THE FASHION LAW EXCLUSIVE - The Council of Fashion Designers of America (“CFDA”) and WME-IMG have been handed a favorable preliminary ruling in connection with the lawsuit that Fashion Week, Inc. filed against them earlier this year. After being slapped with a trademark infringement lawsuit over their use of the “New York Fashion Week” trademark, Judge John G. Koeltl of the Southern District of New York has ruled in favor of the CFDA and WME-IMG, holding that Fashion Week, Inc. – a company that describes itself as "producing live fashion shows that are predominantly focused on the consumer market for entertainment proposes only" – has failed to meet its burden to immediately prevent the CFDA and WME-IMG from using the New York Fashion Week trademark.
Ruling on Fashion Week, Inc.’s motion for a preliminary injunction – a temporary order made by a court at the request of one party that prevents the other party from pursuing a particular course of conduct until the conclusion of a trial on the merits – Judge Koeltl held that while Fashion Week, Inc. does, in fact, have rights in the New York Fashion Week trademark (as indicated by a few federally registered trademarks), such rights are “limited.” In particular, these rights apply only to “online entertainment ticket agency sales,” the class that their trademark registrations cover, as opposed to the “broad ambit of organizing and producing fashion shows,” for which the CFDA and WME-IMG - the producers of NYFW - use the trademark.
The court further held that Fashion Week, Inc. “failed to show actual irreparable harm” as a result of the CFDA and WME-IMG’s use of the trademark. For the uninitiated, "irreparable harm" is one of the key requirements for the issuance of a preliminary injunction. [The court noted: "A party seeking a preliminary injunction ordinarily must show: (1) a likelihood of irreparable harm in the absence of the injunction; and (2) either a likelihood of success on the merits or sufficiently serious questions going to the merits to make them a fair ground for litigation, with a balance of hardships tipping decidedly in the movant’s favor.”]
Primarily, the court held that “[Fashion Week, Inc.] unduly delayed seeking relief for at least twelve months, and for as many as eighteen months, after becoming aware that the defendants were using the major marks [Fashion Week, Inc.] claims, the urgency necessary to enter a preliminary injunction pending a decision on [Fashion Week, Inc.’s] claims does not exist.” While Fashion Week, Inc. held that its delay was due to its "investigation of possible infringement" and settlement discussions with the CFDA and WME-IMG, the court held that it "failed to provide any credible factual evidence to support such assertions."
Moreover, the court found that “based on the extensive evidence in the form of affidavits of industry professionals, media coverage, and the plaintiff’s own evidence of alleged confusion in the marketplace showing the strong association between the marks and the defendants, it is clear that the public strongly associates ‘New York Fashion Week’ with the events organized by CFDA and produced by WME-IMG.”
Had the CFDA, WME-IMG not won in connection with the preliminary injunction, they would have been prohibited from using the New York Fashion Week mark until the conclusion of the lawsuit, which would have undoubtedly stretched out for at least a few more months (think: during September fashion week). Such a ruling does not bode well for Fashion Week, Inc.’s case a whole, particularly because the court further held that Fashion Week, Inc. has failed to show a "likelihood of success [of its case] on the merits." More to come …
The case is FASHION WEEK INC. v. COUNCIL OF FASHION DESIGNERS OF AMERICA, INC. ET AL, 1:16-CV-05079.