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Image: A+O

THE FASHION LAW EXCLUSIVE — Alice + Olivia is hauling Betsey Johnson and its parent company Steve Madden into court for using its founder and creative director’s face to sell a line of handbags. Despite alerting the two fashion companies of their infringing activities, New York-based Alice + Olivia (“A+O”) claims in a newly-filed copyright, trademark, and trade dress infringement, trademark dilution, and unfair competition lawsuit that Betsey Johnson and Steve Madden have “unfairly, unlawfully, and intentionally [sought] to copy, co-opt, and exploit a design” depicting founder Stacey Bendet’s face, and will not stop.

According to the complaint that A+O filed in a New York Federal Court late last week, its “CEO and creative designer Stacey Bendet’s well-known name and likeness are inexorably associated with [the A+O brand].” Thanks to years of advertising and promotion, A+O claims that its “StaceFace” design – which consists of a stylized woman’s face featuring large black framed sunglasses with circular grey lenses appearing above red lips outlined in black, and black hair which is in a bun – serves to “immediately impart to purchasers and the public that the item originates from A+O,” i.e., the design functions as a trademark.

A+O asserts that the design – which is protected by both federal copyright and trademark law, and which runs rampant across A+O’s collections, ad campaigns, and Instagram imagery – “symbolizes the extraordinary goodwill that is associated with A+O” and is one of the brand’s “most valuable assets.”

While “A+O has the exclusive right to [use] the StaceFace designs,” that has not stopped Betsey Johnson from making use of the well-known design. A+O asserts that in February 2018, it “learned that the defendants were offering for sale a Betsey Johnson brand bag featuring a design which is virtually identical to the StaceFace designs.” According to A+O, the Betsey Johnson bags are so “unmistakably similar that the blatant replication compelled the conclusion that the defendants intentionally copied the StaceFace designs to foster confusion and to deceive consumers into believing that the customers were purchasing products originating from A+O.”

After sending the defendants a cease and desist letter early this year, “noting the unmistakable similarity between the defendants’ [bag] and the StaceFace design,” the parties were able to come to a resolution, with “the defendants agreeing to stop the manufacture and sale of the products” in March.

However, A+O claims that despite its “good faith intentions and efforts” to handle the matter amicably and out of court, the defendants “have continued their efforts to copy and ‘knock-off’ the StaceFace design and trade dress by mimicking the features and overall appearance of the StaceFace design without authorization or consent” from A+O.

For instance, in September, “A+O identified new goods from the defendants that mimicked the StaceFace design … the only difference between A+O’s proprietary StaceFace design and the defendants’ new infringing product is that the defendants changed the shape of the glasses from circles to hearts.”

“Minor changes to the defendants’ product (such as changing round glasses to heart shape) do not negate a likelihood of confusion,” A+O’s counsel argues in the complaint. Such consumer confusion – which is the key element in any trademark infringement claim – will not be diminished by the fact that the allegedly infringing bags have a Betsey Johnson tag and not an A+O one, since “any ostensible secondary identifier (such as the defendants’ label) will not be the first thing that consumers see or register as the source of goods.”

With the foregoing in mind, A+O is seeking injunctive relief, which would serve to immediately and permanently bar Betsey Johnson and Steve Madden from infringing its rights, and a whole slew of monetary damages in connection with the defendants’ “willful and wonton acts and conduct,” which have caused and continue to cause damage to A+O’s “reputation and goodwill.”

*The case is Alice + Olivia, LLC v. BJ Acquisition, LLC and Steven Madden, LLC, 1:18-cv-11482 (SDNY).