By Erin Geiger Smith
NEW YORK, Jan 23 (Reuters) - Luxury fashion brands are
becoming increasingly protective of their designs but are
reluctant to sue their peers except as a last resort,
intellectual property attorneys said at a legal conference.
At a panel discussion in New York, McCarter & English's
Harley Lewin, Arnold & Porter's Louis Ederer and Tory Burch
in-house counsel Tiffany Walden said that despite some
high-profile IP tussles among fashion brands, they think
competitors typically will try to work out disputes behind the
In one of the most closely watched court cases, shoe
designer Christian Louboutin sued Yves Saint Laurent in 2011
over Louboutin's trademark on lacquered red shoe soles. The
battle landed in the 2nd U.S. Circuit Court of Appeals, which
ruled last September that while Louboutin could trademark the
red sole, YSL's all-red shoes did not infringe that mark.
Lewin, the lead Louboutin attorney in the case, said at the
panel discussion at the New York State Bar Association's annual
meeting that Louboutin only sued when the disagreement could not
be settled out of court.
Louboutin also sued out of fear that failing to protect its
IP would mean that other shoe designers -- luxury or budget --
might copy its designs without fear of repercussion, Lewin said.
It is much more likely for a company that sells lower-priced
goods to blatantly copy a luxury item than for luxury houses to
directly copy one another, he said.
Walden said the Tory Burch company's executives or lawyers
will frequently call their counterparts at a luxury competitor
they think is selling an item that looks too similar to one of
its designs. The company, named for its chief executive, is
known for bright tunics and flats bearing its signature "T"
"I can't imagine we would ever sue a Gucci, a Louboutin" or
a similar brand, said Walden, noting that many brands' designers
are friends and colleagues of Burch's.
The undesired press that comes from litigation, especially
at a company where the designer's name is on the label, is an
incentive to deal with disputes privately, Walden said.
The panelists said it is more common for fashion houses to
go after counterfeiters and those operating at a lower price
point in the market.
Tory Burch, for instance, is much more likely to sue
companies that are obvious "bad actors," Walden said, such as
Chinese counterfeiters who own multiple websites dedicated to
Even then, the company tries to avoid litigation. In the
past year, Tory Burch has filed about 13 lawsuits in six
countries against counterfeiters, while reaching out-of-court
agreements with 70 to 80 such parties, Walden said.
Separately, the designer has been embroiled in a dispute
with her former husband, claiming he misappropriated her
company's trade secrets for his new venture, C. Wonder. The
parties announced earlier this month they had settled out of
The panelists said protecting a brand's marks and reputation
is paramount for fashion houses, which thrive only when
consumers covet their recognizable and high-priced goods.
Ederer of Arnold & Porter represented Gucci in a years-long
trademark battle against retail giant Guess. In May 2012, U.S.
District Judge Shira Scheindlin in New York said Gucci may
recover $4.66 million from Guess Inc, a small fraction of the
more than $120 million that the Italian luxury goods maker had
Companies are increasingly looking to bolster claims for
trade dress, Lewin said. A trade dress claim is when brands
argue that a certain characteristic of a product, such as the
unique shape of a bottle or handle on a purse, serves as a brand
identifier that cannot be copied.
Fashion brands also are increasingly seeking to protect
their products through design patents, though those have their
drawbacks in an industry that moves quickly, Ederer said.
Patents can take too long to be issued, he said, and the
patented item could be off the shelves and out of style before
the patent is enforceable.
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