Gucci Is Fed Up With Forever 21's Alleged 'Blatant Exploitation'
Here's what the new lawsuit means for fashion's finicky trademark law.
BY Christine Flammia | Aug 11, 2017 | Fashion
It's hardly news that Forever 21 (allegedly!) stole fashion designs again, because Forever 21 loves (allegedly!) stealing fashion designs. From Life of Pablo tees, to virtually unknown artists, to H&M—seriously, H&M?—the brand's laundry list of (alleged!) rip-offs runs long. But this time, it pissed off Gucci. One does not piss off Gucci.
The designs at stake are Gucci's trademark-protected stripe motifs—red-green-red, and blue-red-blue. There's been some history here: Gucci sent multiple cease-and-desist letters to Forever 21, and in June, Forever 21 responded legally by denying the claim. This week, Gucci fought back. Hard.
On Aug. 8, Gucci asked the court to dismiss Forever 21's claims, and filed its own claims for trademark infringement, trademark dilution, and unfair competition. Gucci's statement, in part:
Despite Forever 21's attempt to use its lawsuit to intimidate Gucci into ceasing its trademark enforcement efforts, Gucci is as committed as ever to protecting its long established intellectual property rights, which are at the heart of the brand's identity, and to ending once and for all Forever 21's reprehensible exploitation of its distinctive trademarks and those of other brands who have suffered the same type of piracy. Gucci considers the defense and enforcement of its celebrated trademarks of paramount importance in protecting its customers from those who wish to knowingly profit from deception and confusion.
For its part, Forever 21's attorney Laura Chapman (of Sheppard Mullin Richter & Hampton LLP) response to the lawsuit is as follows:
Forever 21 brought its lawsuit because it believes that its position has merit. It is not our policy to comment on pending litigation and Forever 21 looks forward to presenting its case to the court.
Forever 21 has been ripping off designs without consequence for years. (You know, allegedly.) Could this lawsuit change the law of the fashion land? We talked to Julie Zerbo, founder and editor-in-chief of The Fashion Law, who broke it down for us.
"The case is a bit surprising, as Forever 21 has, over the years, received countless cease and desist letters, and rarely—if ever—responds by filing a declaratory judgment action," she says. "So, this may signify a new legal tactic or strategy on the part of Forever 21 going forth when it is threatened with a lawsuit."
So the legality aspect of this is deeper than is standard for this familiar situation. And it's notoriously difficult for the brand in Gucci's position to win; according to Zerbo, it's unclear if the "average consumer is likely to be confused about the source" of the infringement. But this case is certainly something that speaks to the prevalent issue in fashion: How can brands protect their designs?
Zerbo noted how cases like these are based in trademark law, and its role in the industry. "It is, oftentimes, the value of a brand's trademarks that garners the most value and that consumers are actually paying for [rather than the actual garments or accessories]. The design, more often than not, is secondary."
It was quite the move on both Forever 21 and Gucci's parts to take this issue a step further—but, depending on the outcome, it might just be the one brands and designers need to protect themselves.
Here's the Gucci statement in full:
"Gucci has today taken steps to finally put an end to U.S. mass retailer Forever 21's blatant exploitation of Gucci's famous and iconic blue-red-blue and green-red-green stripe webbing trademarks. In two filings today in the United States District Court, Central District of California, Gucci has asked the Court to dismiss the spurious claims that Forever 21 lodged on June 26, 2017, and has brought counterclaims against Forever 21 for willful trademark infringement, trademark dilution and unfair competition.
Gucci's renowned blue-red-blue and green-red-green stripe webbing trademarks have been iconic codes of the House of Gucci for more than fifty years, following their introduction in 1951 and 1963 respectively, with the first U.S. trademark registration of the webbing dating back to 1979.
Despite Forever 21's attempt to use its lawsuit to intimidate Gucci into ceasing its trademark enforcement efforts, Gucci is as committed as ever to protecting its long established intellectual property rights, which are at the heart of the brand's identity, and to ending once and for all Forever 21's reprehensible exploitation of its distinctive trademarks and those of other brands who have suffered the same type of piracy.
Gucci considers the defence and enforcement of its celebrated trademarks of paramount importance in protecting its customers from those who wish to knowingly profit from deception and confusion."