No, you can’t. What you may have meant to ask was:
How can I take advantage of a trend created by a popular manufacturer, such as Louis Vuitton, Fendi, et cetera, without violating their rights?
To which our litigation partner Glenn Mitchell responds:
Coming close to a popular design without going over the line is no assurance that the subject of your sincere flattery will not bring all its might and main to make you stop, and that you might not have the wherewithal to withstand such an assault. Nevertheless, here are some general guidelines to follow in creating a lawful imitation (bearing in mind that every situation is unique).
First, NEVER use a companys signature monogram, such as LV, the Fendi F design, or Chanels interlocking Cs, or a logo similar enough to trick the eye. Companies often use these logos as repeated background patterns or the hardware affixed to the handbags. Also note that, for example, the Coach leather hangtag has been found to be a protectable trade dress element. These are often the most recognizable features of such bags and, as such, indicate the source of the bags the sine qua non of a trademark. (Of course, it is often these logos that make the product a desirable status symbol, but that is the proper province of the trademark owner.)
This leaves you with the shapes of the bags and the patterns thereon. In the heady trade dress climate of the 1990s, companies, including Coach and Hermes, were regularly successful in obtaining protection for the actual design of their bags, even if the house trademark or logo was not itself copied, on the ground that the bag shape was inherently distinctive or had become distinctive through fame and success. (Often a bootstrap analysis was used, namely, that the defendant would not have copied the bag design if it were not famous.)
Nevertheless, when a defendant could show that the copied features were important to the function of the bag, or were common and would therefore not be construed by consumers as an indicator of source, it would prevail. (I successfully defended a case brought by Henri Bendel against Sears Roebuck and Circle of Beauty, a division thereof, where the plaintiff argued that its plastic-coated cosmetic bags of various shapes constituted protectable trade dress. Our clients bags, although of similar shapes and designs, bore stripes of a different color than the bags and the Court held that, but for the color, the bags were not protectable.)
Recent Supreme Court decisions put a brake on the broad protection of product designs, including fashion items, as trade dress. The plaintiff now has to prove, often by expensive survey evidence, that consumers actually recognize the design as an indication of its source, i.e., that they would expect all goods of that design to come from the same manufacturer.
Further, the plaintiff has the burden to demonstrate that the product elements it claims protectable are not essential to the function of the product, or make the product better or cheaper to manufacture. (Generally, no one can claim a monopoly on fine leather, or particular fabrics, such as plastic-coated canvas, or gold-plated hardware.)
In at least one recent case, however, Coach did manage to convince the U.S. Court of Appeals for the Second Circuit that it was entitled to protection for a line of bags based upon the following description of its trade dress: glove-tanned leather; bound edges; heavy brass or nickel-plated brass hardware; and a hangtag with a beaded chain.
Also, as people who follow fashion know, there is very little brand-new material in design. In other words Everything old is new again. Even fashion trends that were horrible the first time around, such as leg warmers, eventually come back into vogue. Consumers recognize this, and they also know that designers use one another for inspiration. Otherwise, there would be no trends. Thus, all but the most unique and distinct of shapes is generally fair game. Certain fanciful shapes, such as the unique animal shapes of Judith Leiber handbags and minaudieres (pictured left), however, may be protectable. (ed. note – we represent JL).
Patterns. This, of course, is often the aspect of the bag most recognizable and therefore most prone to copying by others who want a piece of the market created by the trendsetter. For instance, one of the big items for this season is Louis Vuittons line of bags featuring a cherry design created by the artist Takashi Murakami. (In past seasons, Vuitton came out with a line of white bags featuring a bright multi-colored pattern, which was also very successful.)
One must approach such patterns with caution, because they may not only be subject to trademark protection, but may also be protected under Copyright law. Slavish copying of such patterns should always be avoided. Nor are minor modifications likely to provide a safe harbor, as Copyright law protects the creator against third parties who produce designs that would be viewed as substantially similar.
However, Copyright law protects only tangible expression, not an idea, so if you wish to adorn your bags with brightly colored whimsical fruit, you should be able to do so. (Even cherries might be used, so long as they do not look too similar to the Murakami cherries.) By the same token, a repeating pattern featuring pastel-colored shapes should not infringe a different pattern using similar colors and other shapes. In close cases, attorneys versed in trademark or copyright, such as the authors of this blog, can evaluate the question of whether a particular pattern is substantially similar to another.
Further, while it is often a good idea to perform a trademark search to determine whether the manufacturer of the item at issue has sought or obtained a federal trademark registration, the absence of a registration or application is no assurance, as both federal and state trademark laws protect unregistered trademarks and trade dress, so long as they meet the requirements for protectability, namely distinctiveness (inherent or acquired through use and promotion) and non-functionality.
You should be okay on legal grounds, then (with the above caveat that this doesnt always protect you from being sued (and that I am speaking generally)), if you (a) do not use the house mark of another (it is also a good idea to search the Trademark Office to determine whether the original manufacture has applied to register any of the particular design elements) and (b) do not slavishly copy a graphic pattern. In other words, its okay if someone says that reminds me of the style of the new Vuitton bags, but not I love your new Vuitton bag.
Note that trademark law protects against confusion not only of the direct purchaser, but also of potential consumers who might see the product post-sale. Thus, even if you specifically tell the purchaser that your product is not genuine but is a replica or if you separately provide labels for the consumers to attach themselves, you will be found liable if the product otherwise infringes the original. In fact, as previously reported in this blog, the United States House of Representatives has recently passed a bill making mere possession of counterfeit labels a crime, even if they are not affixed to a product.
Have fun and be safe. When in doubt, consult your friendly neighborhood intellectual property attorneys.