The first thing I asked Ryan Gile was about what the legal rights of a designer would be if they found someone with a counterfeit copy of one of their products. “Counterfeiting is the act of making or selling lookalike goods or services bearing fake trademarks. Likelihood of confusion is self-evident in counterfeiting, because the counterfeiter’s primary purpose is to confuse or dupe consumers. Even when the buyer knows the product is a fake, the business is still liable for counterfeiting, because the product can still be used to deceive others.” (Patent, Copyright, and Trademark, Stim, Richard, p. 405) He told me that it would really depend on what the item was, a purse, a shoe, or clothing. Trademark protection isn’t for functional products. “Trademark law, like copyright law, will not protect functional features. Trademark disputes about this issue arise in cases involving product shapes or product packaging. Unfortunately, there is no simple definition for ‘functional,’ because this area of the law is still evolving. Generally, a functional is essential to the usability of a product. That is, the feature is necessary for the item to work.” (Patent, Copyright, and Trademark, Stim, Richard, p. 381-382) It would have to be for some unique design element, an artistic pattern or image that is a source identifier, that is what a customer looks to as the identifier for the quality and good will associated with the brand, like Coach, Louis Vuitton, or Prada. “A trademark is a distinctive word, phrase, logo, graphic, symbol, or other device that is used to identify the source of a product or service and to distinguish it from competitors.” (Patent, Copyright, and Trademark, Stim, Richard, p. 378) For clothing, since the parts aren’t unique or original, it has to show unique creativity or design. A slogan is ornamental so that can’t be claimed under trademark.
The next question I asked him was about designers for Victoria Secret going out and shopping the other brands and then copying many of the popular, most common elements of the current season that they find. I asked him if the store that the designers bought the suits to take back and copy from had any rights if their sales were affected by this infringement. He replied that again, you couldn’t claim anything had been infringed upon in the swimsuit itself because it’s not original in itself. Trademark infringement could only be claimed for a name on the fabric or some original design element of the garment itself, like for instance a new strap design or closure device. You can’t get a trademark because of aesthetic functionality. “Aesthetic functionality refers to visually appealing but unprotectible features of a trademark.” (Patent, Copyright, and Trademark, Stim, Richard, p. 393) It’s got to have distinctiveness that sets it apart as a trademark. The unique pattern of the fabric could be claimed if it was a source identifier. “A trademark can be more than just a brand name or logo. It can include other non functional but distinctive aspects of a product or service that tend to promote and distinguish it in the marketplace, such as shapes letters, numbers, sounds, smells, or colors. (Patent, Copyright, and Trademark, Stim, Richard, p. 378) I then asked him about the rights of the designers of the suits. It’s the same for the designers of the suits. If they didn’t create a new way to make a swimsuit or a new cut of a suit then there is really no infringement they can claim. He started telling me about a designer, a woman, whose dress designs are trademarked because she was the first to patent that precise way of making a dress. I interjected that it was Diane Von Furstenberg. He said yes that’s it. The wrap dress that everyone associates with her as a designer was the product. I then asked him if it would be more likely to get a copyright or trademark approved for the entire swimsuit as a whole or for a single part of it. He told me that it would more than likely be only a part because the suit itself is not a new, original idea. It’s like if you made a pair of pants. The pants themselves cannot be trademarked because they are not original, you did not invent pants, and you cannot own the design for pants. However if you created a new way to close the pants, or a new fabric, you could trademark that as a source identifier for your brand.
I then asked him if a fabric could by trademarked. He told me that a fabric can be trademarked if it has a source identifier, like the Coach logo. The fabric itself isn’t what is trademarked unless you invented a new fabric that had never been used for. It’s the image on the fabric that is trademarked. You could use the exact same fabric as Gucci if you just didn’t put the name Gucci on it.
ABS makes dresses right after a big awards show that are exact copies of the ones worn on the red carpet that get the most attention. Is this considered a copyright or trademark infringement? A knockoff isn’t considered infringement because it is just recognized universally that you can copy something as long as you don’t try to take an original and try to pass it off as your own. Copying a design exactly is widely accepted and you would only run into a problem if you tried to pull out an original label and put in your own.
Mr. Gile informed me that recently he had a client that made a specific, unique kind of chocolate. The client had been approached by a private company that wanted him to design a label for their product and let them sell his chocolate under their label. They couldn’t come to an agreement about the label and the terms of the use of the product. The company in turn threatened the client that they would buy his chocolate and just pull his label off and put their own on and sell it as theirs anyway. This is called reverse passing or palming off. It was tricky because legally they were buying the product so Mr. Gile couldn’t say they were stealing that. There was no other identifier on the product that would make it known that it was the clients’ product so the company could have passed it off as their own. Reverse passing off is illegal and unethical and is a trademark issue. “Palming off occurs when goods are marketed in a way that makes people think they are really manufactured by someone else; to do this, an infringer usually uses the true trademark on substitute goods. Reverse palming off, on the other hand occurs when a noninfringing label is placed on someone else’s good and the goods are then sold under the noninfringing name. Either way the public is being deceived and the owner of the original goods or mark may file a lawsuit under Section 43 of the Lanham At to prevent this type of activity and recover damages caused by it.”(Patent, Copyright, and Trademark, Stim, Richard, p. 464) So thus it would be illegal for them to pull the labels off and pass it off as their own with new labels.
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