The Toms Shoes name may be synonymous with its philanthropic efforts (think: each time the brand sells a pair of shoes, it gives a new pair of shoes to an impoverished child, and when the brand sells a pair of eyewear, part of the profit is used to save or restore the eyesight for people in developing countries). However, according to a new lawsuit, the brand is also a bit of a copycat. New York City-based designer Mara Hoffman filed suit against the popular footwear brand, as well as retailer Journeys, in New York federal court, claiming they copied one of her original prints. According to Hoffman’s lawsuit, “Toms Shoes and Journeys regularly and systematically sell products, as well as infringing products,” including one bearing an exact (and I mean EXACT!) replica of her well-known “Tee Pees” print.
Chances are, both you and Toms are familiar with Hoffman’s garments and swimwear. They come in the form of an arguably easily-recognizable aesthetic heavily focused on colorful, original prints; something Hoffman has been pioneering since she launched her brand in 2008. In fact, her brand and its colorful wares have become something of a favorite to fashion industry insiders and celebrities alike. They have recently been spotted on everyone from the Kardashians and model Gigi Hadid to Beyoncé and actress Jessica Alba – that's some major press! As such, it will be hard for Toms - or any other brand - to argue that Hoffman's prints were not either on its radar or easily discoverable with a quick Google search.
Now back to the lawsuit. In her complaint, Hoffman alleges: “Toms Shoes and Journeys have infringed Mara Hoffman’s copyrighted ‘Tee Pees’ design by manufacturing, importing, displaying, distributing, selling, offering for sale, promoting and advertising children’s backpacks which exploit, use or otherwise incorporate a substantially similar design unlawfully taken from Mara Hoffman’s copyrighted work.” Moreover, Hoffman claims her brand “has been and is likely to continue to be injured” unless the two defendants are ordered to cease all sales and marketing of the designs bearing her copyright.
While this appears to be a pretty straight forward copyright infringement lawsuit, it is an interesting one because it shows one of the limited ways in which copyright laws can be used to curtail copying in fashion. While few garments and accessories in their entirety are actually protectable via copyright law in the U.S. (as clothing and many accessories are utilitarian in nature and very few meet the separability requirement for useful articles), the patterns and prints on garments and accessories are protectable under the umbrella of copyright law as Pictorial, Graphic or Sculptural Works (“PGS”). Thus, the original print on Hoffman’s garments is protectable and so, Toms cannot copy it and put it on its own goods.
The only remaining element here is whether the prints used by Hoffman and Toms are “substantially similar” — the requisite standard necessary for copyright infringement. This seems like a pretty straightforward inquiry here since the print Toms used appears to be EXACTLY THE SAME as Hoffman’s “Tee Pees” print – right down to the use of the same colors.
Unfortunately, this isn’t Hoffman’s first time fighting to protect her original creations from unauthorized replication. Her colorful prints have proven a popular source of “inspiration” for fast fashion retailers. She has filed lawsuits against Forever 21 and Charlotte Russe in recent years for their blatant copying of her prints.