In an earlier article, we set out the scandal involving pop star Miley Cyrus’ alleged copyright infringement against Melbourne designer, DI$COUNT UNIVER$E. In our fashion law update, we turn to how designers can protect their designs through copyright, design registration and trade marks.
When talking about protecting a fashion house’s brand name or logo, trade mark registration typically first springs to mind. And when seeking to protect a prominent motif or element associated with your brand, it deserves serious consideration. Common examples include the red colour used on the soles of Louboutin shoes, the farting cartoon dog image of Mambo, or the buckle on Louis Vuitton satchels (a registered shape trade mark).
Australia v USA
A critical distinction in applying trade mark law in Australia as opposed to the US is the requirement for the alleged infringer to have been using the image “as a trade mark”.
Louis Vuitton Malletier successfully overcame this hurdle in Australia, claiming infringement of its flower logo trade mark by the defendant’s use of a deceptively similar mark on the arms of its sunglasses.
BCalla’s alleged use of DI$COUNT UNIVER$E’s motifs is however, less clear. This is particularly the case when the designs have been a one-off for the performance. If then mass produced, clear labelling would undoubtedly accompany the garment, identifying which fashion house it orignated.
Notably, if the motifs were registered as trade marks, the relevant infringement took place in the US and so, the trade marks needed to have been registered over there, as well as in Australia.
Under the US Lanham Act, there is a two stage test for trade mark infringement.
- Whether the trade mark had “merits protection”?
- Whether the alleged infringing mark is likely to cause consumer confusion?
It is unclear whether a trade mark case on these facts would have passed the first hurdle.
Although DI$COUNT UNIVER$E would likely have satisfied the second test, is is unclear whether trade mark case on these facts would have passed the first hurdle. As the Louboutin case showed, US courts afford the fashion industry a small level of protection where trade marks are concerned, and find that they generally do not merit the same degree of protection as their owners assume they will.
Misleading and Deceptive Conduct
Other fashion cases have been founded on misleading and deceptive conduct, and passing off. Judging by the number of misplaced congratulations DI$COUNT UNIVER$E received, there appeared to be a number of people who were actually misled by BCalla’s conduct as to the origin of his designs at the VMAs.
Costs of Righting a Wrong
DI$COUNT UNIVER$E, along with other wronged fashion designers, are unlikely to seek civil remedies against BCalla or other alleged infringers. The excessive costs of pursuing litigation in Australia, let alone the US, would be prohibitive for such a small plaintiff as DI$COUNT UNIVER$E. Maybe it was just a good way to cause a stir and get some extra publicity for all concerned – Cyrus and both sets of designers included.
Up to last month I, for one, was completely unaware of DI$COUNT UNIVER$E and their designs, and unless this scandal had broken out, I still would be as I’m sure most of you would be as well.
- A fall back for all designers is to consider the breadth of protection for many other aspects of their designs and brand (including colour) which may be available through trade mark registration
- If the conduct engaged in by the infringer misleads or is likely to mislead consumers as to the origin of the designs, this may be the claim that is most likely to succeed whether, in Australia or the US. That is, if the wronged designer can afford the uncertainty and expense of the legal action required
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