Photo by Artificial Photography on Unsplash
Sam Berten, Associate Member, University of Cincinnati Law Review
I. Introduction
“In fashion, there is a fine, sometimes indistinguishable line separating inspiration and theft.”[1] Since the dawn of time, skilled craftsmen have looked to others in their trade for creativity. Artists have looked at other artists’ styles to develop their approaches; architects have studied buildings to learn how to innovate; novelists have learned structure and character development by reading other authors’ works; and designers have looked at other brands to innovate their own clothing lines. But when does this process go too far? When is an innovator directly copying the predecessor? When should the law step in to protect the predecessor?
These issues are all covered in the dispute between Maria Solange Ferrarini and Ipek Irgit over an exceedingly popular, extensively litigated, crochet bikini.
II. Background
In 2013, Ipek Irgit launched ‘Kiini’ a brand of bikinis that were “handmade-looking . . . with crochet and exposed elastic straps.”[2] The bikini featured “an unexpected array of elements: triangular panels; contrast-color stitching; and most distinctively of all, those vibrant elastic straps threaded through loops of crochet.”[3]
After an initial lackluster launch, the Kiini was brought into the public eye when model Dree Hemingway wore a Kiini in an Instagram post.[4] This catapulted the Kiini into features in prominent fashion magazines, and being sold at the prestigious Barneys department store.[5] By 2015, Kiini sales reached $9 million.[6]
Because of Kiini’s popularity, multiple brands developed their own versions of the crochet bikini, including Victoria’s Secret.[7] In 2015, Irgit’s attorneys sued Victoria’s Secret in the Central District of California for copyright infringement.[8] In March 2017, the two companies agreed to a confidential settlement after Victoria’s Secret decided to leave the swimwear business completely.[9] Fueled by her victory, Irgit then sued Neiman Marcus and two swimwear companies in April, 2018, in the Southern District of New York.[10] “For an upstart brand, one lawsuit was rare. A second was unheard of.”[11] Irgit’s litigiousness was admirable, but the consequences of Irgit’s wide-spread litigation led to the discovery of another key player in this story: Maria Solange Ferranini.
Maria Solange Ferranini, “since 1998 . . . [had] been selling handmade crochet-and-elastic bikinis on the beach, walking up and down the sand with her creations dangling off a hula hoop.”[12] Ferranini’s bikinis are almost a perfect match to the bikinis that Irgit copyrighted.[13] Ferranini lived in Transcoso, which was a huge tourist destination in Brazil; in 2012, “the Daily Mail published photos of the British celebrity Kelly Brook on the beach in Trancoso, wearing one of Ms. Ferrarini’s bikinis.”[14] Yet, because of Irgit’s increasingly-popular Kiini, tourists throughout Transcoso began to believe that Ferrarini was not the creator — the tourists, according to Ferrarini, “said the bikini was from the United States. To my face!”[15]
Another important character in this story is Sally Wu, a product developer and bilingual liaison. Ms. Wu met with Irgit in mid-2012, and Irgit asked her how to replicate a crochet bikini she had brought back from Brazil.[16] Wu said that Irgit told her, “I need to figure out how to copy it.”[17] Later, during the Victoria’s Secret litigation, Irgit told Wu that Wu would likely be subpoenaed and Irgit said, “‘You can’t really tell them I copied.’”[18]
Then there was Jason Forge, who was a federal prosecutor before shifting into private practice, who was given access to Wu’s computer and found an email from Irgit to Wu with photos of the bikini Irgit wanted Wu to reproduce.[19] When Forge zoomed in on the photo he realized that Ferrarini’s signature was on the elastic of the bikini.[20]
In June of 2018, Ferrarini sued Irgit, asserting claims of copyright and trade dress infringement, unfair competition, and common law conversion, amongst a few others.[21] Irgit’s defense team stated that Ferrarini did not initiate legal action in a timely manner and that Ferrarini did not have a valid copyright registration.[22] Irgit argued that “Ferrarini’s bikini is a useful article and that design elements identified by [Ferrarini] in her amended complaint . . . are functional.”[23] This argument is important because copyright protections only “extend to creative, non-functional elements” which are independent from the utilitarian aspects of the article.[24] Thus, Irgit’s argument, if true, would mean that Ferrarini’s copyright for her bikini was invalid.
III. Case Law
It is possible to obtain copyrights for ornamental aspects of clothing items, but courts often disagree over what is ornamental and what is utilitarian. In 1954, the Supreme Court held in Mazer v. Stein that it was possible to copyright ornamental design elements of objects, even if the objects themselves had a utilitarian function.[25] This case set the stage for an expansion of copyright eligibility for objects or items that had a predominantly utilitarian function but also possessed ornamental aspects.
In 2017, the Supreme Court in Star Athletica extended the Mazer standard to ornamental aspects of clothing, holding that “two-dimensional designs . . . [which are] primarily ‘combinations, positionings, and arrangements of elements”[26] are eligible for copyright protection as long the feature “(1) can be perceived as a two – or three – dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.”[27]
The Star Athletica holding built on other earlier clothing-related copyright cases. For instance, in Kieselstein-Cord v. Accessories by Pearl the Second Circuit held that decorative belt buckles satisfied the requirements of originality and creativity necessary to receive a valid copyright.[28] However, there are limitations on this category of copyright rights.
The Fifth Circuit held in Galiano v. Harrah’s Operating Co., Inc., that the plaintiff had to show their designs were “marketable independently of their utilitarian function as casino uniforms . . . but Gianna [did] not demonstrate [Gianna’s] designs describe such material.”[29] Therefore, simply claiming that one’s designs are useful outside of their utilitarian function cannot suffice to attain a valid copyright.
Additionally, Express, LLC v. Fetish Group held that the design on Fetish Group’s tunic possessed valid copyright protection “because the lace and embroidery accents [were] totally irrelevant to the utilitarian functions of the tunic.”[30] Yet the Second District held in Jovani Fashion, Ltd. v. Fiesta Designs that Jovani’s prom dress design, which included sequins, crystals, satin ruching at the waist, and layers of tulle on the skirt, was not copyrightable.[31] The Second Circuit ruled in this manner because the design elements of the dress were not separable from the dress itself because the design “enhance[d] the functionality of the dress as clothing for a special occasion.”[32] Thus, if one were to remove the design elements of the dress, such a removal would “adversely affect the garment’s ability to function as a prom dress.”[33]
IV. Discussion
The case law presents an optimistic outlook for clothing design in that separable design elements are likely to receive copyright protection. However, Congress has not passed legislation designed directly towards protecting fashion designs. Whereas there are clear limitations to the rights afforded in other areas of intellectual property, such as trade dress and design patents, no such clear limits exist for fashion design. Therefore, designers with ornamental designs that do not qualify for copyright protection, such as Jovani, have few options to protect their designs.
Additionally, the clear inequity between Jovani and Express demonstrates that different judges can come to adverse opinions on what truly makes something ornamental or functional. While it may be true that Jovani’s crystals and appliques possessed a more illusory design than an established, small, section of embroidery, the reasoning that the removal of such items would adversely affect the dress’s ability to function as a prom dress seems improper since a prom dress can still function as a prom dress without appliques.
Further, the aforementioned cases were litigated before Star Athletica. Star Athletica clarified the requirements of ornamental design, but there is still room for interpretation within the twin requirements of (1) perceiving a work as a piece of two or three dimensional work of art separate from the useful article and (2) qualifying a work as a protectable pictorial, graphic, or sculptural work either on its own or by imagining it as separate. It is certainly possible that different judges would issue adverse opinions on the same article of clothing.
All of this means that Ferranini’s copyright of her bikini, and subsequently, Irgit’s copyright for her Kiini, could be invalid. Both swimsuits are made with colorful pieces of elastic that are threaded through crochet loops and connected to triangular panels. Under Star Athletica’s first prong, the court must be able to perceive the design elements (likely the elastic pieces in the crochet loops) as a protectable work outside of its use within the bikini. This first hurdle is a substantial one. While it could be argued that the color is the design, or that elastic pieces within the crochet loops is the design, it is hard to imagine how these ‘ornamental’ design aspects could be separated from the utilitarian design of the bikini itself. Imagining arguendo that the design was somehow perceptible as a separable 3-D design in and of itself, the next question would be whether this design was protectable as a pictorial, graphic, or sculptural work on its own or by imagining it as separate from the piece. It is likely that elastic pieces in crochet loops would be unprotected unless it was an art form in and of itself, and while there are certainly artists that work within textiles, it seems possible that a judge would hold that thread in a loop without any further artistic aspect is unprotected. Now, the whole swimsuit could certainly be protectable, but it is likely that judges would be split on how to view the crocheted elastic.
Because both prongs of Star Athletica are dubious, it is likely that courts would split on how to resolve this claim, and whether either bikini is protectable under copyright. This case is certainly unfortunate, and a strong case for appropriation, but the copyright claims appear to be shaky. Both bikinis are just that – bikinis. The bikinis utilize bright colors, and the bikini utilizes a new approach at constructing a bikini, but to restrict others from making bikinis in this way would provide a monopoly to either Irgit or Ferranini on a utilitarian design aspect.
For instance, if a designer was able to copyright a looped scarf, they would be the sole producer of looped scarves in the whole U.S., which would severely hinder other designers who make looped scarves. Unlike Express or Star Athletica, the design elements of the bikinis are not separable from the bikinis themselves, and do not exist on their own. Thus, the bikinis themselves are akin to a looped scarf, innovative, but not copyrightable.
Therefore, this case comes down to trade dress,[34] unfair competition and other causes of action. Trade dress claims can be quite successful if a plaintiff can prove that another is using their exact color scheme or is mirroring the packaging or appearance of their products. Unfair competition is when one profits on another’s hard work, which is certainly an element of this case. But the most successful element of this case might be something outside of the courts entirely – P.R. The press this case has received has likely reduced Kiini’s popularity and brought suspicion to Irgit’s business ethics.
V. Conclusion
The law is designed to bring justice to those who have been wronged. And in this case, Ferranini certainly sounds like a victim of theft. The coincidences between Irgit’s trip to Brazil, her subsequent creation of the Kiini, and the picture she emailed Wu, are so substantial that it seems more likely that this trifecta is not a coincidence at all and instead is a conscious theft of Ferranini’s design. But, it is unclear whether courts would hold that either Ferranini or Irgit’s designs were copyrightable in the first place because the design elements are difficult to separate from the bikini’s design. The designs are not a patch or an emblem, or another kind of easily-separable ornamental design. Because of this issue, it is likely that it would be difficult for judges to decide this case.
Yet, even if Ferranini’s copyright claim fails, she still has recourse in trade dress, unfair competition, and the public backlash that Irgit is receiving. While backlash is hard to qualify or quantify, the significant effect that Ferranini’s story has had within the world of fashion will certainly not go unnoticed. The public is aware that there are too many similarities between the two designs for the Kiini to be coincidental, and Irgit will not walk out of this battle unscathed.
Further, Jeanne M. Heffernan, partner at Kirkland & Ellis, stated that “here you have a woman who appears to have taken the I.P. of someone else and registered it as her own – and then, it seems, had the audacity to sue an industry over something she did not create and may have stolen. If true, it’s breathtaking. I would think Victoria’s Secret would want to take a second look at their settlement.”[35]
This case should issue a fair warning to anyone thinking of appropriating other’s designs – think again.
[1] Katherine Rosman, The Itsy-Bitsy, Teenie-Weenie, Very Litigious Bikini, The New York Times (December 20, 2018), https://www.nytimes.com/2018/12/20/business/kiini-bikini-lawsuit-ipek-irgit-solange-ferrarini.html.
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.
[12] Id.
[13] Id.
[14] Id.
[15] Id.
[16] Id.
[17] Id.
[18] Id.
[19] Id.
[20] Id.
[21] The Fashion Law, The Fight Over Kiini’s Controversial Crocheted Bikini is Coming to a Head in Court, The Fashion Law (2020), https://www.thefashionlaw.com/the-fight-over-kiinis-controversial-crocheted-bikini-is-coming-to-a-head-in-court/.
[22] Id.
[23] Id.
[24] Id.
[25] Mazer v. Stein, 347 U.S. 201, 218, 74 S. Ct. 460, 471 (1954).
[26] Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1007 (2017).
[27] Id. at 1016.
[28] Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 994 (2d Cir. 1980).
[29] Galiano v. Harrah’s Operating Co., 416 F.3d 411, 422 (5th Cir. 2005).
[30] Express, LLC v. Fetish Group, Inc., 424 F. Supp. 2d 1211, 1224 (C.D. Cal. 2006).
[31] Jovani Fashion, Ltd. v. Fiesta Fashions, 500 Fed. Appx. 42, 44 (2d Cir. 2012) cert. denied, 133 S. Ct. 1596 (2012).
[32] Id.
[33] Id.
[34] Trade dress is: “the design and shape of the materials in which a product is packaged. Product configuration, the design and shape of the product itself, may also be considered a form of trade dress. The Lanham Act protects trade dress if it serves the same source-identifying function as a trademark. It is possible to register trade dress as a trademark, but for practical reasons most trade dress and product configurations are protected without registration under 15 U.S.C. § 1125(a).” Trade Dress, Legal Information Institute, https://www.law.cornell.edu/wex/trade_dress.
[35] Rosman, supra note 1.
