Karl the Infringer: Parody of New Balance Sneaks Up on Lagerfeld
-Karl Lagerfeld on his “winning formula”
Sometimes there is a news story that neatly weaves a bunch of DuetsBlog posts together like a Bottega Veneta shoe fabric design. Sometimes that story comes from hard-hitting news authority TMZ, founded by attorney and former People’s Court analyst Harvey “I’m a lawyer” Levin.
Last week, fashion icon Karl Lagerfeld was sued by American athletic shoe company New Balance for copying its legendary athletic shoes, like the classic 574 model and the 620 model.
For those of you who follow me on Twitter, you may have seen me suggest last week that, absent other indicia demonstrating Lagerfeld as the source, the shoes could have been from athletic shoe rival K-Swiss.
Even back in the 1980s, New Balance implemented what I consider to be a smart and advisable two-pronged IP strategy for product design: applying for design patent protection and later seeking trademark protection through a non-traditional product configuration application where the design has become source indicative, often due to an innovative marketing strategy emphasizing design in developing brand recognition. New Balance was granted D258,772 for the classic design in 1981.
Although the design patent has since expired (design patents only have a term of 14 years), New Balance still has protection over the overall look and feel of its shoes because of its product configuration trademark registrations below, US Reg. Nos. 1,308,133 and 1,344,589.
Unfortunately for New Balance, the expiration of the patent prevents them from seeking damages based on patent infringement, and we have seen how lucrative that has been for design patent savvy companies like Apple. Even so, New Balance’s trademark complaint was interesting for a couple of reasons. The trademark infringement standard is a likelihood of confusion analysis, which considers a number of factors, including the similarity of the marks, the similarities of the goods, and the similarities of trade channels. First, despite seemingly being just a running shoe, the complaint includes evidence of coverage in high fashion magazines like Vogue. It also includes evidence of celebrities who have been seen wearing the New Balance shoes – suggesting that the shoe is not just for athletic purpose but also high fashion. Finally, it also discusses New Balance’s and Karl’s history of collaborations with other brands. The complaint mentions New Balance collaborated with J. Crew, which were featured in Vogue and GQ. It also mentions Kaiser Karl‘s propensity for design collaborations with companies such as Coca-Cola. He also has a history of designing for companies like H&M. These facts are used to suggest a likelihood of confusion between Lagerfeld’s sneaker and the New Balance shoe design and that it may have a dilutive effect in the marketplace.
While Lagerfeld hasn’t answered the complaint yet, one wonders if he will attempt to use a defense of parody for the shoe spoof. I’ve blogged on parody a couple times, with respect to Moschino and a growing trend of t-shirts spoofing luxury brands. But could Czar Karl seek a parody defense here? Likely not. Despite his formula for success including humor and a little lack of respect hinting at a propensity for indulging in parody, New Balance probably isn’t seeing any humor here. As we have discussed, a parody must do two contradictory things simultaneously: it must evoke the original and at the same time convey that it is not original by communicating some element of satire, joke or amusement. I like to think that I have a great sense of humor (well at least most of the DuetsBlog bloggers around will laugh at my admittedly poor jokes maybe just to be polite), I’m not seeing the humor here, unlike Moschino and some of the t-shirts mentioned in my prior blog posts. I imagine Pope Karl has an excellent dry sense of humor, which I enjoy, but I’m still not seeing it. Are you?
While the complaint only deals with the shoe designs described above, Lagerfeld is also selling the shoe below. Does it remind you of any other shoes?
And as long as we’re talking about icons like Karl, and I’m writing from Minneapolis near the cleansing waters of Lake Minnetonka, and I just watched the finals of the French Open, and I’m kind of hungry for pancakes…I’m going to leave this here for your Wednesday amusement. Pardon the French, but Prince is the $#!%.