California Apparel News

A recently concluded dispute between retailers Forever 21 and Express illustrated the challenges of copyright and trade-dress claims.

“This is one of the first cases in a long time to discuss establishing a trade-dress claim in the context of an apparel claim,” said Larry C. Russ, who is with Los Angeles–based Russ August & Kabat and the lead attorney representing Forever 21.

A U.S. District Court judge in Los Angeles ruled in Forever 21’s favor, noting that Express had not proven the standards for copyright and trade-dress infringement.

The suit, first filed in 2009, concerned four pairs of plaid men’s shorts and a track jacket sold by Forever 21, which Express charged had been copied from its original designs.

The court determined that Express was unable to prove that the track jacket had “secondary meaning,” according to court documents.

In trade-dress claims, the plaintiff must prove that the item’s design is distinctive and has “secondary meaning,” which is defined as “the mental association by a substantial segment of consumers and potential customers between the alleged [trade dress] and a single source of the product.”

“The District Court judge made it clear that there is a very high standard that you have to achieve in order to prove secondary meaning when it comes to an apparel product,” Russ said.

According to court documents, Express “made no efforts to individually advertise or promote the Express jacket” and sold the style in its stores and online for less than five months. Further, the decision reads, the company sold fewer than 17,000 Express jackets nationwide, “an amount substantially lower than the numbers sold of many other Express garments.”

“Basically, you have to be able to practically hold up a garment—whether it’s a jacket or a blouse—and say to consumers—without them seeing the label—’Do you know who makes this?’” Russ said. “If consumers generally can’t tell by looking at it, ’Gee, this is made by Gucci; this is made by Prada,’ then there’s no secondary meaning. That’s pretty hard to achieve for any brand. It’s very rare for consumers to be able to identify the product itself without any label.”

Express was unable to prove that the track jacket had that secondary meaning in the mind of the consumer, said Gregory Weisman, an attorney with Los Angeles–based Silver & Freedman and chair of the firm’s apparel-industry practice group.

“The evidence demonstrated that this wasn’t really an iconic or even well-selling [compared with other Express items] garment,” he said.

Last year, a trade-dress trial between Forever 21 and Newport Beach, Calif.–based Trovata ended in a mistrial when a jury failed to reach a decision. Shortly before the retrial was set to begin, a confidential settlement was reached.

At the time,Trovata’s attorney argued that his client’s rights were being infringed upon because Forever 21’s garments copied a combination of elements that consumers would easily identify as unique to the Trovata label. The frequent coverage in the fashion press of Trovata’s designs helped create the up-and-coming label’s trade-dress claims.

Express’ copyright claim over the plaid shorts was also dismissed by U.S. District Court Judge Otis Wright. The summary judgment also includes a transcript of Express designer Michael Tower’s court testimony. Tower explained how he and a CAD designer had created the plaids but said he could not recall the original source documents used.

“By detailing the deposition testimony of Express’ designers, [the case] offers a unique glimpse into the inner workings of the design room of a large private-label manufacturer—and, in so doing, exposes the fatal flaw in this case, namely that the designer of the articles in question cannot recall any specifics regarding anything ’original’ he and his CAD designer added to existing plaid designs from which, he testifies, he took ’inspiration,’” Weisman said. “For years, I have always advocated my clients establish precise design-room recordkeeping policies, and Express evidently shot itself in the foot here by failing to document accordingly.

It also didn’t help that the copyright registration filed by Express didn’t mention any prior works or that these items were ’derivative’ of such prior works.”

According to Russ, after Tower and the CAD designer made changes to the plaids, the company filed a copyright application for the design.

“Imagine what would happen to the marketplace if firms regularly took designs out of the public marketplace, made no changes, filed copyright applications and then proceeded to sue other apparel manufacturers for making the same thing,” Russ said. “That would just create an enormous amount of litigation for no good reason. One of the things the court made clear is it’s not going to tolerate that kind of activity.”

In order to prove a copyright claim, the designer needs to establish “some degree of originality,” Russ said.

“Basically, there’s not that much originality required under the copyright rules, but there’s some degree of originality,” he said. “You have to be able to demonstrate it—and it’s not just a matter of color. It has to be something the designer creates independently in an original way. Even if the inspiration for that creativity starts with looking at a design of something else. You have to be able to demonstrate how you changed it. What did you bring to the table that was new and original?”

The issue could head back to the courts if Express decides to appeal any of the claims.

“This case is still likely far from over, as each of the claims summarily adjudicated can—and, history would suggest, will likely—be appealed,” Weisman said. “As the industry prepares for the battle over the newly reintroduced Innovative Design Protection and Piracy-Prevention Act and the local courts are abuzz in another swarm of LA Printex copyright lawsuits, this decision demonstrates yet again how unpredictable and expensive the battles can be over fashion designs and the rights of manufacturers.”

The recently introduced Innovative Design Protection and Piracy-Prevention Act seeks to extend copyright protection to fashion designs. The legislation, similar to the earlier proposed Design Piracy-Protection Act, has already drawn many supporters and opponents in the fashion industry.

(For more information about the IDPPPA, see ApparelNews.net’s story here.)

Further, Russ noted that passage of the IDPPA could impact cases already decided.

“That [Design Piracy] legislation would vitiate this decision,” he said. “It would make this decision irrelevant. And that’s part of the problem. This [proposed] legislation has to be corrected to make sure that this type of situation would not end up creating liability where there shouldn’t be any liability.”

California Apparel News first reported on the summary judgment in the Express v. Forever 21 case on Sept. 3. Background information about the decision can be found here.