Letter from AmeriKat: Express's plaid pain in summary judgment for Forever 21

The AmeriKat is experiencing a mean blend of jet-lag and sleeplessness which is resulting in bouts of highly productive activities at odd hours in the morning. As a result, she has a little tail to share with her readers. A couple of weeks ago US District Judge Otis D. Wright issued his reasons for a summary judgment in favor of Forever21 in case brought against the fast fashion retailer by the clothing retailer and US shopping mall staple, Express, for copyright and trade dress infringement of a plaid design and track jacket respectively. Judge Wright held that although Express held registered copyrights for the four plaid fabric designs, they could not enforce them because the designer, Michael Tower, could not prove that his designs were sufficiently original to be protected. (picture, left - the AmeriKat sporting her latest plaid fashion)

To prove copyright infringement, the claimant has the burden of establishing that they own a valid copyright and the copying was of the elements in the claimant's work that were original (Feist Pubs v Rural Tel. Service (1991)). Tower's testimony failed to do this. The four plaids at issue - Bruin, Jack, Ocean and Roth - were designed by Express designer Michael Tower based on a preexisting plaid design that a CAD designer replicated on the Express's CAD system. Tower's testimony confirmed that each of the plaid designs were based on a previous source and were therefore derivative works. Copyright protection of derivative works only go so far as to protect the elements of the work that can be distinguished from the preexisting material. These modified elements can only be protected by copyright if they possess some minimal degree of creativity. Mere changes to color in a design are not protectable, as they can be under moral rights in France. Tower's testimony evidenced that Express had no proof of the design process or the modifications made to the earlier designs in creation of the new plaids. The Court also concluded that even if Express's copyright registrations were entitled to a presumptive effect (the main benefit of a US copyright registration), Tower's testimony rebutted that presumption (Folio Impressions v Byer (1991)).

Judge Wright, for the District Court for the Central District of California (which is part of the Ninth Circuit) further held that the trade dress claims over the track jacket was not protectable for reasons that the jacket was not recognizable to consumers as indicating its origin, nor was it massive seller for Express . Under section 43(a) of the Lanham Act, whether it be for a trade mark claim or a trade dress claim, Express had to show that the jacket was distinctive, was non-functional and there was a likelihood of confusion between the Express jacket and Forever 21's (Kendall-Jackson Winery v E&J Gallo Winery (1998)). A design will have distinctiveness and protection when it can be shown that the design has acquired a secondary meaning (Wal-Mart Stores v Samara Bros (2000)). A secondary meaning, in the Ninth Circuit, is 'the mental association by a substantial segment of consumers and potential customers between the alleged [trade dress] and a single source of their product" (Levi Straus & Co v Blue Bell (1985)). Like anyone trade mark lawyer knows, adducing evidence as to secondary meaning is a mammoth task and the evidential requirements in the Ninth Circuit are just as onerous. The evidence provided to the court can fall in two types: direct and circumstantial. Direct evidence is your garden variety survey evidence of purchasers. Circumstantial evidence is evidence relating to the exclusivity, manner, and length of use, amount and manner of advertising, amount of sales, and the number of customers and the claimant's established foot-hold in the market.

Express relied on circumstantial evidence in their trade dress claim which unconvinced the court. The jacket had been sold for less than 5 months and in its last few weeks on the shop floor spent its remaining life on the sale rack. Express also did not promote or advertise the jacket by itself and the sales of the jacket were paltry in comparison to sales of other Express items. Express instead emphasized that the Forever 21 copy was the "exact appearance" of their jacket. Evidence of deliberate copying may, in some cases, support an inference of secondary meaning but it is not enough, in the absence of other circumstantial evidence of secondary meanings, for a finding of secondary meaning.

Take-Home Lesson: The Amerikat doubts this outcome of this case could have been much different had Express had records of their design process, but it is a lesson to all designers and design studios out there - keep a record of your design process, with dates, names, and short details of your process! If you want to scare your design team in doing so, make them read Tower's testimony. Also, if you are going to try and claim protection under trade dress you need to actively promote and market your product as a stand-alone item. This will not only ensure that you can produce evidence that you have spent a certain amount of money promoting the item as a 'calling card' of your brand, but that marketing will hopefully also produce increased sales figures and a longer floor-life of the item, all of which is further evidence that may help in establishing a claim.