Ain't No Laurent Without Some Irony: Hedi Slimane and the Rise of Parody Fashion

Some may say that there is no Laurent without Yves, but Hedi Slimane is definitely not one of them. Luxury Goods International (LGI), the owner of Saint Laurent Paris’ trademarks, is suing Jeanine Heller, founder of What About Yves, for trademark infringement, trademark dilution, false designation of origin and unfair competition. Her parody t-shirts had already gotten her into some trouble with Chanel in the past (the two parties recently came to a settlement), but the company’s dispute with Slimane seems to be particularly filled with animosity.

In 2012, Slimane renamed the Yves Saint Laurent Paris fashion to Saint Laurent Paris. This change might have seemed like an organic part of Slimane’s overhaul of the brand in an attempt to give it a more modern feel, but some took it as a simple act of disrespect towards the man who made the label what it is today. About a year after LGI filed to register the new name, What About Yves created a series of parody t-shirts. “Ain’t No Laurent Without Yves”, the witty catch phrase displayed on Heller’s merchandise, emerged from the uproar caused by the removal of the late designer’s first name from the fashion house’s label. Eventually, the house’s creative director decided to pull its products from Colette Paris, a high-end French boutique that also happened to stock What About Yves t-shirts. LGI tried reaching out to Heller multiple times at the beginning of 2013 to inform her of the their claims and objections regarding her use of “Ain’t Laurent Without Yves.” Yet, those correspondences went unanswered and Heller’s merchandise kept being sold.

In their complaint, LGI states that Heller’s “infringing mark as used on Defendant’s infringing products creates an identical or virtually identical commercial impression to LGI’s trademark due to the similarity in sound and appearance and arrangement.” The plaintiff also alleges that Heller’s use of lesser quality material for her merchandise and an identical typeset for her mark are part of an attempt “to pass [her] infringing products off as [LGI’s] products in a manner calculated to deceive Plaintiff’s customers and members of the general public in that Defendant has applied a nearly identical mark to LGI’s marks to goods of the kind Plaintiff regularly markets and sells.”

The situation in which LGI and Heller find themselves is not the first of its kind. Amy Wang notes that ironic fashion has played an important role in the industry in recent years. A desire to create a new form of luxury that would be more available to customers has led to the rise of a phenomenon that has not spared any of the major players in the market. Brian Lichtenberg, a notable designer in that niche, has parodied many brands including Balmain, Hermès, and North Face. Creatively speaking, the revival of streetwear caused by ironic fashion may be a welcome trend, but does it constitute legitimate legal parody? As Wang’s blog points out, the intuitive response to some streetwear designers’ work may be to argue that it is protected by the First Amendment, but such a claim calls for nuance.

As the usual defense invoked against trademark infringement and dilution, the two causes of action provided by the Lanham Act, a “successful parody” must: (i) “convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody,” and (ii) “communicate some articulable element of satire, ridicule, joking or amusement.” Ultimately, a successful parody will diminish the possibility of confusion between the plaintiff and the defendant’s marks, the sole presence of a humorous or satirical message therefore not being sufficient to establish the existence of a legal parody, contrary to popular belief.

Historically, some courts have ruled in favour of parodies for First Amendment reasons, regardless of the likelihood of confusion. However, recent trademark case law suggests that courts favour trademark infringement rulings for made-for-profit merchandise, as commercial speech is not fully protected by the First Amendment.

At first glance, it appears LGI has strong case. In April of 2013, Heller filed to register “Ain’t Laurent Without Yves” as a trademark, but the United States Patent and Trademark Office (USPTO) challenged the application. They claimed that Heller’s mark was likely to cause confusion with some of LGI’s existing trademarks. As the legality of a parody depends on whether confusion is a legitimate concern and whether the original brand’s value becomes diluted, Heller seems to have failed the first test. Yet, what does or does not constitute parody is determined on a contextual basis by courts. The nature of Heller’s merchandise, combined with the known story behind it, might just meet the definition of a successful parody.

This lawsuit will not be the last of its kind. While some designers have decided to embrace ironic fashion, others see it as a way of “making profit from riding the coattails, so to speak, of well known, in demand, and often pricey brands.” As a niche that claims to be a response to capitalism and the desire to reform the fashion industry, the turn this trend has taken might just be where the real irony lies.

 

Aicha Tohry is an IPilogue Editor and a JD Candidate at Université de Montréal

3 Comments
  1. Terrific entry Ms. Tohry, it’s truly amusing to see how silly fashion people react to these types of situations.

  2. Great entry Aicha Tohry! Parody as a defence in trade-marks has been a point of interest and some confusion for me, when we briefly went over it in trade-marks class. One thing we talked about is that the consumers must “get” that it’s a joke.

    If that’s the case, then would consumers’s reactions be a necessary element, in the analysis of ii) “communicate some articulable element of satire, ridicule, joking or amusement”? Or is it the case that the analysis centres around the efforts made by the party claiming parody defence, regardless of how receptive consumers are towards those efforts (i.e. regardless of whether consumers “get” that it’s a joke in the end)? My guess is that the answer is the former, so would evidence of lack of consumer confusion (e.g. through surveys) be required to prove the defence?

  3. Thank you, Sabrina!

    In this case, the efforts made by the party invoking that defence would be irrelevant to determine whether their trademark is a successful parody or not. The “element of satire, ridicule, joking or amusement” must be perceivable. However, a successful parody can result in consumer confusion, which is where proving a lack of confusion would be necessary.

    Courts usually look at a few factors: (1) the strength or distinctiveness of the plaintiff’s mark; (2) the similarity of the two marks; (3) the similarity of the goods; (4) the similarity of the facilities the two parties used in their businesses; (5) the similarity of the advertising used by the two parties; (6) the defendant’s intent; and (7) actual confusion.

    In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, the court reiterated the fact that “no actual confusion is required to prove a case of trademark infringement, although the presence of actual confusion can be persuasive evidence.” For instance, in this particular case, mistake spellings made by retailers on invoices were mentioned.

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