"Shopping Bag" Bags: Trade Dress or Copyright Infringement?

*** The writing does not, and is not intended to, constitute legal advice by any means***

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The holiday season fever is now nearing the end. After a frenzied shopping and a warm round of receiving gifts, I now have Dior, Hermès, Tom Ford and many other shopping bags sitting inside my closet, perhaps waiting to get dusted. This season, a score of luxury brands came up with artistic shopping bags to jazz up the festivities, offering us an escape from this surreal end-of-the-year. While most of us are gratefully indulging in the art of gifting, some found news ways to make money through the art of grafting. They made DIY bags with luxury shopping bags and made a business out of selling them. Could this potentially be a trademark infringement? Or a copyright infringement? Today, I fancy a hypothetical of what would happen if luxury brands decide to go after manufacturers and sellers of these DIY "shopping bag" bags.

In my opinion, luxury shopping bags should be able to receive legal protections under trade dress. The United States Trademark and Patent Office defines trade dress in the broadest terms possible. It encompasses "the design of a product, the packaging in which a product is sold, the color of a product, and the flavor of a product". See USPTO Trademark Manual of Examining Procedure. Luxury brands can point to the packaging language as a basis for eligibility. A shopping bag, as part of the overall packaging, can effectively serve as a source identifier. You surely know what's in it when you see one. Aside from the source-identifying capacity, luxury brands need to show that their shopping bags have gained secondary meaning in the market, and this is the hard part. Luxury brands tend to come up with new shopping bag designs every now and then, and manufactures and sellers of DYI "shopping bag" bags can advance an argument that, given a short span of time over which these shopping bags are displayed in commerce, a showing of secondary meaning should not be found by a judge or a jury. To counter that line of argument, the best response I can come up with right now is the idea of tacking. Tacking allows a trademark owner to keep counting the period of use of earlier marks to subsequent ones when two marks are "legal equivalents that create the same, continuing commercial impression", which leaves consumers to sufficiently grasp that the two essentially come from the same producer. Hana Financial, Inc. v. Hana Bank, 574 U.S. 418, 421 (2015). If courts accept the tacking argument, I see there's no reason why shopping bags should be denied trade dress protections. 

Aside from the trade dress issue, there might be a copyright infringement problem in connection with those "shopping bag" bags that are circulated in commerce. I use "might" here because I need more facts to make a case. What if luxury brands hired graphic artists to make their holiday shopping bags? Of course, based on the work-made-for-hire doctrine, a brand ultimately own the copyright behind the resulting work unless contracted around otherwise. Still, artistic works incorporated onto shopping bags can have separate copyright protections if they can satisfy the following three constitutional/statutory requirements: originality, fixation, and idea/expression. The fixation requirement is easily satisfied, and, with respect to the other two, I don't see that much difficulty, either. Courts repeatedly interpreted originality to mean a modicum of creativity, and elaborate drawings are much closer to an expression than an idea. So there's possibly a copyright infringement lurking behind.

Some might wonder why I am so angry about people selling DIY "shopping bag" bags. Aren't they, in some sense, nice examples of eco-friendly up-cycling? Plus, given that no brands are making such bags out there in the market as of now, no actual likelihood of confusion exists. Yes, and yes. However, trademark protections aren't all about consumer protection. Another pillar of the trademark edifice is protecting the goodwill of a mark. Those commercially savvy individuals decided to manufacture and sell those "shopping bag" bags because there is a demand for it. In fact, you would have seen people selling shopping bags on online platforms for dozen bucks. I don't feel right that people can profit off of such activity. You can disagree with me, and please tell me why you think otherwise. I'm happy to talk about it!