September 2010
RUSS AUGUST & KABAT VICTORY IN FOREVER 21 FASHION CASE
Russ August & Kabat lawyers Larry C. Russ and Nathan D. Meyer prevailed in a year-long copyright and trade dress case, obtaining summary judgment rejecting claims of copyright infringement and trade dress infringement against Forever 21. The case involved alleged copying of five garments. This is the first case against Forever 21 regarding alleged copying of garments to proceed to final judgment.
As noted in more detail in the attached opinion, the ruling clarified several key aspects of copyright and trade dress law. On the copyright front, the court made clear that (1) a plaintiff has a duty to investigate authorship prior to filing a copyright lawsuit; (2) that designs based upon derivative works need to be disclosed so that the copyright office is aware of what part of the new design is claimed to be original; (3) that the burden of proving originality will be on plaintiff if the copyrighted work is based upon some design in the public domain. This ruling is a blow to copyright companies that troll the marketplace for public domain fabric designs which they copyright and then sue manufacturers and retailers for using these designs. Under this case, future copyright plaintiffs will have to disclose whether their works are based upon the work of third parties and if so, show, when challenged, that such works actually have some original elements. A plaintiff who is not honest with the copyright office in connection with disclosing derivative works will not gain any benefit from a presumption of validity typically associated with a copyright registration.
With respect to trade dress, the Forever 21 case clarified the standards that are going to be applied when a party claims trade dress in connection with a product like a jacket, jeans, or any other consumer product. Express essentially urged the court to adopt a rule that every single item of clothing made by a national retailer is automatically subject to trade dress protection, and that such a plaintiff need only prove identical copying to prevail. Such a rule, however, would have turned the requirements of trade dress law on its head. Instead, the Court rejected Express’ argument and held that copying alone is not relevant to a trade dress claim. In order to prove that a product is deserving of trade dress protection, a plaintiff must establish that the design is source identifying i.e., has secondary meaning. The only way to do that is by actual circumstantial and direct evidence of secondary meaning above and beyond the fact that someone copied the product design identically.