THE FASHION LAW EXCLUSIVE - There is a mini-war going on between footwear brands Marc Fisher and Aquazurra. On the heels of Aquazurra slapping Fisher with a number of cease and desist letters in connection with one of Aquazzura’s popular high heel styles, Fisher has filed suit in the Southern District of New York, asking the court to declare that Aquazzura does not possess legal rights in the shoe design at issue and therefore, lacks a legal basis to sue.
According to Fisher’s complaint, which was filed on Thursday in federal court in Manhattan, it has received “repeated demands” from Italian footwear brand Aquazzura to “cease and desist from selling a women's shoe style, the Marc Fisher brand Teagin Pointy Toe Pump with Tassle,” as the aforementioned design is too similar to its Forever Marilyn design. Fisher alleges that the letters it has received from Aquazzura allege that Aquazzura “owns common law trade dress rights in the design used for the Forever Marilyn shoe, and Marc Fisher's Teagin shoe infringes [its] common law trade dress rights and constitutes trade dress infringement and unfair competition” in violation of both federal and state law.
Fisher, the footwear brand that was charged with copying by Gucci some years ago, alleges that while its counsel has attempted to settle this matter with Aquazzura, arguing that Aquazzura lacks trade dress protection, namely due to the lack of secondary meaning in the shoe, it has been unable to do so, and Aquazzura has threatened litigation on numerous occasions. As a result, Fisher has asked the court to examine Aquazzura’s shoe and its alleged trade dress protection and award Fisher declaratory relief, namely by way of a statement that Aquazurra’s shoe lacks trade dress protection. In particular, Fisher states:
Plaintiff is in need of, and is entitled to, a judicial declaration that: (a) the design for Defendant's Forever Marilyn shoe does not function as an indicator of source and therefore Defendant does not own any common law trade dress rights in that design; and (b) to the extent that the design for Defendant’s Forever Marilyn shoe does constitute common law trade dress, there is no likelihood of confusion between Plaintiff Marc Fisher brand Teagin shoe on the one hand, and Defendant's Forever Marilyn shoe on the other.
But Fisher does not stop there. The complaint goes on to state the following: “Defendant's demands and threats have placed a cloud over Plaintiff's rights to sell women's shoes that reflect currently trending fashion styles, to compete fairly in the marketplace for fashion footwear, and to sell shoes that are free for use and sale by others in the field of fashion footwear.”
TRADE DRESS LAW AND THE SHOES AT ISSUE
As you may know, trade dress is a sect of trademark law that protects the overall commercial image of a product that indicates or identifies the source of the product and distinguishes it from those of others. It may include the design of a product, itself, such as a shoe design. In order to qualify for federal trade dress protection, a design must have secondary meaning, which means that consumers identify the mark (the shoes in our case) with a certain brand (Aquazzura here). In order to determine if such secondary meaning exists, the Southern District of New York court considers six factors: “(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use.”
As for whether the court will deem Aquazzura's Forever Marilyn shoe to be synonymous with its brand in the minds of consumers (and thus, subject to trade dress protection) is up for debate. It is worth noting, though, that even if the court were to find that Aquazzura's shoe is protectable by trade dress, in order to prevail in an infringement suit, Aquazzura would have to show that consumers are confused as to the source of Marc Fisher's lookalike version and associate it with Aquazzura's brand. As for what will be taken into consideration for that, here's one thing: the Aquazzura shoe retails for upwards of $700 and is stocked by retailers including Barneys, Net-a-Poter, and Matches, whereas Fisher's version is stocked by Macy's and sells for $70. So, they occupy quite different parts of the market. More to come …