Trademark law, First Amendment, and T-Shirts

US based Aeropostale, Inc. recently filed suit against its Swedish based rival H&M Hennes & Mauritz for trademark infringement in a New York federal court.  Aeropostale is accusing H&M of selling items with Aeropostale’s “Live Love Dream” mark – as well as other trademarks of Aeropostale such as 87 and airplane imagery.

The dispute started with a cease and desist sent to H&M, to which H&M apparently eventually responded to with a first amendment fair use defense.  Aeropostale’s complaint alleges federal claims of infringement, false designation of origin, counterfeiting, state law claims of dilution and deceptive practices and common law unfair competition.

As Fashionista points out here, trademark infringement lawsuits are very expensive and often result in an out of court settlement and the merchandise pulled off the shelf.  It’s the rare case that goes to trial, and the rare company that wants to be subjected to the public scrutiny of an open court proceeding.

It is questionable to what extent the stakes are high for H&M which frankly does not rely on “Live Love Dream”, airplane paraphernalia and the “87” mark to sell its clothes.  H&M’s popularity is driven by its price point, and stylish clothes that largely appeal to a younger retail market – and not “seasonal” logos and trademarks.

H&M’s First Amendment defense will ultimately hinge on whether the goods create a “likelihood of confusion.”  While a First Amendment, or fair use, defense might be conceivable in the context of parody, satire or commentary, it is more difficult to grasp in the context of what H&M might be claiming (i.e. some form of artistic expression in conjunction with the sale of competing goods).  In Rogers v. Grimaldi (2d Cir. 1989) 875 F.2d 994 the Second Circuit outlined an approach to artistic expression which requires courts to construe the Lanham Act “to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”  According to Grimaldi, an artistic work’s use of a trademark that otherwise would constitute trademark infringement under the Lanham Act is not actionable “unless the [use of the mark] has no artistic relevance to the underlying work whatsoever or if it has some artistic relevance unless [it] explicitly misleads as to the source or the content of the work.”

It’s not a helpful standard, but to paraphrase, it simply comes down to whether the consumer is confused (in other words, if the consumer is not confused, it’s artistic expression, but if the consumer is confused, it could not be artistic expression).   Consumer confusion is what a straightforward trademark infringement claim is in the first place.  H&M’s First Amendment argument is a tough one to wrap your head around when both parties are in the same line of business – i.e. selling clothes.  Either way, it’s doubtful the case will go far.  If it does, I will certainly be interested to see how the arguments pan out, especially if H&M has any traction with them.