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A Dress’ Trade Dress

Posted in Copyright Law

By Lisa Y. Wang

As New York Fashion Week carries on, so does fashion litigation. One brand that is constantly “copied” is Herve Leger, famous for their bandage dress. While a Herve Leger bandage dress can cost you thousands, stores and brands all over have copied the style and sold their own versions of the bandage dress for much less. However, fashion protection for clothing is limited, which is why fast fashion stores are able to copy your favorite runway designs, most of the time without getting sued.

Fast Fashion retailers, Forever 21 in particular, are often successful at trial partly due to the higher standard of creativity required to qualify for copyright protection for fashion items, which courts consider “useful articles,” which is “an object that has an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Courts use a higher standard to prevent stifling innovation in the industry – after all, there’s only so many ways you can vary a plaid pattern and a shirt still has to have holes for your arms and head. For example, Express lost a case against Forever 21 – and had to pay Forever 21’s $700,000 in legal fees – because it couldn’t prove that its plaid designs were original enough to be protected.  If Express had won, where would courts draw the line? Next could be polka dots, stripes, etc.  Fashion could come to a screeching halt if one brand had copyright protection over every incarnation of polka dots.

Long story short, while Herve Leger might not be able to register a copyright for the bandage dress, that doesn’t mean they can’t protect themselves against infringement.   In other words, if a brand copies one of its bandage dresses exactly, Herve Leger may be able to sue for infringement. That is exactly what happened when Stretta Moda sold nearly identical dresses as Herve Leger, and got sued for it.   Stretta Moda’s dresses had the same colors, designs, and patterns as numerous Herve Leger dresses (compared to many other stores who sell different designs of the bandage dress without making copies identical to Herve Leger’s products). Earlier this year, BCBG (the parent company of Herve Leger) sued Stretta Motta for trade dress infringement and dilution. It didn’t help that Stretta Motta was advertising its products as made in the same factories as authentic Herve Leger dresses and were essentially stating that their bandage dresses were virtually the same as Herve Leger’s garments. 

Based on the fact that clothing does not have as much protection under copyright law, it makes sense that BCBG went with trade dress infringement and dilution. Trade dress is a form of intellectual property and legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers, and is actually a form of trademark . Trade dress can be the packaging, displays or configuration of a product itself. For example, the décor of The Hard Rock Café and the shape of the absolute vodka bottle are all examples of protected trade dress.  But again, functional aspects of trade dress cannot be protected. To qualify for trade dress protection, the trade dress must be inherently distinctive (unless it has acquired secondary meaning), and the junior users must cause a likelihood of consumer confusion.

BCBG alleged that their bandage dress was a “high fashion garment with a singular trade dress featuring a combination of non-functional elements:  (a) bands of fabric, (b) arranged in a horizontal and/or diagonal patterns, (c) to form the tight-fighting dress with an overall look that accentuates the female form.” BCBG also allege that the Herve Leger brand has continuously and exclusively used the “Herve Leger Trade Dress” in connection with its products such that the fashion industry and customers associate the Trade Dress as an indicator of the product’s source. BCBG also alleged that the Herve Leger Trade Dress has acquired distinctiveness in the minds of consumers and as become famous.

In May, BCBG’s PR machine got rolling and claimed that it “won” its trademark suit against Stretta Moda. BCBG definitely got what it wanted, a permanent injunction against Stretta Moda preventing it from selling any imitations of BCBG’s “Herve Lever Trade Dress,” and a judgment in the amount of $150,000. However, the case never went to court, and the parties essentially settled and then entered into a consent judgment/consent decree, which means that it cannot be published as precedent to be used in future litigation by unrelated parties.  It’s almost like a public settlement agreement, this one heavily in favor of BCBG, which is why BCBG was happily touting its as a victory. Either way, if you love the design of a certain Herve Leger dress, you’ll probably have to start saving up now.