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!

Starting Off 2015 with a Bang

Happy New Year Fashionistas!  Already 2015 is scheduled to be an exciting and busy year!

CanadaFashionLaw has some great news to share!

1. Presentation at the Toronto Fashion Incubator (January 26)

CanadaFashionLaw is delighted to be a mentor with the Toronto Fashion Incubator.  As part of her ‘mentor-ly’ duties, CanadaFashionLaw will be presenting at TFI on how designers can best protect their fashion designs.  If you’re looking to sign up, click here.

2. Annual General Meeting for the Fashion Group International (January 27)

Save the date for FGI’s AGM, which will be held on January 27.  CanadaFashionLaw is delighted to be nominated as co-chair for FGI, along with Roger Gingerich of Gingerich Group.

If one of your new year resolutions is to roll up your sleeves and get involved in the fashion community, these are 2 of the top fashion organizations in Canada!

If you attend either or both of these events, be sure to say hi!

3D Printing: The New Industrial Revolution?

CanadaFashionLaw recently participated as a panelist at a fashion law symposium in Chicago.  Overall, the theme of the symposium examined technology’s role in fashion.  Specifically, CanadaFashionLaw discussed intellectual property implications for the fashion world in its incorporation of 3D printing and scanning technologies.

Whereas another panelist heralded 3D printing as creating a new world order in the global supply chain, CanadaFashionLaw took a more measured approach.  This is not to take anything away from the sheer impressive awesomeness of 3D printing but to some extent we’ve seen similar digitization movements before.  So, will there be a new world order?  Likely, not.  Will it impact the marketplace and provide more opportunities?  Likely, yes.  Let us explain.

3D printing is exactly what it sounds like.  The ability to print 3-dimensional objects from a printer.  Although this technology has been around for a number of decades, it has only recently caught the attention of the mass market.  The foundational patents that provided market exclusivity expired and now the technology is open to all to use.  As such, given that there is a proliferation of 3D printing and scanning companies (and also given that the technology has evolved to iron out the kinks), 3D printing is cheaper and more accessible.  Whereas 3D printing was restricted to large companies and used for prototyping, 3D printing has now gone to mass market.  This facilitates the democratization of manufacturing, whereby small companies and individuals can build their own products with relative ease.

Of course, this raises huge intellectual property concerns.  If you start to print objects that are the subject of patent, copyright and trademark protection, are you infringing intellectual property rights?  Where does the liability fall: with the individual printing the object or with the CAD-file provider or both?  Will the proliferation of counterfeit products become even more rampant?  How practical are enforcement attempts?  Should there be a distinction between private and commercial use?

There is no doubt that technology is a hare and law is the tortoise in terms of evolution.  However, there are lessons to be learned from previous technological developments that can be applied to this new development.  For example, similarities can be drawn from the digitization of the music industry.  Yes, the retail model of the music industry was altered by the proliferation of MP3’s but the foundation of copyright protection afforded to the music industry largely remained the same.  Applied simply to the 3D printing world, if you start printing 3D objects where a 3rd party owns intellectual property rights to that object, you are exposing yourself to risk.

If you want to chat more about 3D printing and its application to the fashion industry, feel free to reach out to CanadaFashionLaw or check out the Spreading the Word page for upcoming and past speaking engagements, published articles and journalistic commentary.