In light of recent events — namely, Thursday Friday thumbing its nose at Chanel — I think it’s finally time to discuss some of the legal issues surrounding T/F’s meta-fashion. So strap in.
As CATWALK JUSTICE has written in the past, Thursday Friday produces the “Together” bag, whose “surreal design references luxury but is ultimately an anti-status symbol.” The canvas bags bear images of wildly expensive luxury handbags on each side. T/F started with the iconic Birkin bag, which drew the ire of Hermès and got T/F sued for trademark infringement and dilution. Undeterred, T/F released the next item in its “Together” series, the so-called “BRAIDS” tote that features images of Miu Miu’s $1,750 “Hobo” bag on all sides. This week, Thursday Friday grew its stable of “Together” bags with the new “Diamonds” collection — totes in various sizing bearing images of what appear to be Chanel’s 2.55 Reissue bag (a quilted bag identical to Chanel’s original version, but without the company’s signature interlocking C’s.)
Clothing and accessories are by and large ineligible for copyright protection, as the federal courts have deemed them to be “useful articles.” (Yes, there are exceptions to this rule, but for our purposes, copyright is out the window here.) The government also grants utility and design patents, but these are difficult and expensive to obtain, so the fashion industry doesn’t tend to put much stock in patent protection. So, as regular readers of this column know, in fashion, trademark protection is generally where it’s at.
The archetypal trademark would be the name of a fashion house, like “Hermès,” often in a stylized font and/or accompanied by an image, like the Hermès horse-drawn carriage. Sometimes, a trademark is a sort of “reduction” of a house’s primary trademark, like Chanel’s interlocking C’s. Trademark protection may also be available for a non-functional feature consistently affixed to a product, like the Levi’s “Arcuate” back-pocket stitching pattern that has caused so much anguish for rival jeans purveyors. (Or, say, a particular color consistently used for the soles of high heels. Wait, scratch that… for now.) Sometimes, companies claim that product packaging, including the look and feel of a store, is entitled to trademark protection. (Abercrombie once sued American Eagle on this so-called "trade dress" theory, to no avail.) And going to the edge of trademark protection, sometimes companies claim trade dress protection in a product itself. Balenciaga pursued a product-design-as-trade-dress theory in a lawsuit against Steve Madden over a close approximation of the $4000 "LEGO heels." The catch in this type of case is that a plaintiff must show 1) that the product design at issue is not dictated by functional considerations, and 2) that a significant portion of consumers associate the design with a single source (all of this in addition to the usual requirements to prevail in a trademark infringement or dilution lawsuit.) Sound familiar?
When Thursday Friday was young and naive, it picked an iconic bag — the Birkin — that featured a registered trademark (not the bag itself, but the bag’s rectangular clasp.) This meant that Hermès would likely have little trouble proving secondary meaning in the bag’s design, and could also hang its hat on the two-dimensional reproduction of the registered mark. At least, the judge seemed to think so, albeit without much elaboration. In its court papers, T/F alluded to the parody-slash-critique of consumerism argument it planned to make, but recognized that it was too early in the case to get off the hook on that basis. (Since it settled with Hermès soon after the adverse ruling, the court never addressed that argument.)
Next, T/F wisely chose a less iconic bag — Miu Miu’s “Hobo” — with no apparent trademark registrations that might pose a problem. The Hobo’s less prominent status meant that Miu Miu would have more difficulty proving “secondary meaning.” The lack of any registration in the bag’s design or its components meant that fewer theories of recovery would be available to Miu Miu. No lawsuit was filed, though it’s impossible to say whether that has more to do with Thursday Friday’s strategic choices or Miu Miu’s.
Perhaps emboldened by its apparent victory with the “Hobo,” T/F next targeted Chanel, which is known for aggressively policing its intellectual property rights. But it chose to use images of the reissued version of Chanel’s 2.55 bag, in which an anonymous (and likely unregistered) rectangular clasp has been substituted for the previous version’s interlocking-C clasp. The result is a bag-on-a-bag that has a fairly plain, quilted design, produced in similar — if not identical — form by many other companies. This is key: for fairly intuitive reasons, explained here, when a certain item is available from numerous sources, courts are much less likely to buy a plaintiff’s argument that its product design carries the necessary “secondary meaning” among consumers.
In short, T/F is a clever, saucy little thing. While it’s now nipped at the heels of the 800-pound gorilla of intellectual property, T/F has chosen a rather bland bag, with no copyrightable elements and no readily identifiable trademark, whose design has been in the marketplace for quite a while and has already been copied by numerous third parties. Chanel can sue, of course, but it won’t be able to pack its complaint with the juicy press coverage Hermes had, making it less likely the court will allow the case to move on to the discovery stage of litigation. In fact, T/F might have decided to target Chanel precisely because its legal team is so aggressive, hoping that the circumstances I’ve just listed are compelling enough to get the case thrown out on a motion to dismiss, thereby deterring many would-be plaintiffs from coming after T/F in the future. (“Well, if Chanel lost, then…”) Well played, ladies. Well played.
[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed herein are those of the writer on the particular date of this post, and should not necessarily be attributed to his law firm or its clients.]