Fashion and Intellectual Property

I. Introduction

Miuccia Prada said in an interview: “The job is to do something interesting with ideas … and if it is copied I couldn’t care less.”¹Andrew O’Hagan, “Power of One | Miuccia Prada’s Circle of Influence”, The New York Times Style Magazine (27 May 2013) <https://www.nytimes.com/2013/05/27/t-magazine/power-of-one-miuccia-pradas-circle-of-influence.html>. Gabrielle “Coco” Chanel was reported to have declared that imitation was the highest form of flattery.²Fridolin Fischer, “Design law in the European fashion sector”, WIPO Magazine (February 2008) (citing Paul Morand, L’allure de Chanel (Hermann, 1996)) <https://www.wipo.int/wipo_magazine/en/2008/01/article_0006.html>. It would seem that there is little that is completely new or original in the world of fashion. Over a decade ago, at the awards ceremony of the Council of Fashion Designers of America, author Fran Lebowitz quipped that “homage is French for stealing”.³Guy Trebay, “Ideas & Trends: Fashion Replay; Imitation Is the Mother of Invention”, The New York Times (7 July 2002) <https://www.nytimes.com/2002/07/07/weekinreview/ideas-trends-fashion-replay-imitation-is-the-mother-of-invention.html>. In music, we call it sampling. In other cultural circles, it is known as appropriation. For many fashion brands today, however, they do not simply sit back and enjoy the copying or referencing of their creations by another designer. They are more likely to assert their intellectual property (IP) rights that span the spectrum of trade marks, copyright, patents, registered designs and geographical indications in order to protect their brand investments and businesses.

There are countless books on intellectual property law, numerous books on fashion theory, and a few books on fashion law, but hardly any on fashion and intellectual property. This article is based on a chapter from a new book – Fashion and Intellectual Property – published by Cambridge University Press in August this year. Edited by Professors David Tan (NUS), Jeanne Fromer (NYU) and Dev Gangjee (Oxford), the book assembles a constellation of some of the best known intellectual property scholars around the world to present their analysis of how different aspects of intellectual property laws interact with and regulate the fashion industry.⁴David Tan, Jeanne C Fromer and Dev S Gangjee, Fashion and Intellectual Property (Cambridge, 2025) <https://www.cambridge.org/core/books/fashion-and-intellectual-property/178A899C431CF4598FFBBA92175FB939#fndtn-information>.

II. The Business of Fashion

Fashion is a multi-billion-dollar global business, which is not surprising because of our basic need to wear clothes and shoes. The fashion system thrives on ephemerality, novelty, seduction and hedonism. In 2019, McKinsey reported that research showed that the average person today buys 60 percent more items of clothing than they did 15 years ago. In a survey done in Britain, one in seven consider it a fashion faux-pas to be photographed in an outfit twice.⁵The Business of Fashion and McKinsey & Company, The State of Fashion 2019 (2018) 39.

For the fashion industry around the world, 2020 was the year in which everything changed. At the start of 2020, the luxury fashion industry was enjoying a boom, and then the pandemic hit. In the most recent The State of Fashion 2025 report, fashion executives said that their priorities in 2025 will be dedicated to ‘finding ways to differentiate, whether through new designs, customer experiences or finding new customer niches.’⁶The Business of Fashion and McKinsey & Company, The State of Fashion 2025 (2024) 13. Sustainability is a buzzword in the fashion industry as new regulations in the European Union and the United States will require brands and manufacturers to reduce greenhouse gas emissions and waste; fast fashion houses such as Shein and Temu have already come under scrutiny.⁷The Business of Fashion and McKinsey & Company, The State of Fashion 2024 (2023) 11. According to McKinsey, of the fashion executives survey, “12 percent cite sustainability as a principal opportunity for 2024, placing it at the top of the C-suite agenda.”⁸Ibid 17.

Resale revenue is also expected to grow to US$47 billion by 2025, from US$15 billion in 2022⁹Ibid 44. — 11 times faster than apparel retail overall – and these upcycling and resale businesses are likely to attract the attention of luxury brands such as Chanel and Rolex, which will want to enforce their IP rights.¹⁰E.g. Chanel, Inc. v. Shiver and Duke, LLC, et al., 1:21-cv-01277 (SDNY); Copad SA v Christian Dior Couture SA, Case C-59/08 (ECJ, 23 April 2009). See also ‘Chanel Settles Trademark Suit Against Resaler Site Crepslocker Over its Use of Chanel Name, Logo’ (The Fashion Law, 7 July 2021) <https://www.thefashionlaw.com/chanel-settles-trademark-suit-against-crepslocker-over-resale-offerings/>.

III. Fashion Trends

IP laws have only recently begun to contemplate how fashion studies as a field can bring valuable interdisciplinary insights to the legal domain of copyright and trademarks. Viewed in this way, fashion and IP laws will be inextricably interwoven with the constitutional doctrines of freedom of speech as fashion becomes integral as a form of expression. In the last couple of decades, entrepreneurs and artists such as Haute Diggity Dog, Nadia Plesner, MSCHF and Mason Rothschild have argued that their parodic or artistic appropriations of the symbols of Louis Vuitton, Nike and Hermes constitute protected speech.¹¹E.g. Louis Vuitton Malletier, SA v Haute Diggity Dog LLC, 507 F.3d 252 (4^th Cir. 2007); Plesner v Louis Vuitton Malletier, SA, No.KG ZA 11-294 (Court of the Hague, 21 July 2011); Hermès International v Rothschild, 2022 WL 1564597 (SDNY, 18 May 2022). See also David Tan, ‘The Semiotics of Alpha Brands: Encoding/Decoding/Recoding/Transcoding of Louis Vuitton and Implications for Trademark Laws’ (2013) 32 Cardozo Arts & Entertainment Law Journal 221. Although the IP-freedom of expression tensions do not appear to be relevant in the Singapore context, they are very much alive in IP jurisprudence in the United States and Europe. I will highlight just two key fashion trends here.

A. Hacking/ Downmarket Irony/ Counterfeit Chic

The fashion brand Vetements, (meaning “clothing” in French), was organised as a creative collective by seven designers who initially remained anonymous, but subsequently Georgian creative director Demna Gvasalia became the most profiled designer and was synonymous with the brand. Vetements have proven themselves to be the experts at creating “viral” garments, items that have the irony and popularity of Internet memes, with as much life online as off.¹²Emma Hope Allwood, “The fashion meme: how clothes went viral” (Dazed, 30 March 2016) <https://www.dazeddigital.com/fashion/article/30561/1/the-fashion-meme-vetements-vetememes-viral-clothes-dhl> (hereafter Allwood, “The fashion meme”). The brand’s earlier phenomenal success is intimately tied to its deep understanding of contemporary digital media culture and its adroit social media practices. Gvasalia had arguably brought anti-fashion back to fashion in its Spring-Summer 2016 runway collection when Vetements paraded a DHL T-shirt with a price tag of price tag of £185.¹³Lauren Cochrane, “Scam or Subversion? How a DHL T-shirt became this year’s Must-Have” (The Guardian, 20 April 2016) <https://www.theguardian.com/fashion/2016/apr/19/dhl-t-shirt-vetements-fashion-paris-catwalk>. The Vetements aesthetic is characterised by a “calculated disruption and assault on the status quo” and essentially “taking the products that each individual label is known for or does best (T-shirts for Hanes, heels for Manolo Blahnik) and reworking it à la Vetements, which often amounts to a sort of creative defacement”,¹⁴Ibid. and then charging customers a high price for these.

These “hackings” or reworkings of popular yet often inexpensive products sold by renowned streetwear brands such as Hanes t-shirts, Champion hoodies and Levi’s denim jeans, and the ubiquitous bright yellow DHL logo t-shirts, have also been referred to as the “downmarket irony”: the trend for luxury fashion brands to create designs that have the look of bootleg creations found at cheap market stalls.¹⁵Lauren Cochrane, “It’s a rip-off: Now bootleg logos are a fashion must-have” (The Guardian, 30 December 2017) <https://www.theguardian.com/fashion/2017/dec/30/bootleg-logos-designers-copyright-fashion>. The recent aesthetic objectives for brands like Gucci and Balenciaga appear to be to make their logos look as cheap and as ugly as possible on their clothing, and then charge a high price for these products.

“Logo hacking” was taken perhaps to the extreme by Gucci under the creative direction of Alessandro Michele who possibly started the trend of “self-hacking” amongst the luxury fashion brands. When graffiti artist Trevor Andrew, a.k.a. GucciGhost, who in late 2013 and 2014 scrawled the label’s signatures all over Brooklyn and Manhattan, Gucci did not respond with a copyright-infringement suit or a cease-and-desist order. Instead Michele extended an invitation to Andrew make clothes together, and the collaboration was presented in the Fall-Winter 2016 collection.¹⁶Frank Bruni, “Alessandro Michele, Fashion’s Modern Mastermind” (The New York Times Style Magazine, 15 October 2018) <https://www.nytimes.com/2018/10/15/t-magazine/alessandro-michele-gucci-interview.html>. Logo hacking was taken to the next level when in the Gucci Cruise 2018 collection, perhaps spawning the “counterfeit chic” trend, Michele unveiled the “GUCCY” motif, which created a frenzy on social media, that was a deliberate mocking of poorly made Gucci knock-offs (Figure 1). Indeed Gucci has reclaimed “GUCCY” from the counterfeiters and have turned it into an asset for the brand as it continues to develop clothing, bags and accessories with the “GUCCY” motif alongside its official “GUCCI” logo. It seems that this decision to sell a line of “GUCCY” products, a logo that parodied the luxury industry’s problem with counterfeits and shanzhai products, was perceived to be witty by Chinese consumers who made up 30% of Gucci’s worldwide sales of US$7.2 billion in 2017.¹⁷Susanna Nicoletti, “The New Logo-Restyling Mania. A Risk or an Opportunity in China?” (Jing Daily, 8 January 2019) <https://jingdaily.com/logo-restyling-mania/>; Faith Cooper, “Gucci Strikes Red: China’s Love Affair with Gucci” (Fashion History Timeline, 8 March 2019) <https://fashionhistory.fitnyc.edu/gucci-strikes-red/>. It was a gambit that paid off handsomely. The semiotic sign of “GUCCI” when subverted by its very brand owner to become “GUCCY” is communicating a message that the luxury symbol is cool, hip, irreverent and, most importantly, relevant to the millennial generation.

Figure 1: Official “GUCCY” merchandise by Gucci

On 15 November 2021, Gucci and Balenciaga engaged in a creative contamination of each other’s logos in The Hacker Project – a lucrative series of clothing, bags and accessories that feature both fashion houses playing with each other’s house codes. Emphasising that this was not officially a collaboration, press notes read: “Exploring ideas of authenticity and appropriation, Gucci and Balenciaga motifs merge to create new interpretations of signature pieces.”¹⁸Erica Kagan, “Gucci x Balenciaga ‘Hacker Project’: Not Just Another Collaboration” (Sotheby’s, 3 December 2021) <https://www.sothebys.com/en/articles/gucci-x-balenciaga-hacker-project-not-just-another-collaboration>. (Figures 2 and 3) Other fashion commentators noted: “In many ways, Balenciaga’s portion of The Hacker Project appears like counterfeits one would find on the black market or even random goods stalls in open-air bazaars. And that’s one of the main reasons why this isn’t a collaboration.”¹⁹Azri Jasman, “Creative chaos: Gucci and Balenciaga’s The Hacker Project” (Esquire Singapore, 15 November 2022) <https://www.esquiresg.com/features/hacker-project-gucci-balenciaga-collection-alessandro-michele-demna-gvasalia/>.

Figure 2: The Hacker Project by Gucci

Figure 3: The Hacker Project by Balenciaga

B. Sustainability and Upcycling

“Eco-design”, “sustainable fashion” and “upcycling” are just some of the many words in vogue today in a post-pandemic world. The upcycling trend – which is a creative reuse of old or unwanted materials to make new products – has witnessed artists like the MSCHF group in the United States creating mashups of Hermes Birkin bags and Birkenstock footwear; these Birkinstocks involve cutting up authentic Birkin bags and they are sold for between US$34,000 to US$76,000.²⁰The Fashion Law, “MSCHF Drops the ‘Most Exclusive Sandals Ever Made’, They’re Called Birkinstocks” (The Fashion Law, 8 February 2021) <https://www.thefashionlaw.com/mschf-drops-the-most-exclusive-sandals-ever-made-theyre-called-birkinstocks/>. Chanel has taken Shiver + Duke to court for using buttons bearing the interlocking CC mark from the French brand’s garments and refashioning them into jewellery.²¹The Fashion Law, “Chanel is Suing an Accessories Company Over Jewelry Made from Authentic Logo-Bearing Buttons” (The Fashion Law, 15 February 2021) <https://www.thefashionlaw.com/chanel-is-suing-shriver-duke-over-jewelry-made-from-authentic-logo-bearing-buttons/>. See also Chanel, Inc v Shiver and Duke, LLC, et al, 1:21-cv-01277 (SDNY, complaint filed 12 February 2021).

The luxury resale market is growing rapidly, reaching a total worth of US$25 billion in 2018, and it was expected to grow to US$36 billion in 2021. With the exception of Hamilton International Ltd v Vortic LLC,²²Hamilton International Ltd v Vortic LLC, 13 F.4th 264 (2nd Cir. 2021). where the US Second Circuit Court of Appeals found that defendant Vortic LLC did not run afoul of trademark law by selling restored and modified watches consisting of original Hamilton parts and bearing Hamilton’s branding (as Vortic’s use of the Hamilton trademark is not likely to confuse consumers), most of the upcycling cases have not provided much guidance by way of substantive decisions from the courts.²³The Fashion Law, “Louis Vuitton, Sandra Ling Wind Down Trademark Suit Amid Rise in Upcycling Cases” (The Fashion Law, 7 November 2022) <https://www.thefashionlaw.com/louis-vuitton-sandra-ling-settle-trademark-suit-amid-rise-in-upcycling-cases/>. 

Fashion brands like Louis Vuitton and Chanel have actively pursued litigation against resellers such as The RealReal and What Goes Around Comes Around, but success has been limited especially where the goods are genuine and had not been altered.²⁴Jordan Phelan, “Infringement or Identification?: Nominative Fair Use and the Resale of Luxury Goods” (2022) 97 Fordham Law Review 757. In 2 February 2021, Louis Vuitton sued upcycler Sandra Ling Designs, Inc for selling apparel and accessories made from “material obtained from purportedly authentic pre-owned, disassembled, and deconstructed Louis Vuitton items,” and “purportedly authentic pre-owned Louis Vuitton items that have been fundamentally altered by the addition of decorations such as tassels, stones, or beading” – all of which continue to bear Louis Vuitton’s trademarks.²⁵Louis Vuitton Malletier, SAS, v Sandra Ling Designs, Inc, et al, Case 4:21-cv-00352 (SD Tex, 2 February 2021). Sandra Ling Designs counterclaimed, and sought a declaration from the Court that its sales of the “upcycled” goods amounts to “fair use of LV’s trademarks, and does not constitute an infringement of LV’s trademarks,” arguing that  Louis Vuitton, “through misrepresentation and improper use of its trademarks, sought to prevent [SLD] from making and selling upcycled goods comprising material salvaged from used and discarded but genuine and authentic LV products.” Unfortunately, the dispute was settled in October 2022.²⁶The Fashion Law, “Louis Vuitton, Sandra Ling Wind Down Trademark Suit Amid Rise in Upcycling Cases” (The Fashion Law, 7 November 2022) <https://www.thefashionlaw.com/louis-vuitton-sandra-ling-settle-trademark-suit-amid-rise-in-upcycling-cases/>. See also The Fashion Law, “Chanel Settles Upcycling Suit Over Jewelry Made From Logo-Bearing Buttons” (The Fashion Law, 18 November 2022) <https://www.thefashionlaw.com/chanel-settles-upcycling-suit-over-jewelry-made-from-logo-bearing-buttons/>; The Fashion Law, “Rolex, La Californienne Get Court’s Approval on Settlement Over ‘Counterfeit’ Modified Watches” (The Fashion Law, 1 June 2020) <https://www.thefashionlaw.com/rolex-la-californienne-get-courts-approval-on-settlement-over-counterfeit-modified-watches/>. MAD Paris, however, has established itself as the upcycler par excellence, customising highly covetable iconic luxury watches such as the Rolex Daytona and Audemars Piguet Royal Oak, affixes its own logo on the dial of the watches alongside the original logos, and selling them at a premium over the original watches. For instance, MAD’s black matte finish version of the Rolex Datejust 41 was going for US$34,500 while a regular Rolex model in yellow gold and steel with diamond hour markers was selling for a significantly lower US$14,450. ²⁷Alex Rose, “MAD Paris & Rolex is a Match Made in Custom Heaven” (Highsnobiety, August 2022) <https://www.highsnobiety.com/p/mad-paris-rolex/>; Martin Lerma, “MAD Paris Reimagined the Rolex Datejust with a Matte Black Finish” (Robb Report, 8 August 2020) <https://robbreport.com/style/watch-collector/mad-paris-rolex-datejust-black-blue-palette-2942001/>. MAD Paris displays the following disclaimer prominently on its website: “Watches displayed are second hand watches, personalised upon order, independently and with great care by craftsmen. Unless stated, MAD is not official distributor nor partners from those watches brands. Original warranties are not valid anymore, only is the one MAD offers.”²⁸MAD Paris <https://www.mad-paris.com/>.

Nonetheless, in 2024, Chanel won its trademark infringement lawsuit in New York against a luxury online reseller What Goes Around Comes Around (WGACA) with a unanimous jury ruling in favour of Chanel and awarding $4 million in statutory damages; in February 2025, Chanel succeeded in securing a permanent injunction that restrains WGACA’s use of its marks. Similarly, in 2024, Rolex succeeded in the US Fifth Circuit Court of Appeals, in obtaining an injunction against BeckerTime for using non-genuine bezels and non-genuine dials on Rolex-branded watches.

While these upcycling cases do not implicate freedom of expression concerns, MSCHF, the Brooklyn collective known as “the Banksys of consumer culture”²⁹Vanessa Friedman, “$76,000 Birkinstocks Made From Actual Birkin Bags?” (The New York Times, 8 February 2021) <https://www.nytimes.com/2021/02/08/style/MSCHF-birkenstocks-birkin-bags-hermes.html> (hereafter Friedman, ‘Birkinstocks’). that launched the controversial Satan Shoes (where MSCHF injected the soles of 666 pairs of Nike shoes with red ink and a single drop of human blood)³⁰Nike, Inc v MSCHF Product Studio, Inc, Case 1:21-cv-01679 (EDNY, 29 March 2021). See also The Fashion Law, “Nike, MSCHF Settle 2-Week-Old Lawsuit Over Allegedly Infringing ‘Satan Shoes’” (The Fashion Law, 8 April 2021) <https://www.thefashionlaw.com/nike-mschf-settle-2-week-old-lawsuit-over-allegedly-infringing-satan-shoes/>. and Birkinstocks (Birkenstock-like footwear with an official Birkenstock cork-and-rubber sole, but with a leather upper made from purposefully chopped-up Hermès Birkin bags)³¹Birkinstock <https://birkinstock.shoes/>. may just be able to avail itself of a free speech defence. Daniel Greenberg, a founding team member at MSCHF, said that the MSCHF team bought four Hermes Birkin bags on resale sites for a total of US$122,500 and then disassembled the purses to use them as the material for the slip-on shoes.³²Celia Fernandez, “A company is selling Birkenstock-inspired sandals made from Birkin bags for up to $76,000” (Insider, 11 February 2021) <https://www.insider.com/birkinstock-shoes-birkenstock-hermes-birkin-bag-sandals-reactions-2021-2>. Regrettably, the Nike lawsuit has been settled whilst the Birkinstocks are sold out without nary a squeak from either Hermes or Birkenstock.

Moving ahead, one would have to distinguish between potentially permissible expressive artistic upcycling (such as MSCHF’s Birkinstocks) and perhaps impermissible commercial recycling (Shiver + Duke’s costume jewellery using buttons bearing the Chanel CC mark). Such uses present new issues in trademark law regarding trademark exhaustion, infringement and dilution.

IV. What these Fashion Trends Mean for IP Rights Enforcement

A. Understanding the Meanings of Marks and Works

It has been said that famous marks or well-known brands like Louis Vuitton, Apple and Nike are alpha brands that carry significant “semiotic freight,” and they possess particular configurations of meanings and can “offer peculiarly powerful affirmations of belonging, recognition, and meaning in the midst of the lives of their [consumers].”³³Tan, “Semiotics of Alpha Brands”, above n 11, 224. For famous fashion marks, the brand signifier/signified relationship would have become universally codified for the consuming public; these consumers will automatically and consistently think of the coded brand meanings and values (the signified) when they are exposed to the signifiers such as the logo. Thus the brand logo or trademark becomes a sign for a predetermined set of cultural codes and consumer experiences associated with the brand. When Gucci introduces the subverted sign “GUCCY” alongside the ubiquitous well-loved “GUCCI” or when it juxtaposes the “GG” logo with “BALENCIAGA” in The Hacker Project collection, it is drawing on the consuming public’s familiarity with the affective encoded meanings associated with Gucci, and advancing a new cultural narrative that resonates better with the millennial generation evident by the increased sales. The signs are also protected by copyright law – e.g. the Hermes logo, which comprises of a Duc carriage attached to a horse, is also an artistic work. Like trademarks, these copyrighted works function in a similar manner as semiotic signs with connotative values,³⁴This semiotic aspect of copyrighted works have been discussed at length in a number of my writings and will not be revisited here. See David Tan, “Intellectual Property and Semiotics: The Signs of the Times” in Irene Calboli and Maria Lillà Montagnani (eds), Handbook on Intellectual Property Research: Lenses, Methods, and Approaches (OUP 2020) 372; David Tan, “Semiotics and the Spectacle of Transformation in Copyright Law” (2017) 30(4) International Journal for the Semiotics of Law 593. and unauthorised uses are likely to be subject to a fair use analysis that evaluates the extent to which the new work “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”³⁵Campbell v Acuff-Rose Music Inc, 510 US 569, 579 (1994); Google LLC v Oracle America, Inc, 141 S.Ct 1183, 1202 (2021).

For copyright-protected works, they may be imbibed with similar semiotic connotations. Cartoon characters such as Mickey Mouse, Snow White and Sleeping Beauty, well-known superhero characters such as Superman, Captain America and Wonder Woman, as well as fictional characters from popular television series like Star Trek, can contain subject positions and models for identification that are heavily coded ideologically.³⁶See generally David Tan, “The Transformative Potential of Countercultural Recoding in Copyright Law: A Study of Superheroes and Fair Use” in Irene Calboli and Srividhya Ragavan (eds), Diversity in Intellectual Property: Identities, Interests and Intersections (2015) 403. Therefore when Barneys New York featured Disney cartoon characters in its 2012 Electric Holiday film, and when Balenciaga tapped into the cultural connotations of The Simpsons for its Spring-Summer 2022 collection, the fashion brands were drawing on the public’s familiarity with these signs in order to advance their brand narratives.

Due to the constraints of this short article, I shall only be able to highlight how the enforcement of copyright and trademark rights by fashion brands are likely to clash with freedom of speech/expression interests.

B. Copyright

Parodies abound in the world of fashion. We all love a good laugh. But we often loathe others having a laugh at our expense. Parody enjoys an exalted protected status in IP jurisprudence, and courts generally are concerned that the enforcement of IP rights does not have a chilling effect on free speech.³⁷Eg Campbell v Acuff-Rose Music Inc, 510 US 569 (1994); Deckmyn v Vandersteen, Case C-201/13 (CJEU, 3 September 2014). In countries that do not have an open-ended fair use provision, the fluidity of “parody” to morph into “satire”, “caricature”, “pastiche” or other related genres may result in an infringing work losing its requisite sting to enable it to fall within the protection of the categorical fair dealing exception of criticism or review of the original work.³⁸See Copyright, Designs and Patents Act 1988 s 30 (UK); Copyright Act 1968 (Cth), s 41 (Australia); Copyright Act (Cap 63), s 36 (Singapore); Copyright Ordinance (Cap 528), s 39(1) (Hong Kong). The various copyright law reform reports from Australia,³⁹Australian Law Reform Commission, Copyright and the Digital Economy: Final Report, ALRC Report 122 (2013). the UK⁴⁰Ian Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth (2011) (“Hargreaves Report”). and Hong Kong⁴¹Legislative Council Panel on Commerce and Industry, Treatment of Parody under the Copyright Regime (2014). over the last decade have all either advocated the enactment of an open-ended fair use provision like in the US (and more recently Singapore) or a categorical fair dealing exception broad enough to cover parody and its related genres of humour. Unlike the categorical provisions in the UK, Australia or Hong Kong,⁴²See Copyright, Designs and Patents Act 1988, s 30A(1) (UK); Copyright Act 1968 (Cth), s 41A (Australia) Copyright Ordinance (Cap 528), section 39A (Hong Kong). under the Singapore Copyright Act, the open-ended fair use provisions in sections 190-191 can adequately evaluate all forms of humour and artistic commentaries without the need for antecedent categorisation.⁴³Copyright Act 2021 (2020 Rev Ed).

In many cultures, humour has traditionally been given significant leeway to say and do things that would otherwise not be permitted; parody, satire, caricature and pastiche (PSCP) depend on “the perceived resolution of incongruities, employing non-seriousness and irony to convey complex meanings … and from the use of nonsense and illogic.”⁴⁴Conal Condren, Jessica Milner Davis, Sally McCausland and Robert Phiddian, “Defining parody and Satire: Australian copyright law and its new exception: Part 2 – Advancing ordinary definitions” (2008) 13 Media & Arts Law Review 401, 404-5. The fashion trends highlighted in the earlier sections often display different degrees and combinations of PSCP evident from the trends of logo hacking and shanzhai practices.

A parody must invoke or copy a significant proportion of the original work or mark in order for the parody to be effective. While the critical message in a parody that comments directly on the original work or its author can be easily discerned, the ideas expressed in other forms of humorous works such as satire, caricature and pastiche may be more obtuse. In an oft-quoted passage, the US Supreme Court in Campbell v Acuff-Rose Music cryptically mused:

Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s (or collective victims’) imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing.⁴⁵Campbell v Acuff-Rose Music, Inc, 510 US 569, 580-81 (1994).

In the evaluation of the degree of transformativeness under the first factor of a fair use analysis, copyright law tends to make a clearer distinction between a parody (which targets the original work) and a satire (which uses the original work as a weapon to target something else). This is a complex fact-intensive inquiry, and by no means an easy feat to discern the requisite degree of transformation needed, as recent cases before the US Supreme Court and Circuit Courts of Appeals have demonstrated.⁴⁶E.g. Andy Warhol Foundation for the Visual Arts, Inc v Goldsmith, 598 US 508 (2023) (“Andy Warhol Foundation”); Google LLC v Oracle America, Inc, 141 S.Ct 1183 (2021); Dr Seuss Enterprises LP v ComicMix LLC, 983 F.3d 443 (9th Cir. 2020); Authors Guild v Google, Inc, 804 F.3d 202, 220 (2nd Cir. 2015); This decision on “transformative use” was also cited by the Singapore Court of Appeal with approval in Global Yellow Pages v Promedia Directories.⁴⁷Global Yellow Pages Ltd v Promedia Directories Pte Ltd (2017) SGCA 28; (2017) 2 SLR 185 at (81)-(84).

In order to avail oneself of the fair use defence, the commentary on a fashion brand does not have to be direct and critical, can be commercial in nature, but should at least offer some “new information, new aesthetics, new insights and understandings”⁴⁸Blanch v Koons, 467 F.3d 244, 251-2 (2nd Cir. 2006); Cariou v Prince, 714 F.3d 694, 706 (2nd Cir. 2013). vis-à-vis the original work. US Second Circuit courts have considered a broader examination of transformation that does not require the presence of comment so long as the purpose in using the original work is “plainly different from the original purpose for which it was created”⁴⁹Bill Graham Archives v Dorling Kindersley Ltd, 448 F.3d 605, 609 (2nd Cir. 2006); Blanch v Koons, 467 F.3d 244, 252-3 (2nd Cir. 2006). and have “given weight to an artist’s own explanation of their creative rationale when conducting the fair use analysis”.⁵⁰Blanch v Koons, 467 F.3d 244, 255 (2nd Cir. 2006). It should be noted that in the recent decision of Andy Warhol Foundation for the Visual Arts Inc v Goldsmith, the Second Circuit Court of Appeals warned against a “celebrity-plagiarist privilege” and clarified that “[i]t does not follow, however, that any secondary work that adds a new aesthetic or new expression to its source material is necessarily transformative.”⁵¹Andy Warhol Foundation for the Visual Arts, Inc v Goldsmith, 992 F.3d 99, 111, 115 (2nd Cir. 2021). The decision was affirmed on appeal to the Supreme Court, where the majority commented that a use may be justified because copying is reasonably necessary to achieve the user’s new purpose:

An independent justification like this is particularly relevant to assessing fair use where an original work and copying use share the same or highly similar purposes, or where wide dissemination of a secondary work would otherwise run the risk of substitution for the original or licensed derivatives of it.⁵²Andy Warhol Foundation, 598 US 508, 532 (2023).

In respect of the first factor, the Supreme Court was careful that one does not adopt an overly broad notion of transformativeness, and that “the meaning of a secondary work, as reasonably can be perceived, should be considered to the extent necessary to determine whether the purpose of the use is distinct from the original, for instance, because the use comments on, criticizes, or provides otherwise unavailable information about the original.”⁵³Andy Warhol Foundation, 598 US 508, 544-5 (2023). While the Ninth Circuit has rejected a narrow requirement of commenting or criticising the original work in order to qualify as transformative use,⁵⁴Perfect 10 Inc v Amazon.com Inc, 508 F.3d 1146, 1165 (9th Cir. 2007) (a search engine puts images “in a different context” so that they are “transformed into a new creation”); Kelly v Arriba Soft Corp, 336 F.3d 811, 819 (9th Cir. 2003) (Arriba’s use of thumbnails was transformative because “Arriba’s use of the images serve(d) a different function than Kelly’s use – improving access to information on the internet versus artistic expression”). it has insisted that the “new expression must be accompanied by the benchmarks of transformative use.”⁵⁵Dr Seuss Enterprises LLP v ComicMix LLC, 983 F.3d 443, 453-4 (9th Cir. 2020).

What this means for high fashion brands like Gucci, Balenciaga, Vetements and Moschino is that they do not have carte blanche to appropriate iconic copyright-protected works such as Disney characters or Marvel superheroes as part of their performative narratives. They have to clearly evince a different purpose from the original – not simply impose a different aesthetic – and judging from the US Supreme Court’s decision in Andy Warhol Foundation, some commentary or criticism or new information about the original work is required for the unauthorised use to be a fair one.

B. Trademarks

In the last two decades, luxury fashion brands, particular Louis Vuitton, are traditionally notorious for aggressively sending cease-and-desist letters and filing claims against parodists, albeit with limited success.⁵⁶E.g. Louis Vuitton Malletier, SA v Haute Diggity Dog LLC, 507 F.3d 252 (4th Cir. 2007) (“Chewy Vuiton”); Louis Vuitton Malletier, SA v My Other Bag Inc., 674 Fed Appx 16, No. 16-241-cv (22 Dec 2016) (“My Other Bag”); Louis Vuitton Malletier, SA v Hyundai Motor America (2012 WL 1022247 (SDNY 22 March 2012); Louis Vuitton Malletier, SA v Akanoc Solutions, Inc., 591 F.Supp.2d 1098 (ND Cal. 2008); Louis Vuitton Malletier, SA v Dooney & Bourke, Inc., 454 F.3d 108 (2nd Cir. 2006); Plesner v Louis Vuitton Malletier, SA, No.KG ZA 11-294 (Court of the Hague, 21 July 2011); Brian Farkas, “Louis Vuitton v. U Penn” (GS2Law, 12 March 2012) <http://gs2law.com/louis-vuitton-v-u-penn/> accessed 15 November 2020. The US First Circuit Court of Appeals described parody as “a humorous form of social commentary and literary criticism …[that] seeks to ridicule sacred verities and prevailing mores”⁵⁷LL Bean Inc v Drake Publishers Inc, 811 F.2d 26, 29 (1st Cir. 1987). thus implicating First Amendment concerns. Parody may thus be seen as contributing valuable commentary and criticism to the marketplace of ideas, or advancing democratic debate on matters of public interest through the use of irreverent humour. Typically, the presence of parody makes it difficult for a luxury fashion brand to succeed in both trademark and copyright infringement lawsuits.

The bars for trademark dilution by blurring and tarnishment are also high ones in US law, particularly when First Amendment free speech concerns are triggered by a parody. Regarding blurring, it appears that a parody only serves to strengthen the original famous mark. In Louis Vuitton Malletier, SA v Haute Diggity Dog LLC, where Louis Vuitton sued a dog toy manufacturer for its Chewy Vuiton product, the Fourth Circuit Court of Appeals held:

While a parody intentionally creates an association with the famous mark in order to be a parody, it also intentionally communicates, if it is successful, that it is not the famous mark, but rather a satire of the famous mark. … Indeed, by making the famous mark an object of the parody, a successful parody might actually enhance the famous mark’s distinctiveness by making it an icon. The brunt of the joke becomes yet more famous.⁵⁸Chewy Vuiton, 507 F.3d 252, 267 (4th Cir. 2007). See also Starbucks Corp. v Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 112-3 (2nd Cir. 2009).

The US courts generally have found that a trademark may be tarnished when it is “linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context,” with the result that “the public will associate the lack of quality or lack of prestige in the defendant’s goods with the plaintiff’s unrelated goods.”⁵⁹Hormel Foods Corp. v Jim Henson Productions, 73 F.3d 497, 507 (2nd Cir. 1996) (citing Deere & Co. v MTD Productions, Inc., 41 F.3d 39, 43 (2nd Cir. 1994)). More recent cases narrowed tarnishment to comprise the sale of “sexual toys, videos and similar soft-core pornographic products.”⁶⁰V Secret Catalogue v Moseley, 605 F.3d 382, 388 (6th Cir. 2010).

Indeed in Chewy Vuiton, Louis Vuitton did not take kindly to a range of fluffy dog toys that evoked its “LV” and Monogram marks; other brands, such as Prada, Chanel and Tiffany & Co which were similarly parodied, chose to do nothing about it.⁶¹Chewy Vuiton, 507 F.3d 252 (4th Cir. 2007) Louis Vuitton later argued that a tongue-in-cheek reference to its covetable status as a luxury brand in My Other Bag’s canvas tote bags was not a type of recoding that should be deemed protectable parody; again the other brand owners did not sue, and naturally Louis Vuitton did not prevail before the Second Circuit Court of Appeals.⁶²My Other Bag, 674 Fed Appx 16, No 16-241-cv (22 Dec 2016). The defendant My Other Bag, Inc. (MOB) sells simple canvas tote bags with the text “My Other Bag …” on one side and cartoonish drawings meant to evoke iconic handbags by luxury designers, such as Louis Vuitton, Chanel, and Hermes, on the other. These drawings depict easily recognisable handbags such as the Louis Vuitton Speedy and Hermes Birkin – a reference to hypermodern consumption, performative luxury and the desire for Veblen goods. The New York District Court acknowledged the presence of cultural commentary in MOB’s totes:

its very name—are a play on the classic “my other car …” novelty bumper stickers, which can be seen on inexpensive, beat up cars across the country informing passersby—with tongue firmly in cheek—that the driver’s “other car” is a Mercedes (or some other luxury car brand). The “my other car” bumper stickers are, of course, a joke—a riff, if you will, on wealth, luxury brands, and the social expectations of who would be driving luxury and non-luxury cars. MOB’s totes are just as obviously a joke …⁶³Louis Vuitton Malletier, SA v My Other Bag, Inc., 156 F.Supp.3d 425, 430 (SDNY 2016).

Louis Vuitton’s claims were all dismissed by the court. The Court noted that “MOB markets its bags as ‘[e]co-friendly, sustainable tote bags playfully parodying the designer bags we love, but practical enough for everyday life’”⁶⁴Ibid 431. and found that the parody as “fair use” defence under 15 U.S.C. § 1125(c)(3) applied. The court further held that even if MOB’s use of Louis Vuitton’s marks did not qualify as fair use under 15 U.S.C. § 1125(c)(3), the tote bags nevertheless pose no danger of impairing the distinctiveness of Louis Vuitton’s marks.⁶⁵Ibid 438-440. On appeal, the Second Circuit unanimously upheld the decision in a brief judgment that endorsed a broad definition of parody (which appears to encompass satire) in trademark law, commenting that the fact that “the joke on LV’s luxury image is gentle, and possibly even complimentary to LV, does not preclude it from being a parody.”⁶⁶My Other Bag, 674 Fed Appx 16, No 16-241-cv (22 Dec 2016) at (18).

The US decisions have demonstrated a willingness on the part of the courts to accept a semiotic reading of trademarks as cultural signs when assessing likelihood of confusion for trademark infringement or evaluating the availability of the non-commercial use exception in a trademark dilution claim for the purposes of parody, satire or political speech. US Circuit Courts of Appeals have generally declined to find liability against defendants who engaged in non-illegal cultural jamming: Aqua’s Barbie Girl,⁶⁷Mattel, Inc. v MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002). Thomas Forsythe’s Barbie photographs,⁶⁸Mattel, Inc. v Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003). Haute Diggity Dog’s Chewy Vuiton dog toy⁶⁹Chewy Vuiton, 507 F.3d 252 (4th Cir. 2007). and of course, My Other Bag’s tote bags depicting drawings of Louis Vuitton bags.⁷⁰My Other Bag, 674 Fed Appx 16, No 16-241-cv (22 Dec 2016). It should be noted that in an era of brand collaborations, a humorous dig by MSCHF at Vans sneakers may be likely to cause consumer confusion.⁷¹Vans, Inc. v MSCHF Product Studio, Inc., 88 F.4th 125 (2nd Cir. 2023).

By reclaiming the counterfeit, heritage brands today are potentially extending their trademark rights into realms where consumers hitherto may not have been confused as to the origin. More recently, we are witnessing obvious efforts by Alessandro Michele (formerly at Gucci, now at Valentino) and Demna Gvasalia (formerly at Balenciaga) to self-disrupt the image that the heritage brands have meticulously cultivated over the decades. Jeanne Fromer calls this “trade mark ownfringement”.⁷²Jeanne C Fromer, “Trade Mark Ownfringement” (2023) Singapore Journal of Legal Studies 342. By selling authentic merchandise with shanzhai-inspired misspellings such as “GUCCY” or fake-looking logos which are different from the conventional font used to depict the word mark that consumers are accustomed to, these acts of self-disruption may result in enhancing a finding of a likelihood of confusion or actual confusion for the consumers of Gucci or Balenciaga when they are confronted with shanzhai products. If one accepts the view that the inauthenticity of shanzhai luxury fashion goods “strengthens the status hierarchies articulated by possession of ‘real’ luxury goods and makes those goods more desirable”,⁷³Barton Beebe, “Shanzhai, Sumptuary Law, and Intellectual Property Law in Contemporary China” (2014) 47 UC Davis Law Review 849, 864. then the disruption of this sumptuary code by brands like Gucci and Balenciaga will result in a blurring of the distinction.⁷⁴Shanzhai fashion products may arguably be perceived as a commercial parody that is sufficiently robust to “prevent the confusion necessary for infringement under trade mark law, which requires the observer to be caused to wonder whether the infringing product originates from the registered owner”. See Jani McCutcheon, “Designs, Parody and Artistic Expression – A Comparative Perspective of Plesner v Louis Vuitton” (2015) 41 Monash University Law Review 191, 241 (internal citations omitted) (discussing examples of two- and three-dimensional products parodying familiar trademarks). When luxury brands “appropriate” these shanzhai depictions for themselves, consumers may not be able to easily distinguish a self-parody and a shanzhai commercial parody. Moreover, a luxury brand engaging in downmarket irony and playing with the cultural symbolism of the pedestrian logos such as Ford and DHL without a clear parodic message may expose itself to trademark infringement and dilution lawsuits.

V. Conclusions

It is not surprising that many luxury fashion brands protect their IP rights with great tenacity and rigour, and they will be expected to continue on this path.⁷⁵However, there are others who may resort to extralegal responses and remedies within their own close-knit communities. The prominence of the “self-help” phenomenon has been discussed in recent literature. See Amy Adler and Jeanne C Fromer, “Taking Intellectual Property into Their Own Hands” (2019) 107 California Law Review 1455. With deep pockets and an army of top lawyers, brands like Hermes and Louis Vuitton will not even tolerate any parodic or satirical commentary that involve the use of their hallowed marks whether in the physical world or the metaverse, even though they are beginning to redefine their own luxury ideologies.⁷⁶Emily Huggard, Patrick Lonergan and Anja Overdiek, “New Luxury Ideologies: A Shift From Building Cultural to Social Capital” (2022) Fashion Theory (published online) (DOI: 10.1080/1362704X.2022.2117008). When Haute Diggity Dog and My Other Bag appropriated the LOUIS VUITTON marks to comment on a societal obsession with luxury goods and status symbols, the defendants were relying on the public’s understanding of the semiotic values of a fashion cultural icon in order to get the joke – and the critique – behind the merchandise; it is a humorous jab at our hypermodern condition of overconsumption.⁷⁷As Furman J so astutely observed: “In some cases, however, it is better to ‘accept the implied compliment in (a) parody’ and to smile or laugh than it is to sue … MOB’s use of Louis Vuitton’s marks in service of what is an obvious attempt at humor is not likely to cause confusion or the blurring of the distinctiveness of Louis Vuitton’s marks; if anything, it is likely only to reinforce and enhance the distinctiveness and notoriety of the famous brand.” Louis Vuitton Malletier, SA v My Other Bag, Inc, 156 F.Supp.3d 425, 445 (SDNY 2016).

One would have to carefully evaluate the zeitgeist and make important – and correct – policy and balancing choices when enforcing IP laws. As scholars continue to explore and define new theories to make sense of fashion in the 21st century, and as lawyers grapple with divergent IP doctrines across jurisdictions, I hope this book would have introduced sufficient interesting and valuable perspectives for both parties to confidently step into each other’s worlds emboldened with new vocabularies to confront the fascinating world of fashion.

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