Knockoffs run rampant in the retail and fashion industries. For those of us that are fashion-forward but not looking to incur debilitating debt, we resign ourselves to settling for the closest lookalike. But while these products may save us some money, it is usually at the expense of designers from whose unique and original work these products are derived. So how can designers protect their handiwork? The answer: trade dress.
A recent complaint filed in the Central District of California helps to illustrate the concept of trade dress and the scope of its legal power. The plaintiff, Nicole Lee, a handbag and accessories company based in Los Angeles, filed a complaint on September 29 alleging trade dress infringement against several handbag companies.
Despite holding various copyrights to the artwork and features of its handbags, as well as trademarks for its logo and other features, these rights do not protect the handbags as a whole. Trade dress, on the other hand, is able to ensure protection of the handbags in their entirety.
So, what exactly is trade dress? The term generally refers to visual characteristics of a product or its packaging that identify to consumers the source of that particular product. Essentially, it is the total image, design, and appearance of a product or its packaging. The US Supreme Court noted in Two Pesos, Inc. v Taco Cabana, Inc. that trade dress may include features such as “size, shape, color or color combinations, texture, [or] graphics”. As such, a handbag easily falls within the ambit of trade dress.
Both the US and Canada acknowledge trade dress as a valid right; there are both similarities and differences in the jurisprudence of each jurisdiction.
A statutory cause of action for trade dress infringement is provided by both American and Canadian legislation. For the former, section 43(a) of the Lanham Act creates a federal cause of action for unfair competition. The provision prohibits the sale of goods by use of:
any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.
In Canada, a statutory cause of action for trade dress infringement is legitimated by a conjunctive reading of sections 2, 7(b) and 7(c) of the Trade-marks Act. Section 2 defines a trademark as including a “distinguishing guise” which is the “shaping of wares or their containers” or “a mode of wrapping or packaging wares.” A trade dress can thus be registered with the Trademarks Office as a distinguishing guise and its owner can enforce its right as would any other trademark owner. Sections 7(b) and 7(c) provide a statutory cause of action for all trademarks.
In both the US and Canada, for a trade dress to be registered, it must be both non-functional and distinctive. Generally, a trade dress is not “functional” if its configuration of shapes, designs, colours or materials does not serve a utility or function outside of creating recognition in the consumer’s mind. “Distinctive” means that consumers perceive a trade dress as identifying a product’s source; in other words, there is an association between the trade dress and a source in the consumer’s mind.
Unregistered Trade Dress
An unregistered trade dress is still subject to legal protection. In the US, a claim under section 43(a) of the Lanham Act is not circumscribed to registered trade dresses. The test articulated in Two Pesos for finding a trade dress infringement requires a plaintiff to establish that:
1) the design is non-functional;
2) the design is distinctive; and
3) there is a likelihood of confusion.
In Canada, unregistered trade dresses can be protected at common law through the tort of passing off. The classic test of passing off (see Ciba-Geigy Canada Ltd. v. Apotex Inc.) requires a plaintiff to demonstrate:
1) existence of goodwill in the trade dress;
2) deception of the public due to a misrepresentation; and
3) actual or potential damage to the plaintiff.
Additionally, a plaintiff must show the design to be non-functional.
Does Nicole Lee have a case?
Nicole Lee claims it owns trade dress in its designs, which consists of an “artistic depiction of a stylish woman with a doll-like face” combined with other Nicole Lee-associated elements such as, but not limited to, “a pyramid-shaped lock with the brand name in red” and “beige lining with small graphics and brand name”.
The alleged trade dress is not registered, but as mentioned above, this does not bar legal protection or right to bring a legal action.
In its complaint, the plaintiff claims that its trade dress is non-functional and distinctive as “[t]he appearance, nature and mood of [the trade dress] are of such an unusual design that a customer would immediately rely on them to ascertain the source of the product”. The presence of confusion is also alleged as the defendants manufactured and sold copies of the plaintiff’s handbags, sometimes “with confusing and misleading references to #NicoleLee or Brand: Nicole Lee.”
Based on the contents of the complaint, it seems that so long as Nicole Lee is able to prove all of its allegations at trial, it may be well on its way to making out a valid claim for trade dress infringement under US law. If the proceedings were to take place in a Canadian court, the company could successfully establish a passing off claim so long as it can prove the asserted non-functionality, goodwill in the trade dress, deception of public, and the damages it believes to be in excess of $5,000,000.
Sally Kang is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.
“Get up” or “Trade Dress” cases as you mentioned necessitate that the courts look at the overall impression or total design of a product as opposed dissecting various elements that comprise the whole. This is what makes a successful claim for trademark infringement in cases for designs that much more difficult.
Is a Nicole-Lee bag Distinctive enough?
Trademark infringement generally only works for well-recognized designs, that are extremely popular, well-known and in the public eye. One example that comes to mind in the purse world is the Hermès “Berkin Bag” – popularized as a staple in Hollywood arm-candy.
A thorough investigation into the amount of advertising dollars and the popularity of Nicole-Lee purses amongst consumers (via surveys) is imperative for a finding of infringement in a case like this. In other words, would the “hurried consumer” look at the allegedly infringing purse and say “this is a Nicole-Lee” product with the same type of conviction they would say that “This is a (Hermès) Berkin Bag” ?
The lawsuit mentions the Nicole Lee purses can be found in boutique shops around California – but courts should also look at its popularity outside of these small stores. While the brand can may acquire distinctive in select LA based communities, distinctiveness may require popularity outside of boutique shops and into a larger-scale market.
What about the functionality of a purse?
The primary set-back for Nicole-Lee is that purses, as a whole, are inherently functional. I took a look at the photos in the lawsuit and at first glance, the allegedly infringing purse(s) look substantially similar to the Nicole-Lee purse(s) by way of the images and colors embellished on the face of the purses.
However, the location of the zippers and length of straps are fundamentally integrated in the overall “look” of the purse. Thus functionality here is difficult to separate from the design.
While Nicole-Lee may be successful on her claims for infringement of the certain images (i.e. of the tiger or doll-like girl) displayed on the purses (maybe copyright can play a hand here), I cannot say with certainty that the Nicole-Lee purse designs, as a whole, have transcended their purpose of functionality into an indicator of source.
As always, the courts must be very careful so as to not allow for an unfair monopoly over the functional elements of such a a purse’s size, straps or zippers.
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