By Walker Livingston
After the Supreme Court’s landmark ruling in Star Athletica, LLC v. Varsity Brands, Inc.,[1] where the Court held that clothing designs could be successfully copyrighted and that those copyrights are enforceable, many international brands have attempted to protect their marks and intellectual property with varying results.
Most recently, the Richemont-owned brand Alfred Dunhill was denied a copyright of its “Engine Turn” pattern by the U.S. Copyright Office.[2] The office consistently cited Feist Publications v. Rural Telephone Service Co.,[3] a 1991 case which defined “original” as having two components, (1) independent creation and (2) sufficient creativity. If a design lacks either of the two components, it cannot be copyrighted nor protected. In its second application for copyright protection, Alfred Dunhill tried to analogize its Engine Turn pattern, consisting of a lattice of diamonds, to the geometric shapes used on the protected cheerleader uniforms in Star Athletica.[4] The Copyright Office responded to these claims, stating that “individual elements, diamonds and a six-sided arrowhead shaped polygon, are uncopyrightable standard geometric shapes,” but denying that “works comprised of simple geometric shapes are precluded from copyright protection.”[5] The Copyright Office further dismissed Alfred Dunhill’s reliance on previous claims, stating that it did not consider comparisons to previous Copyright Office decisions, and that the arrangement of the simple geometric shapes must be arranged in a sufficiently creative manner to allow for copyright protection.[6]
Other countries have taken further strides to protect luxury brands’ intellectual property. In 2018, Gucci won an adjudication against Guccitech Industries of Singapore in the Intellectual Property Office of Singapore.[7] Guccitech applied to trademark “Guccitech” for usage in the industrial kitchen industry which Guccitech produced for. However, Singaporean trademark law states that a trademark will not be granted if “it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected” or “there exists a likelihood of confusion on the part of the public.”[8] This became the basis for the decision issued by the Intellectual Property Office, which stated that while the copyright attempt did not appear to be in bad faith, there was a chance that the average person could confuse the two brands, despite that they worked in separate industries.[9]
Brands also often settle disputes over trademark issues, since litigation decisions can take far longer than even complicated settlements. In late 2018, Gucci and Forever 21 settled a lawsuit that had simmered since 2017 over Gucci’s trademark green-red-green and blue-red-blue stripes.[10] Among other claims, Forever 21 alleged that the stripes were too “common or generic” to trademark, and that versions of the stripes were sold by many other brands within the fashion industry.[11] While the terms of the settlement are undisclosed, it is likely that Gucci became far more amenable to terms after its attempts to dismiss the trademark cancellation claims failed.[12] Overall, luxury brands face a dilemma with both international and domestic regulation of their intellectual property, facing attacks from other brands and an uncertain copyright regime from governments. Luxury brands should continue to attempt to secure international trademark protection for their intellectual property wherever possible, but recognize that any potential ruling granting them protection will not necessarily prevent challenges by infringing brands.
[1] Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1002 (2017).
[2] Letter from U.S. Copyright Office Review Board, U.S. Copyright Office, to Susan Upton Douglas, Fross Zelnick Lehrman & Zissou, P.C. (Sept. 3, 2019), https://www.copyright.gov/rulings-filings/review-board/docs/engine-turn.pdf.
[3] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).
[4] Letter from U.S. Copyright Review Board, supra note 2, at 4.
[5] Id. at 4-5.
[6] Id. at 5.
[7] In re Trademark Application by Guccitech Industries, IPOS, 1, 1 (Nov. 8, 2017), https://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2018/guccio-gucci-v-guccitech-industries-2018-sgipos-1.pdf.
[8] Id. at 5.
[9] Id. at 27-29.
[10] Gucci and Forever 21 Settle Battle Over Stripes, The Fashion Law (Nov. 21, 2018), https://www.thefashionlaw.com/home/gucci-forever-21-settle-battle-over-stripes.
[11] Id.
[12] Id.
