And they're winning.
Designer Stella McCartney recently called footwear mogul Steve Madden SHOO to the carpet over a handbag, accusing him in a suit filed in New York of peddling a cheap knockoff of her popular Falabella bag.
The suit claims that the manufacture and sale of Madden’s BTotally bag ($108 vs. $1,100 for the Falabella) is a “blatant attempt to trade off the renown of the Falabella line and to confuse consumers” because McCartney owns common law trade dress rights in the bag’s look, as well as two patents for the continuous chain attached to the body of the bag.
This isn’t Madden’s first legal rodeo. In addition to his landing in prison for stock fraud, his company has been sued by numerous brands in the past. And now, says Susan Scafidi, founder of the Fashion Law Institute at Fordham University, lawsuits between designers and brands are becoming just as trendy as a midi-length hemline or 4.5” heel.
“The Internet allows design pirates to be quicker and more accurate than ever, since runway shows are live-streamed and detail shots of accessories are posted within minutes,” she says. Especially in an era of “fast fashion,” where megastores like Forever21 and H&M advance new trends faster than the industry’s traditional six months, U.S. intellectual property law doesn’t fit very well. “Unlike in Europe, Japan, and a number of other countries, we generally don’t have protection for fashion designs, and the industry’s most recent efforts to update U.S. law have stalled,” says Scafaldi, leaving lawyers to pick up the slack to protect against copycats.
Some of fashion’s perennial legal tools are trade dress (a legal term for a form of intellectual property that refers to the overall look and feel of a product or its packaging that identifies the source of the product to consumers) and design patent, according to Scafidi, Here are five labels that have tried them on for size—and won.
Maker of the iconic flat with the medallion logo on the toe, Tory Burch brought a lawsuit against jewelry designer Lin & J International in 2013 for trademark infringement in New York.
The suit claimed that Lin & J used Burch’s trademarked “Isis Cross” design on items from earrings to necklaces that it then sold from its showroom and at a trade show. Lin & J promptly countersued, claiming the design was derived from a Coptic cross, an early Christian symbol carved into the walls of an ancient Egyptian temple formerly devoted to the goddess Isis, and therefore not protected.
A federal judge awarded Burch $38.9 million in damages and $2.3 million in attorneys’ fees ruling that Lin & J was liable for trademark infringement.
The British luxury apparel brand filed a civil lawsuit in the U.S. against counterfeiters producing knockoffs of its heritage leather jacket, among other products. The complaint came as part of a major initiative by Belstaff to protect its intellectual property that included registering trademarks and securing individual items.
With e-commerce playing a large part in the ease of selling fraudulent goods, Belstaff started working with MarkMonitor, a brand protection technology company to ferret out the unauthorized producers and retailers. It discovered more than 3,000 sites, with more than 800 operated by an individual in China.
Earlier this month, judges ruled in favor of Belstaff, which resulted in the shutdown of 678 counterfeit websites that must now pay the company more than $42 million in damages and surrender their domains.
The maker of vertiginous heels that feature a scarlet sole has sued a number of other high-end brands, including Yves Saint Laurent and Charles Jourdan, for copying his signature design element. After two years of litigation, a New York federal court ruled in favor of Louboutin in 2012 effectively validating that the red sole is trademarked for all shoes—except for those that are all red (just like the YSL shoes that sparked the suit). The Charles Jourdan case was settled for an undisclosed amount.
Earlier this spring, Louboutin’s attorneys appeared in the Court of Justice of the European Union (similar to the U.S. Supreme Court) because it claimed that a Dutch brand, Van Haren, appropriated his red sole. The court originally ordered Van Haren to stop production in 2013, but the brand appealed. Whether Louboutin’s trademark is valid in the EU is still being decided.
For some women, the height of luxury is owning an Hermés Birkin bag. Waitlists average 18 months, and the prices are steep, ranging from $12,000 to more than $200,000.
Knockoffs are inevitable. “Trade dress law is a subset of trademark, and it primarily protects very famous designs—those that, like the Hermés Birkin bag—are so iconic that consumers don’t need to read the label to recognize the source of the design,” says Scafidi.
Most recently, Hermés International sued Thursday Friday Inc. in New York over a tote bag the latter company screen-printed with an image of the Birkin and sold for $45. “Defendant is simply riding on the reputation and recognition of the Birkin bag to sell its otherwise generic tote bags,” Hermés claimed. Thursday Friday dismissed the complaint, saying its bag was meant to make a statement about the excess of the fashion industry. Though Hermes claimed that it sold in excess of 30,000 Birkins generating $200 million between 2002-2008, the suit was settled for an undisclosed amount, and Thursday Friday was ordered to discontinue production and sale.
Before he died, British design wunderkind Alexander McQueen brought a trade dress lawsuit against Steve Madden. The 2009 suit alleged that Madden’s shoe design was a “studied imitation” of McQueen’s Faithful bootie.
The difference between the two shoes was minimal, with one important omission: McQueen’s signature skull on the zipper pull. McQueen first gave Madden a chance to pull the booties off the market, and when he didn’t, McQueen’s lawyers filed suit in New York. As Scafidi noted in a blog post at the time, “U.S. law doesn’t protect clothing designs against copying, hence Steve Madden’s apparent business strategy: copy everything from sole to shoelace, but avoid the legally secured trademark.”
The suit was settled out of court. In a more recent profile in the New York Times, Madden showed no regret: “I’m sure they were alike. Yeah, of course they were. We see millions of shoes. We are influenced by everything that goes on. I am not embarrassed by it whatsoever.”