YSL Settles Ain't Laurent Lawsuit

YVES SAINT LAURENT has settled its lawsuit against parody T-shirt company What About Yves. The French house took exception to the production of merchandise bearing the words "Ain't Laurent Without Yves" in reaction to creative director Hedi Slimane's decision to rebrand the company without the founder's forename, asserting that the items were guilty of "trademark infringement, trademark dilution, false designation of origin, and unfair competition".

What About Yves. You may recall that YSL filed suit against the company and its founder, Jeanine Heller, this past April for manufacturing and selling t-shirts and sweatshirts that read, Ain’t Laurent Without Yves. The Paris-based company, which dropped the “Yves” from the name of its revamped ready-to-wear collection in 2012 when creative director Hedi Slimane came on board, alleged claims of trademark infringement, trademark dilution, false designation of origin, and unfair competition.

Things got interesting when after YSL sent Heller a number of letters alerting her of such intellectual property charges. According to YSL’s complaint, which was filed in the Southern District of New York court, after a number of letters that YSL sent Heller on the matter went unanswered, Heller finally reached out to the design house's counsel, denied any wrongdoing, and offered to sell her Ain't Laurent Without Yves trademark to them. (Yes, Heller filed to federally register the mark with the U.S. Patent and Trademark Office but was ultimately rejected due to its similarity to a number of existing trademarks belonging to YSL). All the while, Heller continued to sell the allegedly infringing t-shirts to retailers including famed Paris boutique, Colette, with which YSL ultimately cut ties as a result of its stocking of the t-shirt.

After settling a similar lawsuit with Chanel this past year (even though the shirts at issue

in that case are still available for sale on the What About Yves website), Heller settled the case with YSL earlier this month. According to the docket for the Southern District of New York court, the case was voluntarily dismissed on January 12th, and while it appears that Heller agreed to remove the YSL tees, there is no word on what the monetary component of the settlement is as reported by The Fashion Law.


YSL has been bombarded with complaints from dissatisfied fans after unveiling the new Saint Laurent Paris logo on Facebook earlier this week. The brand shared a photo of a box bearing the new logo on their official page - which, despite receiving almost 3,000 Likes so far, has attracted a slew of negative comments.

"Hard to believe such a poor decision has been made, which can only damage the brand," says Chris Dickman, while Molly McGlew adds: "This is so boring and genuinely disappointing."

"Go back to the old logo, the new one lacks imagination," comments Adi Elias. "I'm not a fan of the new logo, but I can see what the brand was aiming for," adds  Lucy Geremin. "But I really do think the Yves or Y was quite important and iconic. The new logo doesn't represent the same brand to me."

But not everyone shares the same view: "What Hedi proposes is both new and old, looking forward but with respect for the old," comments Nick Byrne. "YSL and the full name in the same script were only used for Haute Couture. The ready-to-wear used the same typeface which Hedi has proposed."


"Very fresh, modern, contemporary... of the moment," adds Ian Edwards. "It speaks of an austere, inconspicuous, but highly elegant luxury."

Heller has had a busy year in litigation, after Chanel took issue with a double C-printed T-shirt that she was selling - a case that was also settled out of court. She currently still retails the double C print - along with parodies of the Dior, Hermès and LVMH logos - so it's unlikely that this is the last time we'll hear her name in connection with trademark-infringement accusations.

The settlement comes at a time when the fashion industry is debating the future of Yves Saint Laurent creative director Slimane, despite repeated assertions by the brand that he is going nowhere. The designer is said to have personally objected to the What About Yves pieces so strongly that he chose to withdraw the entire Saint Laurent collection from Parisian boutique Colette in 2013, simply because it also carried the parody sweaters.



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Luxury Group Kering sues Alibaba for helping Counterfeiters

Makers of expensive bags, clothes and watches are fighting fakery in the courts. But the battle seems to be getting tougher

THE grand golden doors of 500 Pearl Street, in Manhattan, have welcomed such glamorous names as Hermès, Tiffany & Co and Kering, a French conglomerate whose treasures include Gucci and Bottega Veneta. The building is not a posh hotel or department store. It is the federal court for the Southern District of New York, a favoured battleground for the decidedly unglamorous war against counterfeit goods. As reported by the business section of the economist (August 2015)

The court is now the venue for Kering’s suit against Alibaba, a Chinese e-commerce giant. Kering alleges that Alibaba helps fakers sell goods on its websites. The French firm is not the only one to be incensed. On July 17th the American Apparel & Footwear Association (AAFA) demanded that Alibaba crack down on counterfeits. Alibaba insists it has extensive measures in place to do just that. It is trying to distance itself from counterfeiters, who are also accused by Kering. On August 6th Alibaba plans to argue to the court that it risks being unfairly implicated as a co-conspirator. A bitter trial looks likely.

The fight against copycats has been long and arduous. Kering’s suit is the industry’s most important in a decade—Alibaba has more than 1 billion product listings and aspires to reach consumers around the world. But its sites are hardly the only places shoppers can find copies. Fake sales are proliferating online, with counterfeiters becoming more technologically adept, more difficult to track and harder to pursue in court.

Counterfeit sales are, by definition, difficult to tally. Last year American border officials nabbed copies that, had they been genuine, would have been worth $1.2 billion. Their European Union counterparts seized €768m ($1 billion) of fakes in 2013. But these were surely a fraction of the counterfeits being peddled. Estimates for the total value of fakes sold worldwide each year go as high as $1.8 trillion.

The deluge of fakes includes everything from software and medicine to detergent and car parts. On July 26th, for example, Chinese authorities said police had raided a factory turning out huge quantities of iPhone copies. Nevertheless, watches, bags, clothing, jewellery and perfume make up most of the goods seized at borders (see chart). On July 21st the European Commission reported that lost sales due to fake clothes and accessories amounted to 10% of the industry’s revenue in Europe. This makes luxury firms shudder. They cherish their reputations for quality and exclusivity, explains Antonio Achille of the Boston Consulting Group. Ubiquitous, flimsy copies undermine them.

Economist.com

The problem has grown more complex as the fakery business has moved online. America’s trade representative predicted in April that online sales of pirated goods might exceed those in physical markets, adding glumly: “Enforcement authorities, unfortunately, face difficulties in responding to this trend.” Online, counterfeiters can stay anonymous, reach across borders and constantly launch new websites to evade legal action. Governments have a devilish time tracking fakes sold online and delivered by post, explains Armando Branchini of Altagamma, the trade group for Italian luxury firms. Fakes shipped in bulk, destined to be sold in physical shops, are hard enough for border guards to spot. “But when it’s a matter of millions of parcels, each with a pair of shoes or bag or shirt,” Mr Branchini sighs, “it’s quite impossible to check.”

Since it is so difficult to fight both fake-goods websites and the counterfeiting operations behind them—if you shut one factory, another will crop up nearby—luxury-goods firms are increasingly taking aim at the legitimate firms that facilitate the business of counterfeiters, such as auction websites, internet-domain registries and payment processors. Sometimes brand-owners seek these firms’ co-operation in court. Sometimes they sue them.

This has had mixed success. In 2004 Tiffany claimed that eBay was liable for the counterfeit sales on its site. eBay retorted that it could not prevent every illicit post, though it would work to remove them. Courts agreed. eBay and Google, which has also been the target of lawsuits, have systems to fight dubious sellers and advertisers. Neither, however, is foolproof.

Alibaba and the forty fakers

According to Kering’s lawsuit, Alibaba poses a new challenge. On eBay, a counterfeiter might auction one or two handbags at a time. Kering alleges that one wholesaler on Alibaba required a minimum purchase of 500 fake Gucci watches and claimed it could deliver up to 8m each month. Brand-owners tremble at the spectre of Alibaba’s 8.5m sellers hawking masses of counterfeits both within China and around the world. Kering’s investigators, for example, bought fake Gucci sneakers on Alibaba’s Taobao.com and had them shipped to New York. Kering alleges that Alibaba not only provides a platform for these sales, but encourages them. Kering complains that if you type “replica” in the search bar in Alibaba.com, the site’s algorithm will suggest “wristwatches”.

Alibaba counters that it, too, is a victim of counterfeiters and is working to fight them. The company has more than 2,000 staff devoted to the problem. They pore over dodgy listings flagged up by Alibaba’s algorithms and by brand-owners. In the run-up to its public offering last year, the firm removed 90m listings. Indeed Alibaba has acquired some weighty partners—it has signed agreements with Louis Vuitton, Coach and others to co-operate on fighting counterfeits. But its disputes look likely to heat up. The AAFA wants Alibaba to set up an automated system to take down dubious listings immediately, a demand that is unlikely to be met. The fight with Kering will continue. The two parties have already tried and failed to reach agreement outside court.

Meanwhile sales of counterfeits continue to sprawl across the internet. For example, it is common for Chinese consumers to dodge the high price of luxury goods in their own country by buying them on so-called daigou websites: a shopper might buy a handbag in Europe, then resell it on one of these websites for more than the European retail price but less than the Chinese one. Many products on such sites are genuine. Many are not.

More pervasive are the sites that pose as legitimate sellers of discounted goods. They may have domain names registered in one country, servers in another, payment-processing elsewhere and shipping from yet another place, according to MarkMonitor, which helps companies protect their brands online. Roxanne Elings, a lawyer at Davis Wright Tremaine, says one counterfeit outfit may run as many as 14,000 websites.

Firms have had some success in battling these sites, again by focusing their attention on legitimate companies that serve them. In 2010 Ms Elings helped North Face and Polo Ralph Lauren obtain court orders for domain registries to take down networks of rogue sites, and for PayPal to turn over fakers’ assets. Tory Burch, Hermès and Michael Kors won similar cases in 2011 and 2012.

Since then, however, counterfeiters have become more slippery. Ms Elings says that networks of sites are using multiple registries and myriad fake names. Joseph Gioconda, a lawyer who has represented Hermès, Michael Kors and Lululemon, says that catching up with copycats is daunting when their assets are held outside America. Kering and Tiffany had sought to freeze counterfeiters’ accounts at Chinese banks, but last year an American court refused to do so. That will make it harder to obtain foreign records that might expose counterfeit rings.

The role of consumers in all this is complex. Some are looking for the real thing at discount prices, and are deceived. Others are knowingly hunting for fakes. Both types may regret their penny-pinching. The most troubling recent trend is that online counterfeiters have discovered a new source of revenue. Some of their sites have no goods to sell, real or fake. They are simply out to steal unwitting shoppers’ card details, a business that can enjoy higher margins than any handbag.

From the print edition: Business

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Surge in Counterfeit via Luxury Consignment Websites

Luxury Consignments websites swelling the sale of fakes

DELORTAE AGENCY is the UK's first and leading luxury authentication and appraisal specialists and last year charted the biggest rise in counterfeit and fake luxury goods from consignment websites and looks to continue throughout 2016.

As consumers use the internet in search of a luxury handbag or accessory, the rise in consignment websites have increased to a prolific rate.

Many of the luxury brand handbags and accessories we examine are counterfeit, said Taelin Lambert Assistant to Delortae Agency Luxury Chief Authentication and Appraisal specialist.

Many are being purchased by UK consumers from consignment websites in both Europe and USA that claim the items they sell are from sellers that use their websites.

This upsurge is causing a huge problem for the UK luxury consumers who attempt to get their money back from these companies who hide behind the distance between the purchaser and the seller.

On the fake items we examine, Mr Lambert went on to say, "are not even the more sophisticated types and clearly are not the quality and sometimes even the design of the brand purported".

Many of these web sites claim to have 'in house authenticators' that will examine the item prior to being dispatched to the buyer by the seller. 

But the truth is, many are not checking the items as claimed because the consignment sites are allowing the items to be dispatched by the seller directly.

Delortae Agency, who is known and respected by major brands due to consistent commitment to brand protection world-wide, believe UK consumers are being targeted and often buyers do not even receive the items listed on the site but something of far less quality by using old style 'bait and switch' techniques.

Delortae Agency have been inundated by request from purchasers, not only from the UK, to appraise these fake items, and are appalled at the excuses buyers are facing when challenging these sites to get their money refunded.

There is no doubt that counterfeiters are using these consignment sites, who distance themselves from the consumer by stating that their members are listing the goods and have to confirm their authenticity, therefore absolving themselves from responsibility.

The 'Money Back Guarantee' is worthless as the consignment websites refuse to accept the item is counterfeit. 

So what can the consumer do? Having forked out a small fortune to purchase the item and additional shipping if they suspect they have bought a fake? We advise you try the following and then if only all else fails, consult a professional to assist with authentication as a last resort, try to avoid any additional charges, as companies will have a fee but you may be able to claim this back against the seller.

- If there is a 'Money Back Guarantee' get it confirmed in writing that it is 'no quibble' and the time for a refund is from when you receive the product and not from dispatch.

- Approach the website and request a refund in the first instance if you suspect the item is fake.

- If met with a refusal, remember you have the law on your side, and buy with supported third party payment merchant or Credit Card for additional buyer protection.

- Get your item professionally appraised and evidence confirmed in writing

This is a growing online problem from last year that we suspect will only increase throughout 2016.



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Taylor Swift Settles "Lucky 13" Lawsuit, Avoiding Trial

Taylor Swift

The singer strikes a deal to end the trademark dispute right as she was scheduled to submit to a deposition reports The Hollywood Reporter.

Taylor Swift has put to end to an uncomfortable legal difficulty with a confidential settlement executed with Blue Sphere, an Orange County-based clothing company that accused the singer of infringing its "Lucky 13" trademarks.

The lawsuit against Swift was filed in May 2014 as Delortae Agency reported here Taylor Swift Sued by Lucky 13 Apparel Company for Trademark Infringement, after she allegedly began marketing clothing bearing the "Lucky 13" phrase and made a partnership with a greeting card company conducting a "Lucky 13" sweepstakes.

In recent months, the litigation had evolved from a ho-hum trademark case into one that delved into many aspects of Swift's business acumen and had the prospect of becoming embarrassing ahead of a trial that was scheduled for January.

In particular, Blue Sphere and Swift went several rounds over whether she'd have to submit to a deposition. Swift claimed "harassment" as well as a busy tour schedule with the plaintiff investigating endorsement deals and serving subpoenas on Elizabeth Arden, Coca-Cola Company, Proctor & Gamble, Toyota Motor Sales and Papa John's, among others.

Her agents at William Morris Endeavor handed over its documents pertaining to Swift while attorneys for Blue Sphere continued to hunt for such items like all photographs and videos of Swift in which her buttocks or breasts were at least partially visible. The effort was made in part to figure out how products were being named, what other products might have been contemplated, and whether there were searches of trademark records in conjunction with all this. Additionally, Blue Sphere looked to investigate Swift's control over her brand and understanding of marketing channels.

In August, a judge cleared the way for a deposition, though the two sides continued to fight over timing.

Those looking for a better understanding of why Swift filed registrations on such marks as "this sick beat" or how hands-on she has been in her business won't learn anything more in the case. On Friday, the parties told a judge of the settlement agreement resolving all claims. 

Swift was represented by J. Douglas Baldridge at Venable while Blue Sphere was handled by Gary Rinkerman at Drinker Biddle & Reath.

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Steve Madden Settles TCPA Violations for $10 Million

Steve Madden footwear pic Nordstrom

STEVE MADDEN in trouble again, this time for violating the consumer. The publicly traded shoe designer has been no stranger to lawsuits in the past but this one is slightly different. The Telephone Consumer Protection Act (“TCPA”) provides for, among other things, statutory damages to individuals who receive unsolicited text messages to personal mobile phones – unless the messages are sent for emergency purposes or the recipient has given his or her express consent to receive such messages.  Companies that hire third parties to advertise on their behalf can also be held “vicariously liable” for the acts of those third party advertisers and predicted that many class action suits will arise in the future. 

Last week proved those predictions to be true and provided a real life example of the TCPA’s authority to hold hiring companies liable for the acts of their third party advertisers. posted kleinmoynihan.com

Steve Madden Shoe Company Class Action Lawsuit

Steve Madden, Ltd. (“Steve Madden”), an international shoe retailer, was accused of sending more than 200,000 text messages to consumers through one of its third party advertisers.  The company presented two defenses to these accusations:

1. That consumers had implicitly consented to receive text message solicitations by providing their cell phone numbers while visiting Steve Madden stores; and alternatively
2. That a third party advertiser sent the text messages and should be responsible, not Steve Madden.

Those who have been following this blog should know that neither of these defenses is viable.  First, under the TCPA, consumers must provide express and unambiguous consent to receive unsolicited text messages for commercial purposes.  A customer that verbally provides his or her mobile phone number at a point-of-sale retail outlet without being expressly told how that number will be used, has not provided “consent” under TCPA requirements.  Beginning October 16, 2013, a heightened standard will be imposed under the TCPA, requiring prior express written consent to send autodialed and/or pre-recorded text messages to cell phones for marketing purposes.  Limited exceptions will apply to this requirement, such as calls/texts from the consumer’s cellular carrier, debt collectors, informational notices and healthcare-related calls.  If a dispute concerning consent arises, the advertiser bears the burden of proof to demonstrate that a clear and conspicuous disclosure was provided and that the consumer unambiguously consented to receive text messages and/or telemarketing calls to the number provided.

Second, in a Declaratory Ruling issued on May 9, 2013 the FCC ruled that a seller who does not “initiate” calls/text messages as contemplated under the TCPA can nevertheless be held liable where there is an “agency relationship” with its third party advertisers.  Some of the factors that the FCC cited in determining whether an agency relationship exists include the following, as restated here:

• Evidence that the seller allows the outside sales entity access to information and systems that normally would be within the seller’s exclusive control, including access to detailed information regarding the nature of seller’s customer information, e.g. cell phone numbers provided at the seller’s store;
• Evidence that the outside sales entity has the ability to enter consumer information into the seller’s sales or customer systems, as well as the authority to use the seller’s trade name, trademark and service mark;
• Evidence that the seller approved, wrote or reviewed the outside entity’s telemarketing scripts; and
• Evidence that seller knew (or reasonably should have known) that the third party advertiser was violating the TCPA on the seller’s behalf and the seller failed to take effective steps within its power to force the advertiser to cease that conduct.
• In the case of Steve Madden, we would assume that a majority of these factors were satisfied.

TCPA Penalties

The TCPA provides for either actual damages or statutory damages ranging from $500 to $1,500 per unsolicited message.  Considering that text message marketing campaigns often yield thousands, and in this case hundreds of thousands, of text messages, potential damages under the TCPA may escalate very quickly, as evidenced by the fact that Steve Madden was willing to settle the case against it for $10 million dollars.

Should it opt to engage in this method of marketing in the future, as part of the settlement agreement, Steve Madden also agreed to obtain consumers’ express consent, in writing, to receiving marketing text messages.  The company must retain that proof of compliance for four years and require its third party advertisers to abide by these terms.

For a brief description of how to handle a situation in which a TCPA action is brought against you, please see our post entitled, How to Defend a TCPA Lawsuit.

The settlement of Steve Madden’s case should be of interest to text message marketers and those generally interested in the Internet and mobile marketing spaces. If you are interested in learning more about this topic or pursuing a text message-based advertising campaign, please e-mail us at info@kleinmoynihan.com, or call us at (212) 246-0900.

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney.  Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.

KMT certainly put forwarded the case clearly (thank you) but what does this action mean for advertisers?


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Chanel And "parody" Streetwear Brand in Trademark Suit

Parody Street Wear

CHANEL is unimpressed with a T-shirt depicting its famous double C logo as the Ghostbusters sign, so much so that it is taking legal action against the garment's makers. Jeanine Heller, the founder of "parody" streetwear brand






What About Yves - made famous for its "Aint Laurent Without Yves" merchandise - has been served with a trademark infringement suit by Chanel.

Filed last week in New York, the suit asserts that Heller is "displaying, offering for sale, and selling on her website, and selling to third-party retailers, a T-shirt and a sweatshirt bearing Chanel's CC monogram mark with an image of an animated ghost commonly associated with the motion picture Ghostbusters," The Fashion Law reports.

The company says that, far from "transforming the mark", which is a standard defence for parody products, Heller is using the "clearly recognisable CC monogram mark [on] her own clothing precisely because of the iconic status of the mark, with knowledge of its association with Chanel, in order to call to mind Chanel".

Heller's brand made fashion headlines last year when it was found to be at the root of a disagreement between Saint Laurent and Parisian boutique Colette. Heller's "Aint Laurent" merchandise - which passed comment on creative director Hedi Slimane's decision to drop the word Yves from the brand's logo - was stocked by Colette, leading Slimane to pull his Saint Laurent collection in its entirety from the store.

The website, which is still offering the "Official Chanel X Ghostbusters" designs for sale, also stocks products which parody or infringe (depending on your point of view) the famous logos of brands including Hermès, Louis Vuitton and Dior. Whether any of these brands will take legal action remains to be seen, but Chanel is seeking damages that amount to up to "three times the amount of actual damages sustained" reported Vogue UK



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Stella McCartney sues Steve Madden Over Handbag Rip Off

Stella McCartney SS15

STEVE MADDEN finds himself in trouble again, this time being taken to court by UK designer Stella McCartney.

It has always been a difficult line to cross when does a high street copy of a design cross the threshold to trademark infringement.

LEFT: STELLA MCCARTNEY FALABELLA BAG; RIGHT: STEVE MADDEN BTOTALLY BAG

All the major brands have at one time or another challenged this. High street retailers like H&M and Zara and  have become giants in the apparel industry by mass producing runway-derivative styles at wallet-friendly prices. Also vice versa: Saint Laurent was recently accused of knocking off a Forever 21 dress and selling it for 150 times the original price.

LEFT: STELLA MCCARTNEY FALABELLA BAG; RIGHT: STEVE MADDEN BTOTALLY BAG

Stella McCartney has an idea on the matter. The UK-based designer has filed a lawsuit against Steve Madden for copying her popular Falabella bag just a little too closely with his BTotally bag. According to WWD, the 22-page legal document cites the charges against Madden as "trade dress infringement, unfair competition, deceptive trade practices, trade dress dilution, and design patent infringement" involving the "marketing and sale of a knock-off".

This is not a new issue and Steve Madden Ltd were sued last year by Balenciaga for doing much the same thing.

But, when is a high street copy a knock-off?


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