Slow fashion: checkerboard design plausibly infringes another checkerboard design

Hian v. Louis Vuitton USA Inc, 2024 WL 3237591, No. 22-3742 (E.D. Pa. Jun. 28, 2024)

The court tosses out most of an independent fashion designer’s claims against LVMH, while preserving one copyright infringement claim based on a distorted checkerboard pattern. I can’t say I think that one is likely to survive summary judgment, but it still puts LVMH at some risk given the accused items, which include some marketing materials.

 [Hian] sent cold solicitations to a top executive at the fashion conglomerate with hopes of a collaboration. The solicitations included original clothing designs, lookbooks, and other promotional material meant to highlight the designer’s international acclaim in the fashion industry. Ultimately, the fashion conglomerate did not make time to meet with the designer or decide to work with her. But several years later, she saw marketing campaigns and products by the fashion conglomerate that looked like three of her original designs.

Lanham Act claims failed because she didn’t allege secondary meaning, and reverse passing off in these circumstances flunks Dastar. Likewise, state unfair competition/unjust enrichment was preempted by §301, even as related to a design she hadn’t registered.  

There was no claim for copyright infringement of Green Raffia because Hian didn’t plead a registered copyright.

Plaintiff's Green Raffia design and LVMH's accused design

For the two registered designs, Hian successfully pled access: Hian’s representative emailed the Ombre design to a top executive within the LVMH conglomerate who had “access to all divisions, groups, owned companies, brands, and/or teams within LVMH and including ... any and all designers and stylists.” His assistant also physically printed the email and its attachments, including the Ombre design, and placed it on his desk. The second design, Plaque D’egout, wasn’t included in the email, but it was plausibly alleged that someone at LVMH looked up plaintiffs on the internet after plaintiffs’ work was brought to LVMH’s attention, found their Plaque D’egout design, and copied it. “We needn’t check our common sense at the door when evaluating a complaint.” Given what happened to Ombre and other promotional materials, it followed that LMVH designers had a “reasonable opportunity” to investigate plaintiffs and their work further. In addition, Hian pled that she and LMVH use the same textile manufacturers in France, and that it is common for French textile manufacturers to show off designers’ works to other designers.

Substantial similarity: plausible for Plaque D’egout, not for Ombre.

possibly the only accused LVMH clothes above; the rest seems to be marketing

accused design J is bottom right: wavy/distorted LV bag in classic LV colors

accused design M is top right: blue checkerboard top

Plaque D’egout “looks like what one might describe as an irregularly warped black-and-white checkerboard pattern.” A lay observer “might not readily find aesthetic differences between Plaque D’egout and some of the accused LVMH designs,” which shared “a number of aesthetic details in common with Plaque D’egout, including a warped black and white checkerboard pattern with similarly sized boxes.” LVMH argued that the distortions on their checkerboard designs were very different based on the shape and size of the squares in each. “Those may be significant contrasts, but we don’t think that this is necessarily the kind of thing that a lay observer who has not set out to scour the images for differences would notice.” [This is where the “prior art” inquiry/expert testimony would likely focus on summary judgment, if it gets that far.] “And the overall aesthetic feel and total concept of the designs is rather similar.” The fact that the checkerboard design is commonplace might matter, but not at the pleadings stage.

But two accused designs, J and M, weren’t substantially similar as a matter of law because of the “stark differences” between the designs “that would be obvious to even a lay observer who has not set out to look for disparities. Accused design J looks nothing like Plaque D’egout in size, shape, color, or overall aesthetic feel. And accused design M does feature a warped checkerboard design but has an overall aesthetic feel different from Plaque D’egout owing to its different color scheme.”

Note: "Ombre" is apparently a collection of Hian's, so there are two designs shown at the top of this image that she alleged were infringed.

Ombre: “We are sensitive to the factual nature of substantial similarity, but this is not even close. Ombre features horizontal transitions of color broken up by jagged lines with clearly defined edges. In contrast, the accused designs feature softly blended color transitions in various directions. And accused design D has no color transition at all.” Though some designs had similar color schemes, “random similarities are insufficient to establish substantial similarity.”

One thing that the court didn't address is: what exactly does Hian own a copyright to? The design of the original outfit?  The checkerboard fabric? The answer may affect the scope of Hian's rights. If part of the creativity of the design is how the checkerboard is placed on the human body, it seems like the marketing claims are unlikely to be valid, since they aren't replicating anything sculptural in the design. Ah, Star Athletica, screwing things up even when you aren't mentioned.