Buns O’ Steel? Maybe yes, maybe no.

Here’s a little legal stocking stuffer…

Want to walk your way to a higher, tighter A$$?  Who doesn’t?!  But be careful what you promise.  Reebok may be getting itself in trouble with its claims that its footwear EASYTONE leads to toned and tightened leg muscles...and a tighter tooshie!

A class action is seeking certification against Reebok in the Quebec Superior Court on the basis of false, misleading and unsubstantiated advertising claims.  A class action suit has already been launched in the US.

What advertising claims are at issue?

• Walking in the Reebok engineered shoes will tone and tighten more than walking in regular shoes.

What’s the beef?

• The studies conducted to support the advertising claims did not substantiate the advertising claims;

What’s at stake?

• Damages equal to the purchase price amount.
• And let’s not forget a PR nightmare.

Elle’s Creative Director Joe Zee Talks Fashion Business with CanadaFashionLaw

If you know Elle magazine or the spin-off reality TV show, The City, you probably know Joe Zee.  Amicable, knowledgeable and dynamic, Joe Zee has launched a new reality TV show, “All On The Line”.  The second season airs in Canada on Sundance Channel Tuesday nights at 8 p.m. EST.  Season one will air Mondays at 8 p.m. EST beginning January 2 on CosmoTV.

In “All On The Line” Joe Zee acts as a fashion guru consultant to help struggling designers save their business.  Here at CanadaFashionLaw, we love the business and law of the fashion industry and so this TV show is of great interest to us.  With a spring in our step and a shimmer from our newest bubble gum pink lip gloss, CanadaFashionLaw was delighted to be invited for a one-on-one talk with the guru himself.  We hope you enjoy the interview: 

You’re no stranger to reality TV, what kind of impact has it had on your personal brand and that of Elle magazine’s?

I think that reality TV is a genre.  Although it was probably a dirty word when it first launched on air, it has become a really big component of television broadcasting.  It is going to open up the parameters of who you are.  From a personal brand perspective, I think that a lot more people understand what I do, who I am and what I can contribute.  For Elle, it certainly helps us expand to a broader market - to people who may not just be reading magazines but to those who love fashion and watch it on TV. 

How did All On The Line come about?

Sundance Channel and the production company, Authentic Entertainment, came to me with the idea of the show.  I wasn’t entirely sure what it was so we all sat down and talked about it and shaped it into something that I was so proud and happy with because it was genuine and authentic.  It’s something that I feel has never been done on television.  We’re not portraying Devil Wears Prada or Ugly Betty.  It’s not red carpet and glitz and glam.  It’s really about the nitty-gritty, hard, blood sweat and tears tough day in day out aspects of what being a fashion designer is about.  Yes you can have that dream – but it comes at a price.  It’s not easy.  There are a lot of things on television that make it seem easy.  People don’t understand that there is so much “business” involved. 

How do you offer grounded criticisms without stifling the designer’s creativity?

Being honest!  If you watch the show, I’m brutally honest.  I’m not going to be their mother and sugar coat something.  They have people in their lives to do that – they don’t need me for that.  They have to understand what it is that they are doing and if you miss the mark just a little bit, you may as well stop doing it.  It’s a very crowded industry.  You’ve got to be able to service it.  I’m never mean (I don’t think), I just want to be honest in a critical way that will help them.  

One of the biggest self-induced hurdles that I see as a fashion lawyer helping emerging or established fashion designers is that they do not view themselves as a business from early on.  Do you agree?

Absolutely!!  There are so many fashion students that have been so attached to the show and are now starting to realize that they need to have some sort of business training.  They can’t just draw, drape, cut and sew.  Once you’ve done that, what’s next?  You have to understand the business aspect.  We don’t live in a world where you can sketch designs from your ivory tower and think that your dress will end up in every store.  You’ve got to figure out how to make that work.  This show is starting to help people re-evaluate.  Being a designer means being a business person.  People haven’t thought that before.  

And the designers don’t think to outsource that business acumen either.  If you’re going to focus on the creative aspects, at least surround yourself with trust-worthy people that have a good business aptitude, be it from a financial, legal or consulting background

Yes.  But they have to get “you”.  They can’t just be a good business person.  They have to know how to take the creativity of who you are and make it into something successful.  

On one of your episodes, there was a successful business person backing the designer, but the business person had no knowledge of the fashion industry itself.  How necessary is it for the financial/business/legal minds to educate themselves on the nuances of the fashion industry?

It happens ALL the time.  I think that there are designers who don’t understand the nuances of the fashion industry.  It’s hard – how can anyone entering into the industry know the nuances of everything going on.  So they have to learn but unfortunately, there’s not a lot of time for the learning curve.  You have to make your business successful and it has to happen right now.  You don’t have seasons and seasons to try.  That’s the problem with all these designers.  

Is it a “learn on the job” situation or are the fashion education institutions geared towards helping the designers appreciate the practical business aspects of the fashion industry?

I think that for a lot of them, it is a “learn on the job” scenario.  That’s why I recommend designers take apprenticeships and be designers for bigger companies to see how that all works.  

Do you think that there is opportunity in Canada for fashion designers or is brain drain to NYC, Milan or London necessary to be successful?

I think that’s what the fashion world gravitates to.  If you want to have global representation, then you have to be in those markets because that’s where all the international editors and retailers are going to be.  It’s very hard to get global representation in smaller markets because you are just not going to get the eyeballs.  This is for no other reason than the editors, buyers and retailers can’t be all over the world every day.  But that’s not to say that Canada can’t have a fashion scene and develop really great talent here and put Canada on the map.  But that needs to be done in a consolidated way within the country.  

With the Asian markets emerging as a dominant player in the fashion industry – how is this going to affect the business of fashion and influence fashion designs?

Asia is big for the luxury brands.  They are all expanding there like rapid fire because they want to be there first.  Asia’s not the place that’s bringing in the heavy dollars yet but it is the place that will bring in the heavy dollars soon.  Everyone wants to be there when it does.  I think it’s going to change the world of fashion because we’re going to see the designers in the world of luxury shift their focus to target that market.  Everything trickles down from the luxury market so if the Louis Vutton’s, Prada’s and Dior’s are doing something to target the Asian market, we’re going to see that trickle down effect throughout the fashion market.  

Why do you think the luxury goods market has not been as negatively affected during this recession?

They have held their own, but they are also a small percentage of the business.  If you really think about it, luxury ready to wear consumer products is really under 10% of the business.  They really deal in everything else: accessories, fragrance, licensing, beauty.  They have held their own because the people who are true consumers of those luxury brands are not the people that have been affected by the recession.  While shopping may not have happened as aggressively, it certainly has still happened.  

What are your thoughts on the US’ move to amend the copyright act to protect fashion designs – what will be the effect?

I haven’t been following it as closely, but I know that it’s a fight that has been going on and it’s a fight worth fighting.  

Christian Louboutin Secures "Exclusivity" North of the Border

Just a quick update from CanadaFashionLaw on what is happening north of the border in respect of the Christian Louboutin v. Yves Saint Laurent.  (This stems back to two previous articles on CanadaFashionLaw.)

At the outset on the Christian Louboutin v. Yves Saint Laurent debacle, Christian Louboutin owned a US trade-mark registration for the red lacquered soled shoes.  The Canadian trade-mark was pending.  Although there was an opportunity for Yves Saint Laurent to go on the offensive via opposition proceedings, it chose (or neglected) to do so.  As such, Christian Louboutin is now the proud owned of a Canadian trade-mark registration for red lacquered soled shoes.  Why didn’t Yves Saint Laurent go on the offensive?  We don’t know.  But check out CanadaFashionLaw’s previous article that looked at business factors affecting multi-jurisdictional litigation.  

Trade-marks Heavy Hitter Comes Out Swinging for Christian Louboutin

Not only has Tiffany thrown in its hat into the Christian Louboutin v. Yves Saint Laurent show down, a trade-marks law international heavy hitter is also tossing its hat into the ring.  That’s right: INTA has also filed an amicus brief supporting Christian Louboutin.  Now for legal fashionistas, INTA means something.  For CanadaFashionLaw’s fabulous non-lawyer fashionistas, let’s provide some context.  Here’s a description of INTA from its own submissions:

“Founded in 1878, INTA is a not-for-profit organization dedicated to the support and advancement of trademarks and related intellectual property concepts as essential elements of trade and commerce.  INTA has over 5,700 in more than 190 countries.  Its members include trademark owners, law firms, and other professionals who regularly assist brand owners in the creation, protection and enforcement of their trademarks.  All of INTA’s members share the goal of promoting an understanding of the essential role trademarks play in fostering informed decisions by consumers, effective commerce and fair competition.”

CanadaFashionLaw has been a committee member of INTA for a number of years and can vouch that in the intellectual property law world, it is a highly respected and influential organization.  So, the fact that INTA is raising the stakes in this case and getting involved is worthy of a glass of pino grigio!  It’s juicy.

Why is INTA getting involved? 

Straight from the branded horse’s mouth:

“[INTA is] interested in the development of clear, consistent and fair principles of trademark and unfair competition law…As an independent organization dedicated to the advancement of trademark law, INTA is uniquely qualified to aid the Court in its determination of this important matter”. 

Translation: it also believes that the court’s decision in respect of the rejection of Christian Louboutin’s request for a preliminary injunction against Yves Saint Laurent is wrong.  As wrong as neon-colored leggings!

    
What’s the problem?

First of all, INTA’s submissions are very narrow.  It only specifically relates to the court’s comments on the validity of Christian Louboutin’s trade-mark registration.  INTA does not comment on the issues of trademark infringement or dilution. 

Here’s INTA’s beef:

a)         In contemplating Christian Louboutin’s trademark rights, the court took an overly broad interpretation: red on fashion articles.  The real issue to consider should have centered on lacquered red on soles of footwear.

b)         The court found that the trade-mark registration was invalid as the color had functional qualities, relying on the doctrine of aesthetic functionality.  INTA holds that the judge did not properly apply the correct analysis for a finding under this doctrine.  Rather than narrowing in the effect that Christian Louboutin’s trade-mark registration would have on the luxury shoe industry, the court looked at the effect it would have throughout the fashion industry.

What does INTA have to say for itself?

Here’s a summary of INTA’s position:

a)        The court appeared to start with the assumption that Christian Louboutin’s trademark registration was invalid, which flies in the face of the presumption of validity when obtaining a trademark registration. 

b)        The court unilaterally broadened Christian Louboutin’s trademark claims to encompass all shades and tones of red, rather than specifically dealing with the color at hand: lacquered red on the sole of footwear. 

c)         The court then construed a hypothetical situation to consider the ramifications of granting an entity a monopoly over a color, rather than analyzing the particulars of this specific scenario. 

d)        The court failed to recognize the substantive work provided by the US Patent and Trademarks Office in ensuring the registered trademarks are valid trademarks that are worthy of the rights conferred onto registered trademarks:

            “Registration is not merely clerical, but rather the result of a substantive examination process and opportunity for interested parties to be heard.”

e)        The trade-mark registration granted by the US Patent and Trademarks Office was entirely consistent with established US trademarks law and, therefore, Christian Louboutin’s trade-mark registration is valid and worthy of recognition.  

f)         The Court’s discussion of Monet’s use of blue in his water lily series was flawed as it was never the subject of a trade-mark and, therefore, falls entirely outside the scope of the matter at hand.

g)        In determining whether the color was functional (thereby negating the trade-mark protection), the Court wrongly applied the doctrine of aesthetic functionality.  INTA provides a useful summary of the purpose of this doctrine:

            “The bedrock of the doctrine is the legitimate need of competitors to use a utilitarian feature that is less expensive, of better quality, or more efficient to manufacture.  By ensuring that competitors remain free to copy useful product features, the doctrine prevents trademark law from undermining its own and the patent law’s pro-competitive objectives.”

h)        The doctrine of aesthetic functionality is a controversial principle, which INTA has lobbied against in past amicus briefs.  Not only does INTA guard against employing this doctrine, but if the Court does adopt this doctrine it should do so correctly.  Overall, INTA maintains that the doctrine of aesthetic functionality has absolutely no application to this case.  

In a united stand with Tiffany, INTA rounds out its submissions by stating:

         “If the District Court’s opinion stands uncorrected, it will have far reaching consequences for brand owners and consumers alike.  Rights granted as a result of the careful examination process of the Federal trademark registration system could be upended arbitrarily, making it easier for third parties to use the well-recognized brand of others, damaging brand owners and increasing the potential for consumer confusion.”

Tiffany Throwing Rocks

Christian Louboutin, Yves Saint Laurent and Tiffany, oh my!  This well-dressed litigation is becoming increasingly more complex.  (CanadaFashionLaw has been following this case extensively – click here for a full rundown).  

In lending a well-jeweled hand to Christian Louboutin in the fight to assert his trade-mark rights to red-bottomed soled shoes, Tiffany throws its iced-out rocks against the most recent decision denying Christian Louboutin injunctive relief against Yves Saint Laurent.  CanadaFashionLaw was happy to get its hands on a copy of Tiffany’s Amicus Brief. 

Although seemingly unrelated (jewelry v. shoes), Tiffany and Christian Louboutin are united in their stand that trade-marks can be comprised of one color (robin’s egg blue and red lacquer).

Why is Tiffany getting involved in Christian Louboutin v. Yves Saint Laurent case? 

It’s a luxury house of cards. 

In the recent decision rejecting Christian Louboutin’s request for a preliminary injunction, the judge called into question the registrability of Christian Louboutin’s trade-mark (red soled shoes) on the basis that a single color cannot act as a trade-mark in the fashion industry.  Relying on the robin’s egg blue as a distinctive part of its branding, Tiffany’s trade-mark could also be susceptible to attack under the same line of reasoning.  Tiffany did not hold back:

“Tiffany files this amicus curiae brief because the District Court’s opinion in this case adopted a sweeping and unprecedented per se rule against granting trademark protection to any single color that is used on any fashion item, even where the color has achieved ‘secondary meaning’ and is associated with a single brand.  Amicus curiae respectfully submit that adoption of such a blanket rule was unnecessary to a resolution of the preliminary injunction motion below and should be rejected by this Court.”

Here’s a summary of Tiffany’s position:

a)         Ownership of a trade-mark registration is prima facie evidence of the validity of the trade-mark.  If that trade-mark registration is to be invalidated, the onus is on the defendant (in this case Yves Saint Laurent) – not on the plaintiff (Christian Louboutin) to prove its validity.

b)         It is established in trade-marks law that a single color can function as a trade-mark, especially when it has acquired secondary meaning.  In the decision, the judge repeatedly acknowledged how infamous Christian Louboutin’s red bottomed soles have become.  Ultimately, the judge made a sweeping exception for the fashion industry.

c)         Rather than making sweeping generalizations about whether established trade-mark law principles apply to the fashion industry as a whole, the judge should have examined the issue at hand:

            “The proper inquiry is whether the particular mark at issues has been registered with the (US Patent and Trademarks Office) and whether the particular mark has secondary meaning”

d)         US trade-mark legislation does not carve out trade-mark principles as applicable to some industries and not applicable to others.  Any such sweeping generalizations are contrary to fundamental principles of trade-marks law.

e)         The judge called into question whether Christian Louboutin’s was a valid registration on account of color being a function of fashion and therefore incapable of being a trade-mark.  Tiffany called into question this rationale:

            “A design feature of a particular product is essential to the use or purpose of the product only if the feature is dictated by the functions to be performed; a feature that merely accommodates a useful function is not enough’. 

            A shoe is a shoe, regardless of the color of its bottom sole.  There is no function to a red bottomed shoe. 

f)         Tiffany then called into question the judge’s reasoning that the red bottomed sole increased production costs, thereby justifying an inflated retail price, which is indicative of the functionality of the trade-mark.  Tiffany argued that this rationale is topsy-turvy.  If the trade-mark decreases the production cost, thereby increasing the profit margin, then there is functionality. 

Stay tuned to CanadaFashionLaw as this case unfolds!