Last month, in our piece about the pending Supreme Court case Varsity Brands, Inc. v. Star Athletica, LLC, we took a close look at the copyright protection afforded to useful articles (https://www.remarksblog.com/2016/05/cheerleading-uniforms-and-copyright-uniformity-when-is-a-useful-articles-artistic-aspects-amenable-to-copyright-protection/).  The Star Athletica case relates to copyright infringement of cheerleading uniforms, and, in particular, the geometric designs that appear on the uniforms.  We explained that because the functional aspects of useful articles are not afforded copyright protection, when a dispute breaks out over the appearance of apparel, only certain, “separable” aesthetic elements may be protectable under the Copyright Act.

Trademark law is analyzed differently and is borne out of distinct legal doctrines.  But when a claim is made over the appearance of a functional article or its packaging, conceptual similarities between trademark and copyright law exist.  The breed of Lanham Act cases relevant to functionality considerations concern the trade dress of a product or its packaging, and plaintiffs are generally required to affirmatively prove — or rebut — that the alleged trade dress is not comprised of functional features such that their protection stymies legitimate competition.  If a plaintiff overcomes this hurdle and proves that its claimed trade dress is not functional, and is sufficiently distinctive to act as a source identifier, the trade dress owner must prove, as always, that a likelihood of consum er confusion exists.  And, when it comes to a confusion analysis over high-end accessories and footwear, plaintiffs will typically rely on the post-sale confusion doctrine.  Post-sale confusion confuses the general public as opposed to the actual consumer, where a potential purchaser, knowing that the public is likely to be deceived by the allegedly infringing product, will choose to purchase the infringement.  These cases often involve “knock-off” goods.

Which leads us to Ivanka.

Last week, Italian shoe designer Aquazzura filed a federal litigation in New York, and the issues discussed above are all at play.  The defendants, Ivanka Trump and her alleged licensees, have been accused of trade dress infringement over a shoe asserted to be a “knock off” of its pricey “Wild Thing” style; images of both products appear below:

Click here to view image

The complaint asserts claims sounding in federal trade dress infringement and federal and common law unfair competition, and explicitly mentions a post-sale theory of confusion.

While the allegations of the complaint are compelling, particularly given the similarities between the parties’ products, the plaintiff will need to fend off arguments of functionality over aspects of the claimed trade dress, and ultimately prove that the shoe design is sufficiently distinctive to warrant trademark protection.  Should plaintiff prevail on these aspects of the case, it will clear a large hurdle to recovery, as the confusion analysis (in New York, the Polaroid factors) appear preliminary to weigh in plaintiff’s favor, particularly with regard to similarity of the “mark” and similarity of the underlying goods.

To the extent this case does not swiftly settle, which it may as a matter of course (or to avoid the media attention in light of a certain presidential nominee with his own legal woes), it will be interesting to see how this plays out.  We will certainly be watching.