After making headlines due to a decline in sales during every single month in 2017, Victoria Secret has been slapped with a lawsuit for allegedly copying an indie Los Angeles-based apparel brand. According to a complaint filed in federal court in California by Linda Nguyen, a Vans, Billabong, and Stussy design veteran, Nguyen asserts that she launched her brand Love Made Me Do It – or Love Made, for short – in 2008 and now Victoria’s Secret has “outrageously” begun using her brand’s name to promote its own “Love” fragrance.
Nguyen – who describes Love Made as “an all-female fashion and lifestyle brand” that “has achieved success and acclaim” – alleges in her trademark and copyright infringement suit that she has been using the Love Made Me Do It “trademarks since 2013.” She further asserts that she has held a federal trademark registration for “Love Made Me Do It” for use on “Baby bodysuits; Baby bottoms; Baby tops; Hats; Bottoms; Hoods; Jackets; Jerseys; Sports caps and hats; Stocking hats; Tops” since December 2016.
Now enter Victoria’s Secret, which, according to Nguyen has since started slapping “Love Made Me Do It” on “tote bags and promotional items … as a source identifier in promotional efforts for a new fragrance.”
But Wait …
Victoria’s Secret stole her trademark. So, this is a surefire win for Nguyen, you say? Well, maybe not. Unfortunately for Nguyen, there are at least a couple interesting caveats at play here that might not ensure a win for Love MAde.
First of all, Nguyen notes in her complaint that “the majority of [her] products are emblazoned with [either ‘Love Made Me Do It’ or ‘Love Made’], which are used as indicators of source.” In short, Nguyen is arguing that by plastering shirts, hats, and other products with these slogans, they are identifying the maker of those products in the same way as Nike’s Swoosh trademark identifies its sneakers or Chanel’s double “C” logo ties a bag to its brand.
What makes Nguyen’s argument interesting (and potentially problematic) is that t-shirts and tote bags very commonly bear slogans that are not identifiers of source. The now-ubiquitous “The Future is Female” tees are one example. “The Future is Female” is not the shirt-maker’s brand name but instead, a decorative graphic.
Unsurprisingly, the "use of big, bold letters on the front of a shirt is considered merely ornamental use, rather than use as a trademark,” says University of New Hampshire School of Law intellectual property professor Alexandra J. Roberts. But, according to Roberts, “as many know, there's a fairly easy workaround for this: the producer can also print the phrase on a tag inside the shirt, and that qualifies as trademark use." This is precisely what Nguyen has done.
Speaking generally of decorative – versus source-identifying or trademark – use, well-known trademark attorney Ed Timberlake, says that one “manner that we associate with decorative use” includes “a large depiction splashed across the chest, for example, as opposed to a small depiction such as the Izod alligator.” The likelihood that such a use is viewed as decorative, according to Timberlake, increased when it is a “phrase that people commonly use to convey messages on t-shirts, which might apply to ‘Love Made Me Do It.’”
But our inquiry does not stop there. In addition to claiming that her own use of the “Love Made Me Do It” phrase on her products is source-identifying, Nguyen alleges that Victoria’s Secret use of it is source-identifying, as well, thereby giving rise to her claims of trademark infringement.
To this, Victoria’s Secret has a solid defense: Ornamental use of its own. As indicated by Victoria’s Secret’s bags, the allegedly infringing products that Nguyen cites in her lawsuit, “Victoria's Secret can truthfully assert that it is making merely ornamental use of ‘Love Made Me Do It’ by placing the phrase on the side of a bag (traditional ornamental placement), and that the source-identifying Victoria’s Secret name appears below (on bag) and above (on the brand’s e-commerce site),” says Timberlake.
In much the same was as it would be “more difficult for a plaintiff [Nguyen, here] it to establish strong trademark rights if he/she is using the trademark in a decorative way, if a defendant [VS, for us] uses such a phrase in this manner, it will be easier for the defendant to successfully argue that it is making fair descriptive use of the term.”
Also included in Nguyen's suit, a copyright infringement claim, which centers on the allegation to Victoria's Secret also took the "Love Made Me Do It" phrase and put it on a neon sign, thereby infringing her own copyright-protected neon sign design.
While it is unclear in which direction this case will go, assuming the parties do not settle in the very near future, what is clear is that “the distinction between what a consumer perceives as decorative use of material on apparel and source-identifying use of material, has blurred over the years,” per Timberlake. With that in mind, this case is one worth keeping an eye on.
* LOVE MADE LLC, v. VICTORIA’S SECRET STORES, INC., 2:18-cv-00099 (C.D.Cal).