Playboy and Fashion Nova have made peace in a legal battle over the fast fashion company’s sale of bunny costumes that allegedly infringe and dilute Playboy’s longstanding trademark rights in the iconic look. While the terms of the settlement agreement are confidential, a joint filing on November 3 reveals that the parties have agreed to a “dismissal with prejudice of this action, including all claims and counterclaims … against all parties, with each party to bear its own attorneys’ fees and costs.”
The settlement comes just over a year after Playboy lodged a trademark infringement and dilution complaint against Fashion Nova with the U.S. District Court for the Central District of California, arguing that “throughout the peak of the Halloween costume season,” the Southern California-based brand had been “prominently featuring” and selling costumes that look a bit too much like its trade dress-protected bunny costume, including the “iconic bunny ears, tail, ribbon name tag, wrist cuffs, corset, and bowtie collar.” (Playboy’s various enduring registrations for the costume specifically list the trade dress as consisting of “a three dimensional bunny costume worn by a woman,” which “includes a corseted bodice, bunny ears worn on the head, a bunny tail on the back of the bodice, a name tag on the front of the bodice, wrist cuffs and a bow tie collar.”)
More than merely selling similar-looking costumes, Playboy claimed that Fashion Nova went further in its “attempt to confuse and mislead consumers” into believing that there is an association between its costumes and the Playboy brand (when no such association exists), and to benefit from such a presumed affiliation. The fast fashion company was “also advertising some of its [costumes] using the description ‘Bunny of the Month,’” which Playboy argued amounts to “a clear and unauthorized reference to [its] famous PLAYMATE OF THE MONTH trademark, which [it] began using in 1954 in connection with the Playboy magazine.”
Such unauthorized use of a lookalike costume and in conjunction with similar trademarks for its own marketing purposes was particularly likely to confuse consumers, per Playboy, given the fame of the costume. “Over the past 60 years,” Playboy claimed that the bunny costume “has become a staple of the Playboy brand.” The costume has been worn by the likes of “Dolly Parton, Gloria Steinem, Kate Moss, and even the comedian Flip Wilson,” “can be found in the collection of the Smithsonian,” and was “the first service uniform registered with the United States Patent & Trademark Office.”
With the foregoing in mind, and given its “willingness to copy the designs of other companies, piggybacking on their creative efforts to boost [its own] bottom line” (that is one of the exact same lines that was used in the since-settled lawsuit that Versace filed against Fashion Nova in 2019), Playboy alleged that Fashion Nova was “diminishing the distinctiveness of [Playboy] trademarks insofar as they reduce the exclusivity that the trademarks carry by virtue of their association with Playboy.” Beyond that, Fashion Nova’s “uses of the trademarks also dilute the value of the trademarks by associating them with Fashion Nova, a purveyor of inexpensive ‘fast-fashion’ apparel.”
Setting forth claims of federal and common law trademark infringement and dilution, and unfair competition, Playboy sought monetary damages, as well as injunctive relief. The plaitniff noted that it had previously sent a cease and desist letter to Fashion Nova over the allegedly infringing costumes, but as of the date of filing, claimed that it had not “provide[d] any response, and by all accounts continues to market and sell the infringing products.” Playboy claims that the fast fashion company’s failure to respond is an intentional delay tactic designed to avoid taking responsibility for its infringing conduct, while continuing to sell and profit from the infringing products at a time – immediately before Halloween – when demand for the Bunny Costume® is at a peak.”
The case is Playboy Enterprises v. Fashion Nova, Inc., 2:20-cv-09846 (C.D.Cal).