Steve Madden is also Selling Proenza Schouler Copies

Last week told you that Balenciaga is taking notorious copycat Steve Madden to court for producing a "studied copy" of its celebrated Motorcycle bag, over which Balenciaga has trade dress protection. Well, it seems that Balenciaga is not the only brand being targeted by the footwear and accessories giant; NYC-based brand, Proenza Schouler is, as well. Two Steve Madden styles, in particular, are problematic: the Blocks Cross Body bag and the Baubrey Cross Body bag (both are pictured after the break below). From the distinctly Proenza Schouler-like metal tab closure, the double flap front closure detail and the dual pull-tab straps, Madden's Blocks Cross Body rather clearly derives inspiration from Proenza Schouler's PS1 mini. And just in case you aren't convinced that Madden is looking to Proenza Schouler for inspiration, its Baubrey Cross Body bag is a dead ringer for the PS Large Wallet bag; namely, the front flap and snap closure and the decorative pull-tab straps.

Unlike Baenciaga, which federally registered the various elements of its Motorcycle bag via trade dress registration with the U.S. Patent and Trademark Office (USPTO), in order to protect the totality of the appearance of the bag, Proenza Schouler has not done so. (Even though you would think they would really look into this after very publicly speaking out about copies of the PS1 style in the past; think: Mulberry and Target styles). However, Proenza Schouler's lack of federal trade dress registration does not necessarily mean that the brand is entirely out of luck, as trade dress that is not registered with the USPTO may, nonetheless, be protectable under federal and state unfair competition laws if the following requirements are met.

To sustain a claim for trade dress infringement, a plaintiff must prove that: (1) its claimed trade dress is primarily nonfunctional; (2) its claimed trade dress is distinctive (read: source-identifying); and (3) the defendant’s trade dress is so similar to the plaintiff’s that the defendant’s product creates a likelihood of consumer confusion as to the source, affiliation or sponsorship of the defendant’s product.

While I am  going to spare you and not delve into these elements at length at the moment, I will say that the first element is likely met, as the elements (the specific front closure, the pull-tab straps, etc.) could be deemed non-functional. Additionally, there is a good chance that the third element is met, as there is certainly an argument that consumers may be confused about the source of the Madden bags (even if that confusion is after the initial purchase and thus, falls under the post sale doctrine). However, the flip side of that argument is that Steve Madden, obviously a pro at turning high end designs into fast fashion accessories, made just enough alternations to its designs to avoid legal ramifications.

Thus, requirement #2 is probably the most difficult one the establish, as Proenza Schouler would have to show that the elements at issue (the organization and appearance of the the specific front closure, the pull-tab straps, etc.) together are distinctive (aka the PS1 is so recognizable that the design itself acts like a trademark, pointing the consumer to the Proenza Schouler brand). You guys can fight this out in the comments section; I think there are strong points for each side of the case.

Before filing this away as another instance of legal design piracy, the PS1 and the important role it plays for the Proenza Schouler brand is worth noting. The PS1 has served as an important source of revenue for the relatively young brand (as luxury clothing often doesn't turn a huge profit because of the enormous expense associated with producing such technically complicated work in small quantities. So, for Proenza Schouler and brands like it, handbags are a crucial part of the business model). It is not a one-off style that the brand introduced one season and subsequently discontinued. Quite the opposite, actually. Jack McCollough and Lazaro Hernandez (the design duo behind Proenza Schouler) have been continuously offering and reinterpreting the original design since its launch in 2008. This arguably makes the copying that much more substantial and harmful.

In addition, as Hernandez, McCollough, and Shirley Cook, the company's president, have stated in the past (including when Hernandez testified in front of the U.S. House of Representatives Subcommittee on Courts, Intellectual Property, and the Internet), the PS1 bag has served as an important tool in the building of the Proenza Schouler brand; specifically, it has given rise to a widespread amount of brand awareness - a crucial aspect for any brand, but especially for emerging ones. Upon its initial release, the subtle bag (which largely lacks any branding - a key part of its appeal), was embraced by fashion industry insiders and celebrities alike, making it a huge sensation, an "it" bag. Thanks to such covetability, the bag has become a calling card, so to speak, for the brand, and as a result, such copies are especially dangerous to the relatively young brand. Not only can they cause confusion, they most certainly dilute the brand's most noteworthy creation.

So, while someone will inevitably make the argument that Proenza Schouler is not losing sales to Steve Madden because Madden's < $100 bag does not pose a threat to Proenza Schouler's $1000+ bag (and this very well may be true), the problem is more in-depth than that. The main problem here is tied to dilution of the PS image and the potential confusion that may result from lookalike products, and the negative effects that could produce for the brand and its "it" bag.

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Proenza Schouler PS1 mini (left) & Steve Madden's Blocks Cross Body bag (right)

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Proenza Schouler PS1 mini (left) & Steve Madden's Baubrey Cross Body bag (right)