GUESS WHAT?: Guess Pulls From Its Shelves Alleged Telfar Knock-Offs
Telfar's logo-bearing bag has been a true global hit. Each drop sells out literally in seconds. The sought-after Telfar bag fared particularly well in Asia, generating solid revenue streams for the emerging brand. Amid this spectacular success, it comes as no wonder that Telfar Clemens, the founder and creative director of his eponymous brand, received the Accessories Designer of the Year award from the Council of Fashion Designers of America (CFDA) earlier this year. Recently, the social media went ablaze when Guess introduced a new tote bag that is strikingly similar to Telfar's (pictured above). The Fashion Law ran an interesting article a couple of days ago in which it conducted a detailed legal analysis of Telfar's potential trademark infringement claim (if it wishes to raise it!). Therefore, rather than summarizing what has been beautifully said, I will instead run my own hypothetical. What would happen if Clemens Telfar proceeds to assert a copyright infringement claim against Guess?
First, registration of a copyright is a precondition to filing suit for copyright infringement. See 17 U.S.C. § 411 ("[N]o civil action for infringement of the copyright in any United States work shall be instituted until … registration of the copyright claim has been made in accordance with this title.") The Supreme Court made it clear in Fourth Estate that a copyright infringement suit cannot be instituted until the copyright is successfully registered with the United States Copyright Office. See Fourth Est. Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 892 (2019). That is, a mere filing of the application is not enough. Therefore, if Telfar has not already registered the copyright for its Telfar bag, it must wait until it obtains one from the Copyright Office. (It can't never be overstated, however, that copyright subsists in a work of art the moment it is created and fixed in a tangible medium!)
Second, is the design of the Telfar bag copyrightable in the first place? The answer to this question can be found in the Supreme Court's Star Atheltica decision. The majority held that a design element of clothing can be protected only if the element "can be perceived as a two- or three-dimensional work of art separate from [the clothing]", and "would qualify as a protectible pictorial, graphic, or sculptural work if it were imagined separately from [the clothing] into which it is incorporated". Here, in the similar vein, you might ask yourself whether the logo-inspired design is a protectible work of art on its own when imagined separately from the bag onto which it is placed. I think the answer is and should be yes. The logo design, when freestanding, meets the cardinal requirements of originality, fixation and expression for copyrightability. (For a more detailed explanation of each requirement, read my earlier post!)
Finally, for a successful infringement claim, the judge or the jury has to determine that illicit copying occurred. Each side will submit the evidence necessary to prove or disprove illicit copying, but bear in mind that, in most cases, it is circumstantial by nature. (Unless there's a direct admission of guilt from the alleged infringer!) In doing so, they will ask whether the infringing design is strikingly similar to the copyrighted design. I think that a reasonable observer would find that the two are substantially similar. With this level of similarity, the court might be less concerned with whether the infringer had access to the copyrighted work. Moreover, with the Telfar bag everywhere both offline and online, it can be argued that Guess had a reasonable opportunity to view the design in question. This is the basic structure of a copyright infringement lawsuit, albeit hypothetical.
In fact, it will remain as a hypothetical. In a New York Times article that was published two days ago, Clemens Telfar acknowledged that he knew of the G-logo totes. However, he stated that "[he] never saw the Guess bag as a threat to [his] business." What was noteworthy for me his remark right after that firm statement. When asked if he envisions any lawsuit, the designer answered in the negative and added that he sees a court case "as a complicated effort and a probable long-term financial drain". The answer nicely encapsulates the idea that an infringement lawsuit can be burdensome and costly for emerging designers who have less financial wherewithals in comparison to conglomerate-type brands such as Guess. In light of the controversy, Guess pulled from its selves allegedly infringing products. In a public statement, Signal Brands, the licensee of Guess, indicated that "Signal Brands does not wish to create any impediments to Telfar Global's success" and promptly moved to halt the production and distribution of the much-criticized G-logo totes. While it is a good thing that Guess ceases to sell the G-logo tote bags as a way of recognizing and addressing the issue, it would have been certainly much better had it not engaged in the eyebrow-raising behavior to begin with.
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