The makers of “Miss Me” and “Rock Revival” brand jeanswear recently secured a preliminary injunction against LA Idol Fashion by persuading a federal judge that the rear-pocket designs on some of LA Idol’s high-end jeans likely infringed upon their rights in their own pocket designs. Sweet People Apparel, Inc. v. LA Idol Fashion, Inc., No. 2:11-cv-06849 (CD Cal. Oct. 11, 2011). In issuing the injunction, the California federal court ruled that the plaintiffs had successfully demonstrated a likelihood of success on their copyright and trademark infringement claims and barred the defendant from selling the allegedly infringing apparel.

Sweet People Apparel, Inc. and RCRV, Inc. filed suit in August, alleging that LA Idol was selling “studied imitations” of their copyrighted and trademarked designs. Sweet People owns valid copyrights and trademarks in its covering wing, fleur de lis, sparkle cross, and beaded cross designs, which are used on its “Miss Me” line of jeans. Likewise, RCRV has a registered trademark in the inverted fleur de lis design it uses in connection with its “Rock Revival” jeanswear. Together, the plaintiffs’ lines have totaled nearly $100 million in sales since 2008.

To secure a preliminary injunction, a plaintiff must show: (1) a likelihood of success on the merits; (2) a likelihood of irreparable harm in the absence of an injunction; (3) that a balance of the hardships favors the plaintiff; and (4) that the issuance of an injunction would further the public interest. US District Judge Stephen Wilson held that the plaintiffs had satisfied each element, rejecting LA Idol’s argument that the plaintiffs’ registered copyrights and trademarks were invalid and that their designs were therefore unprotectable.

Specifically, in assessing the plaintiffs’ likelihood of success on their infringement claims, the court found that LA Idol’s designs were practically identical to Sweet People’s copyrighted designs, thus strongly suggesting that copying had occurred and giving rise to a prima facie case of copyright infringement. Further, the court reasoned that the plaintiffs’ continuous use of their trademarks for more than five years demonstrated that the marks had acquired distinctiveness through secondary meaning. This led the court to conclude that the defendant’s failure to rebut the plaintiffs’ otherwise strong showing of a likelihood of confusion meant that the prima facie case of trademark infringement had been satisfied.

The court also held that the plaintiffs would suffer irreparable harm from the defendant’s continued sale of infringing designs in close proximity to and at lower prices than the plaintiffs’ products, reasoning that without an injunction, the plaintiffs would lose the ability to control the market reputation of their recognizable and valuable brands. In terms of balancing the relative hardships, Judge Wilson found that the plaintiffs’ substantial investments in establishing good will in their designs far outweighed the disruption an injunction would cause the defendant—that is, the inability to sell a mere fraction of its inventory, namely, those products that likely infringe upon the plaintiffs’ intellectual property. Lastly, the court held that injunctive relief would further the public interest in avoiding consumer deception.

This case is noteworthy for its protection of the plaintiffs’ designs under both trademark and copyright law, a long sought after, but elusive, result in the fashion industry. In particular, the court rejected the argument that Sweet People’s designs were entitled to only “thin” copyright protection, noting instead that the plaintiff’s “unique expressions of common motifs” enjoy “strong” copyright protection, particularly where its designs “do not impact another’s ability to create its own unique expression of the underlying motif.”

Arent Fox is continuing to monitor this case. For more information on copyright or trademark infringement in general, please contact Anthony Lupo, Sarah Bruno, or Anthony Peluso.