H&M Sues Forever 21? Beach please!

In an interesting twist, arguably the two most common fashion design piracy defendants are pitted against each other. H & M Hennes & Mauritz AB (“H&M”) has issued a complaint against Forever 21, Inc., in the US District Court Southern District of New York. Below is a comparative image of the tote bags at issue:

H&M

(H & M Hennes & Mauritz AB)                    (Forever 21, Inc.)

There is no doubt about it – there is a stark similarity between the designs.

H&M, which professes to be the second largest global clothing retailer, first sold its BEACH PLEASE tote bag in the US in April 2014.   As of July 2015, it sold thousands of BEACH PLEASE tote bags globally. H&M formalized its copyright to the design by securing a copyright registration, which was granted on June 12, 2015. H&M alleges that Forever 21 subsequently commissioned a Chinese-based manufacturer to produce infringing designs, which were sold globally. H&M has reason to believe that Forever 21 has profited substantially from sales of the BEACH PLEASE tote bag.

H&M is seeking the following relief:

  • Forever 21 be enjoined from:
    • creating, importing, purchasing, distributing, displaying, selling or offering to sell tote bags that infringe H&M’s BEACH PLEASE tote bag
    • using H&M’s intellectual property rights regarding the tote bags;
    • inducing others to commit infringing acts.
  • An accounting of Forever 21’s profits derived from the advertising, promoting, marketing, purchasing, distributing, selling or offering of the infringing products
  • Damages
  • Costs of litigation

H&M bases its complaint on 5 grounds:

  • H&M’s graphic is subject to copyright protection. Forever 21’s graphic is substantially similar, if not virtually identical, to that of H&M, thereby constituting copyright infringement.
  • The graphic is non-functional, inherently distinctive and has acquired secondary meaning. As such H&M asserts that the BEACH PLEASE design functions as trade dress; Forever 21’s unauthorized use of the BEACH PLEASE logo constitutes trade dress infringement.
  • Forever 21’s unauthorized use also constitutes a false designation of origin.
  • Moreover, Forever 21’s unauthorized use constitutes an attempt to pass off its products, constituting statutory and common law unfair competition against H&M.

What is interesting to the fashion law community is that H&M and Forever 21 are notorious defendants in the fashion industry. In fact, H&M takes note of this trend with respect to Forever 21 stating in the Complaint: “[Forever 21] has also been accused of copyright violations in the past”. So to a large extent, we have the kettle calling the pot black. However, it is interesting that they are now warring amongst themselves. Perhaps it is karma; perhaps it is just business. Nonetheless, in this instance the magnifying glass is focused on Forever 21. In the fashion law community, Forever 21’s disregard for intellectual property rights and propensity to resolve matters outside of litigation has some wondering whether this is all a part of its business strategy. It may simply be cheaper to pay an undisclosed settlement sum to the designer rather than sourcing new designs or paying licensing royalties. It would not be shocking if this case settled, but it sure would be interesting if it did not!

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Quebec Court: Canada’s Kinda Bilingual

Previously, CanadaFashionLaw covered retailers’ challenge to the Office Quebecois de la Langue Francaise (basically, the French language police).

The Quebec Superior Court issued their decision last week which put the reins on the French language police.

Public signage and marketing in Quebec is regulated by the Quebec Charter of French Language.  The French Charter requires that signage/commercial advertisements be predominantly in French.  However, there are exceptions when trade-marks are involved.  Generally, where the trade-mark is registered in English, the brand owner is not required to display the French equivalent.  In a recent decision that was issued last week, the Superior Court of Quebec held that a non-French trade-mark does not need to be accompanied with a French descriptor.  However, if the French equivalent is also a registered trade-mark, the brand owner is required to use the French version.

Ultimately, it is a business decision on whether your company wishes to register the French version.  If there are strong ties to the Quebec culture, using the French equivalent will certainly assist in fostering better relations with the Quebecois.  If, however, Quebec is a secondary market, it may streamline your company’s marketing materials by not registering in French as well.

Wrapping Up 2013

A very happy belated new year!

Already 2014 is proving to be a very exciting year!  CanadaFashionLaw is delighted and honoured to have been asked to join Gilbert’s LLP’s partnership.  In addition, in early January CanadaFashionLaw joined a panel at the University of British Columbia’s fashion law panel.

Looking back at 2013, here are the top 5 articles posted on CanadaFashionLaw:

Naturally, throughout 2014 CanadaFashionLaw will continue to cover interesting cases, changes in legislation and interview players in the fashion industry.  Are there any topics in particular you’d like to read about?  Let us know – we’re always looking for feedback.

We’ve also added a “Getting Around Town” page that tracks all of CanadaFashionLaw’s upcoming and past speaking gigs, authored articles and interviews.  Feel free to check it out.

Wishing the best for a happy, healthy and successful 2014!