Sugartown Worldwide LLC, the owner of the trademark Lilly
Pulitzer and the distributor of the famous fashion brand, is suing Old Navy and
its parent company Gap, claiming that the retailer infringed its copyright when
it sold several models of clothes and fashion accessories bearing prints which
Plaintiff claims were copied from two of its original designs. The case is Sugartown
Worldwide LLC v. Old Navy (Apparel), LLC et al, 1:15-cv-02633.
Lilly
Pulitzer was a Palm Beach socialite who married a member of the Pulitzer
family (as in Pulitzer Prize). She started designing dresses, somewhat by
accident, in the late Fifties. As the
story goes, she opened a citrus juice stand and needed a dress which would
hide stains. The result was a simple shift cut in bright fabrics. The designs often
featured animals, beach themes and sunshine, and used a colorful palette
evoking life under the sun, at least for the well-heeled and well-moneyed.
The company enjoyed great success in the Sixties and Seventies.
After an eclipse, the brand came back in the Nineties, and is still going
strong: the complaint states that there are some one hundred Lilly Pulitzer
stores in the U.S. selling clothes and accessories, which are also sold in some
department stores and online. A Lilly Pulitzer collaboration with discount
retailer Target recently sold
out the first day of its release.
According to the complaint, Plaintiff’s design team created
in 2011, as a work for hire, the “High Tide Design,“
which features the image of a beach, complete with waves and parasols, in blue
tones, with some green and yellow accents. Plaintiff registered this design
with the U.S. Copyright Office. The “High Tide Design” was incorporated in 2012
in several Lilly Pulitzer models of clothes and accessories.
The Lilly Pulitzer design team also created in 2013 a
“Sparks Fly Design,” featuring red sailing boats over a dark blue sea, illuminated
by yellow fireworks (see p. 7 of the complaint).
Plaintiff also registered this design with the U.S. Copyright Office and used
it on some on its models. Some of the products, however, depicted the “Sparks
Fly Design” in different color schemes than the original one, such as dark blue
boats over a white background.
U.S. copyright law does not protect clothes or even
accessories, because they are useful articles, described by the Copyright Act as
articles “having an intrinsic utilitarian
function” and which are not copyrightable. However, fabric designs, if they
are original enough, can be protected by copyright.
The complaint alleges that, in 2015, Old Navy manufactured
and sold clothes and accessories “bearing
a design copied from and substantially similar to the High Tide Design” and
provides images of some of these allegedly infringing goods (see p. 10 of the complaint).
The complaint also shows a side-by-side comparison of a pair of printed women’s
shorts with a Old Navy pair of women’s printed shorts, which the Plaintiff
claims copied the original Lilly Pulitzer design.
The complaint further alleges that Old Navy copied in 2015 the
Sparks Fly Design and manufactured clothes and accessories bearing the firework
print. The complaint provides a side-by-side comparison of a Sparks Fly Design
Lilly Pulitzer model and an Old Navy pair of shorts featuring a firework print.
A plaintiff alleging copyright infringement must convince the
court his protected work was copied by proving that defendant had access to the
protected work. Access is the opportunity to view or to copy plaintiff's work.
A plaintiff must also prove that the original and the allegedly infringing work
are substantially similar.
There is no doubt in our case that Plaintiff could prove
access to its designs, as they were sold to the public in 2011 and 2012. By
showing its original designs side by side with some of the Old Navy models,
Plaintiff is attempting to convince the court that the designs are
substantially similar. The suit was filed in the Northern District of Georgia,
which is part of the Eleventh Circuit, where the courts consider that there is
a "substantial similarity"
between two works if "an average lay
observer would recognize the alleged copy as having been appropriated from the
copyrighted work” (see SunTrust Bank v. Houghton Mifflin Co. at 1266).
This is probably the reason this suit was filed in Georgia,
and not in Pennsylvania which is where Plaintiff has its headquarter, and is within
the Third Circuit, where substantial similarity must be first assessed by
experts before the court may determine “whether
a "lay-observer" would believe that the copying was of protectible
aspects of the copyrighted work (see Dam Things from Denmark at 562).
There is no need for experts in the Eleventh Circuit, and
only the opinion of average lay observers is necessary. The Complaint alleges
that the Old Navy models “are so striking
that consumers and commentators have remarked upon them, referring to the infringing
designs as Lilly Pulitzer “copies”, “dupes”, or “knock offs” and provides as
evidence comments posted on Instagram personal blogs, and Poshmark, a site
allowing users to sell pieces of their wardrobe, marveling about how similar
the Old Navy models are to the original Lilly Pulitzer fabric designs (see here for 30 pages of
such evidence.)
As “an average lay
observer” is, in the Eleventh Circuit, “an
individual who, without any vested interest in the governing issue, is
sufficiently informed and alert to identify precisely the differences in the
competing designs, yet sufficiently informed and independent to fairly identify
and assess the similarities; that is, at a minimum, neither an engaged expert
nor an oblivious passerby” (see John Alden Homes, Inc. v. Kangas at
1344), Plaintiff may have found online a trove of evidence in the chatter of
consumers, who obliviously know the brand, yet are not fashion experts or
professionals. Lilly is not pulling the Web 2.0 punches.
Image of fabrics is courtesy of Flickr user heather under a CC BY-NC-ND 2.0 license
Image of fabrics is courtesy of Flickr user heather under a CC BY-NC-ND 2.0 license
