used with an upper that is any color other than red. According to this decision, any manufacturer’s red shoes could use red soles. But does any manufacturer’s black shoes need red soles?
Charles Colman’s provides Judge Marrero’s “blockbuster” quote:
Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection even if it has gained enough public recognition in the market to have acquired secondary meaning.
Professor Susan Scafidi uses Judge Marrero’s decision as an example of why fashion designers need copyright protection:
Judge Marrero, however, hung his order on the hypothetical example of Picasso attempting to prevent Monet from using the color blue in the Water Lilies series because the color had been Picasso’s hallmark during his Blue Period. Unthinkable from an art history perspective, of course. The court acknowledges that no analogy is perfect — but then goes on to claim that both painting and fashion design exist in the overlapping spheres of art and commerce, and that neither is well served by individual monopolies on color.
Setting aside the troubling conflation of use of a red sole as a trademark versus use as a design element, the separation of which is the true challenge in this case, the court’s analogy raises an essential question: Why are paintings characterized as “art” and entitled to full copyright protection while fashion receives almost none?
Agora, Inc., a publisher of a newsletter and the website internationalliving.com, has sued Bo Rinaldi and International Living, a Lake Oswego publisher of the website internationalliving.co for trademark infringement. Agora seeks a preliminary injunction against use of its mark and the domain name internationalliving.co.
Agora v. Rinaldi & Int’l Living