Patrick Robinson has been axed from his position as creative director at A/X Armani Exchange. According to Page 6, the ousting comes on the heels of allegations that some of his accessory designs for the brand were "uncannily similar" to those of New York-based jewelry company David Yurman. Robinson, a Parsons grad, who worked for Giorgio Armani, Perry Ellis, Anne Klein, the Gap, and Paco Rabanne, and also had his own label for awhile there, before signing on as creative director of Armani Exchange in March 2013, was let go several weeks ago.
While sources allege that he cut from the A/X team because his collections just weren't selling, others claim that his termination came on the heels of Armani Exchange being hit with a cease and desist letter by David Yurman, specifically stemming from the brand's introduction of its Torc bracelet, the result of a collaboration between Armani Exchange and Liberty United, a nonprofit organization aimed at fighting gun violence. According to the A/X site, the bracelet, which retails at just under $100, is "inspired by the Torc, an ancient twist design symbolizing unity, these bracelets are made from recycled illegal guns and bullets." Yurman's bracelets range in price from $350 to over $1,000, a relevant factor for potential infringement claims.
While we do not know for sure at the moment what exactly the cause for Robinson's departure was, we can make a strong case for the illegality of the A/X bracelet on both trade dress and design patent grounds. Primarily, Yurman has a pending federal trade dress registration that covers the appearance of the brand's signature cable bracelet, which it introduced in 1982. Additionally, the company has a design patent that extends to the "ornamental design of jewelry", namely, the intertwined cable element. As a result, Yurman very well may have grounds to enforce that cease and desist letter in court, depending on how similar the court deems the two bracelets to be. Finally, Yurman has copyright claims in connection with the bracelet to the extent that the decorative cable design is capable of being separated from the utilitarian bracelet itself.
Looking to the trade dress and design patent rights: Why does the brand have both trade dress (pending federal registration, which would allow it to enforce the design nationally and not just in state-specific capacities, and despite a 2001 Second Circuit holding that Yurman had not adequately defined the look of its designs to warrant trade dress protection absent a federal registration) and design patent protection? Well, dual trade dress and design patent protection can exist when the design of the product is ornamental and also serves to distinguish the source of the goods to consumers. Moreover, the cable design is the brand's signature and thus, as a key creative asset of the brand, as it is continually stocked and often reintroduced by way of new interpretations, it is undoubtedly worth protecting in every manner possible. Lastly, a complete intellectual property portfolio ideally includes all of the applicable forms of protection that cover a specific design.
It is worth briefly noting the benefits that stem from the two individual forms of protection at hand (trade dress and design patent) and their comparative advantages. For instance, trade dress registrations typically entail a much less costly process and lengthy timeline than a patent (which currently takes about two years and over $2,000 to achieve, depending, however, on the complexity of the design patent at issue, of course). With this in mind, Yurman could file a trade dress application as a means of protecting the design at issue while the design patent is being processed. Additionally, unlike design patents, which have a protection period of 14 years, trade dress entails a potentially perpetual term of protection. As a result, brand owners can continue to protect their trade dress from infringement even after the design patent expires.
In terms of protection, unlike in the patent arena, trade dress rights can exist under common law, as well as federal and state unfair competition laws. They do not derive exclusively from a federal registration, which is beneficial in the case at hand, as Yurman's trade dress registration is still pending.
David Yurman cable bracelet (left) & Armani Exchange's Torc bracelet (right)
The benefits of patent protection are similarly strong. Unlike federal trademark/trade dress protection, which is achieved by way of registration with the USPTO and actions under the Lanham Act, there is no requirement to use the design in commerce in order to secure a design patent or sue for patent infringement. Design patents provide a fourteen-year right to exclude others from making, using, selling or importing the claimed product and, thus, allows time to build up secondary meaning necessary to acquire product design trade dress protection. Moreover, existence of a design patent, "rather than detracting from a claim of trademark, may support such a claim" because "it may be presumptive evidence of non-functionality," necessary to obtain trade dress protection. Also worth noting is the difference in damages that are available in a case of patent infringement versus trade dress infringement. Because these two claims are governed by different statutes, trademarks/trade dress by the Lanham Act and patents by 35 U.S.C. §§ 283-85, 289, the co-existence of trade dress and patent protection could be beneficial in securing the most beneficial outcome for the plaintiff.
Of course, for brands like David Yurman the international landscape and protection in individual international markets must be taken into consideration. In terms of trademarks and trade dress, registration under the Supplemental Register allows the registrant to protect its trade dress in foreign countries, although the protections are much more limited than protections under the Principal Register in the U.S. Additionally, international trademark registration is available through the World Intellectual Property Organization, but in order to be eligible for international registration, the trademark must first be filed with a member country's trademark office. US trademarks can also be registered with U.S. Customs to prevent items carrying infringing marks from being imported into the US.
Patents are arguably provided with stronger protection internationally; the Patent Cooperation Treaty, an international patent law treaty, provides a simplified application process that allows one application to be filed for patent protection in multiple countries. Successful application allows patent applications to protect inventions in each of the treaty's contracting states (a majority of the world's countries are parties to the treaty, including all of the major industrialized countries (with a few exceptions, such as Argentina and Taiwan). Thus, patent protection provides benefits in terms of international protection, which is especially important for luxury brands that operate on a global scale.
While there are quite a few substantial points of significant differentiation between trade dress and design patent infringement, the standard for infringement is not necessarily one of them. In trade dress and trademark infringement cases, the plaintiff (the party pursuing legal action) must establish a likelihood of consumer confusion between his design and the potentially infringing design. While the standard for patent infringement does not necessarily require "consumer confusion" as in trademark/trade dress, it is not terribly different, as it requires that one must merely determine whether the accused product would appear "substantially the same" as the patented design from the point of view of view of an ordinary observer. More to come ...