Much has been said and written about Christian Louboutin’s iconic red sole brand. It has sparked endless debates about trademark law in various courts around the world, including in the U.S., France, Switzerland, and most recently at the EU Court of Justice.
Christian Louboutin began selling his high-heeled red-soled women’s shoes in the early nineties. The red soles gradually became a signature brand, somewhat comparable to the famous Burberry check pattern. The creator’s idea starts as a mere decorative design, just like any fashion design. But over the years, it gradually becomes a brand in itself because the public begins to perceive it as a source identifier even without any concurrent word mark on the product. Burberry registered its design as a two-dimensional trademark around the world; it recently sued Target in the U.S. for selling scarves with a similar design. As has been the practice of Burberry over the years, that is a trademark claim, not a copyright claim—which would present greater challenges to Burberry under U.S. law.
Back to Louboutin’s red soles: The United States Court of Appeals for the Second Circuit ruled in 2012 that Louboutin owns a valid trademark for his red sole shoe design. Louboutin had taken Yves Saint Laurent to court for trademark infringement. The red sole trademark was deemed inherently distinctive, Louboutin having given ample evidence that the trademark had acquired secondary meaning. Those words sound like music for the fashion brand owner and its lawyers because it means that the court rewards years of investments in sales, advertising and free publicity. (As the court duly noted, Louboutin shoes are popular items to wear when walking red carpet events in the entertainment industry.) Louboutin’s victory was unfortunately limited to the court having confirmed the validity of the trademark; the court also ruled that the same trademark registration could not be invoked against shoes – such as those sold by YSL – that are monochrome red, covering the insole, outsole, heel and upper part.
The U.S. thereby paved the way for Louboutin, which is, after all, a French brand. A long-awaited judgment in the European Union was recently rendered by the EU Court of Justice. This time, it was the Dutch discounter Van Haren that was selling red-soled women’s shoes. The court held, after a long debate, that a red sole applied on the sole of a shoe can be a valid trademark in the EU. Under pre-2018 EU law, the shape of an object that “gives substantial value” to the product itself could not be registered as a trademark. (An example would be the distinctive shape of the Perrier bottle.) The court that the color red, as applied to a shoe, was not as a “shape,” as Van Haren had asserted; after all, Louboutin had not sought to register a shoe but merely a color applied at a certain location on shoes. Following the EU court’s guidance, the District Court in the Netherlands that had referred the issue will now ban the sale of Van Haren’s shoes throughout the European Union.
A crucial takeaway from this case is the reward given for the smart way in which the trademark had been registered. In many trademark systems, the registrant is allowed to specify its two- or three-dimensional object with a brief description. Louboutin’s lawyers had wisely specified the filing as follows: “The mark consists of the color red (Pantone 18‑1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark).”
That victory may not last very long, however. EU trademark law was recently amended, with the effect that not only “shapes” but also “other characteristics” giving substantial value to the product may be barred from trademark registration. This change in the law opens a new can of worms: in particular, it remains to be seen whether pre-2018 trademarks, such as the one owned by Louboutin, can be invalidated on the basis of the new law.
Credit: Diederik Stols | Guest Post
Phillips Nizer would like to thank Diederik Stols for the contribution of this post to the Fashion Industry Law Blog. Diederik is a partner at the law firm BOEKX Advocaten in The Netherlands where he specializes in intellectual property, media and entertainment and e-business. (http://www.boekx.nl/en/)
I was discussing the history of style with Alan Flusser in his office on East 48th Street in Manhattan, a convivial nook that shares the floor with his showroom and workroom. I turned to a topic about which I knew, from Mr. Flusser’s informative writings, that he had much to say: how it is that the typical American businessman or professional man used to look so natty and how is it that his descendants came to look—rather as they now do.
“First of all,” Mr. Flusser told me, “in between the wars, you had a situation in which a lot of people couldn’t afford clothes. It was the Depression. On the other side of it, there were still a lot of wealthy people. And there was also Hollywood, and in Hollywood at the time, when moviemaking was at its zenith of popularity, you had great male leading actors whose job it was to project Hollywood glamour, not just on screen but in their social lives.”
Anyone so young as to wonder if celebrity worship started with iPhone apps and social media should read a good history of American popular culture to know what Mr. Flusser means. My mother, a spiritual child of the Golden Age of Hollywood, grew up hoping to copy every button and bow on her favorite stars and still sees actors as transcendent personalities. For men, however, as Mr. Flusser went on to note, the catalyst was a “confluence of male sartorial role models,” from British aristocrats, politicians and businessmen to those movie stars. Men were taking an interest in dressing well, in part due to those examples, which were regularly offered in the new media of film, picture magazines and, later, television.
“In Hollywood at the time,” continued Mr. Flusser,” you had about twenty men who individually set their own kind of style” and thereby marked the path for those millions interested in following. He noted in particular Cary Grant and Fred Astaire. “In terms of learning how to dress, there developed between the two world wars the kind of clothing that we wear today, soft clothing that you could move in comfortably—lounge clothing, it was called—not stiff and Victorian.” Indeed, although the modern business suit’s origins can be traced back to nineteenth-century military uniforms, it was the resulting lounge suit of British gentlemen that evolved into the contemporary international business suit. (If you do not believe that, put on a suit of the London cut, turn up the collar and pull the lapels toward each other. You will look just a bit like the Duke of Wellington.)
That is all well and good, but who in the public eye right now would a young man seek to emulate? Attention, Millennials, this one is for you: “I would be hard-pressed to come up with a single person,” said Mr. Flusser, a note of frustration overtaking what had been an assertive tone. He suggested George Clooney, who is not in his first youth, of course, but did not feel comfortable naming anyone else in entertainment.
As I now knew was his method, Mr. Flusser offered history: “In the 1960s, you had the Peacock Revolution. There was a rebellion against ‘the Establishment’ and the more traditional dress that people associated with their parents. From about 1968 until the 1980s, there was a void of good guidance on how men should dress. If you take the generation after that, you get pretty close to where we are today, and you find two complete generations of men who never had the benefit of having any kind of solid information on the elements of stylish dressing. By then, you had had a complete inversion. Instead of style being handed down from above, it bubbled up from below—from the street.” And street wear, as we know, makes its mark by aspirating toward a state of cool—a hard state to reach and an even harder one to maintain.
Where does that leave us now? “It’s a very confusing period of time in terms of trying to learn how to dress and come to terms with what you know about how to present yourself,” concluded Mr. Flusser. True enough, but at least, because of our conversation, I had come to understand why that is so.
Credit: Alan Behr
See previous post…”Alan Flusser – Part 1: A Question of Balance“
Just as fashion designers and retailers have been struggling to adapt to changing consumer demands, they now must face a new battle: a trade war.
Back in May, the White House announced its plan to impose tariffs on $50 billion of Chinese goods in the hope of pressuring China to stop alleged unfair trade practices and intellectual property infringement. After the U.S. Trade Representative, Robert E. Lighthizer, released the final list of goods subject to the new tariffs, China responded with tariffs of its own on U.S. goods. Upping the ante in July, the U.S. next threatened to impose a second round of levies, resulting in 25% aggregate tariffs on an additional $200 billion of Chinese goods. Once again, China hit back with more tariffs of its own.
Many economists have warned that the effect of a prolonged trade war between China and the U.S. will ultimately increase prices for American consumers and will damage U.S. businesses. Those working in the fashion industry are likely to agree. The May round of tariffs placed on Chinese imports, which covered a range of industrial, agricultural, and medical goods, left the fashion industry relatively unscathed. But the next round of tariffs, initially rumored to include textiles, handbags and suitcases, is likely to hit designers, retailers and, ultimately, the American shopper.
Following the U.S. threats made in July, Mr. Lighthizer agreed to hold a hearing to discuss market opposition to the proposed tariffs. In attendance at the hearing, held in August, were more than 350 stakeholders, including the Council of Fashion Designers of America, the American Apparel & Footwear Association and the Accessories Council.
To say that the American apparel industry relies on Chinese manufacturing may be an understatement. Kathryn Hopkins of Women’s Wear Daily (WWD) has noted that “China is vitally important to the industry with government data showing the U.S. imported $27 billion worth of apparel from the country last year, accounting for 34 percent of all apparel imports. That is more apparel than was imported from any other country, dwarfing second-place Vietnam at $12 billion.”
Concerned about impending tariffs, Edward Rosenfeld, the CEO of Steve Madden, told WWD: “We and others will certainly try to pass on a good chunk of this to the consumer in the form of higher retail prices.” Steve Madden is also looking to move its handbag manufacturing from China to Cambodia in response to the higher duties.
National Retail Federation President and CEO, Matthew Shay, told WWD: “This round of tariffs amount[s] to doubling down on the recklessness of imposing trade policy that will hurt U.S. families and workers more than they will hurt China – it’s two-and-a-half times the amount already imposed.”
Smaller businesses are particularly vulnerable to the proposed levies. Anne Harper, the CEO of OMG Accessories (annual sales: approximately $2 million), expressed her concern for the impending tariffs, stating: “I can’t just absorb that percentage…. The bread and butter of my business is selling to retailers, so that’s a big challenge. Q4 is where we ship all of our holiday goods. If the 10 percent comes into effect right before the goods ship from China, we’re subject to that extra 10 percent so it represents hundreds of thousands of dollars for my business. It’s basically a loss.”
On August 26, 2018, China filed a formal dispute with the World Trade Organization (WTO), alleging that the U.S. tariffs violate WTO rules.
On September 17, 2018, the White House made good on its warnings in July, confirming that tariffs of 10% would be placed on $200 billion worth of Chinese imports – ranging from silk to handbags. China promptly responded again, stating it would impose its own tariffs, of 5% to 10%, on $60 billion worth of U.S. goods. Meanwhile, the U.S. has threatened to increase tariffs on Chinese goods to 25% total on January 1, 2019, unless the two countries can conclude a trade deal.
Is there an endgame in sight? At this point, there are more questions than answers. The White House is slated to share more information following its September 17th announcement. One can only wait for the next episode of Textiles and Tariffs.
Credit: Candace Arrington
“One of the principles that I teach is that clothes should lead the eye of the viewer to the face of the person wearing the clothes. That’s particularly important in the legal profession, where you do a lot of communicating.” Hardly had I started my conversation with Alan Flusser, who is one of the premier custom tailors on this side of the Atlantic, when I was the recipient of such good advice. I had come to Mr. Flusser’s shop, in midtown Manhattan, with a three-button jacket he had made for me so long ago that I had missed a fitting on the morning of 9/11 (for quite obvious reasons). Although it had been worn often, Mr. Flusser and his team had just returned the altered piece to me looking as if it had left the workroom for the first time. Not only had it been recut for my late-blooming athletic physique (I had at long last learned to sit less and to pump more iron), but shorter and now boasting a pinched-in waist, it was also quite au courant. A hidden benefit of quality custom-tailoring is economy: every off-the-rack garment I owned back then has long ago been sent away.
With that good start behind me, I joined Mr. Flusser in the office of his shop. Mr. Flusser sat in one of his guest chairs, appearing at ease in an open-collared shirt, unbuttoned jacket and casual shoes minus socks. With my notes spread in front of me, I probably looked to him like a defense lawyer trying to impress a trial judge. He continued: “What is closest to the face is the dress shirt collar. You should look at it as a painting and a frame—your head is the painting and you are trying to give it a frame that complements your face but doesn’t distract from it. The criteria for making the decisions about that—the size of your chin and the shape of your head, for example—are not changeable or subject to fashion. So if you discover what kind of dress shirt collar best presents your face, and build on that, what you figure out will stay with you for the rest of your life.”
When I asked what was the most common collar mistake, his answer was immediate: “Most men wear dress shirt collars that are too small for their faces. If you are 5’10” or above, the likelihood is that you will be wearing a dress shirt that does not sit tall enough on your neck. Instead, the dress shirt decorates the bottom half of your neck, and if you add a necktie, it will look like a dead fish hanging around your neck. That has nothing to do with fashion. It only has to do with your own physiology. And it’s not about knowing how much you should pay for something. It costs no more to wear a shirt with a collar that is appropriate for you than not. If you don’t wish to spend a lot of money, but you understand what works for you, it will look just fine. All of this is just about knowledge.”
Feeling my moment of reckoning had come, I noted the obvious: that I have a large head and a wrestler’s neck. My shirt collar was tall enough, it turned out—but that was just the start of the conversation. Before I knew it, Mr. Flusser had unfastened my tie in order to relieve it of the Windsor knot I have been using since I was a first-year associate and retied it with a more rakish four in hand. “Much better,” he said, and then he replaced my machine-finished pocket square with a proper French-made, hand-rolled model. It all came together just so. And that is what style is really about: helping you look your best, not the best of someone seen in a magazine or on a social media page.
Credit: Alan Behr
Alan Flusser maintains his custom atelier at 3 East 48th Street in New York City. He is the author of “Dressing the Man: Mastering the Art of Permanent Fashion” and other works about men’s style. (www.alanflusser.com)
When one speaks about trademarks, the familiar adage “use it or lose it” comes to mind. But there is another important principal that can equally endanger your trademark rights: You must police the market, monitor the trademark register and take action to stop infringements, or you may find yourself without a trademark to enforce. Two recent cases demonstrate the importance of this latter principle.
LUSH is the trademark for a global brand of “hand made” cosmetic, fragrance and bath products sold by Cosmetic Warriors Limited (“CWL”), a company founded in England in the mid-1990’s. CWL opened its first Canadian retail store in 1996 and expanded to the United States in 2002. It now operates in excess of 940 stores in 49 countries, including 250 stores in North America, 200 of which are located in the United States. In 2002, it registered the LUSH trademark for use on t-shirts in Canada, but never filed a US registration for apparel. Pinkette Clothing Co. is a California company that, since 2003, has sold women’s clothing under the LUSH mark to retailers in the US and Canada, principally Nordstrom. Pinkette secured a US registration for the LUSH trademark for apparel in 2010. CWL did not oppose the issuance of registration for the mark, although its outside counsel apparently was notified through a trademark watch service of the application’s publication for opposition. In December 2014, CWL applied to register the trademark LUSH in the United States for clothing. When its application was rejected due to Pinkette’s pre-existing registration, it filed an application to cancel Pinkette’s mark. Instead of defending in the cancellation proceeding before the Trademark Trial and Appeal Board, Pinkette commenced a court action seeking a declaration that it did not infringe CWL’s trademark or, alternatively, that CWL’s failure to oppose Pinkette’s application in 2010 and its subsequent delay in seeking to cancel Pinkette’s registration barred CWL from enforcing its trademark rights against Pinkette. CWL counterclaimed for trademark infringement and to cancel Pinkette’s LUSH trademark registration. After trial, a jury found that Pinkette had infringed CWL’s LUSH trademark and that Pinkette’s registration should be canceled, but it also found that CWL had unreasonably delayed in asserting its claims. The court held that the delay barred CWL’s action and dismissed its claims. On appeal by CWL from the dismissal of its claims, the U.S. Court of Appeals for the Ninth Circuit held that CWL should have known of Pinkette’s usage as early as 2010, when Pinkette’s application for registration was published for opposition, that CWL had not been diligent in asserting its rights, and that Pinkette had been harmed by the delay because, in the interim, it had expended time and resources to develop its LUSH business. As a matter of equity, therefore, CWL would not be permitted to assert its claim either for trademark infringement or for cancellation of the Pinkette mark.
The second case demonstrates what can happen when many uses of a trademark for competitive goods are tolerated by the trademark owner for an extended period. The essential function of a trademark is to identify the source of the goods to which it is applied. Trade dress in the form of the design of a product or its packaging can also serve to identify a source and can serve as a trademark when it does. But if the design does not have a source-identifying function, referred to as “secondary meaning,” the design is not registrable for trade dress protection. When other third parties are permitted to use the design in the market for similar goods, the design cannot achieve the required secondary meaning.
Converse learned that lesson the hard way. In 2013, Converse registered a trademark for the “midsole” design of its Chuck Taylor All Star sneakers, consisting of the toe cap, textured toe bumper and two thin stripes along the side of the sole of the shoe. It claimed common-law trademark rights in the design based upon decades of its use prior to securing its registration. It subsequently filed a complaint with the International Trade Commission against Walmart, Skechers, Highline and New Balance seeking to bar the importation of sneakers it claimed infringed its registered midsole trademark and its common law trademark rights in the design. The International Trade Commission found that there was a likelihood of confusion between the Converse sneakers and the competitors’ sneakers. But the Commission also found that there had been a proliferation of competitors using the same design, on the same goods, sold to the same class of consumers over many years. As a result, the Commission concluded that the design could not be said to identify Converse as the source of the goods and, therefore, its trademark registration was invalid.
The lesson of these cases is clear. Adopting and registering a trademark is only the beginning of your work. To preserve and protect the trademark, you must police the market and assert your rights on a timely basis when you discover infringement by others. If you fail to do so, you may find that your investment in the trademark has been lost.
Credit: Helene M. Freeman
In September, 2017, LVMH and Kering jointly adopted “The Charter on the Working Relations with Fashion Models and Their Well-Being.” It was created following consultation with key external players, such as casting directors, stylists, models and modeling agencies. Intended to help improve working conditions for models, the charter seeks to apply standards of conduct to the signatory companies and to their external contractors, such as modeling agencies, worldwide. A monitoring committee will meet with brands regularly to assess compliance.Key provisions of the charter require compliance with the following:
- Cast only female models for adult clothing who are at least French size 34 (US size 2) and only male models who are at least French size 44 (US size 34).
- Require a valid medical certificate from each model, attesting to good health and ability to work.
- Have a dedicated psychologist or therapist at the models’ disposal during work hours.
- On the sometimes-difficult topic of nudity and semi-nudity, the charter is refreshingly frank: it will be allowed only with written consent of the model and parent/legal representative if under the age of eighteen. For all, there must be comfortable room temperatures and private changing zone, and the model may not be left alone with the photographer or other person connected with the production.
- No hiring of models under the age of sixteen for photoshoots or shows in which the model would be called upon to represent an adult and, for those models aged sixteen to eighteen, a restriction of work hours to 6:00 a.m. to 10:00 p.m.
- Provide food and drinks that comply with the models’ dietary needs. Alcohol is not permitted, with limited exceptions.
- Establishment of a grievance system (such as a hotline). Brands have the right to make unannounced inspections.
As leading multi-brand companies based in the world’s fashion capital, LVMH and Kering are positioned to make a global industry-wide impact with the charter. By extending enforcement by their brands to external contractors (such as modeling agencies) the companies are using their collective power potentially to cause change throughout the fashion business. LVMH and Kering have invited other brands to sign the charter. Antoine Arnault, a member of the LVMH board of directors and the CEO of its Berluti men’s footwear brand, has expressed his belief that, “[other brands] will have to comply because models will not accept being treated certain ways by [some] brands and another way with others.”
Within less than a year following the announcement of its adoption, the charter is bringing change throughout the fashion business by, in part, influencing others in the field to adopt similar measures to promote improved working conditions for models. ELLE and Version Fémina magazines signed onto the charter. Condé Nast and Tapestry Inc. – the parent company of Coach and Kate Spade – each released their own standards of conduct for models, and Elite Models is expected soon to follow.
Katie Grand, editor-in-chief of Love magazine, expressed to Women’s Wear Daily that learning about the LVMH/Kering Charter made her “mindful that models need to change in private.”
In February of this year, LVMH and Kering Group further demonstrated their commitment to the charter by launching www.wecareformodels.com, a website that is intended to provide models with access to advice from expert nutritionists, psychologists, and other professionals in the fields of mental and physical health.
Previously, the Council of Fashion Designers of America had implemented health initiatives and guidelines to promote wellness and healthier working environments for models. The initiatives were not about policing brands but were intended to raise awareness and promote education. The LVMH/Kering charter differs in that the companies have implemented the policy and are self-monitoring. But it is more: the charter does not function merely as a set of corporate guidelines but as rules of conduct for all participants in corporate projects in which models are involved. The founders of the charter have stated clearly that, if any external partner should fail to comply with the charter, they will sever their relationship with it.
Although the charter is not legislation, it is important to recognize that its medical certification requirement is in line with the EU labor laws for fashion models that were implemented in October 2017, only a month after the adoption of the charter. The charter’s age-specific rules for models under age 16 are in accordance with New York child performer laws that require special considerations for underage models, including restricted working hours, mandatory breaks, and school attendance obligations. In short, the charter is current on where the law has been headed internationally, and it is quite possible that showing compliance with the charter could have bearing on judicial thinking, particularly on questions of liability and in any potential damages awards, in future actions concerning treatment of models.
Will the charter create a new norm for the modeling industry? The fashion business has shown that, while styles change quickly, patterns of behavior generally change far more slowly; but for models, some change appears to be coming at last.
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 Osman Ahmed, A New Charter Aims to End Model Abuse: Will it Work?, The Business of Fashion (Sept. 7, 2017), https://www.businessoffashion.com/articles/intelligence/lvmh-kering-model-charter-will-it-work.
 Rosemary Feitelberg & Lisa Lockwood, Next Steps: How to Cure Fashion’s Model Scandal, Women’s Wear Daily (Mar. 26, 2018), http://wwd.com/fashion-news/fashion-features/fashion-reaction-french-law-skinny-models-10302035/.
 Nora Crotty, New York Signs Law Protecting Child Models’ Labor Rights, Fashionista (June 27, 2018), https://fashionista.com/2013/10/new-york-signs-law-protecting-child-models-labor-rights.
Credit: Gloria Kim | Guest Post
Gloria Kim begins her third year at the Fordham University School of Law in the fall of 2018. Gloria has worked at Ralph Lauren as a wholesale planner and at Louis Vuitton as a legal intern. She is an active participant in the school’s Fashion Law Institute and earned her Bachelor of Arts degree from the University of Virginia.