Levi’s lawsuit demonstrates the many sides of trademark law ⋆ LegalMattersCanada

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Principal at Shift Law Professional Corporation

(647) 361-7533
jsimpson@shiftlaw.ca

A sign to distinguish goods

Simpson, principal of IP boutique Shift Law Professional Corporation, says a trademark is “a sign or combination of signs that is used by a business for the purpose of distinguishing their goods from others’ goods.”

“What this case reminds us of is that a trademark can be any number of things in addition to what people typically think of it is,” he tells LegalMattersCanada.ca. “It can be a word or phrase or logo. Or, in this case, it is that little cloth tab and its unique stitching.

“A trademark can now include a sound, a scent, a texture or a three-dimensional shape,” adds Simpson, who is not involved in the lawsuit but comments generally. “What needs to be demonstrated is that the feature is distinctive of the trademark owner as a trade source.”

Levi’s states its Arcuate stitching on its pockets was created in 1873 and is “arguably the most recognizable design on denim.” The company received a trademark for the design in 1943.

The company noted that it was looking for another way to set itself apart from other jean manufacturers aside from its pocket stitching and in 1936 introduced the red tab with the word Levi’s sewn into it. Since then, they have used different coloured tabs to represent different lines of clothing.

“Something like a tab cannot be just an aesthetic feature if it is to be protectable as a trademark,” Simpson explains. “In traditional trademark language, it often is referred to as having a secondary meaning that is not just nice to look at or is a cool design feature. It actually tells you who sells a certain product or, in this case, who sells those jeans.

‘You are likely to get sued’

“Another example of that would be Louboutin shoes,” he adds, “If you are selling fancy high-heeled shoes with red soles and you are not Louboutin, you are likely to get sued because that company has a trademark on red soles.”

A great deal of work goes into establishing a trademark such as the Levi’s tab, Simpson says.

“Through continuous and extensive use over many years, consumers have come to associate that little tab and the positioning of it with Levi’s,” he says. “They have had to sell many jeans to get rights to that. Levi’s has had to condition consumers, through marketing and advertising, to see that tab as a trade source identifier and not just an ornamental or aesthetic aspect of the product.

“Coperni is using a white tab. But it doesn’t have to be a red tab. It can be any tab,” Simpson adds. “It is also important to note that it is not just when you started using a trademark that is relevant, although in trademark law that does have some bearing. But that is not the only relevant aspect. It could also be who was the first to become famous with it.”

Levi’s is also battling to prevent the dilution of its brand, he says.

Can have an indirect consequence

“Allowing someone to use your trademark unchallenged can have an indirect consequence,” Simpson explains. “Levi’s is not necessarily afraid consumers are going to pick up a pair of Coperni jeans and think it is a Levi’s product thereby depriving them of a sale. The concern is that it dilutes the distinctiveness of that tab.

“It devalues the trademark. If Coperni is allowed to use the cloth tab, then others can follow suit and then suddenly Levi’s can no longer enforce its rights against someone who is actually selling a very confusing product,” he adds. “The distinctiveness of the tab becomes diluted and that is an actionable form of trademark infringement.”

Coperni is also accused of selling unauthorized “reworked versions of Levi’s products that retain the Arcuate and tab trademarks, it was reported.

Simpson says in intellectual property law there is a first-sale doctrine, which allows someone to buy a product and resell it without infringing the intellectual property rights associated with the product.

However, if the product is modified and resold, there could be legal ramifications, he says, using the sale of “Satan Shoes” as an example.

In March 2021, Nike filed a complaint alleging Brooklyn-based art collective MSCHF engaged in trademark infringement, false designation of origin and trademark dilution with the sale of rapper Lil Nas X’s “Satan Shoes.”

The shoes were a modification of Nike Air Max 97s, featuring a drop of human blood in the sole, a pentagram pendant and a reference to Luke 10:18, a Bible verse dealing with Satan’s fall from Heaven.

‘Likely to cause confusion and dilution’

Nike argued the “unauthorized Satan Shoes are likely to cause confusion and dilution and create an erroneous association between MSCHF’s products and Nike.”

Nike submitted it had suffered “significant harm to its goodwill, including among consumers who believe that Nike is endorsing satanism.” A federal judge later issued a restraining order against the collective.

Simpson says the same principles apply in the Levi’s case.

“If the average consumer happens to know that Levi’s collaborates with others, they might look at Coperni’s reworked product and believe they are somehow working together,” he says. “People might think Coperni has a licence from Levi’s.

“I can resell an old pair of Levi’s. But if I am doing something with it to make people think that it is actually a first sale and that Levi’s is involved in that sale, that is potentially a trademark infringement,” Simpson adds. “It is another key point on how infringement can take different forms. It is not just the traditional confusion over whose product it really is. There is also the issue of confusion as to whether the trademark owner is a licensor or a collaborator.”