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Knockoffs don’t just happen in the fashion industry, as this case demonstrates. Here a lighter is the leading light in a lawsuit.

Most people tend to think of knockoffs in terms of the fashion industry: a knockoff of a famous designer’s dress, shoes, handbag or jacket, etc. “Think McQueen vs. Madden, a rather famous shoe knockoff lawsuit. While clothing seems to have been the major source of the latest knockoff lawsuits, it looks like other companies are getting fed up with people copying their designs and trying to pass them off as their own. Witness this latest case of lighter-making giant Zippo Manufacturing Company who is suing four Chinese companies,” suggested David Alden Erikson, a Los Angeles fashion law attorney.

It’s not just the lawsuit that is making headlines in this case; it’s the fact that Zippo is going to be laying off about 15% of their production line workers, in part because of the knockoffs of their lighters. The country really doesn’t need any more layoffs in these tough economic times, but that appears to be what will happen soon. The company has filed a complaint with the U.S. International Trade Commission to stop the manufacturing and sale of the knockoffs from the biggest source of knockoffs in China.

Along with a downsizing in their workforce, Zippo also cites a 30% drop in their business, due to the knockoffs. If they can stop the flood of fake lighters and business picks up, the out-of-work employees will be called back. “While a lighter is hardly an item of clothing, the principal behind it being ripped off is quite similar to a fashion designer seeing their creations sold at cheap prices to anyone who wants a look alike,” added Los Angeles fashion law attorney Erikson.

Sick of being knocked off, fashion designers have started to fight back and are working with the Council of Fashion Designers of America to get their fashions copyrighted. Those who can’t afford the big ticket original designs appreciate getting the almost originals for less money, but fashion designers have had it with the rip-off artists cutting into their bottom line profit.

If designers are able to register their designs with the U.S. Copyright Office, they would then be protected for three years, and it would be illegal for anybody to make anything even remotely similar. “Would this solution, should it come to pass, work for knocked off lighters? It may, but only time will tell who will win the war of the similar looking product with a similar (but misspelled) name at the cheaper price,” speculated Erikson.

The whole question here is the rights of designers and original makers of various items (purses, jewelry, watches, etc.) to have their product protected from someone else who would steal it and profit from it. This problem isn’t really new, but the time has come when the original makers are fighting back and taking action.

To learn more about David Alden Erikson, Attorney at Law, visit http://www.daviderikson.com.

Young entrepreneurs in the fashion design industry often want to know if they are able to copyright their latest creation.

Unfortunately, they can’t.

Copyrighting a fashion design is not possible because it does not provide the creator of that design with the kind of protection they really want – protection from knockoffs. In fact, the converse is true when a fashion designer gets ready to launch a new design; they expect they will be copied. Often, they get knocked off before their product even hits the market; such is the cutthroat competition within the industry.

Until recently, this dire state of affairs has caused a great deal of angst among designers who want to go places but want their creations to remain their own and not show up under someone else’s label as a “less than perfect copy” of the original. There may be good news on the horizon in the form of the Design Piracy Prohibition Act – if it actually passes into law. This bill would offer copyright protection for fashion designs widely defined as eyeglass frames, duffel and tote bags, handbags, purses and clothing. Admittedly, clothing is a tad vague, but chances are that would be sorted out in the courts when push came to shove and a lawsuit was filed.

This Act actually amends Chapter 13 of the Copyright Act, which you may find rather interesting since that chapter provides protection to one category of useful articles, boat hull designs. Wondering what boat hull designs have to do with clothing, et cetera? The key here is the term “useful article.” Currently, fashion designs are classified as “useful articles” and have what is referred to as an intrinsic utilitarian function. There is more to that definition, but you have the key element.

Right now, designs of useful articles may be protected under copyright law “only if such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” In addition, there is very limited protection to be had under trade dress (trademark) and design patents (patent) law. The problem with those two “protections” is that they’re not practical for the fashion industry.

The proposed Act suggests a three year protection for fashion designs. Why? It’s limited because typically fashion trends are rather short-lived at the best of times. You’ll also find out that applications for protection may be filed at the U.S. Copyright Office, where it would be put on a database of protected designs and images of that design.

The Act also aims to narrow the definition of innocent infringement so that the courts are able to impose liability on those who had reasonable grounds to believe a design was protected. It would also boost damages for infringement, something the fashion industry would be enormously happy to see.

To learn more about David Alden Erikson, Attorney at Law, visit Daviderikson.com. Mr. Erikson specializes in Los Angeles fashion law, internet law, business litigation, trademark and copyright law.

The Design Piracy Prohibition Act stalled in Congress over the last few years. While it’s been around in various forms since 1957, it’s never really seen the light of day.

The whole point of this Act, should it get passed, is to extend intellectual property rights and concepts and related litigation to the world of fashion and design. The Act has been kicking around for some time, but because it evidently has some teeth, it’s been viewed as being controversial and thus put on the back burner, until now.

The latest attempt to stop knock-offs, the stalled Design Piracy Prohibition Act, aims to provide sui generis protection to fashion designers for a period of three years. Sui generis is a Latin expression, meaning of its own kind or unique in its characteristics. Design piracy legislation is already in place in Japan, India and Europe.

The Act would extend protection to “the appearance as a whole of an article of apparel, including its ornamentation,” with ‘apparel’ defined to include men’s, women’s, or children’s clothing, including undergarments, outerwear, gloves, footwear, and headgear; handbags, purses, and tote bags; belts, and eyeglass frames. To get the protection for three years, a designer would have to register with the US Copyright Office within three months of going public with a design.

“Fashion piracy and knock-offs are extremely unfair and economically hurtful for emerging designers. This is because many may see their designs knocked off before their own creations get to stores. While there needs to be a way to stop this, I worry that the legislative approach may have some unintended consequences,” said David Alden Erikson, a Los Angeles fashion law attorney.

With the advent of more and more knock-offs and rip-offs of aspiring designer’s creations, and the subsequent more frequent legal battles this has engendered, this issue has come to the forefront once again. While the general public doesn’t think much about it, other than what they are ultimately paying for an item, designers are quite fed up with being knocked off. It costs them money and prestige.

Currently, fashion only has the protection of copyright if its shape is non-functional enough to be classified as a creative sculpture; or that a design, pattern, or image on the clothes qualifies as pictorial/graphic. The law does offer some protection against counterfeiters, but this only if the trademark defense is used and not when a knock-off is copied under a different label. There is also patent protection of sorts available that only applies to an ornamental design that is new, original and not obvious. The definition for new, original and non-obvious is pretty tough to pin down.

The prevailing opinion is that the “new” law would have the right kind of impact and clout, plus have the potential to drive many small fabric and apparel companies out of business because they don’t have the money to hire a lawyer and fight the bigger firms knocking off their creations. As with many things when it comes to infringement and how to stop it, there are pros and cons, each with valid arguments, but no middle of the road compromise seemingly ready and waiting in the wings. Typically, that would then leave the courts as the referees.

“This is one of the things that worries me,” outlined Erikson, “as this new Act may do little more than create a cottage industry for fashion lawyers who would work on (patent) registrations and on the possible flood of litigation over what counts as original and who started a trend,” he added. This sounds a little like the sitcom, Desperate Housewives – lots of fighting and very little gets resolved, unless revenge counts.

In one corner is the Council of Fashion Designers of America, the face of big-name fashion, and they want the Act to pass. In the other corner is the American Apparel and Footwear Association who isn’t thrilled with the idea, as they feel it will lead to never ending lawsuits between legitimate companies. “Will it come to pass? No one is certain, but there is certainly a lot of lobbying going on to push the Act back into the limelight and make sure it does see the light of day this time,” Erikson commented.

To learn more about David Alden Erikson, Attorney at Law, visit http://www.daviderikson.com.

For those who missed the latest patent infringement fiasco, Apple is suing HTC over 20 patents. The rivalry is heating up.

“Apple definitely means business in this recently filed lawsuit. In fact, they’re so determined to make a point here that they filed over 700 pages of exhibits in court. That’s not a lawsuit. It’s virtually a book in the making. Listed in the complaint are a variety of named HTC handsets ranging from the Nexus One to Imagio and from Dream/G1 to Droid Eris. It almost reads like a Lord of the Rings sequel,” indicated David Erikson, a Los Angeles trademark infringement attorney.

At the core of this lawsuit sits roughly 20 patents that date from 1995 through February 2010. “That’s a whole lot of ground that’s going to need to be covered, indicating this case may take forever and a day to settle. Or, it might wind up next month. It’s hard to tell with lawsuits like this one,” Erikson added. “From the way the complaints are worded, it’s my best guess that Apple is after Android as the center focus, and not so much HTC itself,” he pointed out.

“What is really interesting is that the older patents tend to focus more on operating system behaviors, which isn’t terribly relevant to HTC’s Android, and Google isn’t mentioned in the lawsuit – yet. But that may come later,” Erikson surmised. So it’s safe to say that the suit is more about Android than about the company who makes them, HTC. This is a bit odd, since Google and HTC were in bed together making the Android dream come alive.

Here is what the complaint filed in court takes aim at: “certain mobile communication devices, including cellular phones and smart phones, including at least phones incorporating the Android Operating System.” While this may sound like a shotgun approach to filing a lawsuit, when the stakes are as high as they tend to be in cases like this, it’s better to aim high.

The complaint filed with the US International Trade Commission (yes, Apple is bringing out the artillery) specifically cites numerous HTC Android phones as the main offending products. The big guns are aimed at HTC, who makes the most Android handsets, but the subtext here is that Google should be on its toes as well.  Remember that Google CEO Eric Schmidt resigned from Apple’s board in 2009.

To learn more about David Alden Erikson, Attorney at Law, visit http://www.daviderikson.com.

You might want to watch what you copy from other’s blogs. The material is copyrighted and you’d be in a bit of a pickle.

So, you just finished reading a great blog on trade dress law and you want to quote it. Is that OK to do? Well, the short answer to that question is yes, short quotes are not usually thought to be copyright infringement because they are considered to be fair use. That basically means if you are criticizing or offering a comment about what someone else has slapped up on their blog, you’ve got what is referred to as fair use right to quote.

It’s even better if you take the time to use the material you want to use in a transformative manner – a lovely legal word that means the courts like it when you transform the original comment/post into something else such as praise, commentary or criticism. If you are commenting on a passage, you can generally copy and paste.

So the whole deal boils down to what fair use is in the long run. If you hunt that down and read it in the Copyright Act, it states that fair use “for purposes of criticism, comment, news reporting, teaching, scholarship, or research is not an infringement of copyright.” That’s about as clear as mud and really, if you get right down to brass tacks, there is no one definitive rule that applies for fair use. Even the courts have a time of it, but do tend to follow four factors when considering cases like this.

Those four factors have to do with the character/purpose of the use, the nature of the work, the amount of the portion used, and the affect on the market/potential market. These factors tend to vary from case to case, and trying to second guess just what is acceptable to copy is guaranteed to give you a massive headache.

On the other hand, you may freely copy federal government documents. Although we’re not quite sure why anyone would want to, since reading them is usually an exercise in confusion. Nonetheless, any materials produced by the US government are in the public domain. You may also report facts and ideas in someone else’s website or article, but “not” the expression. The expression is copyrighted and encompasses the particular combination of words and structure that make the material what it is.

To learn more about David Alden Erikson, Attorney at Law, visit Daviderikson.com. Mr. Erikson specializes in Los Angeles fashion law, internet law, business litigation, trademark and copyright law.

Some lawsuits make one wonder about the people who filed them. Louis Vuitton thinks Hyundai infringed on their trademark during a Super Bowl commercial.

Evidently, Louis Vuitton lacks a sense of humor over the minimal use of their bold and gold trademark on a basketball that appeared for all of about one second in a Super Bowl commercial. Really people, you can’t be serious. The courts these days are already clogged with legitimate and serious lawsuits. This is not a serious or legitimate lawsuit. In fact, it belongs in a sentence with the term frivolous.

“My feeling about it is that this is trademark law going too far. It’s probably true that nobody has suffered more at the hands of trademark infringers than Louis Vuitton, but that doesn’t justify a complete loss of sense of humor,” indicated David Erikson, a Los Angeles fashion law attorney.

Louis Vuitton, which of course is based in Paris, filed this less than substantial lawsuit in a Manhattan court recently and is seeking – if you can believe this – triple damages, punitive damages, a halt to the alleged infringement, and other remedies. All this for a one second or less glimpse of a basketball covered in a pattern of initials that resembled Louis Vuitton’s trademark. If you watch the commercial yourself, you will probably have to play it at least twice before you see what the flap is all about.

“And more importantly, this flap doesn’t justify turning trademark law on its head. The purpose of trademark law is to protect the public against unscrupulous sellers who palm their goods off as made by others, who have earned good will with the public. This commercial is just good fun, and doesn’t confuse anybody,” added Erikson.

While trademark infringement can be serious business, this particular situation hardly fits the bill for either infringement or being serious. Even if over 106 million people saw this controversial ad, they did not immediately jump to the conclusion that Hyundai was infringing on Louis Vuitton’s famous (or infamous) trademark or that Louis Vuitton somehow endorsed Hyundai. “It would be hard to make that very same joke (referring to the basketball), or at least make it as well, without using a reference to the Louis Vuitton logo. By this lawsuit, Louis Vuitton diminishes the public domain of discourse and humor,” Erikson stated.
The commercial was just that, a commercial in good fun. However, the lawsuit papers indicate that Louis Vuitton doesn’t know the meaning of that term, in that they indicate the use of their trademark on a basketball in the Super Bowl commercial by Hyundai “is likely to dilute the distinctiveness and tarnish the reputation of the LVM marks.” Perhaps, with all due respect, someone needs to get a grip on reality here.
Evidently, a spokesperson for Hyundai has not yet made a comment. Not much wonder.

To learn more about David Alden Erikson, Attorney at Law, visit http://www.daviderikson.com.

Trade dress law isn’t something brand new. It’s been around for over 100 years.

Not many people really understand just what the term trade dress law actually means, which is a bit unusual, since the term has been around for at least a hundred years, give or take. In fact, it was the courts of days gone by that set the principle of trade dress law in stone by stating the maker of a product intended to be consumed by the public or used by them “must see to it that the product is not dressed in the clothes of another.”

Put another way, this simply means that the idea here was to stop commercial piracy where manufacturers/retailers would fob off their products as being someone else’s. Confused yet? In even simpler terms this just means that the courts, even a hundred years ago, wanted to stop people from ripping off others by offering goods that looked like something they were not. Today that would be called infringement.

So by now you’re wondering what the heck trade dress really means, since no one seems to have a good grasp of the concept. History says that at one time, trade dress meant the manner in which a product was “dressed up” for marketing. It means far more than that now.

Sometimes the more things change, the more they remain the same. This concept is no different. Even way back when, commercial piracy involved things like mimicking brand names or labels to fool consumers.  There were even instances of manufacturers imitating another’s packaging so closely, it was hard to tell which product was the genuine original. In response to that sneaky backdoor practice, the courts widened the definition of trade dress law to include product packaging – in particular, specific shapes.

Over time, the laws dealing with trade dress issues were rewritten, added to, expanded and changed. Interestingly enough, the specific term trade dress itself doesn’t actually appear in the Trademark Law revision of 1988. Instead, protection is offered for any word, term, name, symbol or device, or any combination.

Time passed once again and as the world turns, trade dress decisions handed down in the courts in the 1990s started to show a more aggressive stance by plaintiffs who wanted the expanded trade dress protection applied to them. Since the law is rarely static, this began to change as other courts started to restrict protection for trade dress – specifically product configuration. Consider this whole area to be a moving target, subject to change depending on the nature of the case at hand.

What makes trade dress protectable and how does a plaintiff prove they have been infringed upon? In a nutshell, the plaintiff has to show their trade dress is unique (distinctive), inherently or through the acquisition of secondary meaning, not functional. They also need to show that the defendant’s rip-off or knock-off is bound to cause confusion to the public because they won’t know the original source.

As you can tell, this is a fairly complex area of the law, and proving a trade dress case can be touch and go. However, having said that, it can certainly be done, and done with success.

To learn more about David Alden Erikson, Attorney at Law, visit Daviderikson.com. Mr. Erikson specializes in Los Angeles fashion law, internet law, business litigation, trademark and copyright law.

The squint test isn’t related to having your eyes tested. It’s an idea that may protect fashion designers.

What on earth does a squint test and fashion design have to do with one another? Good question and one that has one of those kinds of “iffy” answers people love to hate. So what’s the (fashion) scoop here?

It seems the fashion knockoff trade is in high gear and rolling out very close copies of things like Michelle Obama’s inauguration gown. The culprits are Forever 21 and ABS and they’re busy making a lot of money by copying fashion designer’s originals and selling for a much lower price. It’s really easy to do these days thanks to digital cameras and the Internet.

There is usually only a lag time of a few weeks after the original debuts before copies hit the market. “I’ve actually had the opportunity to sue ABS on behalf of the fashion line Libertine. Interesting case, and it highlights what the problem is with the knockoff industry,” said David Erikson, a Los Angeles fashion law attorney.

There are other companies who get involved in rushing things to market, but they’re not strictly copying the original designer. Rather, they are creating clothes “inspired” by the original, which means they’re creating not blatant knockoffs but rather creations that are noticeably different from the original. In the US, both of these activities, the straight knockoff and inspired by designs creations, are legal.

They are legal because US copyright law says that clothing is a useful article, and as such, is not legally protected; not like movies, music and books. “However, this might be a stance heading for a revision if Diane von Furstenberg and the Council of Fashion Designers of America have anything to do with it. The idea? To treat fashion design a bit like other protected areas of intellectual property,” Erikson outlined.

Treating fashion design as intellectual property would protect original designs from copies that are substantially similar. This is the usual standard for other copyright protected creative works. Congress looked at the idea, but didn’t pass the first fashion design Bill because it lumped inspired-by and knockoff makers together.

The Bill is back with more teeth and might make it into law. The new version narrows the ban to “closely and substantially similar” designs; a very big difference from the first Bill. Fashion design law should protect originality but not limit creativity. The idea here then is to allow the inspired by designers and put a halt to the knockoffs.

Here is where the Squint Test kicks in. A proposal outlined in a recent article by C. Scott Hemphill and Jeannie Suk suggests that if a buyer has to squint to see any difference between a copy and the original, then copyright protection needs to kick in at this point. It’s the copycat designers that need to stop ripping off original designs and fooling customers they’re offering an original for less. The test is simple and elegant.

“For years, high-end designers have been pushing for something like copyright protection. The idea never flies, partly because of power and politics, and the fact that people like the price of knockoffs. If we protected fashion design the same way screen plays are protected against those who copy the play too closely, we might be outlawing too much. Chanel shouldn’t have too broad a monopoly,” indicated Erikson. Recent legislation proposed by the designers has acknowledged this by seeking more limited protection than traditional copyright.

A lot of people rather like this basic idea, although knockoff designers ABS and Forever 21 aren’t too enthused about it. The only problem with the proposal might be a practical one. “If the big design houses get anything close to copyright protection, they will push the envelope by bringing lawsuits even against the companies making ‘inspired-by’ pieces. They won’t be chasing just the big knockoff companies either. They’ll go after smaller designers who might want to rip off the latest runway pieces,” outlined David Erikson, a Los Angeles fashion law attorney.

To learn more about David Alden Erikson, Attorney at Law, visit http://www.daviderikson.com.

A big corporation may be able to escape punitive damages in a court case. Find out why that may be the case.

What if some large corporation did something really bad, even evil toward you; something that would seem to be ripe to justify punitive damages? While that might be something we’d all love to see happen, call it the desire for vengeance, this doesn’t always happen.

Yes, unfortunately, there are instances when corporations may sometimes escape punitive damages when the wrongful act they have been charged with and sued over, was committed by an employee. This raises an interesting question: to wit who else would perpetrate a bad act if not an employee; after all, companies are only able to act via the human beings that work for them.

How could something like that be? A company not being assessed punitive damages for an outrageous act? The bottom line is that judges don’t particularly like punitive damages claims. Thus, one of the ways they weed them out of lawsuits against big companies/corporations is to misread the California Civil Code section 3294.

Section 3294 provides that corporations aren’t liable for the bad acts of their employees, unless either the corporation should have known they were employing some crazy rogue nut bar who might be capable of misconduct, or if someone very high up in the corporation directed or ratified the conduct. To put that in simpler terms, that means that the corporation isn’t liable for punitive damages unless it can be traced to “an officer, director or managing agent.”

The obvious intention of the legislature in enacting that statute was to avoid corporate liability for the intentional torts of low-level employees, like when a security guard beats up a visitor for no good reason. The idea is that “No purpose would be served by punishing the employer for an employee’s conduct that is wholly unrelated to its business or to the employee’s duties therein.” Fine, we get that.

However, judges too often use the law to allow companies to avoid punitive damages and use a low level employee as a scapegoat for the company’s misconduct, or where it’s truly hard to figure out who made the ultimate decision. Judges may even weed out punitive damage claims at the pleading stage, simply because a plaintiff doesn’t know who made the decision.

The lesson for plaintiffs here is to allege as much as they can in the Complaint, which might be only that the conduct in question was made by an officer or managing agent acting in their corporate capacity. That done, then quickly propound discovery aimed at identifying the real decision maker in order to fend off an early motion to strike. The dance of law can be such fun at times.

To learn more about David Alden Erikson, Attorney at Law, visit Daviderikson.com. Mr. Erikson specializes in Los Angeles fashion law, internet law, business litigation, trademark and copyright law.