The Stripes War: The Ultimate Lesson from the Trademark Battle Between Gucci and Forever 21

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

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Gucci (Left) v. Forever 21 (Right)

Over the last few weeks, I received a lot of questions along the lines of "Can X be copyrighted?". Guess which design received most queries? The answer: stripes. However, stripes standing alone have never been afforded federal copyright protections to the best of my knowledge. Why? One of the constitutional and statutory requirements for copyright is that a work has to be an expression, not an idea. Although drawing the line between the two is a difficult exercise, the common verdict is that stripes are closer to being an idea. Of course, many legal scholars persistently questioned the value of the so-called idea/expression dichotomy by claiming that an idea cannot exist apart from some expression. See generally Richard H. Jones, The Myth of the Idea/Expression Dichotomy in Copyright Law, 10 Pace L. Rev. 551 (1990). Borrowing the words of the author, there is no such thing as an "expressionless idea". However, in the eyes of the law, it does exist, and the expression requirement has been a pervasive theme of the U.S. copyright law. The policy is that ideas should be the cultural commons from which individuals find sources of inspiration. After all, stripes are geometric shapes. Stripes in fashion therefore mostly come up in trademark contexts.

In 2017, Forever 21 sued Gucci after Gucci had repeatedly aired its grievances that Forever 21 was appropriating its blue-red-blue ("BRB") stripe pattern. The design was already federally trademarked in at least four categories (i.e. Class 18 for wallets, Class 25 for footwear, and Class 14 for watches). Gucci then had three pending trademark applications for other categories as well. At first, Gucci sent cease-and-desist letters to Forever 21 three times, identifying four items that Gucci believed to be infringing upon its BRB stripe trademarks. Forever 21 filed a complaint in a district court asking for a declaratory judgment. Moreover, it requested that the court cancel Gucci's existing BRB trademarks and further deny the pending applications. Forever 21 contended that the BRB stripes "are generic and/or aesthetically functional and/or lack secondary meaning because of, at least, the lack of exclusive use by Gucci." Forever 21, Inc. v. Gucci Am., Inc., No. CV 17-04706 SJO (EX), 2018 WL 5860684, at *2 (C.D. Cal. Feb. 9, 2018). Forever 21 literally threw out every possible darts to invalidate Gucci's federal trademarks: generic, functional, and lack of secondary meaning. The district court dismissed the complaint for two reasons. First, Judge Olguin explained that there is no concrete and specific legal dispute since Gucci did not even sue Forever 21. Second, the judge observed that the district court does not have the requisite authority to deny trademarks pending before the United States Patent and Trademark Office. Id. at *1. Forever 21 then amended the initial complaint with further facts and evidence, and Gucci moved to file an instant motion to dismiss certain allegations in the amended complaint. 

In reviewing the motion, Judge Otero started the analysis by reiterating the position that courts cannot issue a declaratory judgment - legally declaring who has the right - unless there is an actual controversy. ("The dispute has to be definite and concrete, touching the legal relations of parties having adverse legal interests." Id.) Yet, the judge found that, although Gucci did not initiate this lawsuit, by sending cease-and-desist letters three times, it effectively "put these trademark registrations at issue." Id. at 3. With respect to the court's ability to deny pending trademark applications, the judge concluded that the court can discuss the issue of registability to the extent that the current dispute - the pending applications - involves marks that are closely related to those that have already been registered. The only difference lies in categories. However, the judge made clear that it is ultimately the PTO's job to deny those applications. In sum, the judge told the parties that the dispute is real and they can now proceed to fight the matter at a trial. 

After all these back-and-forths, the case was ultimately settled between the parties. Settlement always remains confidential, so no outsider would know what the agreement entailed. Still, the protracted legal battle between the luxury house and the fast fashion brand sheds light on the importance of trademarks. Unless each side saw them as highly valuable, they would not have kept revising their complaints to emerge victorious. Stripes, in conjuction with colors, have served as an effective source identifier. When I personally stumble upon a blue-red-blue stripe pattern, Gucci immediately pops up in my mind. In light of the long history of stripes being a powerful leitmotif for many brands, the war over stripes might resurface in the near future. Stripes will never be stripped of imagination.