California Apparel News

UPDATED—A summary judgment was issued in the copyright and trade-dress case filed by Express against Forever 21 over several styles Express charged were copied by the Los Angeles–based fast-fashion retailer.

A U.S. District Court judge in California’s Central District 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, revolves around four pairs of plaid men’s shorts and a track jacket. Express argued that the plaids were created by Express' designer and were protected by copyright law. Express Designer Michael Tower testified how he and a CAD designer had created the plaids, but said he could not recall the original source documents used, according to court documents.

The court ruled that “the undisputed record establishes that Express cannot prove that any of the plaids incorporate sufficient original creativity to qualify for copyright protection,” court documents state.

The court further ruled in Forever 21’s favor regarding Express’ trade-dress infringement claim regarding the track jacket, stating, “Express cannot carry its ultimate burden of persuasion at trial because it cannot prove that the appearance of the ’Express Jacket’ has secondary meaning.”

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.”

According to the decision, 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 Jacket nationwide, “an amount substantially lower than the numbers sold of many other Express garments.”

Because of the court’s decision regarding the copyright and trade-dress claims, the court also granted summary judgment in favor of Forever 21 in Express’ unfair-competition claim, according to court documents.

“This case is still likely far from over, as each of the claims summarily adjudicated can (and history would suggest will likely) be appealed,” said attorney Gregory Weisman, with Los Angeles-based Silver & Freedman and chair of the firm’s apparel industry practice group. “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.”

Weisman said the judge’s decision offers insight into the challenges of copyright cases.

“The decision of Judge Otis Wright is very interesting for a number of reasons,” he said. “First, it represents a substantive analysis in print for all to see of the very tricky legal issues involved in bringing these cases, many of which settle prior to any published opinion being rendered. Second, by detailing the deposition testimony of Express’ designers, it 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.” 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.”

Trade dress claims are equally challenging.

“A second claim for “trade dress infringement” over one style of Forever 21 jacket was similarly denied, with the court finding that the high standard of “secondary meaning” (a trademark construct, as opposed to copyright) hadn’t been met, especially where the evidence demonstrated that this wasn't really an iconic or even well-selling (compared to other Express items) garment,” Weisman 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 re-trial was set to begin, a confidential settlement was reached.

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. —Alison A. Nieder