Image: Chrome Hearts

Chrome Hearts is not letting the coronavirus stand in the way of its enforcement efforts. The Los Angeles-based brand has filed a new lawsuit accusing a fast fashion streetwear brand of offering up a cut-and-paste replica of one of its hot-selling styles of jeans. To be exact, counsel for Chrome Hearts alleges in the newly-filed suit that MNML LOS ANGELES is on the hook for adorning its jeans with one of Chrome Hearts’ “most iconic and well recognized trademarks” in an effort to confuse consumers as to the source of its allegedly infringing wares. 

According to the trademark infringement and unfair competition complaint that it filed in a California federal court on Wednesday, Chrome Hearts sets the stage by asserting that its “cross” trademark – which it began using in the late 1980s – has become synonymous with its brand. Since setting up shop in 1988, Chrome Hearts says that it has “devoted substantial time, effort, and money to designing, developing, advertising, promoting, and marketing its products, and spends on average over $1 million per year on advertising, promoting, and marketing [its] brand.”

As a result, it “has sold over a billion dollars’ worth of clothing, all bearing one or more of [its] trademarks,” and those very marks, including the “cross” mark, “have achieved widespread acceptance and recognition amongst the consuming public” throughout the U.S. and internationally. 

Against the background, and given the brand’s adoption by an array of big-name celebrities ranging from Madonna, Rihanna and Cher to Tom Brady, David Beckham, and Lenny Kravitz, Chrome Hearts argues that MNML “knew or reasonably should have known of the wrongful [nature of its] acts and behavior” that it was engaging in when it began manufacturing and selling jeans bearing Chrome Hearts’ federally registered “cross” mark. Despite having such “a non-delegable duty to prevent such acts and behavior,” Chrome Hearts alleges that MNML offered for sale products that bear “identical or confusingly similar reproductions of one or more Chrome Hearts marks … in total disregard of [its] rights to control its intellectual property.” 

In doing so, Chrome Hearts claims that 4-year old MNML deliberately sought to “confuse the public as to the source of [its] goods or services,” and to “reap the benefit of Chrome Hearts’ goodwill associated with the Chrome Hearts trademarks.” In other words, Chrome Hearts argues that by using a nearly exact version of its “cross” trademark (i.e., any word, name, symbol, or design (including logos, colors, sounds, product configurations, etc.) used to identify and distinguish the goods of one brand from those of another), MNML is likely to confuse consumers into believing that Chrome Hearts is in some way connected with or endorsed the products when it has not.

More than that, Chrome Hearts argues that by “misappropriating the Chrome Hearts trademark [in order] to capitalize on Chrome Hearts’ goodwill for [its] own pecuniary gain,” MNML is “diluting the distinctive quality of the Chrome Hearts mark and decreasing the capacity of such marks to identify and distinguish Chrome Hearts’ products and has caused a likelihood of harm to Chrome Hearts’ business reputation.”

With such “willful and deliberate” acts in mind, Chrome Hearts sets forth claims of trademark infringement, false designation of origin, and unfair competition, and seeks monetary damages, as well as “temporary, preliminary and permanent” injunctive relief to bar MNMLfrom continuing to “manufacture, import, advertise, market, promote, supply, distribute, offer for sale, or sell” products that infringe its trademarks. 

MNML’s jeans (left) & Chrome Hearts’ jeans (right)

It is worth noting that unlike copyright and patent protections, which have originality and novelty requirements, respectively, trademark law has no such prerequisite, which bodes well for Chrome Hearts and its not-entirely-novel cross logo. Instead of novelty, the test for establishing trademark rights centers on whether the mark, itself, acts as an identifier of a single source of goods in connection with the classes of goods/services in which it is used on. This is why Apple, for example, maintains rights in its common name for use in connection with tech products and retail services, among other things. The Cupertino-based tech titan did not invent the word “Apple,” but was the first to use it consistently in commerce on tech-related products and services, so much so that consumers link its name when used on computer, for example, with a single source (the Steve Jobs-founded brand), and that gives rise to trademark rights.

Chrome Hearts, if faced with pushback from MNML, could make a similar argument in connection with its Celtic-inspired cross. (Trademark use versus decorative use will also likely be a sticking point for MNML’s counsel).

“Cheaply Produced, Lower Quality Products”

This is hardly MNML’s first brush with allegations of infringement in its role in the “anything-goes world of Instagram fast-fashion,” as GQ characterized it back in 2017. MNML is part of a crop of brands that have “gotten popular by flipping the hottest current trends into instantly-available items,” per GQ. For MNML, in particular, this means “sending [its] factories examples of pieces to reproduce from popular brands like Fear of God and Saint Laurent.” 

Its penchant for looking to others for “inspiration” has resulted in it being called out on social media for allegedly copying the original creations of budding young brands, such as Who Decides War, the label of former Virgil Abloh collaborator Ev Bravado, and Rhude, as well as those of Rick Owns and Hedi Slimane’s Dior Homme. And in more than one instance, such alleged infringement has landed MNML in court, albeit without much successful on the part of the allegedly aggrieved.

In 2017, for instance, counsel for Fear of God and its founder Jerry Lorenzo sent a cease and desist letter to MNML, accusing the brand of ripping off its “distressed ankle zip jeans, and signature bomber jacket and track pants,” among “numerous other designs that appear to be near-identical imitations of Mr. Lorenzo’s well-known designs, down to the smallest details” as part of an “intentional copying” scheme to sell “cheaply produced and lower quality products,” Lorenzo’s counsel asserted in the latter.

The parties did not manage to settle their differences out of court, at least not initially, and instead, MNML’s corporate entity, Third Estate LLC filed a declaratory judgment action, asking a California federal court to formally declare that Fear of God “lacks any cognizable trade dress and/or other intellectual property rights in certain apparel features [at issue],” and even if Fear of God does have trade dress or other rights in the designs, “that MNML has not infringed on [those rights] and has not engaged in false designation of origin.” Specifically, MNML argued that the “apparel features” that Fear of God was claiming rights in “are functional (i.e., holes and zippers in jeans, and waistbands and pockets in track pants) and/or have been in the public domain for decades.”

In short: in filing a declaratory judgment suit, MNML – whose founder Matthew Fields “admits that his designs do more than just pay homage,” and “sometimes feels guilty about replicating the work of popular, trendsetting brands,” according to GQ – called Fear of God’s (potential) bluff in claiming that it has enforceable legal rights in various elements of the garments at play, a move that notorious footwear copycat Steve Madden has become famous for when it is commonly threatened with litigation. (Forever 21 also famously filed a declaratory judgment suit against Gucci after the Italian design house threatened it with infringement litigation over its use of striped blue-red-blue and green-red-green designs).

“It’s like erasing our name off the homework assignment, putting yours on it and saying you did the work,” Lorenzo said of MNML’s wares at the time.

MNML’s case against Fear of God would ultimately settle out of court, with the parties entering into a confidential agreement, and MNML moving to dismiss its claims with prejudice, meaning that it cannot file suit against Fear of God again on the very same basis again in the future. However, while MNML is limited in terms of how it can retaliate against Fear of God going forward, that does not mean that others, such as Chrome Hearts, cannot take on the alleged copycat for infringement.

And in fact, it appears that unlike Fear of God – which lacked copyright protections in its clothing (as garment designs are rarely protected in their entirety by way of copyright law due to their useful nature and copyright’s unwillingness to grant legal monopolies on useful articles) and was forced to rely on unregistered trade dress claims in its fight against MNML, rights that tend to be difficult for most brands to establish – Chrome Hearts has a markedly stronger stance here, as MNML did not merely rip off its jeans to make a less-than-$100 version, it replicated Chrome Hearts’ federally registered logo, thereby, giving rise to claims of trademark infringement.

A rep for MNML did not respond to a request for comment.

UPDATED (July 21, 2020): On the heels of Chrome Hearts filing a notice of settlement and joint request to stay all dates with the court on July 20, Judge Philip Gutierrez of the U.S. District Court for the Central District of California ordered that “all proceedings, if any, [be] vacated and the action [be] dismissed without prejudice.” In its filing, Chrome Hearts alerted the court that the parties had “reached a settlement in principle” and that the terms of the settlement, which will presumably remain confidential, will be finalized, and a Stipulation of Dismissal of this action filed within thirty days.” In the meantime, it does appear as though the contested jeans have been removed from MNML’s e-commerce site.

*The case is Chrome Hearts LLC v. MNML Los Angeles LLC, 2:20-cv-03683 (C.D.Cal.)