On the heels of an array of fashion and retail bankruptcy filings that began to unfold over the course of the year in 2016, New York-based designer Bibhu Mohapatra and retailers The Limited, Wet Seal, and Payless all made headlines when they filed for Chapter 11 protection in early 2017. They were swiftly followed by a handful of additional filings by other retailers, signaling that there is no end in sight to the constant string of fashion and other retail companies struggling financially and looking to bankruptcies courts for protection from their creditors.
For the uninitiated, Chapter 11 bankruptcy – one of the most commonly utilized forms of bankruptcy – allows a company to continue operating while it executes a reorganization plan. Chapter 11 can take a number of forms, but in short: A chapter 11 case begins with the filing of a petition with the bankruptcy court by the debtor (the entity that owes the debt – aka the retailers in the cases at hand). This is followed by the debtor proposing and executing a reorganization plan, which may be used to compromise or even eliminate certain classes of debt.
All the while, the debtor usually remains in possession of his assets and continues to operate any business, subject to the oversight of the court and the creditors committee. Typically, a company that has filed for Chapter 11 bankruptcy trying to stay in business, and as indicated below, this complex proceeding can be very effective in solving short term business problems in an otherwise viable company or winding down a company with valuable assets. (Also included below are instances in which brands have entered into administration, an insolvency process in the United Kingdom by which a company is “placed under the control of an insolvency practitioner to enable the insolvency practitioner to achieve objectives laid down by statute.”)
Fashion and Retail-Related Bankruptcies
Here is a look at some of the most recent fashion and retail-related bankruptcy filings …
Apr. 2023 – David’s Bridal
David’s Bridal, LLC announced on April 17 that the company and certain of its subsidiaries filed voluntary petitions for relief under Chapter 11 of the U.S. Bankruptcy Code in the U.S. Bankruptcy Court for the District of New Jersey. The Company expects to file a recognition proceeding in Canada and a subsidiary of David’s Bridal expects to commence an administration proceeding for its business in the United Kingdom.
March 2023 – Scotch & Soda
Scotch & Soda has filed for bankruptcy in Netherlands due to “serious cashflow problems” that started as a result of the COVID-19 pandemic and have continued amid high inflation and a consumer spending squeeze, per Reuters. “Despite record sales, a structural cash flow deficit has led to the company’s failure to absorb the negative effects of [COVID-19] and high inflation,” the Amsterdam-headquartered fashion brand said in a statement, noting that its 32 stores in the Netherlands will remain open “for the foreseeable future.” The Sun Capital-owned company earned record revenues of 342.5 million euros in financial results reported for the 2022 fiscal year,”according to Yahoo Finance, but said that the previous two years of pandemic restrictions “affected its business performance and financial health negatively,” promoting its Netherlands-specific bankruptcy filing.
February 2023 – Tuesday Morning
Off-price retailer Tuesday Morning Corp. filed for bankruptcy protection on Feb. 14, the second time since the onset of the pandemic. Dallas-based Tuesday Morning Corp. filed its Chapter 11 petition in the Northern District of Texas, listing assets and liabilities of $100 million to $500 million, in its bankruptcy petition, per Bloomberg, which reported that the retailer “emerged from its last bankruptcy in January 2021 after closing about 200 stores, cutting its employee headcount and slashing debt.”
In a press release announcing its second bankruptcy, Tuesday Morning revealed that it has obtained $51.5 million of debtor-in-possession financing from Invictus Global Management to support its ongoing operations, subject to the approval of the bankruptcy court.
January 2023 – Forma Brands LLC
Morphe beauty’s owner Forma Brands LLC filed for bankruptcy in Delaware after reaching a deal with lenders, including Jefferies and Cerberus Capital Management. In a statement on January 12, Forma revealed that it has entered into “a definitive asset purchase agreement” with lenders Jefferies Finance LLC (together with Jefferies Finance LLC, funds managed by Cerberus Capital Management, L.P. and FB Intermediate Holdings, LLC) under which “substantially all of FORMA Brands’ assets will be acquired.” Forma also announced that it has “received a commitment for approximately $33 million in debtor-in-possession financing from the Investor Group, which, subject to court approval, will be available to support the business and its operations throughout the court-supervised sale process.” The investor group will gain control of FORMA Brands’ “wholesale operations, online platforms, and international Morphe retail stores.”
“This agreement is a testament to the strength of our brands most meaningful to our consumers,” Forma president Simon Cowell said in the statement. “We will have additional financial resources available to invest in our multi-category portfolio, product launches and innovative brand and marketing strategy as we advance our vision to inspire creativity, promote inclusivity and connect with consumers around the world through beauty.”
Forma’s Chapter 11 filing comes after the company – whose Morphe brand previously surged in popularity thanks to partnerships with some of YouTube’s biggest beauty influencers, banking a reported $400 million dollars in revenue in 2019 – announced on January 6 that it would shutter all its U.S. stores.
UPDATED (Mar. 30, 2023): A Delaware bankruptcy court approved a deal that will see secured lenders Jefferies Finance LLC (together with Jefferies Finance LLC, funds managed by Cerberus Capital Management, L.P. and FB Intermediate Holdings, LLC acquire “substantially all” assets of Forma, including wholesale operations and online platforms, for $690 million
In late May 1882, the All-Russia Industrial and Art Exhibition officially opened in Moscow. Over the course of 131 days, the exhibition would welcome over 1 million people, all looking to take in the sweeping array of goods on display in pavilions across the Khodynsky field, 30-hectare space in the north-west of Moscow – from decorative artworks to silverware and metal works. Among the many exhibitors that were present for the traveling, biannual event was Peter Carl Fabergé, the proprietor of the House of Fabergé, the jewelry and tableware company he had acquired from his father just 10 years prior.
Mr. Fabergé would ultimately come to be known as “one of the greatest goldsmiths, jewelers, and designers in Western decorative arts” and the jeweler to the Russian imperial court. However, in 1882, he was merely a 36-year old at the helm of a family company in the business of making highly-crafted jewelry. It was precisely that jewelry – and in particular, Mr. Fabergé’s specialty in selecting and arranging precious and semiprecious materials, such as gold, silver, jade, and lapis lazuli, among others – that would attract the eye of an important new patron, who was present at the All-Russia Industrial and Art Exhibition that spring: Tsar Alexander III.
Upon seeing Mr. Fabergé’s work at the Exhibition, the Tsar (“through the intermediary of his uncle, Grand Duke Vladimir,” per Fabergé) commissioned him and his St. Petersburg-based business to produce a custom creation. The 37-year old Emperor of Russia was not in the market for a piece of jewelry, for which the House of Fabergé was best known; he similarly was not interested in the tableware or handcrafted furniture that Mr. Fabergé was selling, either. Instead, he wanted Fabergé to create a jewel-encrusted egg that he could present to his wife, Danish princess-turned-Russian Empress Marie Fedorovna, as a surprise Easter gift.
The Start of a Series
In placing such an order, the Tsar would be giving rise to what would become a more than 30-year-long pattern among Russian royals. It was also the first step in creating what would be “the last gasp of [Russian] imperial patronage colliding with craftsmanship,” Fabergé expert Kieran McCarthy would assert more than a century later. “The daily lives [of Russian royalty] were lived at such a height of luxury that you couldn’t really excite them with anything of intrinsic value. It was always about the craftsmanship.” This is what the eggs were about for them, according to McCarthy, “the craftsmanship and demonstration of skill,” and Mr. Fabergé was the one who would be responsible for that.
The next Tsar, Nicholas II – who came into power when his father, Alexander III died of kidney disease (after surviving several assassination attempts) in the Livadia Palace in November 1894 – would go on to order two eggs each year from Fabergé, one for his mother Maria and one for his wife, Alexandra. Like clockwork, the order would be placed more than a year in advance, as according to the House of Fabergé, each egg – “an individual artistic tour de force” – took a year or longer to make and involved a team of highly skilled craftsmen, who worked in what has been described as “the greatest secrecy.”
In the beginning, Alexander III exerted specifications about what he wanted his eggs to look like and/or consist of; for example, the first egg in the series, dated 1885, was initially planned by Fabergé to contain a diamond ring, the company revealed over a century later, but “the actual finished version, following specific instructions of the Emperor, included a ruby pendant of great value.” But beginning in 1887, Mr. Fabergé and his artisans were given complete freedom in the design and execution of the eggs. The only iron-clad rule was this: There had to be surprise within each creation.
“He was basically given carte blanche to use his creativity and the craftsmanship of his workshops to produce really the very best that could be imagined as an Easter present,” says Fabergé expert Dr. Géza von Habsburg. And “after becoming the official royal jeweler in 1885, [he] began making his eggs more extravagant,” the Wall Street Journal revealed. Dreaming up each complex concept, Mr. Fabergé often drew on family ties, events central to the Imperial Court, or the milestones and achievements of the Romanov dynasty. The Fifteenth Anniversary Egg of 1911, for instance, commemorated the fifteenth anniversary of Nicholas II’s accession to the throne, while the Romanov Tercentenary Egg of 1913 celebrated 300 years of the House of Romanov.
Although the theme of the coveted eggs – which ranged in height from three to five inches tall – changed annually, the element of surprise remained a constant link between them. The surprises ranged from a perfect miniature replica of the Coronation carriage – which took 15 months of 16-hour-days to make; a purple and gold-encrusted “Swan” egg that opened to reveal a mechanically-operated swan inside; and the Gatchina Palace egg includes a miniature gold replica of the palace at Gatchina on the inside; and many eggs could be opened to find tiny, little portraits of the royal family members.
An Abrupt End
The decades-long pattern of the Russian royals looking to the House of Fabergé for annual Easter gifts – which resulted in ten eggs being produced from 1885 to 1893, during the reign of Emperor Alexander III and 40 more during the rule of his son, Nicholas II – came to an abrupt end in light of the second Russian revolution so much so that one egg, a blue crystal and rhinestone creation that Fabergé was working in 1917, was left unfinished. After abdicating the throne in 1917, Nicholas II, his wife, and their five children fled St. Petersburg, where they were lined up and killed by Bolshevik rebels in the summer of 1918.
Meanwhile, in the midst of the war, Fabergé, the company, evolved, producing war supplies, closing its London branch, and converting into a joint stock company in 1916. At the same time, Fabergé, the family, was looking to flee, which is precisely what they did between 1918 and 1920. Peter Carl Fabergé successfully fled from St. Petersburg “on the last diplomatic train for Riga from where he fled to Germany” in 1918, and died two years later in Lausanne, Switzerland.
By 1924, two of Peter’s sons, Eugène and Alexander – the latter of whom had been captured and jailed when attempting to leave Russian but “had managed to escape from the USSR when a friend bribed guards,” according to Faberge – had settled in Paris, where launched Fabergé & Cie, “which traded in and re-stored objects made by the House of Fabergé, as well as general jewelry and objets d’art.”
Things become complicated in 1937 when Sam Rubin, an American of Russian descent, started a perfume business, branded his perfumes Fabergé and formed Fabergé Inc., which prompted a legal battle between Rubin and the members of the Fabergé family. The fight would ultimately prove to be short-lived, though, as the “Fabergé family decided to settle out of court so as to avoid high legal fees,” with Rubin paying just $25,000 to use the name exclusively in connection with the sale of perfume.
As for the trademark and other associated intellectual property rights of the Fabergé family, they have since been sold several times; in 1989, Unilever acquired Fabergé Inc. for $1.55 billion. All the while, several companies have brought egg-related merchandise to the market using the Fabergé name. The Victor Mayer jewelry company, for instance, produced limited edition heirloom quality Fabergé eggs authorized under Unilever’s license from 1998 to 2009, but did not find the level of fame or demand that existed a century prior.
Now, the company is owned by Cayman Islands-based Fabergé Limited, which as of January 2007, owns the entire global portfolio of trademarks, licenses and associated rights relating to the Fabergé brand. The principal investor is Pallinghurst Resources LLP, an investment advisory firm based in London and chaired by Brian Gilbertson, the former CEO of mining company BHP-Billiton plc.
In September 2009, Fabergé Limited launched its first collection of exclusive jewelry, as well as its website. It maintains boutiques in Australia, Azerbaijian, Abu Dhabi, Canada, Czech Republic, Bahrain, and plans to open a Fabergé shop in London and a retail location is also being sought in New York.
Where Are They Today?
Of the Fabergé eggs created, the majority – 50 eggs – were made for Russian Tsars, and of the 57 eggs in existence today, the majority are owned by museums and other collections worldwide – from Moscow to Cleveland, with 10 in private collections. The largest collections are held by the Kremlin Armoury and the Faberge Museum in St. Petersburg, which house 10 each.
For example, the Hen Egg – the very first to ever be produced – is now part of the Vekselberg Collection (named for Russian oil and metal mogul Viktor Vekselberg, who purchased nine eggs from the Forbes family in 2004 for $90 million), and is housed in the 18-month-old Fabergé Museum in St. Petersburg, Russia. Another private collector, a “Russian businessman with a passion for Tsarist treasures, Alexander Ivanov, said he was behind the $18.5 million purchase of a Faberge egg in London in 2007,” per Reuters.
Despite most of the eggs finding documented homes across the globe, not all of them have been located. In fact, as of 2013, eight eggs, including the Third Imperial Egg – the 1887-crafted egg, which consists of a solid 18K gold reeded case, diamond and sapphire clasps, three lion-paw legs, and a 14 carat gold and diamond and sapphire encrusted Vacheron Constantin Lady’s watch clock – were thought to be lost forever. (“Two others are thought to have survived, though their locations remain a mystery,” per CNN). That number changed in 2014.
About a decade prior, an American scrap metal dealer was perusing a flea market in the Midwest. On the hunt for metals that he could melt down and sell, he came upon a gold egg and its intricately-designed stand. Upon opening the delicate, little egg, he found a gold clock with diamond-encrusted hands. Thinking he could make at least a few hundred dollars profit by melting down the egg and its stand, and selling it, the man, who has remained completely anonymous, purchased the item for nearly $14,000.
Despite this rather large investment, he would swiftly learn from potential buyers that the gold was not worth a fraction of what he paid for it. Frustrated, he left the egg perched on his kitchen counter, thinking he had thrown away $14,000 on a bad investment. The all-but-abandoned egg was relegated to a spot in his kitchen for years until one evening in 2012, when he started to wonder. Curiously, he Googled the name on the back of the clock that was inside of the egg: “Vacheron Constantin.” What he would find was astonishing.
After a bit of digging, he came upon a 2011 article from Britain’s Daily Telegraph newspaper about the Third Imperial Easter Egg, the gift that Tsar Alexander III presented to his wife, Maria Feodorovna, on Orthodox Easter in 1887. He “recognized his egg in the picture” almost immediately. It was then that he discovered that the little gold egg that had been sitting on the counter in his kitchen amongst drying-fruit and a pile of mail, was, in fact, not worth $14,000; it was worth millions. More exactly, the Third Imperial Easter Egg was estimated at the time to be worth tens of millions.
Shortly upon discovering what appeared to be the true nature of the egg, The man contacted Faberge expert Kieran McCarthy. “He was getting frantic. He couldn’t sleep; he couldn’t eat; he couldn’t think about anything else,” McCarthy revealed a few years later. Far removed from the worlds of art and antiques, he had no idea what the value of the golden trinket that had been sitting on his counter was. According to CNN, in order to formally verify the authenticity of the egg, the man flew to London to visit McCarthy,” who is the director at Wartski, the British family firm of antique dealers specializing in Russian works of art that counts the Queen and her son Charles, the Prince of Wales as patrons.
Hesitant to travel with the egg, the man – clad in “jeans, a plaid shirt and trainers” – arrived at Wartski’s outpost in London’s Mayfair area with photographs of the egg in tow. “He handed me a portfolio of photographs, and there was the egg, the Holy Grail of art and antiques,” McCarthy recalled. Not long thereafter, McCarthy hopped on a plane to the U.S., arriving at the man’s house, a “modest” home in a small town in the American Midwest, located “next to a highway and a Dunkin’ Donuts.” He found the egg sitting on the kitchen counter. It was real.
The egg would stay in the still-unnamed man’s possession for little longer; shortly after discovering the multi-million dollar gem in his possession (one that would undoubtedly require security and an eye-poppingly expensive insurance policy should he decide to hold on to it), he parted ways with the egg, and it was sold off in an auction in a London that same year. Wartski acquired it on behalf of an unidentified collector, from an unidentified location, for a unidentified price. The secrecy that has long been attached to the quiet making and careful distribution of the eggs abounded.
As for how one of the world’s most famous figurines ended up at a flea market in the broad of day in the middle of the U.S., McCarthy attributes that to the fact that few people actually know what to expect when it comes to these prized possessions. These are “very delicate and small objects. People never anticipate that Fabergé eggs can be that size,” he said. For the prices that the eggs have fetched at auction and the age-old myths that come with them, people “imagine them to be ‘the size of the Empire State Building, with diamonds the size of footballs,'” McCarthy says, half joking.
Practically speaking, the Third Imperial Egg “was thought to have been lost after the Soviets listed it for sale in 1922 as part of a policy of turning ‘treasures into tractors,'” according to CNN, thereby, seeing the egg confiscated by the Moscow Kremlin Armoury during the revolution. Wartski notes that “the Provisional Russian government recorded the Egg among the confiscated Imperial treasures transferred from the Anichkov Palace to the Moscow Kremlin Armoury in September 1917.”
“Between February 17, 1922 and March 24, 1922 responsibility for the egg was transferred from the Kremlin Armoury to the special plenipotentiary of the Council of People’s Commissars, Ivan Gavrilovich Chinariov.” After that, the records of its whereabouts are hazy … until the 1960s, that is, when the egg resurfaced, albeit very briefly. In early July 2011, two Fabergé experts in the U.S., a couple named Anna and Vincent Palmade, discovered an image of an egg identical to the long-lost Third Imperial Egg. The image was in an old catalog for an auction held at Parke-Bernet (now Sotheby’s) in March 1964. The egg had somehow made its way to U.S. and had been sold at an auction in New York for a mere $2,450.
As the Telegraph revealed later that summer, the “newly discovered image of the egg … prompted a frantic search by Sotheby’s to trace its whereabouts,” but the search came up short. The egg had, again, vanished into thin air.
As for how, exactly, the golden egg went from its auction-owner to a flea market in the Midwest in the mid-2000s, no one has been able to discern that. What is known is that if the price that the anonymous buyer paid for the egg at auction in 2014 is close to what experts have predicted, a cool $33 million, that makes it the most expensive Fabergé Egg ever traded on the private market. And that the unnamed man’s discovery that day at a flea market smack-dab in the middle of the U.S., more than 5,500 miles from St. Petersburg and a hundred years after the fall of Imperial Russia, is undoubtedly “the find of the century.”
This article was originally published by TFL on April 16, 2018.
With the rise in social media usage over the past two decades or so and the decline in conventional advertising formats has come a surge in ad efforts on social media platforms. This push to meet consumers where they are has meant that the jobs of influential figures – from fashion industry influencers to Hollywood celebrities – have expanded to include building and maintaining sizable social media followings in order to leverage those followings for big-money advertising partnerships. IMG Models’ Luiz Mattos, the agent behind the likes of supermodels Gigi and Bella Hadid, and actress Priyanka Chopra, put it well when he said, “These days, models’ jobs don’t end when they leave the studio or the runway,” and absolutely extends to “posting on social [media].”
One of the glaring side effects of such increased attention to social media – paired with a handful of notably aggressive lawyers – is the growing number of copyright infringement lawsuits that are being filed against individuals and brands over their unauthorized use of others’ images either of themselves, in the case celebrities and models, or of others in their wares when it comes to brands. Regardless of who appears in a photo (as copyright law does not award rights based on the subject of a photo, although at least some, such as Gigi Hadid, have taken to arguing that joint copyright rights should exist in some cases), the individual(s) behind the creation of a photo, almost exclusively paparazzi photographers (or their employers) in these instances, are the copyright holders, and as a result, any use of images by individuals other than the copyright holder gives rise to copyright infringement claims.
With the foregoing in mind, here is a non-exhaustive (running) look at some of the recently-filed paparazzi v. celebrity and paparazzi v. brand cases …
A luxury knit clothing company doing business as JoosTricot is on the receiving end of a new copyright suit for posting “at least two” paparazzi-lensed photos of Abigail Spencer to its Facebook and Instagram pages along with the caption “Ugh we love a good paparazzi picture … [],” thereby, “acknowledging that the photos were professionally shot and not authored by JoosTricot.”
Ian Charms has also been hit with a new copyright infringement suit, with BackGrid arguing in its complaint that the celeb-approved jewelry company “reproduced, distributed, displayed, and created unauthorized derivative works of celebrity photographs on its Instagram account without consent or license.” Of note, according to BackGrid, is that Ian Charms “even concealed the fact that it did not own the rights, [as] when Instagram user nina877711 asked in the comments of the photos ‘Can you post pictures when you dont (sic.) have the rights?,’ Ian Charms responded ‘yes I took this with my iphone X.’ That statement was not true. Ian Charms is not the author of the photographs.”
BackGrid alleges that it has identified “at least nine instances of infringement by way of the unlawful reproduction and display of [its] photographs” by Ian Charms.
Bella Hadid has landed on the end of yet another suit. In the complaint that he filed on Dec. 20, Robert O’Neil (who has sued Emily Ratajkowski, Blake Lively, Gigi Hadid, etc. in the past) claims that he “authored a photograph of Bella Hadid in a red bandana and navy-blue bikini” in December 2020, which the model posted to her Instagram “without permission or authorization” two days later.
Speaking to their respective activities (and mirroring claims that he made in his suit against Ratajkowski, presumably in an attempt to get ahead of any arguments that the paparazzi photo is not copyrightable subject matter due to a lack of creative decision making on his part), O’Neil says that in creating the photograph, he “personally selected the subject matter, timing, lighting, angle, perspective, depth, lens and camera equipment used to capture the image.” Meanwhile, O’Neil argues that Hadid, who boasts 57 million followers on Instagram, “takes an active and pervasive role in the content posted on her account, including, but not limited to copying, posting, selecting, commenting on and/or displaying images including but not limited to [his] photograph.”
Bella Hadid has been named in yet another paparazzi-initiated lawsuit, with Chouet’Press SAS dba BestImage (“BestImage”) accusing Hadid of copying a photo of herself that it maintains a copyright registration for and “display[ing] it on Instagram, via the @bellahadid account, on June 27, 2021.” In a nod to “Hadid’s popularity and celebrity status,” BestImage claims that it (and the photographer it represents) “stood to gain licensing revenue from licensing the Photograph.” That never happened, though, as “when content is distributed widely for free by infringers, legitimate licensors like BestImage customers will decline to license that content, or the amount they are willing to pay will be reduced.”
“Legitimate publications to which BestImage looks to pay licensing fees are unwilling to pay for work that is already widely disseminated on the internet for free.” the plaintiff further asserts, claiming that “this is especially true when, as here, celebrities distribute images of themselves to their millions of followers without authorization.”
Paris Hilton and two of the entities she controls Paris Hilton Entertainment, Inc. and 11:11: Media, LLC are being sued for copyright infringement for allegedly co-opting photos that were licensed for use for a Paris Hilton fragrance project and using them across many additional projects without photographer Claudia Occhipinti’s authorization. “In 2019, Ms. Occhipinti was engaged to shoot photographs of Paris Hilton for the sole purpose of promotion of Ms. Hilton’s ‘Electrify’ fragrance in certain types of media, limited to packaging, in store advertising, conventions or trade shows, and internet web advertising related to the fragrance. No other uses were permitted or requested, nor was sub-licensing permitted,” Occhipinti asserts.
Specifically, Occhipinti asserts that the defendants used the photos to “promote various different brands owned by Ms. Hilton, outside the scope of the agreed upon license, as well as to promote ‘Electrify’ in channels outside the scope of the permitted Uses.” She points to 15 Instagram posts from Hilton and/or Hilton’s brands, which use the photos to promote Paris Hilton merch, LuMee iPhone cases, Hilton’s “This is Paris” series, and various DJ sets, as well as a bus ad for the Electrify fragrance.
Setting out claims of copyright infringement, false designation of origin, unfair competition, and unjust enrichment, and seeking injunctive relief and damages, Occhipinti claims that “Ms. Hilton’s actions have deprived [her] of revenue and have caused [her] significant monetary harm.”
In the latest in a string of lawsuits being filed over the allegedly unauthorized posting of photos of Emily Ratajkowski by Emily Ratajkowski, Eva’s Photography has filed suit against Ratajkowski’s brand Inamorata Swim on the heels of the model-slash-actress posting a since-deleted photo of herself on her personal Instagram account in May. (The photo was subsequently shared by JW PEI, the brand that made the purse that Ratajkowski is toting in the photo; JW PEI is not named as a defendant in the complaint.)
According to Eva’s Photography’s complaint, Ratajkowski “engaged in this misconduct knowingly and in violation of the United States copyright laws.”
OCTOBER 2021 – Backgrid USA v. Scott Disick, 2:21-cv-07887 (C.D.Cal.)
Scott Disick of Keeping Up with the Kardashians fame is being sued for posting not one paparazzi photo to his Instagram account without licensing the photo or otherwise receiving authorization to use it, but for posting eight unauthorized photos to his heavily followed Instagram account @letthelordbewithyou dating back to 2016. According to Backgrid’s newly-filed complaint, in at least one of the Instagram posts featuring the copyright-protected imagery, Disick “included text that promoted [his] fashion apparel brand, Talentless,” namely by way of a caption that read, “Looking good in the @talentless Vote sweatshirt.”
Addressing the harm caused by Disick’s alleged infringements, Backgrid asserts that his use of the photos “devalued the photographs and harmed BackGrid because they were re-posted and copied by others, including by BackGrid customers who would otherwise license the Photographs from BackGrid. For example, BackGrid’s customer The Daily Mail reposted Mr. Disick’s Instagram post that included [a photo of Disick in front of Nobu in 2018].” Additionally, Backgrid claims that Disick’s “unauthorized uses of the photographs are commercial in nature,” as he “uses his Instagram account for the purposes of promotion—specifically, to promote his business interests, products, and ventures— specifically Talentless; to promote and sell the products and services of others; to maintain and increase his visibility and desirability as endorser and television personality; and to promote his own persona given his celebrity status and popularity.”
SEPTEMBER 2021 – Backgrid USA v. Rhude Designs LLC, 2:21-cv-07567(C.D.Cal.)
In a newly-filed copyright lawsuit, Backgrid claims that Los Angeles-based brand Rhude and its founder Rhuigi Villaseñor are both on the hook for copyright infringement for engaging in “at least 4 instances of infringement by way of [their] unlawful reproduction and display of the celebrity photographs,” including one of actor James Franco wearing their designs. Specifically, Backgrid claims that the defendants “reproduced, distributed, displayed, and created unauthorized derivative works of the timely registered celebrity photographs on its Instagram account without consent or license” in an attempt to boost traffic to the brand’s social media account and its e-commerce site.
In furtherance of efforts “to promote the brand, both the Rhude Brand and Villaseñor engage customers and prospective customers through their Instagram accounts,” the photo agency asserts, alleging that “Rhude has driven significant traffic to its Instagram and increased the goodwill to its brand through the unauthorized use of the celebrity photographs, and, thereby, has increased its revenues through the presence of the sought-after and searched-for celebrity photographs that frame this dispute.”
Such traffic translated into a “substantial ill-gotten commercial advantage and increased brand awareness as a direct consequence of the infringements,” per BackGrid, which claims that “Villaseñor personally participated in the willful infringement at issue in this case on behalf of the Rhude Brand by and through the Rhude Brand Instagram account, making the infringement on each account the responsibility of both the Rhude Brand and Villaseñor.”
SEPTEMBER 2021 – Robert O’Neil v. Blakel, Inc., 2:21-cv-07386 (C.D.Cal.)
In a short, 7-page complaint photographer Robert O’Neil accuses Blake Lively’s corporate entity of copyright infringement in connection with her since-deleted Instagram post that featured a photo of herself from August 2018. According to O’Neil, Lively “did not license the photograph from [him],” nor did she have his “permission or consent to publish the photograph.”
Interestingly (although, probably unsurprisingly), Instagram account @commentsbycelebs posted part of the same image back in August 2018 along with a screenshot of a comment that Lively made in response to another Instagram user who urged her to either “hire a stylist or fire the one you’re currently with,” but was not targeted in the same copyright infringement suit or a separate suit.
Javier Mateo filed suit against Emily Ratajkowski, asserting that he is the rightful owner of three photos that she “actively copied, stored, and/or displayed” on her Instagram account without his permission or authorization. Mateo claims that the model-slash-actress “engaged in this misconduct knowingly and in violation of the U.S. copyright laws.”
Additionally, Mateo asserts in his complaint that Ratajkowski “has the legal right and ability to control and limit the infringing activities on her [Instagram] account,” “monitors the content on her account,” and “at all times had the ability to stop the reproduction and display of [his] copyrighted material.” Yet, the photographer plaintiff argues that she “willfully and volitionally posted” the images to her account, and “received a financial benefit directly attributable to the infringements,” while also allegedly “harming … [the] potential market for the photographs.”
In a largely run of the mill copyright infringement complaint, Integral Images asserts that Lipa posted the now-deleted photo to her Instagram account, along with the caption, “I’ll be living under big fluffy hats until further notice,” without licensing the photo or otherwise receiving the photo licensing agency’s authorization, thereby, running afoul of federal copyright law. Hardly an innocent mistake, Integral Images claims that Lipa knowingly displayed the image without its authorization, and stood to benefit by posting it to her heavily-followed Instagram, as the account is “monetized in that it contains content designed to accumulate followers who are directed to, via link and/or advertisement, consume and purchase [her] content.”
JULY 2021 – Timur Mishiev v. Katharine McPhee Foster, 2:21-cv-05682 (C.D.Cal.)
JULY 2021 – John Carta v. Kaley Christine Cuoco, 2:21-cv-05681 (C.D.Cal.)
JUNE 2021 – Backgrid USA, Inc. v. Lisa Rinna, 2:21-cv-04779 (C.D. Cal.)
FEBRUARY 2021 – Backgrid USA, Inc. v. Outdoor Voices, Inc., 2:21-cv-01325 (C.D.Cal.)
Outdoor Voices is on the hook for copyright infringement, according to a newly-filed suit. “BackGrid is the owner and exclusive copyright holder of a photographic image, originally created by photographer Silvio Antonio as part of a series of photographic images, depicting international model Alessandra Ambrosio walking and wearing a light orange colored sweat suit that, on information and belief, was designed by defendant Outdoor Voices,” the photo agency asserts in its complaint. Despite “never licens[ing] the photograph to Outdoor Voices,” Backgrid claims that the company “copied” the image and “distributed it on Instagram on February 5, 2020, via its account @outdoorvoices.” BackGrid says that it “discovered Outdoor Voices’ infringement of the photo on or about February 6, 2020.”
At the same time, Backgrid asserts that Outdoor Voices similarly infringed two separate photos “depicting musician Harry Styles walking near a white SUV” – while wearing Outdoor Voices apparel – when it “copied … and distributed them on Instagram story on August 18, 2018, via its account @outdoorvoices,” which BackGrid discovered “on or about August 18, 2018.”
Such allegedly unauthorized use of the image by Outdoor Voices – which “specifically posted the Photographs on Instagram to advertise the Outdoor Voices apparel worn by Alessandra Ambrosio and Harry Styles” – “harms BackGrid’s business model by driving down the prices for legitimately licensed celebrity images and driving away BackGrid’s actual and potential customers,” the photo agency argues, noting that “BackGrid’s customers—among them, media companies who pay large license fees for celebrity visual content—are less likely to purchase licenses, or pay as much for a license, when the same visual content will be widely distributed simultaneously on publicly available social media.”
JANUARY 2021 – Xposure Photo Agency Inc., v. Dundas World Ltd., 2:21-cv-00612 (C.D.Cal.)
Following a bit of a slowdown in filings, likely a result of the COVID-19 pandemic, and due, in part, to a marked drop in filings by notorious copyright case-filer Richard Liebowitz, who Law360 notes has “routinely filed dozens of copyright cases each month [in recent years], but filed just four since the start of December,” designer Peter Dundas’ brand is on the receiving end of a copyright infringement suit. According to a complaint filed on January 22, Xposure claims that Dundas World posted a photo of “depicting model and Instagram star Maya Henry wearing clothing designed by [Dundas] and accompanied by singer-songwriter Liam Payne” on its Instagram story “specifically to advertise [its] ‘D6’ line of apparel.”
Xposure asserts that Dundas’ “unauthorized use is commercial in nature, [as] Dundas uses its Instagram feed for the purposes of promotion—specifically, to promote its own business interests, products, and ventures. Indeed, Dundas specifically posted the photograph to its story to advertise the Dundas-designed clothing worn by Maya Henry in the photograph.” Particularly, Xpsoure argues that “Dundas writes in the post ‘@maya_henry in #D6’ with D6 being one of the lines of apparel offered by Dundas. In short, [its] Instagram posts and stories promote its products, the infringing post at issue here being no exception.”
2020
NOVEMBER 2020 – Splash News and Picture Agency, LLC v. Ashley Benson, 2:20-cv-10864 (C.D.Cal.).
By posting a video to her Instagram that New York-based Angela Ma took of her outside if the Balenciaga store in Soho, Kendall Jenner engaged in copyright infringement, and is the “direct and proximate cause of the infringement,” and thus, should be forced to pay either the sum of Ma’s “actual damages and [Jenner’s] profits, gains or advantages of any kind attributable to [her] infringement of [Ma’s] video” or … alternatively, statutory damages up to $150,000.
FEBRUARY 2020 – Gonzalez v. I.A.M.GIA (US) LLC, 1:20-cv-01483 (SDNY).
image via complaint
Buzzy Instagram-favored brand I.A.M.GIA posted photographs of Brazilian Victoria Secret model Bruna Lirio wearing its clothing and now is being sued for it. Photographer Alberto Gonzalez claims that the Southern California-based brand engaged in the “unauthorized reproduction and public display of two copyrighted photographs.” The problem, according to Gonzalez? “I Am Gia did not license the photographs from [him], nor did I Am Gia have [his] permission or consent to publish the photographs.”
FEBRUARY 2020 – Ramales v. Alexander Wang Incorporated, 1:20-cv-00926 (SDNY).
Felipe Ramales claims that Alexander Wang is on the hook for copyright infringement “arising out of [its] unauthorized reproduction and public display of a copyrighted photograph of singer Dua Lipa, owned and registered by Ramales, a professional photographer.”
FEBRUARY 2020 – Mishiev v. Hadid AKA Bella Hadid, 1:20-cv-00959 (SDNY).
image via complaint
In another suit filed against Bella Hadid, the model is being accused of copyright infringement in connection with a photo that she posted to Instagram in September 2019, complete with the caption: “@zendaya made this hat so I shall wear this hat until I can no longer wear this hat anymore @tommyhilfiger.” Turns out, photographer Timur Missive says that he took and maintains a copyright registration for the original photo, which Hadid cropped and posted to her account.
According to a complaint filed in a California federal court, “model, businesswoman, and entrepreneur” Bella Hadid – “or someone acting on her behalf” – took five images owned by Xposure Photo Agency Inc. and posted them to her highly-followed Instagram account on various dates between September 6, 2016 and June 17, 2018, thereby, engaging in “systemic piracy” that causes “harm to the existing and future market for the original photographs.”
In the second paparazzi lawsuit filed against it in 2019, Rihanna and LVMH Moët Hennessy Louis Vuitton’s Fenty is being sued for post a photo of model Irina Shayk to its Instagram stories. According to the complaint that professional photographer Carlos Vila filed, he took a photo of model Irina Shayk on a Manhattan street this summer, clad in denim pieces from Fenty – the high-end fashion venture that Rihanna launched this year with luxury powerhouse LVMH – only to have the brand use the image (without his authorization) to promote its offerings on Instagram.
NOVEMBER 2019 – Eva’s Photography, Inc. v. HVN, LLC, 1:19-cv-11010 (SDNY).
image via complaint
Eva’s Photography, Inc. is taking on the eponymous brand for model-slash-DJ Harley Viera-Newton in a new suit, accusing the fashion company of infringing its copyright in a photo of Jennifer Lawrence. According to Eva’s Photograph’s complaint, while it is a “professional photography company the business of licensing photographs to online and print media for a fee,” HVN, LLC paid no such fee before it posted a photo of the actress in one of its dresses on its Instagram account.
NOVEMBER 2019 – Krieger v. Staud, Inc., 1:19-cv-10861 (SDNY).
Photographer David Krieger is suing buzzy young brand Staud over it allegedly “unauthorized reproduction and public display of a copyrighted photograph of actress Camila Mendes, [that the photog] owns and registered” with the U.S. Copyright Office. Krieger claims that in June, he photographed the Riverdale actress, who was wearing a Staud cropped top at the time, only to have the brand “post the photograph on its Instagram Story as tool to promote its brand.”
“Staud did not license the photograph from [him] for its Instagram Story,” Krieger claims, “nor did Staud have [his] permission or consent to publish the photograph on its Instagram Story,” thereby giving rise to his claim of copyright infringement.
OCTOBER 2019 – Carlos Vila v. Staud, Inc., 1:19-cv-09119 (SDNY).
image via complaint
In another suit filed against Staud, photographer Carlos Vila is taking issue with the brand’s “unauthorized reproduction and public display of a copyrighted photograph of British model and fashion designer Alexa Chung with her model boyfriend Matt Hitt,” which is “owned and registered by Vila.” Despite not being “licensed or otherwise authorized to reproduce, publically display, distribute and/or use the photograph,” Vila claims that Staud “reproduced and publicly displayed the photograph on [its] Instagram Story,” thereby running afoul of the law.
OCTOBER 2019 – Splash News v. Moschino S.P.A., Jeremy Scott, and Belcalis Marlenis Almánzar p/k/a Cardi B, 2:19-cv-09220 (C.D.Cal).
Jeremy Scott and Moschino, along with rapper Cardi B, are the latest names on a long list of fashion brands and celebrities to be sued for allegedly running afoul of federal copyright law by posting others’ images to their social media accounts without paying to license the photos or receiving the copyright holder’s authorization to post them. In a lawsuit filed in a California federal court, Splash News claims that Moschino, Scott, and Cardi B interfered with its photo-licensing business by posting photos taken this spring of Cardi B wearing a flower-covered Moschino coat.
Los Angeles-based Splash New asserts in its newly-filed complaint that despite reaching out to Moschino to notify the fashion brand about the photos and “offering [the brand] a license for internal or social media use,” Moschino and its creative director “copied” the images from The Daily Mail – which was granted a license to published the photos by Splash News – “almost instantaneously” and posted them on their respective social media accounts, while Cardi B posted one of the photos to her Instagram a month later.
Emily Ratajkowski’s “forever mood” is getting her sued. The model-splash-actress has been hit with a copyright infringement lawsuit after posting a photo of herself on her Instagram account. According to a complaint filed in a New York federal court on Wednesday, photographer Robert O’Neil claims that Ratajkowski and her corporate entity Emrata Holdings LLC ran afoul of federal copyright law when the 28-year old posted one of his photos to her Instagram story.
OCTOBER 2019 – Stewart v. Are You Am I, 1:19-cv-09738 (SDNY).
Early fashion blogger Rumi Neely’s company Are You Am I is being sued. According to photographer Michael Stewart’s complaint, the Los Angeles-based brand ran afoul of federal copyright law by allegedly posting a photo of “it” model Kaia Gerber on its Instagram account without authorization from the copyright-holding photographer.
OCTOBER 2019 – Jawad Elatab v. Hesperios, Inc., 1:19-cv-9678 (SDNY).
Just over a month after photographer Robert Barbara filed suit against Mode PR for posting a photo of Bella Hadid wearing a top and skirt made/sold by its client Hesperios, a different photographer is suing the womenswear brand for posting a separate but similar photo of Hadid. In the complaint that Jawad Elatab filed against Hesperios, he claims that the brand violated his copyright rights by posting a photo of Bella Hadid.
OCTOBER 2019 – Barbera v. Justin Bieber Brands, LLC et al, 1:19-cv-09532 (SDNY).
image via complaint
We can add Justin Bieber to the list of celebs to be sued over paparazzi photos. The singer has been named in a copyright infringement suit after posting a photo of himself and cool-pastor Rich Wilkerson to his Instagram this spring without receiving authorization to do so from photographer Robert Barbera or paying a licensing fee. Barbera says that he “is the author of the photograph and has at all times been the sole owner of all right, title and interest in and to the photograph, including the copyright thereto,” making Bieber’s Instagram post a violation of his exclusive rights as the copyright holder.
OCTOBER 2019 – Nam v. Marc Jacobs International, L.L.C., 1:19-cv-09463 (SDNY).
image via complaint
And Marc Jacobs has been hit with yet another paparazzi lawsuit. In a complaint filed in a New York federal court, photographer Patrick Nam is suing the New York-based brand over its “unauthorized reproduction and public display of two copyrighted photographs of influencer Margaret Zhang. Nam claims that Marc Jacobs ran two “photographs of Zhang on [Instagram] as marketing to promote their brand,” despite not “licensing the photographs from [him],” or receiving “permission or consent to publish the photographs.”
OCTOBER 2019 – Nam v. Moschino USA, 1:19-cv-09462 (SDNY).
The same photographer that filed suit against Marc Jacobs is also taking on Moachino. According to Patrick Nam’s second lawsuit, “This action arises out of [Moschino’s] unauthorized reproduction and public display of a copyrighted photograph of model Golden Barbie at New York’s fashion week, [which is] owned and registered by Nam, a New York based professional photographer.” (Note: Golden Barbie is model Jasmine Sanders’ Instagram account handle).
Nam claims that “Moschino is not, and has never been, licensed or otherwise authorized to reproduce, publically display, distribute and/or use the photograph,” and thus, has run afoul of copyright law by posting.
After New York-based brand Monse landed on the receiving end of a copyright infringement lawsuit for posting a photo of Jennifer Lopez in one of its dresses on Instagram in July and on the heels of Versace being sued before that for posting a photo on its account of Lopez wearing an all-over Versace print look to MTV’s Video Music Awards last year, the singer-slash-actress is now facing an infringement suit of her own after she posted a photo of herself and Alex Rodriguez on her heavily-followed Instagram account.
According to the complaint that Splash News filed in a California federal court last week, the Los Angeles-headquartered paparazzi photo agency is “the owner and exclusive copyright holder of a photographic image” captured by photographer Elder Ordonez in November 2017, which depicts “Lopez holding hands with her boyfriend Alex Rodriguez while out for breakfast in New York City.”
Rihanna’s Fenty Corp. is being sued over a photo of Gigi Hadid. Eva’s Photography, Inc. asserts in a new lawsuit that Rihanna’s fashion venture, which she launched this year with luxury powerhouse LVMH Moët Hennessy Louis Vuitton, shared a photo of Gigi Hadid wearing a corseted dark denim top from the brand’s debut drop on its Instagram story. The problem, according to the New York-based professional photography company? Fenty Corp. didn’t have permission to do so.
Eva’s asserts in its complaint, which was filed in a New York federal court on October 1, it “has at all times been the sole owner of all right, title and interest in and to the photograph” of Hadid pictured on a New York City street last month, including the copyright in the photo.
This case settled in January 2020.
SEPTEMBER 2019 – Edward Opinaldo v. Spring London LTD., 1:19-cv-08788 (SDNY).
Spring London has landed on the wrong end of a copyright infringement suit. According to the complaint filed in New York federal court by counsel for Edward Opinaldo, the “leading fashion and luxury brand development, communications, digital, VIP and PR agency” has run afoul of the law by posting a photo that he took of actress Olivia Munn in June on its Instagram account – to promote its client Chalayan – without his permission.
Opinaldo says that he licensed the image of Munn to the Daily Mail, only to have Spring London “copy [it] from the Daily Mail and cropped off [his] watermark” before posting in on their Instagram account. “Spring London did not license the photograph from [Opinaldo] for its Instagram page, nor did Spring London have [his] permission or consent to publish the photograph on its Instagram page,” the complaint asserts.
SEPTEMBER 2019 – Robert Barbera v. Mode Public Relations, 1:19-cv-08636 (SDNY).
image via complaint
A photo of Bella Hadid is at the center of another copyright infringement lawsuit. According to the complaint that repeat plaintiff Robert Barbara filed on September 17, Mode Public Relations is on the hook for posting an image that he took of the supermodel to its Instagram in July without receiving his authorization or paying the licensing fee his photos command in order to legally do so.
The paparazzi photographer asserts that despite opyright “reproducing and publicly displaying the photograph [of Hadid] on its Instagram Page” this summer in promotion of New York-based womenswear brand Hesperios, “Mode PR is not, and has never been, licensed or otherwise authorized to reproduce, publically display, distribute and/or use the photo.”
Former Spice Girl-turned-fashion figure Victoria Beckham is on the receiving end of a new copyright infringement lawsuit after posting a photo of herself to her Instagram story this summer. According to the complaint that counsel for Felipe Ramales filed in a New York federal court on Tuesday, Beckham did not seek the photographer’s “permission or consent” before posting the image of herself on her Instagram account nor did she – or her corporate entities, Victoria Beckham INC. and VB Beauty LLC – pay to license it.
Just two months after prevailing in a copyright infringement lawsuit in connection with a photo she posted of herself on her Instagram account, Gigi Hadid has been named in a new lawsuit – this time for the “unauthorized reproduction and public display of a copyrighted photograph of English singer and songwriter Zayn Malik.” According to the copyright suit filed by professional photographer Robert O’Neil in a New York federal court on Friday, Hadid added a photo of former boyfriend Malik to her Instagram story in June 2018. The problem? She did not have O’Neil’s permission to do so.
Virgil Abloh is being sued for copyright infringement for posting a photo of Bella Hadid. According to the complaint that Jawad Elatab filed in a New York federal court on Friday, the buzzy designer posted a photo of Hadid – toting a customized suitcase from a collaboration between his brand Off-White and Rimowa – to his Instagram account without paying to license the photo from the copyright-holding photographer or obtaining his “permission or consent to publish the photograph on [his] Instagram Story,” thereby giving rise to a copyright infringement dispute.
Elatab asserts in his complaint that Virgil Abloh – or better yet, Abloh’s corporate entity Canary Yellow LLC, which interestingly bears the name of a company that FUBU president Daymond John thought up back in 2003 – engaged in the “reproduction and public display of a copyrighted photograph of model Bella Hadid,” one that he took of the supermodel in New York in March. While Vogue and the Daily Mail appear to have licensed the image from Elatab (i.e., entered into a contract in which the photographer grants specific rights to another party to use his/her image(s) in a specific capacity in exchange for compensation) – by way of photo agency Backgrid, the same cannot be said for Abloh, according to the complaint.
Images of Emily Ratajkowski and Annabelle Wallis are at the center of two new paparazzi lawsuits. Edward Opinaldo has filed copyright infringement suits in a New York federal court in Monday, asserting that womenswear brand Adeam and creative management powerhouse The Wall Group posted images that he took of the buzzy model and English actress on their respective Instagram accounts without licensing the images or receiving his permission to do so.
AUGUST 2019 – Barbera v. Alexander Wang, Inc.,1:19-cv-07540 (SDNY)
images via complaint
Photographer Robert Barbera is taking on Alexander Wang in a copyright lawsuit after the designer allegedly posted a photo of Dua Lipa wearing to his Instagram without licensing it or obtaining the photographer’s authorization. According to the complaint, which was filed in a New York federal court, Barbera claims that he “photographed English singer and songwriter Dua Lipa” when she was leaving the Bowery Hotel in New York in early April 2019.
While Barbera licensed the photo to other companies to use, “Alexander Wang ran the photograph on [its Instagram and Facebook accounts]” to promote its clothing” without paying to license the photo. In particular, Wang made use of the image of the singer wearing its $795 Mini Shirt Dress and $795 Halo Bag to implement shoppable links on its Instagram page to enable consumers to easily identify and shop the products, noting that the dress and bag were “now available” for purchase.
JULY 2019 – Vila v. Monse LLC, 1:19-cv-07078 (SDNY)
image via complaint
Monse is in trouble for posting a photo of Jennifer Lopez and Alex Rodriguez to its Instagram account without licensing it from the copyright-holder photographer who took it. That is what Carlos Vila asserts in the lawsuit he filed against the New York-based brand in a Manhattan federal court. According to Vila, Monse – which was launched to much fashion industry fury in 2016 by now-Oscar de la Renta creative directors Laura Kim and Fernando Garcia – “is not, and has never been, licensed or otherwise authorized to reproduce, publicly display, distribute and/or use the photograph.” Although, the photo at issue did appear to have been licensed to Vogue to use on its site.
More than that, the brand was not legally allowed to “falsify, remove and/or alter” the copyright management information, which identified Vila “as the photographer of the photograph.”
In July, Splash News filed suit against “rapper, singer, songwriter, actress, businesswoman, and entrepreneur” professionally known as Nicki Minaj” for allegedly “copying” seven different photos – including ones depicting her “in a multi-colored Oscar De La Renta gown outside of the Harper’s Bazaar Party in New York City,” “in a plaid Burberry outfit in New York City,” “at a NYFW party in New York,” and in “a cheetah print outfit” – which appear to have been licensed to and taken from the Daily Mail – and “distributed them” for display to her 91 million Instagram followers.
The well-known photo agency claims that the photos at issue “are creative, distinctive, and valuable,” and because of Minaj’s “celebrity status, [as well as] the photographs’ quality and visual appeal,” Splash News and the photographer it represents “stood to gain revenue from licensing” them. However, Minaj’s unauthorized use of the photos “made them immediately available to [her] 91 million followers and others, consumers of entertainment news … who would otherwise be interested in viewing licensed versions of the photographs in the magazines and newspapers that are [Splash News’] customers.” As a result, Minaj directly impaired “the existing and future market for the original photos.”
JULY 2019 – Vila v. Alison Lou LLC, 1:19-cv-06634 (SDNY)
images via complaint
Carlos Vila, a professional photographer, sued celebrity-favored jewelry company Alison Loufor copyright infringement. According to Vila’s complaint, which was filed in a New York federal court in July, Alison Lou – whose Instagram includes a running series of stories called page “Loucitings,” in which it documents sighting of celebrities and influencers wearing its jewelry – postedaphotograph he took featuringmodel Emily Ratajkowski in a pair of its earrings.
“Alison Lou did not license the photographs from [Mr. Vila] for its Instagram Story, nor did Alison Lou have [his] permission or consent to publish the photographs on its Instagram Story,” the complaint asserts.
A photo of Lady Gaga from May 2018 has landed Christian Siriano in hot water. The musician-slash-Oscar winner stepped out in New York City in a striking crimson frock from the designer’s Fall/Winter 2018 collection to much media fanfare and paparazzi attention. One of the photographers who captured an image of Gaga, Robert Barbera, who asserts in his lawsuit that Christian Siriano posted the image on its Instagram without licensing the photo or otherwise seeking and receiving his authorization to do so.
JULY 2019 – Peterson v. Frame LA Brands, LLC, 1:19-cv-06583 (SDNY)
Photographer Christopher Peterson filed suit against Frame LA in a New York federal court in July, accusing the Los Angeles-based brand of copyright infringement in connection with a photo of Karlie Kloss. According to Peterson’s complaint, he took photos of the model while out in New York City in March that he licensed to the Daily Mail, which ran them alongside an caption noting that she was “a black leather blazer from FRAME over an off-white button-down top with a black pencil skirt, dark pantyhose and black heels.”
However, unlike the Daily Mail, which paid Peterson to use the imagery, Frame LA posted the images of Kloss as part of an Instagram “without a license”and without his “permission or consent” as a “tool to promote and sell its products,” thereby running afoul of copyright law.
JULY 2019 – BackGrid USA, Inc v. Citizens of Humanity, LLC, 2:19-cv-06078 (C.D. Cal.)
image via complaint
BackGrid – one of Hollywood’s largest celebrity photograph agencies, which “owns the copyrights to [millions of] in-demand celebrity photographs – filed suit against Citizens of Humanity in a California federal court, accusing the denim-maker and its brand AGOLDE of posting images of Sofia Richie, Jessica Biel, Zayn Malik, and Caitlyn and Kendall Jenner without its authorization.
According to Backgrid’s complaint, which was filed in mid-July, while each of the licenses it grants to “top-tier outlets, such as TMZ, Entertainment Tonight, New York Post, People Magazine, Huffington Post, the Daily Mail, as well as many television stations, newspapers and other prominent media outlets throughout the world,” is worth “up to hundreds of thousands of dollars,” Citizens of Humanity posted at least 4 of its images “on various media outlets including Twitter and Instagram to promote their clothing items” without licensing them.
Marc Jacobs is being sued by photographer Christopher Peterson for posting one of his photos to its Instagram without licensing the photo or receiving permission from the professional photographer. According to the complaint that he filed against the New York-based brand in New York federal court on July 1, Peterson claims that he took a photo of supermodel Bella Hadid – in a Marc Jacobs sweatshirt – and her boyfriend The Weeknd in New York in January, only to have Marc Jacobs post the copyright-protected image to its Instagram account the very next day.
Peterson asserts that while he licensed the photo to the Daily Mail, which “ran an article that featured the photograph,” he did not license it to Marc Jacobs. Yet, he claims that the LVMH-owned brand posted the image on its heavily-followed Instagram account “to promote Marc Jacobs clothing,” namely, the sweatshirt that Hadid was wearing, which was on sale at the time, and was sure to “crop off the watermark [stating, ‘Christopher Peterson’].”
Robert Barbera is taking on Ariana Grande. According to the Splash News photographer’s suit, which was filed in a New York federal court, he “photographed singer, songwriter and actress Adriana Grande,” who turned around and posted two of the photos on her Instagram account this summer to promote the release of her “Sweetener” album without his authorization.
Just a couple of months after it was filed, the case was settled out of court in mid-July.
Photographer Robert Barbera, who has been on a litigation spree as of late, filed a copyright infringement against CBS, alleging that the media giant infringed his rights in a photo of Justin Bieber by “reproducing and publicly displaying it” in an article documenting the “most liked Instagram pics” on March 13. According to Barbera, “CBS did not license the photograph from [him]” for its article, “nor did CBS have [his] permission or consent to publish the photograph on its website.”
Versace is being sued over photos of Jennifer Lopez. The American arm of the famed Italian design house has been slapped with a copyright infringement lawsuit for posting two photos on its highly-followed Instagram account of the musician-slash- actress in head-to-toe Versace at an MTV Video Music Awards after party this summer without licensing the photos or otherwise seeking and receiving photographer Robert Barbera’s authorization to do so.
According to Barbera’s complaint, which was filed in a New York federal court in April, Versace “willfully, intentionally, and purposefully, in disregard of and indifference to [his] rights … infringed [his] copyright in the photographs by reproducing and publicly displaying [them] on [Instagram].” As it turns out, “Versace is not, and has never been, licensed or otherwise authorized to reproduce, publicly display, distribute and/or use the photographs” of Lopez, a longtime friend of the brand, who made headlines after attending the Grammy Awards in February 2000 in a plunging green Versace silk chiffon dress.
According to BackGrid’s complaint, which was filed in a California federal court in March, it is in the business of licensing its copyright-protected photos of well-known celebrities to other outlets in furtherance of deals that are worth “up to hundreds of thousands of dollars.” Despite using BackGrid’s images of Kourtney Kardashian, Blac Chyna, Amber Rose, and 21 Savage on its site, BackGrid asserts that Fashion Nova never licensed or received its authorization, and instead, opted to simply “appropriate [the copyrighted images] for itself.”
Supermodel Gigi Hadid was sued for a second time in federal court in Brooklyn, New York in January 2019. According to Xclusive-Lee’s complaint, Hadid “copied and posted” one of its photos of her to her Instagram “without license or permission from Xclusive,” prompting the photo agency to file – and ultimately, lose – a copyright infringement suit.
Hadid ultimately prevail when the court dismissed the case, finding that Xclusive-Lee had not registered the photo at issue before filing suit.
In a role reversal, football star Odell Beckham Jr., filed suit against photographer Miles Diggs and California-based Splash News & Picture Agency for allegedly attempting to “extort” him into paying $40,000 after he posted a photo of himself on his Instagram account. “The audacity of Splash News to demand payment from Beckham – the very person who provided value to the Photos – is shocking, reeks of bad faith, and emphasizes the utterly troll-ish behavior of Diggs and Splash,” the complaint asserted.
Beckham alleged that Diggs sold or licensed the images to Splash, which then licensed them to a variety of gossip websites, including TMZ, and DailyMail.com, in exchange for a royalty fee. However, “The only reason that the photos have any value is because they depict Beckham,” according to the complaint. “Yet, Beckham received no compensation from Diggs or Splash.”
That case ultimately settled out of court in February 2019.
According to Splash News’ complaint, which was filed in federal court in California, Simpson “or someone acting on her behalf” took a copyright protected photo from the Daily Mail’s website and published it on Simpson’s social media accounts. While Splash News alleges that the Daily Mail obtained a limited license to publish the photo online in August, Simpson, herself, did not receive authorization to post the photo.
That case ultimately settled out of court in March 2018.
Gigi Hadid was slapped with a copyright infringement lawsuit after posting a photo of herself on her Instagram and Twitter accounts last summer. According to a the suit filed by photographer Peter Cepeda in the U.S. District Court for the Eastern District of Virginia, the famous model posted a photo of herself – which Cepeda took and in which he holds exclusive rights – amounting to an “act of infringement [that] was willful and intentional, in disregard of and with indifference to the rights of Cepeda.”
That case ultimately settled out of court in December 2017.
Khloe Kardashian made headlines in April 2017 when she was sued by Xposure Photos for posting a photo of herself on her Instagram account last fall. According to its suit, Xposure claimed that the reality television star ran afoul of federal copyright law by posting a photo of herself “going for a meal at David Grutman’s Miami restaurant, Komodo” without licensing the photo from Xposure, the copyright holder.
Following mediation, that case settled in February 2018, with Kardashian later saying that she “had to pay a lot” in connection with the settlement.
In the summer of 2011, a brilliantly bright red Birkin bag was being crafted in a workshop in France. Despite lingering economic woes in the United States following the depths of the Great Recession two years prior, and volatility in the eurozone, the United Kingdom, and China, all of which had “spooked investors and economists, alike,” the demand for Hermès’ most expensive – and recognizable – bags remained unwavering. This particular blood-hued bag was among the tens of millions of dollars’ worth of handbags that were being manufactured in little-known workshops on the outskirts of Paris in order to meet the incessant demand of deep-pocketed devotees.
Finished with a small gold stamp on the front that read “Hermès Paris Made in France” and packaged in one of Hermès’ signature orange boxes, the ones that the 183-year old brand has been using for more than a half-a-century, the Shiny Porosus Crocodile Birkin – a bag that would sell for upwards of $75,000 at retail – was destined for a blissful consumer, an individual almost certainly unaffected by the financial turmoil that was permeating markets across the globe. The problem: the bag that was being assembled that day was anything but the real thing. Despite its lookalike packaging and seemingly high quality materials, this bag was the product of a sophisticated $22 million-plus counterfeit operation that was being carried out in France, right under the nose of the Hermès, the closely-guarded stalwart luxury brand known for its meticulously-crafted leather goods, silk scarves, and saddlery.
While Hermès was working to carefully balance its own supply against the intense and unwavering yearning for its most coveted bags among well to-do consumers from women in sunny Southern California to their counterparts some 6,500 miles away in Shanghai and trying to keep takeover bids by aggressive fashion conglomerates at bay, more than a dozen people were laboring diligently to build and maintain a small-but-mighty counterfeiting ring. In clandestine workshops not far from Hermès’ own workshops, they were producing bags that to even some of the more discerning Hermès collectors looked – and felt – real.
Unlike the cheaply-made, obviously-counterfeit bags – with their plastic-y “leather” bodies, imprecise stitching, and off-kilter Hermès stamps – that are regularly churned out in factories in China and other far-flung locales and sold for cheap on Amazon and in stalls that populate seedy flea markets, these bags were different. In fact, these bags were made in France and as the story goes, at least a portion of the materials being used to craft them were coming directly from bona fide Hermès workshops.
Maybe most critically, as Hermès would later learn, several of its own employees were intimately involved in the budding criminal enterprise, providing those authentic materials and overseeing the manufacturing of the eye-poppingly expensive handbags. The result came in the form of counterfeit Hermès bags of almost unprecedented quality.
This specific ring fit neatly into a much larger pattern of counterfeiting, a sizable and long-standing business in France, with roots that date back to the days of the earliest-operating couture houses in Paris. As the heart of the global fashion market, France’s well-established luxury industry has routinely been plagued by intellectual property crime, and Hermès – which is the name found on some of the most famous and in-demand handbags in the entire world – has routinely been among those hit the hardest.
“It’s an absolute disgrace,” Hermès’ longtime former CEO Patrick Thomas said in 2012, revealing that some “80 percent of objects sold on the Internet under the Hermès names are counterfeit.”
As of that same year, the shadowy trade in infringing goods was costing the French economy as a whole a whopping $7.5 billion in lost revenue per annum (that the government knew of), a number that had been growing steadily over the years, and which was only expected to increase as time went on. However, not only has the dollar-figure associated with the fake trade been escalating, the sophistication of the players and their global counterfeiting operations has been advancing significantly, as well. With that in mind, industry insiders, trade organizations, and law enforcement officials have been paying attention for decades – watching the risks to their own interests rise.
“When counterfeiting was artisanal, it didn’t bother us much,” Adrian de Flers, the head of Comité Colbert, the French luxury goods association, said in back in the 1980s. With the broadening scope of counterfeiting, facilitated in large part by widespread technological advances, and the unending demand for less bank-breaking alternatives, “it’s become an industrial practice, and we’re frankly very worried.”
So, beginning in the mid-2000s, Comité Colbert joined brands in working overtime to stomp out the latest wave of counterfeiting, which was negatively impacting 8 out of 10 European businesses, according to its research. This included educating consumers about the dangers associated with fakes. The summer of 2012, for example, brought the introduction of a new effort by the Comité. In furtherance of a collaboration with Cartier, Chanel, Christian Dior, and Louis Vuitton, among other brands, the Comité plastered France’s 18 airports with 10,000 posters aimed at raising awareness about counterfeiting.
“Buy a fake Cartier, get a genuine criminal record,” read one poster, a reference to the ability of prosecutors to levy fines of up to $300,000 and even jail sentences in connection with the manufacture, sale, and even the purchase of fakes, as under French law it is not only illegal to make and sell counterfeit goods, it is also a criminal offense to buy them. (No such equivalent exists in the United States). Another poster, adorned with a patent Cannage Lady Dior bag, declared, “Real ladies don’t like fake.”
These efforts – which were backed by the Directorate-General of Customs and Indirect Taxes, the French law enforcement agency responsible for investigating counterfeiting – did little to deter those working stealthily to churn out relatively sophisticated, precious-skinned Hermès counterfeits, of course.
Evidence of Abnormal Behavior
Faced with evidence of “abnormal behavior identified through [its] internal monitoring systems,” Hermès had begun to suspect that things were not quite right under its own roof. Armed with such “clues,” Hermès took its findings to French law enforcement and filed a complaint. It was 2011. A year later, inside a police station in Paris, law enforcement officials were trying to get to the heart of what would ultimately reveal to be a very close-to-home scheme that was bringing millions of dollars of counterfeit Hermès bags to market.
In the time that had passed since Hermès had first filed its complaint, a new collaboration had been born: a joint effort between the brand and French law enforcement, one that would ultimately spawn a year-long investigative partnership between the two entities.
After months of following leads, engaging in surveillance, and tracing the orange Hermès-branded boxes – and even some Hermès leather and hardware – back to the brand (by way of at least two rogue Hermès employees), a big break would come in the late spring of 2012. News outlets worldwide were reporting in June that a dozen people had been arrested by French police as part of the dismantling of an international crime ring that was peddling high quality counterfeit Hermès handbags. The expansiveness of the ring’s reach would stretch from Europe to the United States and all the way to East Asia. As far as French authorities knew, the national arm of the counterfeiting operation, alone, had brought in approximately $22 million.
On that same spring day, in another part of town, the two unnamed Hermès employees were simultaneously being let go from their jobs and arrested. The unnamed employees had been integral to the workings of the ring. Despite the two arrests, Hermès harbored suspicions that “several current members of staff could also be involved,” and vowed to continue its own internal probe.
A representative for the traditionally tight-lipped house, said that they were “very satisfied with the efficient and diligent collaboration established with the national gendarmerie in this case and reiterates its relentless commitment to fighting counterfeiting. This action puts an end to the fraudulent project in progress.”
The news of the arrests and the allegedly unparalleled quality of the fake bags made headlines across the globe, prompting luxury handbag resellers, and certain consumers, alike, to question the nature of their own bags. One established resale company told TFL years later that they stopped accepting Birkin bags at the time, a risk management tactic of sorts in light of the sweeping uncertainty about the bags that were currently floating around in the market and in at least some cases, being offered up for resale. At the same time, they simultaneously triple-checked the authenticity of the bags they already had in stock.
Meanwhile, as part of a larger, global – and resource-intensive – effort by Hermès to get a handle on the growing counterfeit market, in which its instantly-identifiable bags are some of the hottest commodities, a federal judge in New York was deciding an unrelated case that Hermès’ legal team had filed against dozens of online sellers, which they accused of hawking fakes. In siding with the Paris-based brand, Judge Denise Cote of the U.S. District Court for the Southern District of New York ordered the operators of 34 different websites to pay $100 million, and asserting that “collectively, they had sold and offered for sale at least nine distinct types of goods” – from Birkin bags to silk scarves – “each bearing numerous counterfeits of the Hermès trademarks and designs.”
In reality, Hermès would see very little – if any – of that $100 million money, as none of the defendants could be identified beyond the domain names they were using to hawk the fakes (such as HermesBagsOutlet.org, HermesBirkin-Bags.org, and HermesOutletStore.com, among others) and none of them responded to the counterfeit-focused suit lodged by Hermès, and certainly did not appear in court to defend themselves against the claims. The only monetary remedy that Hermès would get would be any money in the PayPal accounts that were linked to the defendants’ domains.
A Push for Jail Time
Fast forward to late June 2020 and nearly a dozen individuals appeared in a French court for a trial in connection with that now-notorious counterfeiting ring. Prosecutors set the stage before Paris’ Criminal Court, detailing the workings of headline-making operation eight years after local law enforcement first arrested more than a dozen people and broke up the internationally-reaching crime ring. Among the ten defendants being tried in the counterfeiting-centric case were seven former Hermès employees, who were not only embroiled in intellectual property infringement charges in connection with the manufacture and sale of fake bags. They were also on the hook for criminal breach of trust (abus de confiance), a French cause of action that arises from the misappropriation/misuse of company funds or property.
The breach of trust claims provided a striking look into the heart of the secretive operation, one that saw then-current Hermès employees, including “leatherworkers, artisan cutters or assemblers at Hermès” steal authentic packaging, raw materials, and tools – from orange Hermès-branded boxes to Hermès leather and hardware – from Hermès’ factories in order to produce and sell high-quality fakes of their own. The result was bags that bore price tags of upwards of 23,500 euros ($26,351 at current exchange rates).
“Prosecutors stated in court that three friends” were at the center of the scheme to manufacture and sell the black market designer bags, “two of whom had worked at Hermès, while the third dealt with the imports of crocodile skins from Lombardy in Italy, from which the [counterfeit bags] were made,” French24 reported in June 2020. “Five other people, who [had also been employed by Hermès] appeared in court, as well: one had provided [hardware] to decorate the bags and the other four were leather workers, who assembled the bags by incorporating hand-stitching saddle-emblematic of the company.”
In connection with the breach of trust charges, alone, which the French penal code states is “committed when a person, to the prejudice of other persons, misappropriates funds, valuables or any property that were handed over to him and that he accepted subject to the condition of returning, redelivering or using them in a specified way,” the defendants faced up to seven years’ imprisonment and fines of up to 750,000 euro each. Prosecutors were pushing for jail time.
According to prosecutors, the small-but-mighty French operation – which “targeted Asian tourists in Paris but also had clients in Hong Kong” – was uncovered after French police wiretapped the home of a man suspected of selling authentic – but stolen – Hermès bags in Asia. In addition to purely counterfeit bags, WWD reported that the ring also resold bags “created under the ‘bon au personnel’ provision, which allows Hermès employees to acquire the elements and make their own bags, identified by a shooting star stamp” – albeit in a strict “for personal use” capacity.
On the final day of the three-day trial, a number of the defendants expressed their apologies to Hermès. They had been proud to work for the company, and expressed regret for “betraying the trust” of their former employer. Meanwhile, their lawyers, arguing in their defense, attempted to chip away at Hermès’ argument about the damage that it was subjected to as a result of the counterfeiting scheme. “Counsels for the defense argued against the validity of the prejudice incurred by the company, both from a financial point of view by questioning the exchange rate and a 70 percent profit margin mentioned by the plaintiffs, as well as in reputation, hinting at a supposed gain in brand equity due to the proceedings,” WWD stated at the time.
Among the other arguments lodged in favor of the defendants? A challenge to the protectability of the Birkin, and thus, the strength of the brand’s counterfeiting charges. Alexandre Lazarègue, a lawyer representing one of the alleged ringleaders, argued that “Hermès could not identify what constituted the originality of the Birkin bag,” a bag that is “based on an early 20th-century model itself inspired by transport satchels used by gauchos.”
Three months after the close of the trial, the court handed down its sentencing. According to a report from Agence France-Presse on September 25, 2020, punishments for the various defendants – all of whom were criminally charged – range from six months of suspended jail time to three-year sentences, with the most severe penalty going to the “ringleader,” who was tried by the French court despite not appearing or responding to the legal proceedings. (There is an active arrest warrant out for him).
“Another ringleader was given an effective one-year sentence, to be served under house arrest, with two more years suspended and a fine of €100,000,” according to the AFP. At the same time, one of the other key members of the group, “a woman who was convicted of selling the bags to Asian buyers, was given a 30-month sentence with 20 months suspended,” all of which will be served under house arrest.
As for Hermès, while the Paris-based luxury goods brand sought upwards of €2 million in damages in connection with the counterfeit scheme, the court awarded it €580,000.
*This article was initially published in April 2018 and has been updated accordingly.
In the $62.5 billion-plus global sneaker market, the competition is fierce, the costs associated with the intensive research and development that goes into designing and manufacturing footwear are high, and the revenues that can be generated from single styles can race past the $1 billion mark for standouts like Nike’s Flyknits styles or adidas’ Stan Smith and the Superstar models. This means that the stakes are high amongst the market’s key players, and the chance that litigation will play out among them is even higher.
Nike and adidas have long garnered headlines dedicated to their history of legal battles, centering on their respective knitted technologies, for instance, which spawned an international battle beginning at the very same time as the London Olympics in 2012, and while there is likely no end in sight to the fights that these two titans will wage against one another in their respective quests to outfit consumers across the globe (and boost revenues and profits in the process), another rivalry has been spilling over into the courts: Nike versus Skechers.
In the lawsuit that it filed against Skechers in a federal court in California in September, Beaverton, Oregon-headquartered Nike told the judge that the case was not the first of its kind, just as it was “not the first time Skechers has infringed its intellectual property rights.” Accusing Manhattan Beach, California-based Skechers of copying a number of its sneaker designs and thereby, infringing two of its utility patents, counsel for Nike said that the case is actually “the fourth in a series of lawsuits that Nike, and its subsidiary Converse Inc., have filed against Skechers asserting a range of intellectual property rights.”
In filing suit against Skechers this fall, Nike has escalated another relatively recently-initiated fight against its Southern California-based rival, and added yet another matter to a larger – and clearly still growing – list of proceedings that Nike has said stem from Skechers’ larger pattern of allegedly “copying its competitors’ designs and using innovative technologies developed by others to gain market share instead of innovating its own designs and technologies.”
In Skechers’s mind, Nike’s most recent lawsuit is merely the latest attempt by the $150 billion-plus sportswear giant to “stifle competition” and “bully” its rivals. That is, after all, what Skechers asserted in the open letter that it posted to social media in the fall of 2019.
With such a budding legal battle at play, we have put together a timeline of their respective lawsuits – and other legal proceedings …
October 2014: Converse v. Skechers
Nike-owned Converse sued Skechers (and 30 or so other companies, including New Balance, Walmart and Ralph Lauren, among others, in individual cases) in federal court in Brooklyn, New York – in which it sought injunctive relief and monetary damages – and in an International Trade Commission (“ITC”) proceeding, seeking an order barring the defendants from importing the allegedly infringing footwear into the U.S. In both sets of cases, Converse alleged that the more than 2 dozen companies, including Skechers, were “mass-producing, distributing or selling sneakers that knock off the look of [its] iconic Chuck Taylor,” thereby running afoul of its trademark rights. As for Skechers, adidas claimed that the company’s Twinkle Toes and BOBS designs infringed its trademark – or more specifically, its trade dress – rights in various elements that make up the design of its famed Chuck Taylor sneakers, from its “distinctive” toe caps and toe bumpers to its striped midsoles.
In the patent infringement suit that it filed in federal court in Portland, Oregon in early 2016, Nike asserted that a number of Skechers’s footwear – including its “Burst, Women’s Flex Appeal, Men’s Flex Advantage, Girl’s Skech Appeal, and Boy’s Flex Advantage” shoe styles – infringe at least eight of its Flyknit-specific design patents given that the “overall appearance of the designs of the Nike patents and the corresponding designs of Skechers’ infringing shoes are substantially the same.”
According to its 14-page complaint, which was supplemented with nearly 200 pages of exhibits, counsel for Nike alleged that “Skechers intended to copy the designs covered by [its] patents” and did so to the point that “an ordinary observer would will perceive” the design of the two parties’ respective shoes to be the same. To prove its point, Nike cited an article from menswear site Complex, which “describes the Skechers’ Burst shoes as having ‘ripped off’ Nike’s ‘Flyknit’ design.’”
That case, which was transferred from a federal district court in Oregon to the U.S. District Court for the Central District of California in November 2017, is still underway, with Skechers filing its answer, as well as counterclaims of its own, early this year, asking the court to declare that it did not infringe Nike’s patents, and to declare that 12 of Nike’s patents are invalid “for failing to comply with the patent law provisions” of the Patent Act.
In the wake of Nike’s design patent infringement lawsuit, Skechers retaliated against the Beaverton-based sportswear giant by filing inter partes review (“IPR”) petitions with the U.S. Patent Trial and Appeal Board (“PTAB”) in order to invalidate the eight design patents that Nike claims Skechers infringed in the aforementioned lawsuit. The basis for these filings? The individual patents do not meet the requirements for patentability (i.e., the inventions are not novel and/or non-obviousness).
In September and November 2016, the PTAB – which has the ability to refuse to institute an IPR proceeding if it finds that the challenger’s request lacks substantive merit – denied each of Skechers petitions, including one that pointed to Italian fashion brand Missoni’s zig-zag print designs, which date back to the 1950s, as existing long before Nike created its Flyknit designs and filed its corresponding patent applications, making it so that Nike’s knit-centric creations are not all that novel. (Novelty is a critical requirement for patent protection).
January 2017: Skechers IPRs
Skechers filed several additional IPR petitions, including ones challenging Nike’s design patent-protected knitted “shoe uppers.” This time around, while the PTAB again refused the majority of Skechers’ petitions, it agreed to consider two of them, both of focused on the validity of Nike’s design patents for sneaker soles (D723,781 and D723,783). Skechers claimed that the two “shoe sole” patents were invalid because they were “obvious” as a result of Nike’s own prior filings, including a European Community Design registration and two previously-filed utility patent applications. In June 2018, a 3-judge panel for the PTAB rejected Skechers invalidity challenges and upheld the validity of Nike’s patents.
September 2019: Nike v. Skechers
image via complaint
In a design patent infringement complaint filed in the fall, Nike upped the ante on the parties’ existing fight, and called foul on Skechers’ continued practice of allegedly manufacturing “Skecherized versions” of Nike sneakers, including blatant replicas of its VaporMax and Air Max 270 designs, paying specific attention to its rival’s alleged hijacking of its Air Sole technology, which Nike says that it spent decades creating.
According to its 37-page complaint, which was filed on September 30 in the U.S. District Court for the Central District of California, Nike alleges that in selling its Skech-Air Atlas, Skech-Air 92, Skech-Air Stratus, and the Skech-Air Blast models, among others, Skechers has “made, used, offered for sale, sold, and/or imported into the U.S.” shoes that have “the same overall appearance [as those protected by its] VaporMax patents,” and that infringe the some of the patents it holds for its Air Max 270 designs.
Skechers’ allegedly infringing sneakers “are substantially the same” as Nike’s patent-protected sneakers, the footwear titan asserts, so much so that “an ordinary observer will perceive the overall appearance of … the VaporMax [and the Air Max 270] shoes and the corresponding designs of the [Skechers] shoes” to be virtually the same.
In its January 7, 2020 response to Nike’s suit, Skechers denies that it has infringed Nike’s patents and asserts that even if it did, Nike’s patents are invalid, and thus, unenforceable. In counterclaims of its own, Skechers is seeking a formal judgment from the court declaring that the patents that Nike cites in its complaint are invalid and that it has not infringed the patents at issue.
In a separate patent lawsuit that it filed against Skechers just weeks later, Nike claims that Skechers is also on the hook for infringing two of its utility patents. According to Nike, Skechers’ Skech-Air Jumpin’ Dots and Skech-Air Mega shoes infringe claims contained in two of its utility patents – one that protects “an article of footwear” with an emphasis on the cushioning cavity that exists in the midsole of the shoe (Patent No. 10,098,412), and another that covers the “sole component [of a sneaker] and a method of manufacturing the sole component” (Patent No. 7,401,420).
“Without Nike’s authorization, Skechers has made, used, offered for sale, sold, and/or imported into the U.S.” shoes that infringe a number of claims protected by the 412 and 420 patents, according to Nike, as they include the same “sole structure incorporating a fluid-filled bladder and a reinforcing structure secured to the bladder,” “a cavity disposed between the upper and the outsole,” and a “plurality of protrusions [that] progressively decrease in height from the first protrusion to the forward-most edge of the article of footwear,” among other things.
UPDATED (Nov. 30, 2021): On the heels of mediation, Nike and Skechers jointly to dismiss three cases (2:19-cv-09230, 2:17-cv-08509, and 2:17-cv-08509).
*This article was initially published in January 24, 2020.
