The Fashion Law Exclusive - Margherita Missoni took to her Instagram yesterday to call out Michael Kors for his copycat ways. Missoni, who has served as the creative director of accessories for her family's label since 2010, as well as the director of its beachwear collection, and who is very rarely spotted not wearing Missoni, posted an image of a few zigzag-printed garments, along with the caption: "Really @michaelkors? Is this serious?? A slight Missoni feeling #zigzagging." Stefano Gabbana, half of the Dolce & Gabbana design duo even chimed in, saying "He does it all the time and does not care! Unfortunately, there is no protection!" (Gabbana is just one of a handful of designers who have spoken out about Kors' copying; Roberto Cavalli has had quite a bit to say about Kors in the past, as well). To Gabbana's comment we ask: Is there really no protection? Well, in the case at hand, there actually may be.
While the design of the majority of garments is not protectable by law (in the U.S., at least), Missoni is a special case, as the Varese, Italy-based design house filed to patent a couple of its classic zigzag prints, and was awarded two designs patents. Put simply, a design patent protects the “new, original, and ornamental design for an article of manufacture" - aka it protects the appearance of a design. In the case of Missoni, the design patents protect its zigzag pattern designs on fabric. We spoke to our go-to design patent expert, Sarah Burstein, about what protection the Missoni patents entail, and she told us: “Each Missoni patent states that ‘The shading represents color contrast.’ So, Missoni isn’t claiming specific colors, but it’s not clear exactly how far this claim would extend." There is a chance that the design patents at issue provide a extensive amount of protection, therefore, making Kors' lookalike designs infringing. That would be up for a court to decide.
Additionally, Missoni may have a state-specific trade dress argument (as the design house has not federally registered any of its prints with the U.S. Patent and Trademark Office). The Missoni zigzag prints (there are an array of variations) arguably are so distinctive that they immediately act as source-identifiers to consumers, much like the Louis Vuitton Toile Monogram does, or the way the design of a Birkin bag signifies the Hermès brand. The essence of a trade dress claim (as distinct from a trademark claim, in particular) is that the appearance of a design alone is either "inherently distinctive" or has gained secondary meaning in the mind of the public, and thus, serves to identify the brand associated with such design.
You are probably (maybe?) wondering what it takes for a design to be considered "inherently distinctive". Courts have addressed this; in Duraco Products v. Joy Plastic Enterprises, the U.S. Court of Appeals for the Third Circuit, for example, held that a products appearance is inherently distinctive if it is: "(i) unusual and memorable; (ii) conceptually separable from the product; and (iii) likely to serve primarily as a designator of origin of the product." If a design is not found to be "inherently distinctive" (although there is certainly a chance that a court would find that Missoni's zigzag print is, in fact, inherently distinctive), then Missoni would have to show that the prints have acquired distinctiveness via secondary meaning. Keep reading; this is the good part …
If we look to some of the most reputable industry publications' and retailers' descriptions of the Missoni prints, it seems to be glaringly obvious that the print has gained quite a bit of distinctiveness. Vogue speaks to the "famous zigzag pattern", which the brand began using in the early 1960's. InStyle magazine and e-commerce giant Net-a-Porter refer to the Missoni zigzag as "iconic"; Neiman Marcus specifically calls it "distinctive" (certainly NOT referring to the legal definition). Fellow retailers, Barneys and Saks Fifth Avenue, call the zigzag Missoni's "signature"; Bergdorf Goodman claims it is "the calling card of the Italian firm." And last but not least, online retailer, Luisa Via Roma states that the Italian design house produces "instantly recognizable classics." So, the proof is there.
The counterargument to this is that the zigzag print, having been reproduced by many different brands, from just about every fast fashion retailer to Trina Turk, Mara Hoffman, Tracey Reece, and Rachel Pally, among others, is no longer as distinctive as it once was. While this argument is not without weight, as the zigzag print has, in fact, been reproduced by a handful of brands, I'm not sure that it has completely diluted the effect of the Missoni zigzag, especially when paired with a Missoni-style knit, which arguably still signifies the Missoni brand to consumers.
Either way, I think Michael Kors and other brands should probably steer clear of the zigzag. It's Missoni's thing.