Call it a David and Goliath story. The teen retailer Aeropostale has filed a lawsuit against H&M over the use of its trademarked "Live Love Dream" phrase on some of its clothing and accessories. According to Aeropostale's complaint, it contacted the Swedish retailer in March after discovering that it had used the phrase without authorization. H&M failed to pull the merchandise, spurring on Aeropostale to take the issue to court.
“Despite receiving this notice, and subsequent notice that is also infringing other marks owned by Aeropostale Procurement, H&M continues to display and/or sell products bearing numerous trademarks owned and used by Aeropostale,” the complaint reads.
So why would Aeropostale take on H&M? Susan Scafidi, a fashion law professor at Fordham Law, notes that clothing companies send letters threatening lawsuits constantly and that the vast majority of altercations like this are settled outside of court, with the company at fault possibly pulling the offending merchandise and paying a settlement.
According to Stephen Lott, an intellectual property lawyer at Lott & Fischer in Miami, the suit is likely not about recouping any profit losses that Aeropostale has suffered in the last year, since the litigation cost of even getting to a verdict can be in the hundreds of thousands of dollars. Big companies don't file this kind of suit expecting a large monetary reward.
The issue at hand, Lott says, is Aeropostale's desire to protect its brand from becoming diluted. Because the retailer trademarked the phrase "Live Love Dream," it has to enforce its rights against other brands that use similar marks — if Aeropostale doesn't go after H&M now, its ability to combat future infringers weakens.
Aeropostale is likely taking this case to court for a few reasons, Scafidi says. The first is that the two mass market retailers compete for the same customer.
"It might be a little different if we had a very high-end company and a very low-end company," Scafidi says. "Rivalries at a similar level are very bitter. Think Christian Louboutin suing YSL over its red soles. A company decides to pull the trigger when it sees a whole pattern of things going on. It says 'enough' finally."
It's also about sending a clear message to other retailers that Aeropostale is not a "soft target," Scafidi says. With the teen retailer segment weak overall, this reasoning applies particularly well to Aeropostale's situation. And the messaging surrounding a lawsuit like this isn't only directed at other companies — it's a PR play at the consumer.
"Part of your strategy when you have litigation is, 'Will this go for or against me with regard to my target market?'" Scafidi says. "Will we [look like] curmudgeons or will it give me good advertising?"
While Aeropostale is an underdog and a company born in the U.S.A., there is a lot of consumer fondness for H&M. The Swedish retailer may well turn this case into a free speech issue as a way of appealing to win the public over to its side.
But what the verdict of this case will come down to in court is consumer confusion, Scafidi says: Will a shopper buying a tote bag at H&M that reads "Live Love Dream" be confused about which brand they are purchasing it from? H&M will likely argue that there is no such problem.
H&M did not respond immediately to request for comment.
“Aeropostale’s intellectual property and our special relationship with our customers is highly important to our business, and we believe in taking appropriate action when our valuable trademarks are infringed. We have communicated our position fully in our Complaint, and we prefer not to comment further on this pending litigation,” an Aeropostale spokesperson wrote in an email.
Homepage photo: Anna Webber/Getty Images for H&M