[Guest post] Jacquemus x Nike Swoosh Bag: ‘Just Copy It’ or re-appropriation of Nike’s own trade mark?

With fashion season in full swing, fashion-related IP stories flourish too. This time, Katfriend Spyridon Sipetas (Stockholm University) tells the story of a collaboration – the one between Jacquemus and Nike – that has been already plagued with accusations of copying. Here’s what Spyridon writes:

Jacquemus x Nike Swoosh Bag: ‘Just Copy It’ or re-appropriation of Nike’s own trade mark?

by Spyridon Sipetas

Le sac Swoosh -
Instagram (@Jacquemus)

On February 26, Jacquemus and Nike revealed their latest collaborative piece, ‘Le sac Swoosh’ (or ‘The Swoosh bag’), teasing their upcoming Spring/Summer 2024 collection, in the context of their partnership, dating back to 2022.

Both Nike and Jacquemus are brands retaining a remarkable legacy in the realm of fashion … and IP too. Nike, a titan in the industry, has managed to register more than 3,000 trade marks throughout the years on a European level and owns the title of the second most successful applicant for registered Community designs at the EUIPO for the past decade, as per the EUIPO’s Design Focus Report (2010-2019).

Jacquemus’ savviness in navigating the intricacies of IP is no less impressive, as exemplified by the triumphant registration of their signature ‘Le Chiquito bag’ both as a registered Community design in more than six of its variations (application Nos. 008516199, 008516199, 008516199, 008723209, 008726046, and 015025180) and as a three-dimensional (3D) trade mark. Obtaining registration for a non-conventional trade mark is a quest that even some of the established iconic bags of major fashion brands have failed in; most notably, the Dior saddle bag was denied trade mark protection by the EUIPO, due to the fact that it allegedly did not meet the requirement for ‘significant departure from the norm or customs of the sector’, a test that is applied to less conventional signs (as further discussed on the IPKat here).

Anyhow, after the hype around the brand’s signature Chiquito bag started quieting down, Jacquemus geared up to create the brand’s next ‘it bag’ (or rather, to many, ‘niche micro-trend’) - this time in the shape of Nike’s distinct Swoosh logo. The bag was first launched on Jacquemus’ Instagram account and stirred an intense debate among the brands’ audience.

‘Nike’s signature Swoosh has received the Jacquemus treatment’ write fashion tabloids and one might wonder… Is it really the ‘Jacquemus’ treatment? More specifically, someone did in fact express this concern and it was none other than art director and graphic designer Davide Perella. ‘Imitation is the sincerest form of flattery’ said Oscar Wilde once and Perella chose to paraphrase this with a touch of bitterness, by commenting: ‘It reminds me something by my designs’ on the post launching the collaboration piece. His comment was apparently referring to his version of a concept Nike bag, also shaped as the brand’s Swoosh logo, which he shared with the internet world in 2020.

Perella's Post - Instagram (@davideperella)

Milan-based designer Perella has created several brand mock-up products in the past few years and has been lauded in the industry for his edgy recreations of several staple pieces. His list of collaborations includes brands such as Moschino, where he worked alongside Jeremy Scott, Alberta Ferretti, and (unsurprisingly)… Nike. Perella did not only collaborate with Nike for the creation of 3D installations for the Nike Lab ST18 Milan store, but he also designed custom Nike formal wear, creating an amalgam of streetwear and high fashion, for singer J Balvin. The brand’s approval of this collaboration could be assumed as they have paired up with the singer for the launching of more than three different collaboration pairs of shoes. The cherry on top of this list of indications that Perella’s work could not have gone unnoticed by the brands is the Nike x Jacquemus concept bag, which he created and shared in 2022 featuring Jacquemus’ best-seller Chiquito bag adorned with Nike’s Swoosh logo, predicting the brands’ collaboration.

But even if this scenario holds true and the Swoosh bag’s design is not coincidental, can one’s reproduction of a design comprised of an unauthorized use of their own trade mark in 3D form be considered as design copying? In other words, is it possible to have rights over a potential infringement? - an oxymoron that is even more accentuated when the alleged ‘copyist’ is the owner of the trade mark used without their authorization. This is obviously something that several commentators -with or without a legal background- were quick to point out, on top of the fact that the bag whose design was supposedly copied is ‘a trade marked logo with a strap’.

While prominent fashion brands free-riding on the creativity of indie/emerging designers would be nothing new to the sector, does this ethical quandary persist when the design in question is a registered trade mark used without the brand's authorization or does the reciprocal ‘borrowing’ of each others’ IP neutralise the scenario? Although to many the moral scale might clearly still lean more heavily on one side -that of the seemingly weaker party- answering this in legal terms is a bit more complex.

Kitten with a mini Chiquito - Pinterest

First of all, if we were to imagine how such case would unfold under European law, to assess whether Perella’s design could be infringing of Nike’s Swoosh trade mark, it is questionable to what extent it meets the requirement of being ‘used in the course of trade’, in the sense clarified in Arsenal (C-206/01) as well as in Céline (C-17/06). That is because his version of the Nike Swoosh bag was only uploaded as a ‘concept design’ on his account and not actually distributed or made available for sale. This is also clear from the designer’s statement that he only ‘brought to life’ some pieces exclusively for the purpose of dressing singer J Balvin, as previously mentioned.

Furthermore, even if his designs were to be considered as being used in the course of trade, their idiosyncratic nature could potentially qualify them as non-infringing under the guise of freedom of expression (Article 10 ECHR, Article 11 EU Charter). Despite the fact that in the EU freedom of expression is not acknowledged as an explicit exception or defence to trade mark infringement claims, the matter is currently under discussion as to whether it could fall under the notion of ‘due cause’ (Article 9(2)(c) EUTMR; Article 10(6) and (2)(c) EUTMD - as discussed further on the IPKat here and here).

Regardless of the legal status of the design in relation to Nike’s trade mark, however, its protectability by copyright is a completely separate matter. Again, if we were to look at such a hypothetical case from a European perspective, as it is well-established in the case law of the CJEU, the only requirements for copyright subsistence are the existence of a work (Levola Hengelo, C-310/17) that is original in the sense that it is its author’s own intellectual creation (Infopaq, C-5/08), bearing the author’s personal touch (Painer, C-145/10), a result of their free and creative choices, and not dictated by any technical considerations (FAPL, C-403/08). This is also the case for works of applied art, that shall not be subjected to differentiated treatment, as solidified by Cofemel, C-683/18. Thus, it would be a matter of judgement whether this design, that is arguably nothing more than Nike’s logo in 3D, yet quite unique for its kind and very far from practical (or, to speak in trade mark terms, ‘the norm of the sector’), shall be deemed original. If that were to be the case, one would still have to establish derivation in order to prove copyright infringement, which despite the abovementioned list of indications, is a daunting task for smaller designers -no matter how high-profile their work is- when confronting corporate behemoths. Nevertheless, the potential attempt of the designer to enforce his copyright on the design could trigger a series of back-and-forth lawsuits, also regarding the use of the brands’ trade marks/designs on his part.

In any case, either this is a peak-gaslighting moment by Perella, or an actually enforceable infringement case, it is in fact high time emerging designers start receiving credit for the inspiration big brands -as well as fast fashion companies- very often draw from them. Until that happens, the internet’s favourite fashion watchdogs -and Kats- will be onto calling them out.
[Guest post] Jacquemus x Nike Swoosh Bag: ‘Just Copy It’ or re-appropriation of Nike’s own trade mark? [Guest post] Jacquemus x Nike Swoosh Bag: ‘Just Copy It’ or re-appropriation of Nike’s own trade mark? Reviewed by Eleonora Rosati on Monday, March 04, 2024 Rating: 5

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