Here is another one of my educational intellectual property posts. The take away is similar to my previous fashion law posts: in fashion, imitation can be seen as infringement–not flattery.
I found these blinged out iPhone cases on an Etsy’s seller’s page and made a collage out of them for your viewing pleasure. From the looks of it, the seller, slave2beauty, is truly talented. Unfortunately, these glam cases are okay when made for personal use but turning a profit on someone else’s intellectual property? Not so okay.
|I am reposting these images under my Fair Use rights, not to be confused with copyright infringement!|
How do these cases tie into intellectual property (IP) issues, and particularly fashion law?
Well, if you have not guessed it, trademark law and copyright law may be at play depending on the elements copied.
I wonder how long this user will make these cases before receiving a cease and desist letter*. Not long if someone forwards my blog post to Mr. Pantalony (the lawyer who sent U Penn Law School a cease and desist). Slave2beauty opened up shop March 6, 2012 so it is likely that her work just has not yet come to the attention of relevant IP owners. I think Louis Vuitton and Lady Gaga rigorously police their brands, so the death of these cute infringing phone accessories may come soon.
Would you buy accessories like these even though they do not support the brand owner?
I am not afraid to say that I report on counterfeiters all the time. Maybe one day I will get paid for it too! 😉 Lucky for Etsy companies, Etsy asks that claims of infringement be signed by the IP owner or person authorized to act on behalf of the owner, which is on par with the Digital Millennium Copyright Act.
I do not feel badly about the infringer getting stopped from profiting off of these works but I do wish there were more flexibility in the fashion world, wherein a person like this Etsy seller could easily pitch ideas of these creations to brands. It is just that allowing/licensing people to trademarks is dangerous for brands. It is dangerous because brands may lose track of how their trademarks are being used and even if they develop a contract with a second user, wherein the IP owner is not liable for torts arising from the second user’s products, the IP owner can get a tarnished image from bad use. Also, if trademark owners do not exercise quality control they lose their trademarks.
A trademark owner who wants to license use of IP must also be careful that the second user will not be considered a franchisee. A franchising relationship would be bad for the IP owner because it is difficult to get out of such a channel relationship: If a court determines that it is a franchise agreement, it is hard not to renew the contract when it expires. A front-end negative consequence of a determination that a franchise agreement exists is that the trademark owner is supposed to provide the franchisee with an offering circular with all risks. The IP owner can get in trouble for not providing proper franchising material.
Although this Etsy seller might think she is paying homage to popular brands like Louis Vuitton, Chanel, MAC cosmetics, Swarvoski and Lady Gaga, using these trademarks without permission of the trademark owner is trademark infringement.
Any of these aforementioned brands can bring a successful lawsuit against someone making products like this Etsy user. Let’s say the user thinks she is not doing anything wrong because she is not actually making a counterfeit of an existing item. To that, I say trademark infringement is not synonymous with counterfeit. When a trademark is used in connection with products or services in a way that may lead a viewer to think the product is connected to the brand the possibility of a problem exists. The person doing the buying does not have to be the party being tricked. Like with these phone cases, the people buying from Etsy most likely realize the lack of connection to the designer. Yet someone who sees this case in use by another person may mistaken the case for being one made by the brand. If quality is a problem then the viewer may falsely attach the negative quality with the brand. On the other hand, if the brand sells or wants to cell such accessories the products pictured above might compete with the brand. This is one of those situations where ignorance of the law is not an excuse.
Do you think products like these hurt brand owners?
Defenders of such products would call onto the doctrine of aesthetic functionality. In the United States, this functionality doctrine exists to stop people from obtaining a monopoly or exclusive trade dress and mark rights in functional features of a product or its packaging. Too often people twist this doctrine into making it acceptable for people to use another’s marks on a product that would otherwise not be as competitive without the mark. Yet the doctrine was actually created as a way to preserve the division between what trademark law protects versus areas that are better protected by patent or copyright law. As such, the functionality doctrine serves to prevent trademark owners from inhibiting legitimate competition. I do not think that argument would win here.
*a cease and desist letter is a notice sent by the IP owner or representative to stop use of IP.