In one corner, you have the 19-year-old breakout star of the Kardashian/Jenner clan, Kylie Jenner, who is making a name for herself with her cosmetics and fashion empire. In the other corner, you have the 48-year-old singer, songwriter, dancer and actress, Kylie Minogue, best known for her song “Can’t Get You Out of My Head.”

In an effort to expand her empire, Kylie Jenner, Inc. filed a trademark application on April 1, 2015, to register the mark KYLIE for “Advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others.” Although Ms. Jenner’s trademark application was approved for publication on August 25, 2015, world-renowned pop star Kylie Minogue filed a Notice of Opposition before the Trademark Trial and Appeal Board, on February 22, 2016, based on the following grounds: 1) priority and likelihood of confusion, 2) dilution by blurring and 3) dilution by tarnishment. Ms. Minogue also cites her various registrations and applications for the following marks: KYLIE, KYLIE MINOGUE, KYLIE MINOGUE DARLING, and LUCKY – THE KYLIE MINOGUE MUSICAL.

In support of her Opposition, Ms. Minogue was self-described as an “internationally renowned performing artist, humanitarian, and breast cancer activist” who “has been in the entertainment industry since 1979,” while Ms. Jenner was described as “a 2015 home-schooled graduate of Laurel Springs School in Ojai, California” and “a secondary reality television personality who appeared on the television series ‘Keeping Up With the Kardashians’ as a supporting character.”

Just as tabloid readers and IP nerds were settling in for an epic battle, it appears the Kylies have settled this matter amicability given that Ms. Minogue withdrew her Opposition on January 19, 2017, and the matter was terminated on January 26, 2017.  Such settlements can involve payments, transfers of trademarks and/or coexistence agreements where the parties agree not to compete with each other. In this instance, Ms. Jenner might have agreed not to use KYLIE to fund raise for humanitarian causes, and Ms. Minogue might have agreed not to use KYLIE to launch a makeup line. In any event, the Kylies are stepping away to their respective corners.

We previously wrote about the copyright battle between two of the largest cheerleader uniform manufacturers. Plaintiff Varsity Brand, Inc. claimed that Star Athletica, LLC had infringed its copyrights by manufacturing cheerleader uniforms with similar design elements, like stripes, chevrons, zigzags and color blocks. The Supreme Court granted certiorari to resolve at least nine conflicting tests for “separability”: the test as to whether the decorative elements can be “identified separately from, and …existing independently of, the utilitarian aspects of the article.”  (17 U.S.C. § 101).

Justice Thomas, writing for the 6-2 majority established a two-part test:

[T]he artistic feature of the design of a useful article is eligible for copyright protection if the feature (1) can be perceived as a two-or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic or sculptural work either on its own or in some other medium if imagined separately from the useful article.

Relying entirely on the text of The Copyright Act, the Court concluded that “if the arrangements of colors, shapes, stripes and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied to another medium-for example, on a painter’s canvas-they would qualify as ‘two-dimensional … works of …art’ §101.”

The Court upheld the 6th Circuit’s decision that design elements, like those on Varsity’s cheerleader uniforms, were subject to copyright protection but remanded the case for further determination as to whether Varsity’s surface decorations “are sufficiently original to qualify for copyright protection.”  Fn 1.

The Court’s decision may have wide implications in the clothing and furniture industries, where design elements are often intertwined with the utilitarian elements of the products.

Hard Candy, LLC (“Hard Candy”) sued The Procter & Gamble Company (“P&G”), parent company to CoverGirl in the federal district court of Florida for 1) federal trademark infringement, 2) federal unfair competition, 3) common law trademark infringement, and 4) common law unfair competition over the alleged infringing design of Katy Perry’s makeup line with CoverGirl. Hard Candy alleges that P&G copied Hard Candy’s registered design marks in a confusingly similar manner.

Although Hard Candy did not specifically state what aspect of the Katy Perry CoverGirl makeup line infringes upon its design marks, it appears that Hard Candy is claiming that the logos/marks (capitalized words in black before and after a black heart shape) are similar in their overall design. See examples below.

Hard Candy cited the following three (3) registered design marks in support of its complaint against P&G:

In support of its argument that the Katy Perry CoverGirl makeup line is likely to cause confusion among consumers, Hard Candy alleges that they sell the same or similar products (cosmetics) and offer these products in the same channel of trade at similar price points to similar target customers. Hard Candy may also argue that the black heart shape design is the dominant feature of the marks and similar (if not identical) in both marks.

While these factors are strong ammunition against Katy Perry/CoverGirl, it may be difficult for Hard Candy to argue that the overall commercial impressions are similar. For instance, the font and words before and after the black heart shape design look and sound different.  As a self-proclaimed make-up lover, I personally would not be confused by the design marks, especially if the CoverGirl logo is used in connection with the Katy Perry name and the black heart shape design. Both Katy Perry and CoverGirl have established their own brand for years and also have successfully campaigned together to promote this makeup line, which further differentiates themselves from other makeup lines. Nonetheless, it will be interesting as to how each paints the other.

On Halloween, the highest court in the land heard oral argument on whether cheerleader uniform designs are subject to copyright protection. Varsity Brand, Inc. (“Varsity”), the country’s largest maker of cheerleader uniforms, sued Star Athletica, LLC (“Star”), a chief competitor, alleging Star’s uniforms use design elements that infringe Varsity’s copyrights.

The Supreme Court sought to reexamine the question previously posed and answered by the Sixth Circuit: “Are cheerleading uniforms truly cheerleading uniforms without stripes, chevrons, zigzags, and color blocks?”

The Blurry Line Between Art & Function

The test of whether a design element is art (and worthy of copyright protection) or function (and unworthy) is called “separability.” A “useful article” like a chair, dress or uniform cannot be copyrighted, and its component features or elements cannot be copyrighted unless capable of being “identified separately from, and … existing independently of, the utilitarian aspects of the article.” (17 U.S.C. § 101). For example, one couldn’t copyright the functional aspects of a bed with four legs, a mattress, a headboard, etc., but one could probably copyright the waterbed/aquarium design from the James Bond movie Diamonds are Forever.

10 Separability Tests are 9 Tests Too Many

In granting certiorari, the Supreme Court noted that “Circuit courts, the Copyright Office, and academics have proposed at least nine different tests to analyze this separability [concept]. The Sixth Circuit rejected them all and created a tenth. The first question is: What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?”

Star’s Position — It’s Not a Cheerleader Uniform Without Designs

Star, supported with amicus briefs from consumer groups and costume hobbyists, argued that stripes, chevrons and zigzags are integral parts of a cheerleading uniform that serve core functional purpose of identifying the uniform as a cheerleader uniform and making cheerleaders appear taller and slimmer. The district court agreed with Star.

Varsity’s Position — Plain Vanilla Cheerleader Uniforms are Still Cheerleader Uniforms

Varsity, supported with amicus briefs from fashion designers, argued: (A) there are many design elements available, (B) Varsity owns the stripes, chevrons, zigzags and color blocks , and (C) “you can have a white cheerleading uniform worn by a cheerleader with the team name and team logo on it.” A split Sixth Circuit panel agreed with Varsity.

Wider Implications for the 3D Printing Industry

Major 3D printing companies filed amicus briefs  asking the Supreme Court to grant certiorari and provide “a single test for determining conceptual separability under copyright law” because  “the current circuit split surrounding conceptual separability is significant and chills innovation and creativity.”

Oral Argument at the Supreme Court

Justice Ginsburg appeared to back Varsity, describing the uniforms as “a two-dimensional artwork” and agreeing that “the pictorial graphic element is not part of the design of the cheerleader’s uniform. It’s superimposed on it.”

Chief Justice Roberts appeared to disagree: “The design on a lunchbox doesn’t make the lunchbox a lunchbox. It’s still a lunchbox. But the design on a cheerleader uniform is what makes it a cheerleading uniform, as opposed to a plain dress.”

Reading the Tea Leaves

There are dozens of ways to read the tea leaves. The Supreme Court granted certiorari, which could either mean it disagreed with the Sixth Circuit’s decision or that it wanted to clean up the messy situation with 10 tests for separability.

Maybe it’s just wishful thinking, but I’m hoping the Court rules for Star. Otherwise, Varsity will hold a monopoly on the design elements, and we will see  a lot of cheerleaders dressed like tennis players from the 1950’s.

On June 21, 2016, Aquazzura Italia SRL (“Aquazzura”), an Italian shoe company, filed a complaint against Ivanka Trump, IT Collection LLC, Marc Fisher Holdings LLC, and M.B. Fisher LLC (collectively, the “Defendants”) for trade dress infringement, unfair competition, and deceptive practices. At the center of the complaint is Aquazzura’s Wild Thing shoe (see below), which “took the fashion world by storm.” Aquazzura asserts that the Wild Thing shoe is its most popular shoe and beloved among fashion bloggers, celebrities, and “it” girls such as Kendall Jenner and Solange Knowles. In its complaint, Aquazzura alleges that Defendants’ Hettie shoe (see below) “copied nearly every detail of Plaintiff’s well-known and coveted Wild Thing Shoe, from the shape and silhouette to the fringe covering the toes, to the tassel on the heel.”

To add insult to injury, Aquazzura further claims that this is not the first time that Defendants blatantly copies its designs. Apparently, Defendants copied Aquazzura’s Forever Marilyn and Belgravia shoes (see below).

As a result, Aquazzura is fighting back and is seeking an injunction and damages. In response to Aquazzura’s complaint, Ivanka Trump filed her answer on August 19, 2016, in which she denied the allegations set forth by Aquazzura. Although this action is relatively new, chances are that the parties will likely settle this outside of court because it is hard to deny that there are major similarities between both shoe brands. As they say, if the shoe fits …

Just coming off the heels of the lawsuit it filed against Marc by Marc Jacobs on April 8, 2015, adidas America, Inc., adidas AG, and adidas International Marketing B.V. (collectively, “adidas”) filed suit against Skechers USA, Inc. (“Skechers”) on September 14, 2015 in the United States District Court of Oregon for trademark and trade dress infringement, unfair competition, trademark and trade dress dilution, deceptive trade practices, and breach of contract. The company alleges that the Skechers “Onix” tennis-style sneaker infringes on one of its most iconic shoes, “the ‘Stan Smith’ sneaker, which adidas introduced in the early 1970s featuring a classic tennis-shoe profile with a sleek white leather upper, three rows of perforations in the pattern of the well-known Three-Stripe trademark, a defined stitching across the sides of each shoe enclosing perforations, a raised mustache-shaped colored heel patch, which often is green, and a flat tonal white rubber outsole.”

In its complaint, adidas outlined all the similarities between the adidas Stan Smith and the Skechers Onix.

In support of its infringement claims, adidas cites its various federal registrations for its famous “Three Stripe Mark” on athletic shoes.

Although the perforations on the Skechers Onix do not exactly mimic the three rows of perforations in the pattern of the well-known Three-Stripe Mark, it is hard to deny the striking similarities between the two sneakers. adidas is seeking various damages, including all profits derived from the infringing good, costs and reasonable attorneys’ fees, as well as an injunction to stop all sales and marketing of the infringing good.

After two years of battle in court, Tory Burch LLC (“Tory Burch”) wins $41.2 million ($38.9 million in damages and $2.3 million in attorneys’ fees) in its trademark infringement lawsuit against Lin & J International, Inc. (“Lin & J”), which was filed on May 31, 2013, in the U.S. District Court of the Southern District of New York. Tory Burch alleged in its 2013 complaint that Lin & J’s unauthorized use of Tory Burch’s federally registered trademarks and copyrighted works violated trademark counterfeiting, trademark infringement, trademark dilution, copyright infringement, and unfair competition laws.  In particular, Tory Burch claimed that Lin & J wrongfully reproduced earrings, necklaces, pendants, cuffs, bangles, and bracelets bearing unauthorized reproductions of Tory Burch’s famous TT Designs (see below).

Despite the apparent similarities, Lin & J had countersued Tory Burch for unfair trade practices, tortious interference with its business relationships, defamation, and trademark infringement. Lin & J claimed that its Isis Design is inspired by the Isis cross or a Coptic cross, which is a symmetrical cross with short, flanged bars, typically set in a circle. Nonetheless, in addition to finding that Lin & J had fabricated and destroyed evidence, the court ruled against Lin & J. This $41.2 million win for Tory Burch will be another notch added to her designer belt and not to mention her $3 billion (yes, with a “B” billion) empire.

On April 8, 2015, Adidas filed suit against Marc by Marc Jacobs (“Marc”) in the United States District Court of Oregon for trademark infringement, unfair competition, trademark dilution, and deceptive trade practices based on Marc’s use of a four stripe pattern on sweaters in its autumn/winter 2014 collection, which allegedly infringes on Adidas’ “Three-Stripe Mark.” See comparison below. In its complaint, Adidas claims that Marc’s “use of confusingly similar imitations of adidas’s Three-Stripe Mark is likely to deceive, confuse, and mislead purchasers and prospective purchasers into believing that the apparel sold by Marc Jacobs is manufactured by, authorized by, or in some manner associated with adidas, which it is not.”

Adidas claims that it has used the “Three-Stripe Mark” on apparel sold in the U.S. and worldwide since as early as 1967. Adidas further support its claims based on its numerous incontestable federal trademark registrations, which includes Reg. No. 2,058,619, issued on May May 6, 1997, for the “Three-Stripe Mark,” for “sports and leisure wear, namely shirts.”

An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. If the owner of the mark can establish that the mark is incontestable, the mark will be presumed valid unless another party can establish one or more of the following:

• The registration or the incontestable right to use the mark was obtained by fraud.
• The registrant has abandoned the mark.
• The mark is used to misrepresent the source of its goods or services.
• The infringing mark is an individual’s name used in his or her own business, or is otherwise prohibited or reserved under the Lanham Act.
• The infringing mark was used in commerce first—before the incontestable mark’s registration.
• The infringing mark was registered first.
• The mark is being used to violate the antitrust laws of the United States.

Although nothing is guaranteed in court, it appears that Marc will have an uphill battle defending itself against Adidas since, at first glance, it appears that even Sue Sylvester would wear either of the above track jacket or sweater.

L’Oreal’s Deceptive Advertising

The Federal Trade Commission (“FTC”) accused L’Oréal of making deceptive advertising claims regarding the benefits of two of its product lines. L’Oréal claimed that its Génifique facial skincare products were “clinically proven” to “[b]oost genes’ activity and stimulate the production of youth proteins” that would cause “visibly rejuvenated skin in just 7 days” and would provide results to specific percentages of users. See Image 1 below. Similarly, L’Oréal claimed that its Youth Code facial skincare products could combat the effects of aging by targeting specific genes to make skin act younger and respond five times faster to aggressors such as stress, fatigue, and aging. See Image 2 below. The FTC asserted that L’Oréal’s representations were not substantiated at the time the representations were made. Given the FTC’s allegations, L’Oréal agreed to settle the dispute.

The Settlement

With a slap on the silky wrist, L’Oreal agreed that it will cease:

1. All claims that any of its product boosts the activity of genes or targets specific genes that would result in skin that looks younger or acts younger or cause skin to respond five times faster to aggressors such as stress, fatigue, and aging unless the claims are supported by competent and reliable scientific evidence;
2. All claims that certain products affect genes unless the claims are supported by competent and reliable scientific evidence; and
3. All claims about its products that misrepresent the results of any test or study.

Take-Away

Be careful with overzealous marketing claims. All product claims must be true and require substantiation.

Here are 11 Ways To Avoid Advertising Missteps as described in a prior IP Legal Forum post.

Guru Denim, Inc. dba True Religion Brand Jeans recently sued Burlington Coat Factory Warehouse Corporation for selling jeans that allegedly infringed on True Religion’s “U-shaped” pocket design.  Interestingly, this is not the first time that True Religion filed suit against Burlington for infringement of its “U-shaped” marks.  True Religion has used its “U-shaped” marks since as early as 2002 and has registered various “U-shaped” marks with the United States Patent and Trademark Office since 2006.  Here are a few of True Religion’s trademark registrations for the “U-shaped” pocket design:

According to the lawsuit, Alpha Garment, Inc. supplies Burlington and various nationwide retailers with the infringing jeans.  Exhibit A below is an example of the alleged infringing use of the “U-shaped” pocket design supplied by Alpha and sold to consumers by Burlington.  True Religion claims that use of the pocket design as shown in Exhibit A is “substantially indistinguishable and/or confusingly similar” to its “U-shaped” marks.  See Exhibit B below for an example of True Religion’s “U-shaped” pocket design.

What do you see?  Arguably based on the side by side comparison, the pockets are somewhat similar.  However, the pocket designs are not identical.  The pocket design in Exhibit A appears to be a stylized intersecting “X-shape” rather than a rounded continuous “U-shape” as in Exhibit B.  Nevertheless, whether Exhibit A is likely to cause consumer confusion as to the source or origin of goods is one of the primary questions that the parties will need to address.  If Burlington loses, it may be ordered to pay monetary damages to True Religion and to cease selling the infringing jeans.