Posts by Professor Susan Scafidi

Converse Wins
Trademark Appeal

Converse Chuck Taylor sneaker ad

Today the Federal Circuit issued an opinion in Converse v. International Trade Commission, a trademark case involving the midsole design of Chuck Taylor All Stars.  The decision was a major victor for Converse, which will now have another opportunity to prove that Skechers, New Balance, and the owners of the Ash brand — the remaining intervenors in the case — infringed the mark and to defend its validity.

The opinion is also significant for trade dress in general, clarifying that claimants must demonstrate the existence of secondary meaning before the first use in each case of infringement, and also that the relevant period for analyzing secondary meaning is five years prior to registration or prior to first infringing use, whichever is earlier.  In addition, the Federal Circuit adds unsolicited media coverage to its list of factors to consider in assessing secondary meaning and changes the way it treats the factors of length, degree, and exclusivity of use, noting in passing that each of the 11 circuit courts has a slightly different list.  SCOTUS, are you listening?

Overall, Converse’s attempt to protect its classic Chucks is still a marathon rather than a sprint, but the company has pulled ahead of its competitors for now.

Below: the Federal Circuit’s ruling and the Fashion Law Institute’s amicus brief!

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Louboutin’s Victory in Europe Day

Christian Louboutin is walking tall today after the Court of Justice of the European Union (CJEU) effectively confirmed the validity of his red sole trademark for women’s high-heeled shoes.

In response to a referral from a court in the Netherlands, the CJEU determined that the mark was not merely “a shape which gives substantial value to the goods” — and thus not registrable under EU law — but instead a specific color placed in a particular position on the products.  The case will now go back to the court in the Netherlands, presumably for a ruling in favor of Louboutin and against Van Haren Schoenen, which allegedly sold infringing footwear back in 2012.

This decision was a victory not only for Louboutin but also for common sense, since the court based its decision on the simple understanding that the word “shape” refers to the outline or contour of a product, not its color.  Louboutin does not claim the various shapes of the soles of shoes as trademarks; instead, the trademark consists of the color Pantone 18-1663TP applied to the soles of shoes.

While the CJEU decision in favor of Louboutin might seem like a shoe-in, the court actually went against an advocate general’s opinion from back in February, which advised that color should not be considered apart from shape — a determination that led many to assume incorrectly that Louboutin’s Benelux (that is, Belgium, Netherlands, and Luxembourg) trademark had been or was about to be canceled.

Christian Louboutin’s signature soles are in fact stronger than ever, and the owners of color and position marks all over Europe have an extra spring in their step.

Model Statement: Kudos to Kering and LVMH

The Fashion Law Institute applauds “The Charter on Working Models and Their Well-Being” issued jointly by the world’s two largest luxury conglomerates – and its challenge to the rest of the fashion industry to join them. This statement is the latest crest of a growing wave of concern for the health, safety, privacy, and dignity of fashion models that has included public regulation (in order: Madrid, Milan, Israel, New York State, France), industry guidelines (CFDA Health Initiative, Danish Fashion Ethical Charter), advocacy (Model Alliance, initially founded and directed with the assistance of the Fashion Law Institute), and the voices of current modeling industry insiders (notably and recently James Scully). Not since Vogue’s decision to cast only models 16 and over for the editorial content of its editions worldwide, however, have individual fashion-related companies put their reputations on the line and made such a public commitment to change.

The Charter is a comprehensive, standard-setting, buck-stops-here statement that has the potential to address the most difficult aspect of reform in the modeling industry, namely finger-pointing and the passing of responsibility. If designers say they cast U.S. size zero models because that’s who agencies send, and agencies say casting directors and fashion houses only select size zero “girls,” and young models are caught in the middle, it’s difficult to effect change. By stepping up and creating the Charter, LVMH and Kering – and their many influential labels – could help break the impasse.

Some aspects of the Charter will be difficult to monitor – the measurements of a U.S. size zero or French 32 vary from brand to brand and even garment to garment, for example – but collectively the provisions reinforce one another and reflect an understanding of models’ basic needs and concerns. After listening to models’ surprised and overwhelming gratitude when we offered something as simple as bottled water while casting a Fashion Law Institute show a couple of years ago, and previously seeing a model nearly faint after refusing to eat or drink backstage, we are convinced that even acknowledging the issues is a step in the right direction.

While the Charter’s creators can expect positive publicity, their joint statement actually carries significant risk. There are bound to be instances in which the Charter’s ideals are not met, and the sharp-eyed gaze of a thousand models’ mobile phones and social media accounts could potentially embarrass the companies. And in fashion, the most feared sanctions aren’t legal fines or even the potential for lawsuits – they’re negative headlines.

So kudos to Kering and LVMH for their ethical actions, and here’s hoping that other brands, modeling agencies, media outlets, trade associations, and individuals throughout the fashion industry will see them as role models.

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Supreme Court: Varsity Wins!

Cheerleaders cheering

It's a big win for the fashion industry!

The Supreme Court’s opinion in Star Athletica v. Varsity is truly historic, slashing through the thicket of tests that had grown up around design copyright. Echoing the Fashion Law Institute’s amicus brief, the Court found that the language of the statute already set the parameters for a standard:

Supreme Court's standard for copyrightability in Star Athletica opinion

The Court’s approach is consistent with its recent copyright jurisprudence, particularly in the years since the late Justice Scalia was appointed. This is why our amicus took a different path from devising a novel ad hoc test; the Court has for decades demurred from adding judicially-created rules when the statute established an identifiable standard. When in doubt, just read the statute!

In this instance, the policy embodied in previous Court precedent and the statute itself was clear: copyright is an adaptive, medium-agnostic legal category, extending to creative work susceptible to cross-platform replication. As applied, this standard is at once expansive and bounded: per the opinion, even as the statute gives copyright protection to a broad spectrum of creative works, it also excludes elements that can be reduced to utilitarian function outside of conveying information or portraying appearance.

As a result, the status quo is preserved without sacrificing the standard’s fundamental elasticity; what courts define as utilitarian and limited to specific media now could grow in interesting ways in years to come.

For now, fashion designers can continue to rely on copyright protection for their original fabric prints and jewelry. Let’s hear it for SCOTUS!

Congratulations to everyone on team copyright, and thanks to everyone who was part of the Fashion Law Institute's amicus brief: industry signatories Jeffrey Banks, Maria Cornejo and Marysia Woroniecka of Zero + Maria Cornejo, Nathalie Doucet of Arts of Fashion Foundation, Keanan Duffty, Barry Kieselstein-Kord, Melissa Joy Manning, Jack McCollough and Lazaro Hernandez of Proenza Schouler, Narciso Rodriguez, and Professor Susan Scafidi; our counsel of record, Michelle Marsh of Arent Fox; and our co-authors, Susan Scafidi, Jeff Trexler, Mary Kate Brennan (Fashion Law LL.M. expected '17), and Jackie Lefebvre (J.D. expected '17)!

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