First came the complaint from Anna Sui, in April 2007. Then the hammer came down from Anthropologie, less than half a year later. In March 2017, Adidas delivered another slap. The suits were all leveraged against fast fashion giant Forever 21, and they all claimed infringement on trademarked and copyrighted designs.
The latest company to lock horns with Forever 21 is high-end fashion designer Gucci, which claims Forever 21 ripped off its “iconic” trademarked stripes. Gucci is one of the higher-profile fashion houses to wrestle with Forever 21, which raises the question of who is David and who is Goliath in this story. When it comes to design infringement suits, high-end designers often argue knockoffs dilute their brands, thanks to association with lower-quality products. But some argue copycats can “help to drive the luxury industry, creating demand for next season’s items amongst more discerning consumers when previously released designs are adopted by the masses,” according to news site Business of Fashion. In the end, such litigation may be less about landing a hefty settlement, and more about promoting a certain image and making a statement in the fashion world.
In December, Gucci sent a cease-and-desist letter, claiming Forever 21 had infringed upon Gucci’s trademarked “Webbing Logos,” or blue-red-blue and green-red-green decorative stripes, which Gucci claims to have used consistently since the 1960s. Two cease-and-desist letters later, Forever 21 filed a preemptive lawsuit in June 2017, claiming “the colors red, blue, and green, and stripe designs, are among the most favorite, popular and widely used colors and design features on clothing,” and that “Gucci should not be allowed to claim that Gucci, alone, has a monopoly on all blue-red-blue and green-red-green striped clothing and accessory items.”
But the fast fashion company didn’t stop there. Forever 21 took the complaint one step further, claiming a number of Gucci designs lack secondary meaning, are aesthetically functional and are generic, and therefore the continued trademark registration of those designs would cause Forever 21 harm. The company requested nine of Gucci’s current trademarks be canceled.
Gucci lashed back, answering the complaint with allegations of trademark infringement, trademark dilution, false designation of origin and unfair competition. Invoking Forever 21’s history of litigation, Gucci claimed, “In stark contrast to the GUCCI brand’s reputation for innovation in design and high-end fashion, Forever 21 has built its business on imitation.” The designer argues the Webbing Logos are some of the company’s “most iconic and renowned trademarks” and that in challenging some of Gucci’s “most valuable and widely known marks…Forever 21’s legal assault, like its business model, is built on undermining the very notion of trademark protection.”
The crux of the dispute between the two companies is whether the marks have acquired distinctiveness, and whether Forever 21’s use of them would create confusion among consumers. The U.S. Patent and Trademark Office defines a trademark as a mark that is “intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.” The key terms here are “distinguish” and “source.” Forever 21 implies this can’t be applicable to a design as common and generic as stripes, while Gucci claims that, after using the stripes for decades and spending more than $20 million on U.S. advertising featuring the Webbing Logos since 2003, the marks have “acquired distinctiveness.”
Could shoppers at Forever 21 be confused when they see the stripes? Could they think that Gucci had partnered with the fast fashion brand, or that the stripes originated at Forever 21? Gucci zeroes in on this aspect of the suit: “Forever 21’s conduct has created a likelihood of substantial confusion among consumers as to the source or origin of Forever 21’s products and has deceived consumers into thinking that Forever 21 is affiliated with, sponsored by, or endorsed by Gucci America. It is not.” Forever 21 flatly dismisses this concern: “Consumers are not likely to believe any of Forever 21’s items are manufactured by, or otherwise associated with, Gucci.”
In Gucci’s most recent follow-up to its motion to dismiss, the company snaps back at Forever 21’s claims the stripes and colors are generically popular. “Forever 21’s characterization of its allegations as ‘facts’ does not entitle them to a presumption of truth,” reads the response. Essentially, Gucci argues Forever 21 has no proof of its claims.
Of course, disputes of this sort are nothing new in the fashion world, or beyond. Companies have long grappled with the question of accrued value. Forever 21, Inc. v. Gucci America, Inc. et al bears resemblance to another case involving stripes that climbed to the Supreme Court last year, Star Athletica, LLC v. Varsity Brands, Inc. In that case, the Court ruled the lines and chevrons that are characteristic of cheerleading uniforms were eligible for copyright protection. Some of the language in Adidas America, Inc. et al v. Forever 21, Inc.—also involving stripes—rings strikingly similar to the Gucci suit: “Tired of operating with a cloud over its head with regard to its right to design and sell clothing items bearing decorative stripes, and unwilling to stop doing something it has every right to do and pay a bully to leave it alone, Forever 21 decided that enough was enough.”
If cases of this nature are nothing new in the fashion and trademark world, why has Forever 21 racked up a history of similar disputes? “Forever 21 may not even expect to win,” Susan Scafidi, founder and director of the Fashion Law Institute at Fordham Law School, told Business of Fashion. “Instead, the fast fashion chain may wish to signal to other brands that sending cease-and-desist letters may prove more expensive than anticipated.” Another potential goal of the suits? “To cast the fast-fashion company publicly as a victim rather than a design pirate or a parasite,” she told Business of Fashion.
In Forever 21, Inc. v. Gucci America, Inc. et al, both brands are jostling to be cast as the underdog. In each of their complaints, they invoke their origin stories. In its answer to Forever 21’s preemptive complaint, Gucci notes how the company’s founder worked as a porter as a young boy and “dreamed of opening a shop in Florence that would sell beautiful leather pieces like those he saw hotel guests using.” Forever 21 recalls its humble beginnings in a “single, 900-square-foot store in Los Angeles,” and states “Forever 21 is an American success story.”
If Forever 21 is bluffing, Gucci calls it: “Not content just to continue knocking-off famous fashion brands and then settling with those who complain—all the while profiting handsomely by flaunting the law—Forever 21 now brazenly masquerades as a victim of unfair competition in search of legal redress in the courts.”