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Is it illegal to sell designer inspired items in a retail environment?

Seattle, WA |

I.e a store with regular merchandise and designer inspired merchandise from china??? You buy fake designer sunglasses at the mall/fair all the time... So if you are stating it is designer inspired is it still copyright infringement?!?! I want to open a legit store like this but am not sure of the laws... Thanks

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Attorney answers 7

Posted

You can be inspired all you want so long as you do not copy.
There is a sophisticated test that any IP Attorney you consult would be able to carry out for you and that is how substantial is similarity between the inspired and original merchandise.
Further facts to be checked. Is the original merchandise protected by a US Patent? If so the area of protection includes equivalents and the differences must be substantial.
Trademarked product also has a "cone" of protection.
Copyrighted merchandise enjoys the slimmest protection to inspired works.
Finally most merchandise is not protected by any means, so you may be free to be inspired or to copy.
Consult an IP attorney before your inspiration becomes a costly expiration.

USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.

Bruce E. Burdick

Bruce E. Burdick

Posted

"most merchandise is not protected by any means" - Hmmm, very, very dangerous statement to be making. My client at www.eliminateshoplifting.com would strongly disagree.

Mario Sergio Golab

Mario Sergio Golab

Posted

Picky, picky, picky Bruce. You know I meant IP protection. As for physical protection, you may be correct. Regards,

Bruce E. Burdick

Bruce E. Burdick

Posted

LOL, yes of course. Even with IP I think most merchandise is branded, at a minimum. Most literature, most songs, most videos, movies, computers, smartphones, TVs, guns (we love our guns in America), cars, etc. are protected by IP. I dare say a larger dollar volume of merchandise is protected by some sort of IP than none. Smartphone producers and most software programmers would say way too much; the MPAA, RIAA, BSA (Business Software Alliance), IACC (Int'l Anti-Counterfeiting Coalition), SOPA proponents etc. would say not enough. Depends, I suppose, on whether the one speaking is an innovator or an imitator. Yet, certainly, much is generic - unbranded groceries (my tour through ALDI tells me nearly everything is branded even in groceries). OTC medicines, building materials (again, a visit to LOWE's tells me everything there seems to be branded), etc. So, the "most" I think should be " much".

Posted

I assume that "designer inspired" is a euphamism for a knock-off, right? There are lots of potential laws that you might be violating by selling knock-offs, even if you disclose that they are not genuine articles.

First, depending on the type of articles at issue, it might be considered copyright infringement, which has nothing to do with whether you disclose that the article is genuine or not. For example, I think that Luis Vuitton claims copyright protection over the patterns of the fabric and/or leather in their bags.

Second, it might be considered trademark and/or trade dress infringement or counterfeiting. Disclosing that the article is not genuine may help a little regarding this claim, but there are cases stating that such disclaimers are not necessarily sufficient to avoid a judgment of trademark infringement.

Moreover, in some cases, there may be design patents covering the ornamental design of the products, such that selling knock-offs would be considered design patent infringement.

In short, selling "designer inspired" knock-offs is a legal minefield.

I am an attorney, but I am not YOUR attorney. By providing free, generalized information, I am not entering into an attorney/client relationship with you, nor am I providing legal advice applicable to your particular needs.

Bruce E. Burdick

Bruce E. Burdick

Posted

Asker, Google "ex parte seizure order" and see what you find. Or look at this picture of "designer-inspired" Rolex watches http://www.luxist.com/2010/05/26/7000-fake-rolex-watches-crushed-by-us-law-enforcement/.

Posted

It greatly depends on what "designer inspired" means. If what you mean is that you want to sell direct knock offs, then that will not only lead to civil liability but may also make you criminally liable. But if you just want to sell products that look "kinda" like some name-brand stuff, then you might get away with it.
The fact that you indicated the merchandise is from China leads me to believe that you should stay far, far away from it. It appears that you are in Seattle. You should call us and talk about the trouble that a local store owner got in by selling handbags that just looked "kind of like" a Coach brand bag.
Good luck.

Bruce E. Burdick

Bruce E. Burdick

Posted

I think "designer inspired" means an ex parte seizure order will soon be on its way against this "legit" operation. LOL

Posted

Mr. Majesky and Mr. Golab have answered your question very well. The only thing I would add is that if you have the money, drive, and ambition to open a store, you don't want someone taking it all away from you. You should seek legal advice in all the aspects of opening your proposed business.

My disclaimer is simply that Avvo already has an adequate disclaimer.

Posted

Hi,

Very good advice here. I will just add that in the US we do not protect fashion designs under our copyright laws because we consider the articles themselves as functional and not purely creative expression (a simplified reason to be sure). This is why you see all the dresses on the red carpet at H & M the next day.

That said, there are SO MANY other ways to get into trouble. As some others noted, patterns in the fabrics, trademarks, patents (wherever relevant) may all be protected. You may also expose yourself to misrepresentation claims as well.

The best advice is to vet everything with an IP lawyer before you decide to make any investment. I will link you to what I believe is a helpful and relevant overview of copyright law in fashion below.

Best regards,
Frank
Natoli-Lapin, LLC
(see Disclaimer)

The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. Feel free to call for a free phone consultation; your inquiries are always welcome: CONTACT: 866-871-8655 Support@LanternLegal.com DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

Posted

It depends. Many stores sell their own versions of recent fashion designs under a private label. In general, copyright law does not extend to clothing designs (although there are some bills pending in Congress which may change that, if they are ever passed), although there are some exceptions such as a design pattern printed on fabric. A design patent could cover clothing, but this form of IP protection is underutilized because the lead time to obtain a design patent may be too long for a fashion item with a short life cycle. However, there are many design patents for designer sunglasses, and companies such as Oakley vigorously enforce them. If there are "fake designer sunglasses at the mall/fair all the time," they may merely be small-time operators that are under the radar (do not assume that they are legit). Finally, selling "inspired" designs that use the original's trademark (such as the CC logo for Coach, the red sole shoes for Louboutin, etc.) could be an infringement or counterfeiting. If you are going to open a store, you should consult with an attorney about your business plan to help you avoid legal pitfalls.

This answer is for informational purposes only. It is not intended as specific legal advice regarding your question. The answer could be different if all of the facts were known. This answer does not establish an attorney-client relationship.

Posted

"Designer inspired" is it now? 17 USC 501 and 15 USC 1114 make that problematic. Inspiration and transformation are fine, counterfeiting and deceiving customers is not. No, I do not buy fake designer sunglasses at the mall/fair all the time. I buy legitimate product.

You are, to put it bluntly, lieing to us. Legitimate stores do not ask if they can sell "replicas", "tribute products", "commemmoratives", or whatever the jargon of the moment is for counterfeit merchandise.

Taking on the heavy hitters of the commercial world in illegal knock-offs is no way to start a "legit" store. And what is that anyway doublespeak like in 1984. Is like like "Bad" to Michael Jackson meant good. Or like "hot" and "cool" mean the same thing?

Check out http://www.iacc.org/ as it will be assisting the cops and the cops, well... they will be coming to take you away, ha ha, ho ho, to the funny farm...." ["funny farm" or as you in your alternate lingo universe would call it "rehabilitation and education facility" - and I would just say pen or prison or jail] Google Victoria Espinel, and decide whether anti-counterfeiting has a high enough profile that you might want to reconsider "designer inspired" merchandise.

Your "legit" store will likely be needing a criminal defense attorney, so I added that to the categories listing at the top.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.