Thursday, August 18, 2016

Fashion weak: fashion show fails to enjoin New York Fashion Week name

Fashion Week, Inc. v. Council of Fashion Designers of America, Inc., 2016 WL 4367990, No. 16-cv-5079 (S.D.N.Y. Aug. 12, 2016)

FWI sued CFDA for trademark dilution, unfair competition and false designation of origin, and trademark infringement based on use of of “NEW YORK FASHION WEEK” and its acronym “NYFW” (“NYFW THE RUNWAY SHOWS” was also theoretically at issue, but not really pressed; the court didn’t think FWI had a protectable mark in that phrase).  On June 28, FWI sought a TRO and a preliminary injunction against the use of these terms in connection with live semi-annual events in New York during which fashion designers launch new clothing lines. The court denied these requests.

CFDA’s showcase events date back to 1943 when “Press Week” was launched, an event dedicated to promoting American designers of women’s fashion. The semi-annual week-long events in New York “are recognized as one of the four major fashion weeks in the world.” From 1993-2015, they were formally named after their location or sponsor, such as “Olympus Fashion Week” and “Mercedes-Benz Fashion Week,” but in the press and the industry, they were widely referred to as “New York Fashion Week” from at least 1993 onwards. In 2015, CFDA went with “New York Fashion Week,” “NYFW,” and “NYFW The Shows,” in promotion and production of the fashion events, as well as a new domain name,

FWI produces fashion shows and sells tickets to “consumers and fashion aficionados,” positioned as “publicly accessible alternatives to [CFDA] fashion events which are restricted to members of the fashion industry and media only.” FWI shows are one day long and coincide with the defendants’ semi-annual schedule.  FWI registered NEW YORK FASHION SHOWS in 2012, and produced three fashion shows under that name, then in 2013 renamed itself Fashion Week Inc. and applied for NEW YORK FASHION WEEK on the Supplemental Register.  The application was granted for online entertainment ticket agency services in 2014. FWI produced and sold tickets to two fashion shows under the NEW YORK FASHION WEEK mark—a show in September 2014 and a show in September 2015. Both sold five hundred tickets and earned $25,000-30,000 in profit. 

FWI applied to register NYFW for online ticket sales for entertainment and fashion shows in May 2015, after defendants announced their intention to use NYFW online to promote their fashion events.  The mark issued on the Principal Register in December 2015.  In August 2015, defendants sent FWI a C&D “requesting that FWI cease promoting its fashion shows online in a manner that might mislead consumers into thinking they were purchasing tickets to the [CFDA] events.”  In ensuing discussions, FWI offered to transfer its marks and sponsors to defendants “and threatened litigation, delay, and bad press.” FWI subsequently filed trademark applications for the marks NEW YORK FASHION WEEK THE RUNWAY SHOWS, NYFW THE RUNWAY SHOWS, NYFW and NEW YORK FASHION WEEK for organization of fashion shows for entertainment purposes.

In July 2015, CFDA organized and produced the September 2015 and February 2016 fashion events. In April and June 2016, FWI sent cease and desist letters to defendants about the marks.  This litigation resulted. CFDA’s next fashion events were scheduled to begin on September 8, while FWI didn’t have any fashion shows presently scheduled; plans to hold an event in February 2017 had been put on indefinite hold after FWI’s anticipated sponsors severed ties with FWI.

The district court began by assuming that eBay and Salinger required it to reject any presumption of irreparable injury based on likely success on the merits, even in a trademark case.  This change also changed the significance of delay, once used to rebut such a presumption.  Now it’s just a “significant” factor to consider in determining irreparable harm.  Here, FWI’s delay in suing and moving for an injunction “argues strongly against granting the preliminary injunction.”  In January 2015, after all, CFDA had filed a petition to cancel the NEW YORK FASHION WEEK mark, and the petition included CFDA’s representation that it had made continuous use of the trademark since at least 1994.  Plus, there was the April 2015 announcement that CFDA would be using NYFW as part of its domain name and on social media platforms. In its moving papers, FWI even included a news article from January 2015, reporting that the defendants’ event in September 2015 would be called “New York Fashion Week.”

FWI argued that its delay was due to investigation and settlement discussions, but there was no evidence that defendants ever considered reverting back to a sponsor-based title.  In light of the public announcements, at least by August 2015, FWI’s belief that CFDA would reverse course was unreasonable. After the shows in September 2015 and February 2016, FWI knew that CFDA wasusing the marks it claimed a right to use, but FWI continued to do nothing.There was no evidence that settlement discussions continued into 2016, but even if they had, the time between their alleged collapse in January and June 2016 was too long.

In addition, FWI failed to show actual irreparable harm.  Loss of control over one’s reputation is irreparable because this loss “is neither calculable nor precisely compensable.”  [Note that if this is really true, we’re back to the presumption of irreparable injury, because courts have told us that lost control is what confusion means.  If courts acknowledge that, in fact, what they call confusion is often unlikely to pose significant risks to the plaintiff’s reputation—perhaps because of the demonstrated resilience of strong brands—then this claim makes some sense even in a world without presumptions of irreparable injury, but it does call into question why “confusion” is defined so broadly.]

Here, FWI didn’t provide sufficient evidence of goodwill that it could lose.  It only presented evidence that it used the NEW YORK FASHION WEEK mark in connection with the September 2015 fashion show, and it didn’t submit evidence of brand loyalty or recognition in the industry.

Separately, FWI failed to show likely success on the merits—you can tell from this discussion that there are serious doubts about the validity of its asserted marks or their extension beyond “online entertainment ticket agency services.” FWI argued that consumer confusion, evidenced by emails to FWI seeking to buy tickets to the CFDA events, showed secondary meaning and harm.  The court thought otherwise—CFDA, not FWI, was likely to show secondary meaning in these descriptive marks.  Though CFDA didn’t use “NEW YORK FASHION WEEK” to describe itself until recently, the press and industry did, and it could claim trademark rights in nicknames.  (Industry evidence included a declaration from Anna Wintour, FWIW.)

Unsurprisingly, the balance of equities and the public interest also argued against any injunction.  An injunction would disrupt the upcoming New York Fashion Week, which was “an important asset to the New York economy,” and would deprive the public of a useful term by which to describe the events.

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