Fashion weak: fashion show fails to enjoin New York Fashion Week name

Fashion Week, Inc. v. Council of Fashion Designers of
America, Inc., 2016 WL 4367990, No. 16-cv-5079 (S.D.N.Y. Aug. 12, 2016)
FWI sued CFDA for trademark dilution, unfair competition and
false designation of origin, and trademark infringement based on use of of “NEW
YORK FASHION WEEK” and its acronym “NYFW” (“NYFW THE RUNWAY SHOWS” was also
theoretically at issue, but not really pressed; the court didn’t think FWI had
a protectable mark in that phrase).  On
June 28, FWI sought a TRO and a preliminary injunction against the use of these
terms in connection with live semi-annual events in New York during which
fashion designers launch new clothing lines. The court denied these requests.
CFDA’s showcase events date back to 1943 when “Press Week”
was launched, an event dedicated to promoting American designers of women’s fashion.
The semi-annual week-long events in New York “are recognized as one of the four
major fashion weeks in the world.” From 1993-2015, they were formally named
after their location or sponsor, such as “Olympus Fashion Week” and
“Mercedes-Benz Fashion Week,” but in the press and the industry, they were
widely referred to as “New York Fashion Week” from at least 1993 onwards. In 2015,
CFDA went with “New York Fashion Week,” “NYFW,” and “NYFW The Shows,” in promotion
and production of the fashion events, as well as a new domain name, NYFW.com.
FWI produces fashion shows and sells tickets to “consumers
and fashion aficionados,” positioned as “publicly accessible alternatives to [CFDA]
fashion events which are restricted to members of the fashion industry and
media only.” FWI shows are one day long and coincide with the defendants’
semi-annual schedule.  FWI registered NEW
YORK FASHION SHOWS in 2012, and produced three fashion shows under that name,
then in 2013 renamed itself Fashion Week Inc. and applied for NEW YORK FASHION
WEEK on the Supplemental Register.  The
application was granted for online entertainment ticket agency services in 2014.
FWI produced and sold tickets to two fashion shows under the NEW YORK FASHION
WEEK mark—a show in September 2014 and a show in September 2015. Both sold five
hundred tickets and earned $25,000-30,000 in profit. 
FWI applied to register NYFW for online ticket sales for
entertainment and fashion shows in May 2015, after defendants announced their
intention to use NYFW online to promote their fashion events.  The mark issued on the Principal Register in
December 2015.  In August 2015,
defendants sent FWI a C&D “requesting that FWI cease promoting its fashion
shows online in a manner that might mislead consumers into thinking they were
purchasing tickets to the [CFDA] events.” 
In ensuing discussions, FWI offered to transfer its marks and sponsors
to defendants “and threatened litigation, delay, and bad press.” FWI
subsequently filed trademark applications for the marks NEW YORK FASHION WEEK
THE RUNWAY SHOWS, NYFW THE RUNWAY SHOWS, NYFW and NEW YORK FASHION WEEK for
organization of fashion shows for entertainment purposes.
In July 2015, CFDA organized and produced the September 2015
and February 2016 fashion events. In April and June 2016, FWI sent cease and
desist letters to defendants about the marks. 
This litigation resulted. CFDA’s next fashion events were scheduled to
begin on September 8, while FWI didn’t have any fashion shows presently
scheduled; plans to hold an event in February 2017 had been put on indefinite
hold after FWI’s anticipated sponsors severed ties with FWI.
The district court began by assuming that eBay and Salinger required it to reject any presumption of irreparable
injury based on likely success on the merits, even in a trademark case.  This change also changed the significance of
delay, once used to rebut such a presumption. 
Now it’s just a “significant” factor to consider in determining
irreparable harm.  Here, FWI’s delay in
suing and moving for an injunction “argues strongly against granting the
preliminary injunction.”  In January
2015, after all, CFDA had filed a petition to cancel the NEW YORK FASHION WEEK
mark, and the petition included CFDA’s representation that it had made
continuous use of the trademark since at least 1994.  Plus, there was the April 2015 announcement
that CFDA would be using NYFW as part of its domain name and on social media
platforms. In its moving papers, FWI even included a news article from January
2015, reporting that the defendants’ event in September 2015 would be called
“New York Fashion Week.”
FWI argued that its delay was due to investigation and
settlement discussions, but there was no evidence that defendants ever
considered reverting back to a sponsor-based title.  In light of the public announcements, at
least by August 2015, FWI’s belief that CFDA would reverse course was
unreasonable. After the shows in September 2015 and February 2016, FWI knew that
CFDA wasusing the marks it claimed a right to use, but FWI continued to do
nothing.There was no evidence that settlement discussions continued into 2016,
but even if they had, the time between their alleged collapse in January and
June 2016 was too long.
In addition, FWI failed to show actual irreparable
harm.  Loss of control over one’s reputation
is irreparable because this loss “is neither calculable nor precisely
compensable.”  [Note that if this is
really true, we’re back to the presumption of irreparable injury, because
courts have told us that lost control is what confusion means.  If courts acknowledge
that, in fact, what they call confusion is often unlikely to pose significant
risks to the plaintiff’s reputation—perhaps because of the demonstrated
resilience of strong brands—then this claim makes some sense even in a world
without presumptions of irreparable injury, but it does call into question why “confusion”
is defined so broadly.]
Here, FWI didn’t provide sufficient evidence of goodwill
that it could lose.  It only presented
evidence that it used the NEW YORK FASHION WEEK mark in connection with the
September 2015 fashion show, and it didn’t submit evidence of brand loyalty or
recognition in the industry.
Separately, FWI failed to show likely success on the merits—you
can tell from this discussion that there are serious doubts about the validity
of its asserted marks or their extension beyond “online entertainment ticket
agency services.” FWI argued that consumer confusion, evidenced by emails to
FWI seeking to buy tickets to the CFDA events, showed secondary meaning and
harm.  The court thought otherwise—CFDA,
not FWI, was likely to show secondary meaning in these descriptive marks.  Though CFDA didn’t use “NEW YORK FASHION WEEK”
to describe itself until recently, the press and industry did, and it could claim
trademark rights in nicknames.  (Industry
evidence included a declaration from Anna Wintour, FWIW.)
Unsurprisingly, the balance of equities and the public
interest also argued against any injunction. 
An injunction would disrupt the upcoming New York Fashion Week, which
was “an important asset to the New York economy,” and would deprive the public
of a useful term by which to describe the events.

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