Trademark Infringement, Fashion, and Classism?
Written by Danesha Garner
Introduction
When most people hear fast fashion, they think of companies that sell cheap clothes, manufactured in sweatshops with underpaid workers who are sometimes children. [1] These are accurate depictions of fast fashion; however, fast fashion brands are typically judged more harshly than luxury fashion brands. [2] People who buy fast fashion are generally lower-income people who may shop there because other brands are not as stylish, affordable, or size-inclusive. [3] Both luxury and fast fashion brands need to be called out for using sweatshops and cheap labor yet only fast fashion is stigmatized in the media and the courtroom with luxury brands focusing on the cheapness of fast fashion to indict them for trademark infringement. [4]
Playboy Enters. Int’l v. Fashion Nova
In 2021, Fashion Nova was sued by Playboy, a lifestyle and entertainment brand, for selling a Playboy Bunny costume without permission and marketing them as “Bunny of the Month.” Playboy sued them for trademark infringement and trademark dilution. [5] The Playboy Bunny service uniform, a strapless one-piece satin corset with a bunny tail, is well-known for being the uniform of Playboy Bunnies who worked in Playboy Clubs as well as being worn by Playmates in Playboy Magazine. [6] Today, Bunnies representing Playboy at events and clubs as brand ambassadors wear Playboy service uniforms. [7] It is a distinct uniform recognizable and associated with Playboy worldwide. The Playboy service uniform is a registered trademark and was the first service uniform registered with the USPTO. [8] Playboy also trademarked “Playmate of the Month[,]” which relates to Playboy magazine. [9] Playboy rarely grants permission to third parties to use the Playboy service uniforms or the “Playmate of the Month” trademark. [10] Fashion Nova created confusion among the general public because the costumes were resold with descriptions implying that they were authentic and associated with Playboy. [11] Playboy sued Fashion Nova for infringing on its uniform and “Playmate of the Month” marks to capitalize off of their name by using their brand to attract customers. [12] Playboy also argues that the cheap, fast fashion brand is diluting their image by associating its clothes with a company that mass produces low-quality clothes. [13] In addition, customers were complaining about the sizing and quality of the clothes, decreasing the value of the clothes. [14]
Fashion Nova argued that their costumes were not confusing because they marketed them as sexy Halloween costumes, not Playboy service uniforms. [15] Next, the fast fashion company argues that their usage of the phrase “Bunny of the Month” is not similar and would not cause confusion. [16] The court found that it was likely to cause confusion because Playboy is an iconic and recognizable mark, the costumes are similar when examined side by side and Fashion Nova ignored a cease and desist letter from Playboy, implying that they intended to capitalize on the public’s confusion. [17]
The court agreed that Fashion Nova tarnished Playboy’s brand and diluted it. To establish a claim for trademark dilution, a plaintiff must show: (1) the mark is famous and distinctive; (2) the defendant is using the mark in commerce; (3) the defendant’s use began after the mark became famous; and (4) the defendant’s use of the mark is likely to cause dilution by blurring or tarnishment. [18] A business does not have to show that it has actually been injured, only that the business’s reputation is likely to be injured or the value of the mark is likely to be diluted. [19] Since Fashion Nova marketed poorly produced products, it associated Playboy’s brand with cheap, fast fashion. [20] The court found that this was sufficient to show that Playboy’s reputation was likely injured by the fast fashion company’s unauthorized selling of the Bunny costume. [21] This is ironic considering Playboy doesn’t have the best reputation because of its sexualization of women, but they believe they are superior to fast fashion companies because they have wealthy clients.
Puma SE v. Forever 21
Similarly, Puma sued Forever 21 for design patent infringement, federal trade dress infringement, and copyright infringement while benefiting from Puma’s image by making and selling replicas of their shoes. [22] Puma stated that Forever 21’s Yoki Sneaker, Fur Slide, and Bow Slide copied Puma’s Fenty shoes. [23] Puma argued that the Fenty line was damaged by Forever 21’s fake shoes and diminished Puma’s brand. [24] Puma’s global director of brand and marketing stated that fast fashion companies like Forever 21 injured the brand economically because there is a high demand for Puma’s Fenty shoes, and counterfeit shoes lessen the excitement of the launch. [25] Customers no longer have to wait for the launch because they can buy fake, cheaper shoes from Forever 21, and some people may believe that they are buying the authentic version. [26]
As a result, Puma claims that their shoes took longer than expected to sell out. [27] The essence of Puma’s argument, much like Playboy’s, is that fast fashion is inferior and ruining their prestige image. Their argument has merit without this assertion if it is true that Forever 21 copied their shoes and is trying to confuse customers. During litigation, luxury fashion brands rely on people’s disdain for fast fashion and the poor people who buy it because society is obsessed with status and wealthy people. Wearing expensive fashion indicates that “you’ve made it” and attained a high status, a status that designers only want to be associated with wealthy people.
Adidas Am., Inc. v. Thom Browne, Inc.
In contrast, Adidas sued luxury designer Thom Browne for trademark infringement and trademark dilution for copying their signature “Three-Stripe Mark.” [28] Thom Browne uses similar parallel stripes, called its “Grosgrain Signature” and “Three-Bar Signature.” [29] In 2007, the Adidas employee responsible for the enforcement of Adidas’ trademarks in the United States called Thom Browne’s CEO with her concerns about the similarities. [30] The CEO agreed that Thom Browne would no longer use the “Three-Bar Signature[,] and Thom Browne decided to use four bars instead of three, called the “Four-Bar Signature”[31]. Thom Browne revealed the Four-Bar Signature at a fashion show in 2008 and began selling activewear with the design [32].
When Thom Browne attempted to trademark the Grosgrain Signature in 2018, Adidas noticed that it was similar to their Three-Stripe Mark, and asked Thom Browne to stop using the Four-Bar Signature [33]. After failed mediation attempts, Adidas filed suit claiming that Thom Browne’s design was infringing and confusing because he sold athletic wear with parallel stripes similar to Adidas’ Three-Stripe Mark [34]. Thom Browne defended itself by stating Adidas’ claims are barred by latches, acquiescence, and estoppel [35]. Furthermore, Thom Browne claimed that Adidas knew about their design, stated they would not pursue a claim against Thom Browne, and abandoned the Three-Stripe Mark because they waited too long to challenge Thom Browne’s usage of the stripe [36]. This is important because if a trademark owner does not police the marketplace and allow the mark to become common property, they can no longer bring an infringement claim [37]. The court did not find Thom Browne’s laches argument credible; however, the court stated that economic prejudice would cause Thom Browne to lose money if it were banned from using the Four-Bar Signature and ruled in Thom Browne’s favor [38]. Unlike Playboy where they talked about the quality of the fake designs and their reputation, Adidas focused on the similarities of the designs.
Gucci Am., Inc. v. Guess?, Inc.
Likewise, Gucci sued Guess for trademark infringement of four of its trademarks: Repeating GG Pattern; CRG stripe; Script Gucci; and Stylized G; and its unregistered Diamond Motif Trade Dress [39]. Gucci stated that the designs are iconic and they allow customers to communicate that they are members of an exclusive club [40]. Gucci targets wealthy consumers as well as consumers who aspire to look wealthy [41]. Gucci stated that Guess knowingly copied Gucci’s designs to take advantage of their markets and capitalize on the demand Gucci has created without incurring the same expenses that Gucci had incurred on promotions and advertisements [42].
The court stated that Guess is not prejudiced if prohibited from using the marks because Guess has other “G” designs it could use, and the designs they copied only make up one percent of Guess’ business [43]. In addition, the court said that the sales, advertising, and importance of the Repeating GG Pattern and Diamond Motif Trade Dress to Gucci is clear, and Guess intentionally copied them [44]. It is likely that there would be confusion between designs. The court ruled in Gucci’s favor [45]. Similar to Adidas v. Thom Browne, Gucci’s argument primarily relied on the actions of Guess instead of implying that Gucci was too high-end to be associated with Guess.
Conclusion
In conclusion, trademark infringement is wrong no matter who does it, but it is unproductive to focus on the status of the company doing it and emphasize class status. Instead, companies should focus on why it is infringement. Luxury and fast fashion brands should be sued for infringement if they steal intellectual property. Stealing designs and profiting from someone else’s creation is unethical. Luxury fashion brands reinforce hierarchal systems when they imply that their designs should not be associated with certain people.
[1]Maria Montessori, Child Labour in the Fashion Industry, Good on You, (April 7, 2021), https://goodonyou.eco/child-labour/ [https://perma.cc/LHJ2-J6FQ].
[2] Sophie Caldecott, Are Luxury Fashion brands More Sustainable?, Remake (October 4, 2022), https://remake.world/stories/are-luxury-brands-more-sustainable/ [https://perma.cc/N28D-C7BN].
[3] Gianluca Russo, The State of Size-Inclusive Sustainable Fashion, Teen Vogue (April 28, 2021), https://www.teenvogue.com/story/state-of-size-inclusive-sustainable-fashion [https://perma.cc/DB5G-MYEQ].
[4] Li Wang & Robin Stanley Snell, A Case Study of Ethical Issue at Gucci in Shenzhen, China, 2 Asian J. Bus. Ethics 173, 173-174 (2012) (Complaints from Gucci employees about working conditions at Gucci factory); Radmilla Suleymanova, Are Your Favourite Fashion Brands Using Forced Labour, AlJazeera (July 14, 2021), https://www.aljazeera.com/economy/2021/7/14/are-your-favourite-fashion-brands-using-forced-labour [https://perma.cc/8FJ2-Z7SH].
[5] Playboy Enters. Int’l v. Fashion Nova, No. CV 20-9846 JVS (KSx), 2021 U.S. Dist. LEXIS 152711, at *1, *2 (C.D. Cal. Apr. 13, 2021).
[6] Id. at 2.
[7] Id.
[8] Id.
[9] Id. at 3.
[10] Id.
[11] Id. at 4.
[12] Id. at 5.
[13] Id. at 19.
[14] Id. at 5-6.
[15] Id. at 13.
[16] Id.
[17] Id. at 15-17.
[18] Id. at 17-18.
[19] Id. at 18-19.
[20] Id. at 19.
[21] Id. at 19-20.
[22] Puma SE v. Forever 21, No. CV17-2523 PSG E, 2017 U.S. Dist. LEXIS 211144, at *1, *4 (C.D. Cal. June 2, 2017).
[23] Id. at 2.
[24] Id. at 6.
[25] Id. at 6-7.
[26] Id.
[27] Id. at 7.
[28]Adidas Am., Inc. v. Thom Browne, Inc., No. 21-cv-5615 (JSR), 2022 U.S. Dist. LEXIS 226997, at *1, *1 (S.D.N.Y. Dec. 16, 2022).
[29] Id. at 3.
[30] Id. at 4.
[31] Id. at 4-5.
[32] Id.
[33] Id. at 5-6.
[34]Id. at 6.
[35]Id. at 7.
[36]Id. at 11-12.
[37]Id.
[38]Id. at 20-21
[39]Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 215 (S.D.N.Y. 2012).
[40]Id. at 217.
[41]Id.
[42]Id. at 222.
[43]Id. at 231.
[44]Id. at 247-48.
[45]Id. at 226-227.