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The Fashion Law Exclusive – Turns out, Yves Saint Laurent hasn’t forgotten about the “parody” tee that caused so much controversy in 2013, as the Paris-based design house has filed a lawsuit against its creator.  That’s right, Yves Saint Laurent (via Luxury Goods International “LGI,” the company that owns its intellectual property rights) filed suit against What About Yves and its founder, Jeanine Heller, last week in the Southern District of New York court, citing claims of trademark infringement, trademark dilution, false designation of origin, and unfair competition, all stemming from the tee.

According to LGI’s lawsuit, following the appointment of Hedi Slimane as creative director in 2012, the design house revamped its ready-to-wear collection and gave it the shortened name, Saint Laurent.  The house subsequently filed to register the new RTW name with the U.S. Patent and Trademark Office — those applications are still pending. These newer trademarks, as well as the YSL ones for the design house as a whole, have garnered immense attention and thus, are “famous in the U.S.” and “well-known by U.S. consumers of all social and demongraphic groups,” LGI says in its complaint.

This is where Jeanine Heller and What About Yves come in. As of January 2013, Heller began selling t-shirts bearing the slogan, Ain’t Laurent Without Yves. LGI claims that despite repeatedly being put on notice of the infringing nature of the t-shirts, Heller continued to sell the t-shirts (and may still be selling them). She even filed to register Ain’t Laurent Without Yves with the U.S. Patent and Trademark Office (USPTO) in April 2013, which the USPTO challenged as it found that Heller’s mark was too similar to existing Yves Saint Laurent marks, and likely to cause confusion amongst consumers.

After a number of additional letters that YSL sent Heller on the matter went unanswered, Heller finally reached out to the design house’s counsel, denied any wrongdoing, and offered to sell her Ain’t Laurent Without Yves trademark to them. All the while, she continued to sell the allegedly infringing t-shirts to retailers including famed Paris boutique, Colette.

As such, LGI filed suit. In the rather strongly worded complaint, LGI (the plaintiff) claims that Heller (the defendant)’s “infringing mark as used on Defendant’s infringing products creates an identical or virtually identical commercial impression to LGI’s trademark due to the similarity in sound and appearance and arrangement.”

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The complaint goes on to state: “Defendant is intentionally attempting to pass its infringing products off as Plaintiff’s products in a manner calculated to deceive Plaintiff’s customers and members of the general public in that Defendant has applied a nearly identical mark to LGI’s marks to goods of the kind that Plaintiff regularly markets and sells.” And lastly, “Defendant is engaged in a pattern of deliberate and willful infringement designed to confuse and deceive consumers as to the source and origin of its products and trade upon the valuable intellectual property, good will and reputation of luxury brands, including Plaintiff.” And the complaint goes on to mention that Chanel filed suit against Heller stemming from a similar t-shirt.

LGI is asking the court to order Heller to immediately and permanently cease sales of the t-shirts at issue and pay an array of damages for its trademark violations. Chances are, given the proceedings in the Chanel case, this lawsuit will settle before long, and thus, will not shed much light on whether Heller’s t-shirts amount to a successful parody (an affirmative defense to claims of trademark infringement – but one that must be measured and decided by the court) or whether they are plain old trademark infringement.  Either way, stay tuned …