Converse Hopes Red Soles Can Protect Chuck Taylor

By Marc Logan (Rutgers-Camden Law Class of 2015)

We are all familiar with Converse, the iconic fashion brand known for its Chuck Taylor sneaker. Chuck Taylors have become instantly recognizable throughout the world for their distinctive features: rubber, half-moon toecap, rubber toe bumper, unique stitching, and stripes that run along the bottom of the shoes.

On October 14th, Converse asked its followers on Twitter, “Ever wondered what makes a Chuck a Chuck? #converse #allstar”. Converse had complex motivations for making the inquiry. On the same morning, Converse filed a trademark infringement lawsuit in the Eastern District of New York, against Walmart, Kmart, Skechers, and twenty-eight other parties that they believe are “mass-producing, distributing or selling sneakers that knock off the look of Converse’s iconic Chuck Taylor.”

In the classic trademark infringement lawsuit, a party claims that another is using, for example, its logo, or labeling on a product without proper authorization. Here, however, Converse claims that the various parties are impermissibly using the physical Chuck Taylor design elements. Claims of this nature fall into a category of trademark law known as “trade dress”. Trade dress concerns design aspects of a particular product, including packaging, or overall presentation, which may identify the brand to consumers. Typically product design elements only receive trademark protection after they have acquired “secondary meaning”, or in other words have adopted a level of distinctiveness that makes them a definitive source indicator (e.g. Tiffany’s blue box with white ribbon).

Converse’s claims come from a concern that the various parties involved are producing shoes that are too similar to the Chuck Taylor. The company fears that the knock-off shoes will confuse and mislead consumers, and that their sale could harm the strong reputation of the Converse brand. For example, Skechers “Daddy’s Money” line, which is marketed to teenaged girls, has drawn a lot of public criticism. Parents have called the line “totally sexist” and argued that it sends a dangerous message to our youth. The shoes contain several features of the Chuck Taylor, which could lead to consumers mistaking them for Converse – something Converse clearly wants to avoid.

This type of trademark case is not unheard of in the fashion world. In 2012 Christian Louboutin brought a similar lawsuit against Yves Saint Laurent regarding the use of lacquered red soles on high fashion women’s shoes. In that case the question was whether red soles on women’s shoes could be easily associated with the Christian Louboutin brand. The court determined that it could, based on how strong, and distinctive, the brand has become in the fashion market. Since consumers can look at high fashion women’s shoes with red soles and confidently say, “Those are Louboutin’s”, the court believed that the shoes had acquired the secondary meaning necessary for trademark protection (unless the entire shoe is red).

Converse has a strong case based on this reasoning. The brand has been around for over 100 years, and has acquired a great deal of recognition. To this day the Chuck Taylor remains its flagship product, and is perhaps one of the most popular sneakers of all time. It can be argued that, much like a red sole could be easily associated with Christian Louboutin, the collective design elements of the Chuck Taylor could easily be associated with Converse. Many consumers may look at a sneaker composed of the Converse design elements and say, “Those are Chucks.”

Of course, many other brands have released shoes with similar styles over the years. This gives rise to an argument that the Chuck Taylor look has lost distinctiveness, and has become generic to an extent. However, it could be difficult for the court to determine where exactly that line should be drawn. Regardless, it appears Converse still holds a strong position in this dispute due to the obvious strength of the brand and recognition of the product.

Due to advances in technology, including the increasing speed of production and information, and the general public’s lack of knowledge about intellectual property laws, copying in the fashion world has become more prevalent than ever, and brands are becoming increasingly aware that unauthorized copying is occurring. For iconic brands like Converse, the decision in the Christian Louboutin case is refreshing. It allows the company to protect its brand more confidently in a space that has struggled for adequate intellectual property protection. A favorable outcome would serve as yet another precedent that fashion houses can look to in the future for support, and it would certainly assist in the overarching battle against unauthorized copying.

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GMO Food Labeling on the Ballots – And in the Courts

In next week’s election, Oregon and Colorado will both put ballot measures before voters that would require mandatory labeling of GMO foods.  Both measures say that a “yes” vote would satisfy consumers’ right to know about food composition, would allow them to make choices about their health and religious convictions, and is justified by scientific uncertainty about the long-term consequences of genetic modification of crops.  Oregon’s measure has much more detail about other possible government objectives, such as safeguarding organic crops and supporting food tracing in the case of bacterial or other outbreaks.

Currently, approximately 64 countries require labeling of genetically engineered foods.  This map comes from the Center for Food Safety:

CountriesThatLabel-1024x662

Right now, it looks like voters will vote “no” at least in Oregon.  You will remember that a similar ballot proposition went down in California in 2012 after opponent spent more than $45 million to defeat it, including large contributions by companies such as Monsanto, Kraft, Coca-Cola, and Pepsi.  And in 2013, Washington voters narrowly defeated a labeling measure after another expensive campaign.

Even if labeling measures are approved by voters, they face rough going in the courts.  Vermont went a different route and passed a GMO labeling law through the legislature this year.  Now, the State is fighting to defend it against a lawsuit filed a few months ago by the Grocery Manufacturers Assoc.  The GMA claims that the law compels it to speak (that is to disclose the presence of GMOs) against its will in violation of the First Amendment.

I’ve written about this tricky area of the law:  compelled disclosure in the commercial speech context.  It’s very tricky and courts have been falling all over the place on what the standard should be.  For the most part and for a long time, courts allowed legislatures pretty free reign to mandate disclosure of purely factual information in the advertising context.  And in the recent (July 2014) D.C. Circuit case regarding meat labeling, the court sitting en banc went this way, holding that it would not apply heightened scrutiny to laws that required this kind of factual information.

At the same time, what courts find to be purely factual and uncontroversial in the labeling context has been changing and moving in a direction that favors corporate speakers.  For example, in 2012, the D.C. Circuit found that graphic tobacco labels were not factual and uncontroversial in part because the government was trying to shock consumers with upsetting pictures.  And in another case, in 2014, it found that SEC disclosure requirements about whether public companies knew if their products contained “conflict minerals” (from war-torn Congo) was not uncontroversial because it was so ethically-charged.

The upshot is that even if Oregonians and Coloradans pass food labeling ballot measures, the ensuing court challenges could be tough.  The issues will be whether the state interest in labeling GMO ingredients in packaged food is more or less the same as its interest in labeling the origin of meat or nutritional values.  The questions will be whether a GMO label is too ethically-charged to be deemed non-controversial and whether “mere” consumer interest, without more specific health concerns, is reason enough to justify the mandate.  Strangely – and paradoxically for a law about transparency – it seems that the less the state says about its rationales, the better.  In this sense, the Colorado ballot measure may be better than Oregon’s because it throws fewer reasons out there to assail as controversial.  This ingredient is a fact.  Consumers are concerned.  They have a right to know.  Period.

 

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Farewell to Transparency: 10th Cir. Says Citizens United Need Not Disclose on Electioneering Films

Back in 2010, when the Supreme Court decided Citizens United, it said that we didn’t need to worry about equating money with speech. Allowing unlimited corporate expenditures on campaign ads wouldn’t distort electioneering communications because people could judge for themselves what to believe. As long as there was good disclosure about who was speaking.

The Court wrote that while it was extending full First Amendment protection to corporate political speech, disclosure “permits citizens and shareholders to react to the speech of corporate entities in a proper way” and that “[t]his transparency enables the electorate to make informed decisions and give proper weight to different speakers and messages.”

It was pretty clear then and has become clearer since that this transparency was doomed and disclosure requirements would not hold up. Sure enough, the 10th Cir. just held (Oct. 14) that Citizens United counted as the press under Colorado electioneering law and did not have disclose its identity in connection with a scathing film “Rocky Mountain Heist.” The short film attacks Democrats in connection with the upcoming elections on Nov. 4. The District Court had ruled the other way a few weeks ago — finding that the people of Colorado had overwhelmingly adopted an Amendment to the State Constitution (!) to ensure disclosure of independent expenditures on electioneering communications.

Colorado Constitutional Amendment 27 provides in part that: “the interests of the public are best served by … providing for full and timely disclosure of campaign contributions,independent expenditures, and funding of electioneering communications, and strong enforcement of campaign finance requirements.”

The Citizens United film was electioneering communication. But Colorado law exempts from disclosure “news articles, editorial endorsements, opinion or commentary writings, or letters to the editor printed in a newspaper, magazine or other periodical not owned or controlled by a candidate or political party.” The question was whether the film was indistinguishable from these kind of traditional press products. Is Citizens United doing journalism?

According to the 10th Circuit, it is. The fact is that in all kinds of contexts, from reporters’ privilege to defamation to press access, courts and legislatures are dissolving the distinctions between traditional press and other forms of communications. That’s largely a good thing. We should be taking a functional approach to what counts as journalism. Doing so generally increases the amount of news and information available to the public and recognizes in the law what we all know to be true: we can all be doing journalism.

But it’s important to recognize that there remains a press function that is distinct, even if bloggers and Tweeters can be performing it. Failure to recognize any special role for an independent press function has negative consequences for speech. In the case of disclosure, it means that we get less information, less transparency, less watchdog function.

We are on the way to making the “press clause” of the First Amendment a dead letter. Before we do, we better think about the consequences for free speech values both on in terms of press freedoms and listener interests. For a discussion of this topic, a good place to start is the exchange in June Harvard Law Review between Sonja West on press exceptionalism and David Anderson, on he press as an organizer of democratic dialog.

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NCAA v. O’Bannon decision: A bombshell for college athletics

College athletics are in the news these days. One of the reasons: the O’Bannon decision, in which the court rejected the NCAA’s amateurism defense and found an antitrust violation when students were not paid for for the use of their names, images, and likenesses. In this article, Prof. Carrier summarizes the case as well as other recent developments: the Jenkins and Alston cases, Northwestern unionization case, and congressional hearings.

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