Vans, Inc., the maker of Vans footwear, recently lost its attempt to dismiss a trademark infringement suit filed against it by AirWair International Ltd. AirWair alleged that Vans’ Gibson line of footwear infringes AirWair’s trademark and trade dress rights in its Dr. Martens line, causing a likelihood of confusion among US consumers.
Arent Fox is the leading law firm for handling intellectual property issues for fashion and luxury goods clients. We have extensive experience protecting our clients’ brands and designs, and defending them from challenges to their marks and designs. Our attorneys have defended trademark, patent, and copyright lawsuits related to suits brought by competitors challenging our clients’ right to use their mark. We have also obtained groundbreaking court decisions in the area of counterfeit and grey market products such as when we successfully worked to essentially shut down Canal Street from selling one of our client’s products and won a decision against a large big box retailer from selling grey market goods.
The journey of Easy Rider is set to become less smooth. On July 16, 2013, Peter Fonda, co-star, co-producer, and co-writer of the iconic film, filed suit against Dolce & Gabbana in the Superior Court of the State of California for the County of Los Angeles. He alleges that the company appropriated images of Mr. Fonda from the film, and used the Easy Rider logo without his permission. These images were printed on T-shirts advertised and sold by the company for $300.
Selecting where to source manufacturing of fashion goods is not dependent on price alone. Companies looking to source need to be aware of consumer perceptions when selecting a sourcing territory. Perception worries might not carry the same importance to all companies, but it is undeniable that businesses make decisions based on their clientele’s views on sourcing locations.
Last month, the US District Court for the Southern District of New York denied injunctive relief to clothing designer and retailer Saturdays Surf LLC for trademark infringement asserted against Kate Spade LLC.1
Kate Spade filed the lawsuit against Saturdays Surf seeking a judgment that Kate Spade’s use of the trademark “Kate Spade Saturday” did not infringe upon the mark “Saturdays Surf NYC.” In response, Saturdays Surf filed a counterclaim alleging that Kate Spade Saturday infringed on its trademark rights.
On March 12, 2012, BCBG Max Azria Group, Inc. (BCBG) sued Stretta Moda, LLC (Stretta) for infringement, unfair competition, and dilution of its Herve Leger bandage dress design. Although Stretta filed an answer denying the allegations, the parties entered into a Stipulated Consent Judgment on April 23, 2013 enjoining Stretta from selling any garments that imitated BCBG’s trade dress and awarding $150,000 in attorneys’ fees and costs.
On June 7–8, 2013, patent-licensing entity Smart Search Concepts LLC filed nine similar patent-infringement lawsuits targeting fashion retailers Gap, JC Penney, Kohl’s, Macy’s, Neiman Marcus, and Nordstrom, among other defendants. According to the complaints, the fashion retailers infringe some or all of three patents directed to “on-the-fly” website searches. The accused websites allegedly infringe when their search tools combine keywords with menus to help users narrow product selections.
On February 28, 2012, The Navajo Nation (Navajo Nation) sued Urban Outfitters, Inc. and its subsidiaries (Urban Outfitters) in the US District Court for the District of New Mexico for trademark infringement, dilution, unfair competition, false advertising, unfair practices and state trademark infringement, and violation of the Indian Arts and Crafts Act (IACA). Urban Outfitters filed a motion to dismiss the complaint, and on March 26, 2013, the court granted and denied the motion in part.
On March 5, 2013, Bassil A. Hamideh (Hamideh), a model-turned-attorney, filed a lawsuit against Dolce & Gabbana S.r.L. (D&G) for the unauthorized reuse of his image appearing in photographs taken in 2002 for a D&G advertising campaign. Hamideh seeks actual, statutory, and punitive damages, injunctive relief, restitution, disgorgement of profits, a constructive trust, attorneys’ fees and costs, and litigation costs.
On March 11, 2013, the US District Court for the Central District of California granted Lee Tillett, Inc.’s (Tillett) motion for preliminary injunction preventing Boldface Group, Inc. (Boldface), which sells the makeup line Khroma Beauty by Kourtney, Kim, and Khloe Kardashian, from using the mark KHROMA. Boldface has appealed the order to the Ninth Circuit.
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Arent Fox LLP, founded in 1942, is internationally recognized in core practice areas where business and government intersect. With more than 350 lawyers, the firm provides strategic legal counsel and multidisciplinary solutions to clients that range from Fortune 500 corporations to trade associations. The firm has offices in Los Angeles, New York, San Francisco, and Washington, DC.