This week in fashion law: Madonna's trade dress (you up) mess; McQueen will will rock you; gangs, tramps, and copyright thieves

Posted by Charles Colman

This week in fashion law...



If you're in the market for high-end nail polish, Madonna will create borrow a look that's made for you.  Her new Material Girl line of nail polish is, as Fashionista put it, "eerily similar" to that of market veteran butter LONDON, "[f]rom the flat, rectangular bottle with black cap to the actual colors in the bottle[.]"




As regular readers of LAW OF FASHION know, trademark law doesn't just protect names, words, phrases, and images; it also protects the "look and feel" of product packaging, which intellectual property lawyers call "trade dress."  Sometimes, product vendors go so far as to argue that the product itself functions as trade dress, but for reasons LOF has explained in the past, this can be a tough sell under existing law (hence the debate about copyright-like protection for fashion, which seems to have calmed down since hitting a fever pitch last week.)

Plaintiffs in product packaging cases don't face the same hurdles; although there is a multi-part "likelihood of confusion" test that judges are supposed to apply in trade dress cases, some have said that judges simply look at the plaintiff's and defendant's packaging side by side and decide right there who's going to win.  If so, Madonna might be in an awful mess, and I don't mean maybe.

Oh, wait... Madonna can hire lawyers to defend her, lose the case, and pay treble damages, all with the loose change between the cushions of her hideous blue sofa.  It would take a lot more than a little trade dress claim to get her in trouble deep.



WWD's website announced on Monday that "copycat lawsuits" over footwear are on the rise, citing the reasoning of one legal luminary: "Knocked-off shoes stay relevant for more seasons than does apparel, making them longer-lasting points of contention."

Of course, the footwear case that has attracted the most interest is Christian Louboutin S.A. v. Yves Saint Laurent America, a/k/a the "monopoly-on-a-color" case, which I've covered so extensively that I've actually lost facebook friends over it.  Clearly, these people don't appreciate the importance of this dispute, which has drawn commentary -- albeit not always relevant -- from onlookers in and around the fashion world, including, most recently, Valentino's Giancarlo Giametti.  (Yes, red soles were used before Louboutin trademarked them; no, this does not conclusively resolve the legal issues at hand.) 

Still, as some have pointed out in a fervent debate within LinkedIn's WWD group, the court's ruling does have potentially serious consequences both for the future of Louboutin's company and for the fashion industry at large.  YSL's attorney powerfully reiterated these concerns, first made in his opposition brief, at the court's preliminary injunction hearing last Friday afternoon, pointing out that a ruling for Louboutin could establish a principle that limits the aesthetic options available to designers in the future and/or subject them to legal liability for merely executing their creative vision.

Apparently having failed to read my last CATWALK JUSTICE column, Judge Marrero adjourned on Friday without issuing a ruling, but said he would make a decision "as expeditiously as possible."  Note, however, that this means something very different in law than everywhere else, so we're still waiting.  Look for periodic updates right here, or get breaking news from LOF's companion Twitter handle, @fashionlawblog.  (And while you're at it, follow my firm's Twitter account, @ccolmanlaw, which covers not just fashion law but a broad array of intellectual property issues.)



This week, two worlds that rarely acknowledge each others' existence -- the fashion and sci-fi communities -- found themselves watching and commenting on the same litigation: a U.K. Supreme Court case that involved intellectual property protection for Stormtrooper helmets, and by extension, many other design products.  On Wednesday, the UKSC ruled that although the owner of the Star Wars franchise, Lucasfilm, had obtained a U.S. judgment against the original designer of the iconic helmets, Britain's quirky copyright laws precluded holding the designer liable in the U.K. for selling copies based on the original molds.

As previously explained on this blog by Emily Goodhand, known and loved throughout the Twitterverse as @copyrightgirl, the UK does offer "design protection" to utilitarian articles, but that protection lasts for only 15 or 25 years, depending on when the original design was created.  (For design components of the original Star Wars trilogy, it's 15... and the time's up.) Further, where a three-dimensional item doesn't qualify as an "artistic work" -- and the UKSC found that a costume military helmet does not so qualify under "the normal use of language" -- its manufacturer can raise a defense under an obscure provision of the UK Copyright Act, even where the work is based on a copyrighted two-dimensional illustration.  Fashion designers and sci-fi types, take note!  And while you're at it, bond!  The intergalactic portal is closing as we speak...



Speaking of science fiction, and by extension, Cardassians, you've undoubtedly heard by now that Kim Kardashian has sued Old Navy (i.e., Gap) over an ad that allegedly features a look-alike of her.  As The Hollywood Reporter noted last week, KiKard (wow, I've got Star Trek on the brain today) is upset because she "work[s] hard to support the products [she's] personally involved with and that [she] believe[s] in."  Kardashian is no stranger to the courtroom, having been involved in a... messy dispute with adult video producer Vivid Entertainment in 2007 over the ownership of her ticket to fame sex tape, and a 2009 "false endorsement"-related legal tussle with Dr. Sanford Siegel, of the improbable "Cookie Diet."

The latest suit to involve KiKard (working? no?) also hinges on false endorsement claims, but this litigation is slightly complicated by the fact that neither Kardashian's name nor image was used in the offending ad.  Rather, Old Navy allegedly hired one Melissa Molinaro, whose resemblance to Kardashian is admittedly uncanny, to mislead consumers into believing that Kardashian endorsed the brand.  Such a claim isn't unprecedented; THR's Eriq Gardner reminds us that such varied and alphabetical celebrities as Jackie O and the Divine Miss M have brought look- and sound-alike lawsuits over the years.  Let's see if Kardashian can convince the court that her lawsuit has legs.




  • There was also much chatter in the blogosphere this week over Alexander McQueen's will, just now released to the public, and whose provisions reveal the designer's commitment to family, charity and animals.  Yes, the dogs got $82,000, so this is probably a good time to say that I don't want to hear one more unkind word about pet trusts; providing for pets after their owners' death is important, and every pet owner should keep the furry ones in mind when drafting a will.  To those who would ask how a couple of dogs could possibly need $82,000, I reply, have you ever seen a vet bill for surgery?



  • Pittsburgh Steelers running back Rashard Mendenhell has sued Hanesbrands for stripping him of his endorsement contract -- and he was wearing so little to begin with! -- after a series of controversial tweets, some involving September 11th and Osama bin Laden.  At issue in the lawsuit is whether a "morals clause" in an endorsement contract (remember those?) can function as a promise for a celebrity to shut the *#$% up.

And with that... I'm out.  Remember, as always, that you can get the week-in-review one day sooner by catching my CATWALK JUSTICE column, which appears on every Friday, sometime between 2 and 4 pm, like low-end, counterfeit clockwork.


[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities.  Any views expressed herein are those of the writer on the particular date of this post, and should not necessarily be attributed to his law firm or its clients.]