10 Important Cases of Fashion Law

The article '10 Important Cases of Fashion Law' provides a glimpse into diverse legal battles that have significantly impacted the fashion industry and continue to shape the legal framework within which fashion businesses operate.

Fashion law is a legal field that deals with problems that arise during a garment or design element. Fashion law emerged considerably later as a component of intellectual property rights, rather than as a fundamental human right for appropriate labour practices. The fashion sector is expanding rapidly in India. The organizing bodies of the fashion law in the state are the Fashion Design Council of India (FDCI), the Fashion Foundation of India (FFI), and the Apparel Export Promotion Council (AEPC).

“Fashion is about change. It’s fun to keep changing and to change the silhouettes, to change the fabrics and to change the colour.” – Calvin Klein

10 Important Cases of Fashion Law

1. Ritika Private Limited v. BIBA Apparels Private Limited (2016) [1]

The well-known brand Ritu Kumar was owned by Ritika, and the well-known brand Biba was owned by Biba Apparels. Both businesses produced apparel and accessories using industrial designs. Ritika said that Biba had infringed her copyright when it used Ritu Kumar's designs as a model for its products and then produced garments based on those designs. Ritika's designs were not recognized as registered under the Designs Act.

Ritika claimed that the drawings and clothes designs she created for the ensembles were unique. It was asserted that every ensemble's constituent parts, the sleeves, front and back panels, etc. were unique from one another and uniquely coordinated. Copyright protection ought to be justified as a result. Biba asserted that the charge of copyright infringement was barred by Section 15 of the Copyright Act since Ritika's designs were industrial. The court decided that the case was barred under Section 15(2) of the Copyright Act, 1957 since Ritika's copyright in the aforementioned works had expired.

2. Microfibres v. Girdhar & Co. (2006) [2]

The case of Microfibres v. Girdhar & Co. concerned two businesses, A and B, that were involved in the production and distribution of upholstery fabrics featuring unique and artistic designs. "A" claimed that "B" had imitated and produced patterns on materials that resembled those already used by the former. The latter, however, responded by stating that, subject to registration, "A's" creative work should be covered by the Designs Act rather than the Copyrights Act.

The Delhi High Court argued that the 'A' drawings qualify for design protection rather than copyright since they were intended for commercial use. The court declared the following in rejecting firm "A's" plea:

• The designs and artistic patterns of Company "B" have not been adopted by the former.
• A loses all rights to remedy if the design was not registered.
• When choosing the type of protection requested, it was important to consider the purpose and object of the activity.
• Drawings made specifically to be applied to fabric must be credited as designs and have no justification for existing on their own.

In response to an appeal to India's highest court, the division bench determined that:

An artist's goal throughout the creation of art is indistinguishable and should not be taken into consideration since it cannot be understood or read. The copyright idea of originality needs to be respected and given a lot of weight. In this particular instance, “the goal of design regulation would be defeated if the court permits the moulding of the generated image.” The principle of harmonious construction was used in this decision to prevent repugnancy and inconsistency between the two statutes.

3. Rajesh Masrani v. Tahiliani Designs Pvt. Ltd (2008) [3]

This decision was the result of the appellant/defendant's appeal against the approval of a temporary injunction application that prohibited the respondent/plaintiff from distributing or selling the plaintiff's fabric print designs, as well as the denial of the appellant/defendant's request to have the order vacationed.

The court was asked to decide whether the plaintiff's clothes were designed or protected by copyright, and if so, if they needed to be voluntarily registered to be protected by the 1957 Copyright Act. The plaintiff was a multinational fabric firm with more than 100 stores. The plaintiff had also won other international prizes for its fabric designs, including the 2004 Moet & Chandon Fashion Tribute, Milan Fashion Week (September 2003), and others.

The appellant/defendant argued that because the plaintiff's textile designs were not registered under the Design Act, of 2000, they were not artistic works under the Copyright Act, of 1957, and the plaintiff was thus not entitled to protection under that statute. Furthermore, even if these designs for the sake of argument were protected by copyright, their unregistered status renders them unenforceable. On the other hand, the plaintiff/respondent argued that the defendant had engaged in significant mimicry of the designs and that the drawings created, or the patterns printed or embodied, are artistic works as opposed to designs.

Thus, the High Court denied the appeal, noting that the first appellate court would not overturn the learned trial court's conclusions in that instance and that the matter at hand was a blatant example of copyright piracy.

The court further noted that the suit's facts were merely preliminary observations and did not represent the parties' positions on the issues at hand. As such, they will not affect the suit's merits or the parties' submission.

4. Puma v. Forever 21 (2017) [4]

Puma filed a lawsuit against Forever 21 in March 2017 in the US District Court for the District of California. Puma claimed that By copying its Fenty shoe line, Forever 21 had violated Puma's design patent, exchange dress, and copyright. The popular Barbadian vocalist Robyn Rihanna Fenty designed Puma's Creeper Sneaker, Fur Slide, and Bow Slide, which was why these slip-ons and sneakers had been known as "Fenty shoes."

Since December 2014, the well-known musician Rihanna has been the Puma apparel and footwear brand's women's creative director. In this role, Rihanna promoted Puma's "Fenty" label as a brand ambassador. Puma limited the number and sales of the Fenty products because they were luxury goods. This helped to make the Fenty products and the Puma brand more desirable.

As a part of this footwear collection, Puma designed and released the Puma by Rihanna "Creeper" Sneaker in 2015. The "Creeper" stands out from other shoes on the market because of its overall design, which has suede uppers and a thick rubber outer sole with ridged tooling and a gritty feel. In April 2016, Puma launched the "Fur Slide" sandal in response to the "Creeper's" success. The "Fur Slide" was replaced in March 2017 by the "Bow Slide." Puma's "Fur Slide," "Bow Slide," and "Creeper" sneakers collectively referred to as the "Fenty Shoes" have seen tremendous and noteworthy popularity.

Numerous intellectual property rights shielded Puma's Fenty Shoes. With a strong global enforcement mechanism, Puma safeguarded its intellectual property in Fenty Shoes. Recently, Puma was able to get an injunction against TopShop, a German shop, to stop it from selling imitations of Fenty shoes. Forever 21 took full advantage of the considerable goodwill of Puma, Rihanna, and Fenty sneakers by openly copying, or "knocking off," each of these sneakers.

A range of shoes was released by Forever 21 under its brand name. Later in March 2017, Puma filed a lawsuit against Forever 21 in a Californian District Court, alleging that the shoe company's designs were identical to Puma's Fur Slide, Bow Slide, and Creeper Sneaker, all of which are part of the Fenty collection, which was created by well-known vocalist Rihanna Fenty. They had thereby violated Puma's plan patent.

The court decided that there was no as such irreparable harm to the plaintiff and thus, could not be entitled to get an injunction against Forever 21.

5. Louis Vuitton v. My Other Bag (2016) [5]

In the case Louis Vuitton v. My Other Bag, the latter company created amusingly funny canvas tote bags with mocking renditions of high-end brand insignia, such as the Louis Vuitton monogram. Louis Vuitton sued My Other Bag, alleging dilution and trademark infringement.

A discussion over the boundaries of parody and the defence of intellectual property rights in the fashion industry was spurred by the lawsuit. The case also made clear how crucial it was to comprehend trademark law and the possible repercussions of violating the intellectual property rights of another business.

My Other Bag began offering canvas tote bags with cartoon renditions of a variety of high-end brand logos, such as the recognizable monogram of Louis Vuitton.

Louis Vuitton asserted that the merchandise from My Other Bag violated its trademark and reduced the uniqueness of its line.

My Other Bag responded by claiming that since its items were parodies, they qualified for the "fair use" doctrine, which permitted the use of copyrighted content for parodies, commentary, and criticism.

In addition, My Other Bag contended that none of its goods led to consumer confusion, which was a prerequisite for a conclusion of trademark infringement.

When the matter reached trial, a federal judge in New York dismissed Louis Vuitton's allegations in favour of My Other Bag in 2016.

The court reasoned that the items of My Other Bag were parodies and parodies were protected by the First Amendment of the US Constitution.

The court determined that My Other Bag's merchandise did not lead to consumer confusion or weaken Louis Vuitton's brand.

The case highlighted the intricacies of trademark law and the possible legal challenges that can develop when businesses exploit another company's intellectual property without authorization, even if the court's ruling was in favour of My Other Bag.

6. Mr Aditya Birla Fashion and Retail Limited v. Manish Johar (Saket Court) (2019) [6]

In this case, the plaintiff was asserted to be in the business of manufacturing and sales of a wide range of fashion products globally ranging from apparel to footwear to perfumes etc under the trademark of "ALLEN SOLLY" which had retained copyright under the Copyright Act 1957.

It had been the allegation against the respondent that he utilized the name and marks of the offended parties, forged, replicated and utilized stylish qualities of the offended parties and exchanged in their design items in a mala fide way, encroaching plaintiffs' copyright and trademark rights. When the marks of the offended parties and litigants were compared, it became clear that the defendant's name was made to deceive and confound the buyers into asking the respondent to grant the offended party the fake products so they could be annihilated.

The offended party claimed to be busy assembling and to have all the characteristics of being similar to the complainant's imprint under the brand name "ALLEN SOLLY," which had copyright protection under the Copyright Act 1957. They would stop using their brand name, alter the sign for their brand name, and throw away any stock that carried an unclear brand name, offering shoes, clothes, cosmetics, and other fashion items for sale worldwide. The defendant was accused of breaching the plaintiffs' copyright and trademark rights by dealing in their fashion products, utilizing their labels and markings unlawfully, and replicating their visual features.

7. Adidas America Inc. v. Skechers USA Inc (2018) [7]

In this case, Adidas requested a preliminary injunction against Skechers for violating and diluting the three-stripe mark and Stan Smith trade dress. A preliminary injunction was imposed by the District Court to stop Skechers from selling two types of shoes. The preliminary injunction on cross-court shoes was reversed, while the Ninth Circuit upheld the conclusions about Onix Shoe.

Arguments about Adidas irreversible harm focused on how terrible the sketchers' product was. The ninth circuit, however, determined that this notion contradicted Adidas's claims that there would be post-sale confusion for Skechers' cross-court shoe that is, confusion that would arise when the public is looking at the sketcher's shoe from a distance. There were multiple Skechers logos and distinguishing characteristics on the cross-court sneaker.

The court stated:

“To resolve Adidas's conflicting arguments, how would customers get confused? There was no proof that buyers would link lower-quality products with Adidas based on Adidas post-sale confusion theory, even if sketchers produce poorer goods.”

8. M/s Oliver Bernd Frier GmbH and others v. M/s Rasul Exports and Anr. (2014) [8]

In this case, the plaintiff claimed that the defendant was utilizing the trademark "Olive," which was identical to its well-known brand name "Oliver" all over the world. The complainant, who operated in a fashion industry comparable to that of the defendant, was losing money because consumers mistakenly believed that the two trademarks belonged to the well-known complainant while they were buying products both online and offline.

The plaintiff's label would continue to be used in the market because the court held:

it was previously in use. Additionally, the defendants must cease using their trademark, alter its mark, and get rid of any stock bearing a questionable marking because they were utilizing their trademarks inadvertently and making them look to be similar to the complainant's mark.”

The court determined that the injured party's name would continue to have an impact because it had previously been utilized in the market. Furthermore, the defendants would no longer be using the trademarks that they were mistakenly employing and that looked to be similar to those of the other company.

9. Rolex SA v. Alex Jewellery Pvt Ltd. (2009) [9]

In the current lawsuit, the plaintiff was requesting a permanent injunction to prevent the defendants from infringing upon the plaintiff's registered trademark ROLEX, as well as from passing off, engaging in unfair competition, failing to deliver, and failing to account for profits or damages, among other offences.

Alex Jewellery Private Limited, the first defendant, manufactures, sells, distributes, and trades imitation jewellery under the ROLEX brand. The aforementioned fake jewellery was sold by Defendants Nos. 2 and 3, Mr Ashish Kumar Ahuja and Mr S.S. Kohli, respectively. In addition to operating a website under the same name, Defendant No. 2 also registered the domain name and does business under the same name and style as ROLEX Jewellery House.

According to the plaintiff's case, the trademark ROLEX was used by the plaintiff for its products, and it was originally registered as a trademark in Switzerland in 1908. The plaintiff changed its name to Montres Rolex SA, then to Rolex Watch Company, and finally to Rolex SA.

The plaintiff claimed that its operations were not limited to Switzerland and that its products were sold in nearly every nation on earth as a result of its leadership position in the industry. In this instance, it was discovered that the complainant operated a worldwide watch business, and the defendant utilized its name and label to create and market jewellery. The complainant asserted that there had been an infringement on his trademark.

The defendant was found guilty of passing off and violating the plaintiff's trademark. As a result, a permanent injunction was issued against the defendant to prevent it from dishonestly using the complainants' label to profit and show goodwill by exploiting the complainants' brand's reputation.

10. Gucci v. Guess (2012) [10]

Gucci accused Guess of copying its designs, specifically its iconic "G" logos, stylized designs, and colour schemes. It was alleged that Guess's use of similar designs diluted the distinctiveness of Gucci's brand and thus U.S. federal court decided in favour of Gucci and awarded $4.7 million to Gucci as the compensatory damage which was quite less than the demanded amount. So, both parties later came to a settlement agreement in order to sort out their dispute without disclosing the terms of the agreement.

Conclusion

The need to identify and pass relevant legislation is growing in tandem with the expansion of fashion law. While France and the United States dominate in fashion regulation, Indian regulations do not. Long before the recent rise in digital media, companies like FDCI fought for a significant portion of the fashion industry. However, the difficulties that members of the fashion fraternity, both elite and little players, have faced have recently come to light. As societal needs shift, some jurists and academics have identified fashion law as one of the relevant institutions that develops intellectual property rights as the sole safety for fashion creations.

References

[1] CS(OS) No.182/2011

[2] 128 (2006) DLT 238

[3] FAO (OS) No.393/2008

[4] Inc., 2:17-cv-02523, (C.D. Cal.)

[5] 156 F. Supp. 3d 425 (S.D.N.Y. 2016)

[6] TM No.7/2017

[7] 890 F.3d 747 (9th Cir. 2018)

[8] CS(OS) No.2035/2006

[9] CS(OS) 41/2008

[10] 843 F. Supp. 2d 412 (S.D.N.Y. 2012)

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