Earn (Steal?) Your Stripes

January 29, 2019

By Christian Rome Lansang

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An ongoing feud between two of the largest fashion powerhouses is approaching its two-year mark. In one corner stands Gucci, an age-old edifice of high fashion known for its quality of fabric, design, and creativity. In the opposite corner stands Forever 21, the fast-fashion cash cow whose business model is not centered around quality but rather on outreach, availability, and one of the most efficient supply chains in the world.

A legal battle began in December 2016, when Gucci’s legal counsel sent Forever 21 cease-and-desist letters requesting the company to stop sales on garments that featured use of blue-red-blue stripes. In subsequent months, Gucci expanded their request to green-red-green stripes as well.

Forever 21 did not only fail to comply with the requests in the cease-and-desist letters, but actually filed a lawsuit against Gucci. The suit was by nature preemptive and requested a California federal court to determine that Forever 21’s  use of the iconic Gucci stripes was not in violation of Gucci trademarks.

Trademark infringement is a very complicated issue in the world of fashion. A trademark can be a word, name, symbol, device, or any combination thereof used to identify and distinguish one’s good(s) from those manufactured or sold by others, as well as to indicate the source of the goods (15 U.S.C. § 1127). Trademark infringement occurs when the sale of a good carries a “likelihood of confusion.” That is, if the sale of the good is likely to cause confusion to the consumer as to the source of that good or as to the sponsorship of such goods, then trademark infringement has taken place.

        Resolving such a multifaceted copyright case in the court would have been burdensome for any judge to formally decide. The Fashion Law blog has reported that a settlement has been reached between Gucci and Forever 21, and a judge won’t have to be placed in such an precarious position. However, even though this particular case was settled, there are several key issues that will certainly be brought up in cases in the future.

        By looking at the garments Forever 21 created, it is clear to any occasional shopper that they were appropriating Gucci’s designs. Yet, this probably would not be enough evidence to find Forever 21 of copyright infringement; the “likelihood of confusion” test is not triggered. No consumer would walk into Forever 21 and be confused as to the sourcing or endorsement of these products; they would neither think that Forever 21 was the creator of these stripes, or that they were buying a Gucci product.

        However, even if the “likelihood for confusion” test isn’t reached, there is an alternative avenue high-end fashion houses can take to ensure they are not just idly standing by as fast fashion companies produce dupes of their designs. The holders of a trademark can sue for trademark dilution when the tarnishing of that mark takes place by another party. Notably, the suit can take place without the “likelihood for confusion” test being met. A particularly illustrative case centered around such an issue took place in 1996, when Toys ‘R’ Us successfully won a lawsuit against the pornographic Web site adultrus.com.

        While the argument that a consumer is confused by the source of a blue-red-blue striped garment at a Forever 21 store is unpersuasive, it does seem reasonable that Forever 21 using Gucci’s trademark stripes dilute the value behind the stripes. Gucci, like other fashion houses, garners value from characteristics of exclusivity, and if more and more consumers have access to garments with these trademarks, in this case the iconic Gucci stripes, then perhaps a legitimate call for dilution exists.

Gucci did file a claim of trademark dilution towards Forever 21, but because a settlement was reached, one can only speculate how this suit would have been resolved. Nevertheless, as social media makes high end garments more visible and as technology to replicate designs becomes more advanced, issues regarding copyright in the fashion industry will only grow in number.