Not sure how many of you have stumbled across the satirical blog of Rachel Kane, but if you’ve ever endured the shopping experience that is Forever21, you’ll be pleased to pay it a visit. WTForever21.com offers scorned and satisfied shoppers the chance to explore some of the mega-retailer’s “misses.” The clever blogger posts photos of certain Forever21 clothing that might lead a shopper, onlooker, parent, or otherwise, to utter the phrase, “what the F***?”
The above photo, in a blog post dated February 17th, 2012, is accompanied by the title: “She’s A Pro,” and the commentary: “I mean, there is really only one thing to say. …How much?”
This is just one of the numerous posts that caught the eye of Forever21 owners, Do Wan Chang and Jin Sook, who took time out of their busy schedules to send the blogger a cease-and-desist letter in April of 2011. The letter alleged trademark infringement, trademark dilution, unfair competition and copyright infringement, based on the domain name’s use of an “abbreviation of a colloquial expression” in conjunction with their trademarked name. Their registered trademarks are the names, “FOREVER21,” and “XXIFOREVER”. You can see a copy of the actual letter at Jezebel.com.
The company claimed that the blog’s use of a “colloquial expression” (WTF), that offends the public, in conjunction with their name dilutes the value of their trademark; that the blog creates a likelihood of confusion among consumers; and infringement of their copyrights due to unauthorized use of images from the company’s website.
Kane sent two written responses back to the company which went unanswered. The blog remains live to this day. Because of the clause in her response which deems silence permission to remain live, if Forever21 tried to sue now, Kane would be able to defend on the doctrine of estoppel and the court would likely find that since Forever21 had a reasonable opportunity to respond and did not, that they abandoned their claim. (Which was pretty much meritless to begin with)
Let’s look at all the reasons why Forever21
is may be wrong…
Before the claim brought so much attention to the blog, use of the trademarked name was certainly for noncommercial purposes, if not a form of parody. Both of which are good defenses for Kane against infringement (trademark and copyright).
The trademark dilution claim is not exactly fitting either. If a company wants to claim that a defendant diluted their trademark, it is based on the fact that the defendant’s use of the mark creates a likelihood of confusion between their product and the plaintiff’s, based on a similar nature and lesser quality which leads consumers to believe the plaintiff’s trademark embodies a lesser quality. For too many reasons this is just a baseless claim. Forever21′s products are known for being poor in quality, and there is no chance a consumer would mistake Kane’s blog for an actual Forever21 website. This also goes to rebut the unfair competition claim, which would require a similar showing of consumer confusion.
Furthermore, the position taken by the company is just a bit ironic in light of all their prior encounters with intellectual property law. Forever21 has been the subject of over 50 lawsuits from fashion designers who claim they stole their designs. They seem to have a history of stealing from smaller labels, and avoiding the larger ones, like Chanel and Louis Vuitton, who have proven a bit more aggressive with policing their rights. Such designers include the likes of Anna Sui, Dianne Von Furstenburg, Anthropologie, Gwen Stefani, Alexander Wang, and more.
In fact, the company is so prone to designer legal threats, they apparently have a policy in effect to automatically offer 10% of all units sold to a designer that claims the item infringed on their IP rights. Forever21 denies the existence of such a policy, but more information can be found in a great article written about the company’s business model on Bloomberg Businessweek.
Another area of the law that Forever21 seems to have trouble with is labor and employment law, which is closely intertwined with IP law. An Emmy Award-winning documentary went public some years back that depicted the story of three immigrant employees working far under the minimum wage standards in California. The documentary spawned a three year boycott of the company and resulted in the successful legal battle of an employee who sued for fair wages on behalf of herself and 19 other employees. Truly an amazing story of an individual asserting her rights!
Furthermore, there is the question of the First Amendment right to free speech. Fortunately, intellectual property has numerous safeguards built into doctrines and provisions like fair use, which protect defendants against violations of such rights. Regardless, everyone is entitled to his/her opinion, no matter how big a temper-tantrum Forever21 decides to throw. No threats to the bloggers of the world here!