For many of us the smell of pine evokes air fresheners and long car journeys or taxi trips to the airport. Yet for French fashion house Balenciaga it may end up conjuring up the smell of legal trouble.
The fashion industry is indeed becoming a veritable dark forest of copyright infringements and everyday there seems to be a new lawsuit between this or that brand over an allegedly copied design. One of the latest cases involves Balenciaga and the Car-Freshner Corporation.
The French fashion house recently released a tree-shaped $275 keychain, but the design looks extremely similar to that of the iconic Little Trees products. The Car-Freshner Corporation (owning the rights to Little Trees) and Julius Sämann Ltd therefore decided to sue Balenciaga (Car-Freshner Corporation and Julius Sämann Ltd., v. Balenciaga America, Inc., 1:18-cv-09629 (SDNY)).
The pine tree-shaped disposable air freshener goes a long way back: trademark for the little odor-fighters was secured back in the early '50s when Julius Sämann, a German-Jewish chemist and businessman, filed a patent for paper impregnated with "odor-destroying, air-perfuming substances," a cellophane wrapper and a string to hang it on. The product became an instant success and it is still selling strong.
Several companies in Europe produce Little Trees under license from Julius Sämann Ltd. using the names Wunder-Baum (in Austria, Denmark, Finland, Germany, the Netherlands, Norway, Poland, Romania, Slovenia and Sweden) and Arbre Magique (in France, Belgium, Italy, Portugal, and Spain).
It is undeniable that the keychains look remarkably similar to the trade dress-protected Little Trees car air-freshner that come in different colours and patterns; Balenciaga also copied some of the specific colours and graphics and the product is described on some sites as "inspired by car fresheners".
The description on the product page on Matches Fashion states indeed: "Designed to resemble a classic car air-freshener tree, Balenciaga's green leather keyring will lend a note of character to your accessory roster."
Legal documents for the case argue that Balenciaga's keychain design could therefore confuse consumers despite the nature of the product and the difference in prices. But a judge may rule against the plaintiffs (Car-Freshner Corporation and Julius Sämann Ltd.) as, after all, consumers are perfectly capable of distinguishing between an air freshener selling for $3 in the States and a luxury leather keychain selling for $275. Similarity generating confusion may therefore not be a valid case, as consumers still know the difference between a cheap product and a luxury item, but it is clear that the product infringes instead a trademark (in the case of Little Trees, the coloured pine is undoubtedly a distinctive mark of the product/brand).
Balenciaga may play the irony and parody/satire card, explaining that this is a fun accessory in the same way Moschino did a Windex bottle-shaped fragrance called Fresh (plus a mobile phone cover and a series of accessories with the same design) and Windex never sued the brand probably because it realised consumers are not likely to confuse a detergent with a fashion house.
That said, there is something that may rule in favour of the plaintiffs: Little Trees has a range of products sold on its own store including luggage tags, key rings, greeting cards, socks, shirts and bags (just to mention a few).
The luggage tags actually look a bit like Balenciaga's keychains, but, what's even more remarkable is the fact that a while back Little Trees granted a license to designer Anya Hindmarch to use the tree design for leather tags/keychains for handbags (in the same way other companies including Buffalo Wild Wings, Kia Motors and Capital One also licensed air fresheners from Little Trees).
Balenciaga never applied to get a licence, but, seeing the other products and previous collaborations, consumers may think this is an approved partnership between Little Trees and the French fashion house. In a nutshell, Balenciaga would be guilty of unauthorized use of the design.
The plaintiffs are currently seeking injunctive relief which would bar Balenciaga from the "manufacture, production, sale, import, export, distribution, advertisement, promotion, display, or other exploitation of the infringing product." The Car-Freshner Corporation and Julius Sämann Ltd. are also seeking monetary damages including profits made by Balenciaga in connection with the still ongoing sale of the keychains.
In the meantime the case between New York-based City Merchandise, Inc., a producer of souvenir items, against Balenciaga America (City Merchandise, Inc., v. Balenciaga America, Inc., 1:18-cv-06748-JSR (SDNY)) continues.
As you may remember, that case referred to the "Multicoloured New York" line of bags by City Merchandise, created by the souvenir merchandise company around November 2014, and featuring a collage of NYC landmarks (the Statue of Liberty, the Freedom Tower, the Chrysler Building, the Flatiron Building and the Empire State Building) on an airbrushed hot pink sky with large, purple letters, unevenly bordered in white. The same image was replicated by Balenciaga on a series of products.
City Merchandise has been producing for over 30 years souvenir items and it has been using the New York skyline design on its products since 2015, while Balenciaga maintained a copyright registration in the U.S. since February this year.
The case was filed in July, but the American branch of the French house denied any wrongdoing stating that the City Merch bags lack copyright protection or is invalid since it shows common scenes and sets (but, it should be highlighted the arrangement, layout and colours are original, it was indeed created by Rafael Valentierra, but the copyright, as it happens in these cases, lies with the company he created the design for) and consequently denied it ran afoul of federal copyright law.
City Merchandise has recently amended its complaint and is seeking to immediately prevent Balenciaga America, Inc. from exporting and/or selling the allegedly infringing products outside of the U.S.
Deborah Gindi, current president and owner of City Merchandise, released a declaration on 11th October 2018 (that we received via the company's layer, Mr Edward Toptani) stating she was surprised and puzzled when she entered a Balenciaga shop and saw a bag with a design that looked remarkably similar to their line of bags. In her declaration she claims "it was my general belief that infringers generally knock-off high-end products", but in this case she discovered something peculiarly different. Rather than selling inferior quality knock-offs for relatively inexpensive prices, here was a luxury version of a very affordable bag (a tote by City Merchandise costs around $20, Balenciaga will set you back almost $2,000).
Mrs Gindi's main worry is that City Merchandise's products will therefore be considered as cheap knock-offs of Balenciaga's designs by people who are not aware of the situation and claims that her company lost sales as a result of the French house reproducing their designs.
She therefore proceeded to apply for a preliminary injunction to prevent Balenciaga America, Inc. from taking any steps to transfer, export, distribute and/or sell any of its U.S. inventory of products that infringe upon City Merchandise’s copyright (once exported the products would not be subjected to US copyright law and the fashion house would avoid having to pay City Merchandise for damages for such illegal sales; the same request done by the Car-Freshner Corporation in regard to the keychains) and an order of seizure of Balenciaga's infringing merchandise (Balenciaga states it has already voluntarily stopped displaying and selling them in the United States).
These copyright infringement cases are not new to Balenciaga: Demna Gvasalia, current Creative Director at the French house, has been under attack for using popular designs and turning them into luxury products or copying designs without crediting them (think about DHL T-shirts, IKEA shopping bags or his appropriation of the Ruff Ryders logo).
In the case of the pine tree keychain Gvasalia should have done his research before putting the product on the market: Car-Freshner fiercely defends its trademark of the tree-shaped air freshener design and has filed several lawsuits against makers of lookalike products and companies that use their products in other commercial media (throughout the years Car-Freshner sued a series of air-freshener makers, but also companies that produced holiday greeting cards that bore a glow-in-the-dark image of a scratch-and-sniff tree-shaped air freshener...).
Gvasalia has often explained in interviews that he loves injecting irony in his designs and elevating something cheap to luxury (hence the City Merchandise bags or the accessories decorated with a bland stock photo of cute animals...). Shame he never considered the legal implications and consequences of his "ironic exercises" in fashion détournement.
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