MILAN, Italy — Many who loved the provocative wit and surrealism of Italian designer Franco Moschino thought it was a match made in heaven when, last October, the house he founded appointed Jeremy Scott as creative director. Presented two Thursdays ago in Milan, Scott's debut runway collection for the brand was an ode to the 1980s, 1990s and American brand iconography, referencing Cheetos, Hershey’s, Froot Loops, SpongeBob SquarePants, Run-DMC and, notably, McDonald’s. The day after the show, a ten-piece capsule collection became available for purchase in Moschino boutiques and online at moschino.com. On their website, Yoox, which powers the label’s e-commerce, explains that Scott "revisits the Moschino logo… with a hint that recalls of the famous fast food."
But it’s hard to say whether it's a hint that will lead McDonald’s to take legal action. In the collection, it appears as though McDonald’s trademark Golden Arches have been deftly curved into a heart-shaped motif. Arguably, this motif is Scott’s interpretation of Moschino’s classic love heart, which has appeared in the brand’s designs for years. In Look 4, McDonald’s trademark Happy Meal Box is converted into an animate handbag with cartoon eyes and a protruding tongue.
Under the law, a trademark identifies the source of goods and services, and differentiates them from others in the marketplace. For example, the Golden Arches identify McDonald’s as the source of its prepared meals and restaurants. The existence of marks similar to the Golden Arches, regardless of how those marks are used, would dilute the ability of the Golden Arches to identify McDonald’s as the a single source of its goods and services. Thus, the legal concept of "dilution" protects the owner of a famous trademark from the decrease in strength and value of this mark by preventing the coexistence of similar marks. This mechanism is critical to the protection of brands like McDonald’s, ranked seventh on Interbrand’s 2013 list of top global brands and valued at $42 billion.
So, in referencing the Golden Arches, has Moschino diluted McDonald’s trademark?
In the United States, where McDonald's is headquartered, the owner of a famous mark that is distinctive (in this case McDonald’s) has recourse against another party (Moschino) for using a mark in a commercial context that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of whether any confusion, competition or actual economic harm occurs. Seven of the ten pieces in the capsule collection incorporate the heart-shaped motif. One item, a backpack, is sold out.
Dilution by blurring occurs when an association arising from the similarity between a mark and a famous mark impairs the distinctiveness of the famous mark, and the law lists six factors that a court may consider in making its decision. One factor is the degree of similarity between the mark and the famous mark. Other than curving inwards, the colours, scale and style of the heart-shaped motif are very similar, if not identical, to the Golden Arches. Another factor is whether the user of the mark intended to create an association with the famous mark. Moschino likely did intend to create an association with the Golden Arches, because of how the heart-shaped motif was presented in the show. In Look 8, the heart-shaped motif is applied to a handbag, which is placed on a fast food serving tray.
Dilution by tarnishment occurs when an association arising from the similarity between a mark and a famous mark harms the reputation of the famous mark. To make such a claim, McDonald’s would have to show that Moschino’s use of the heart-shaped motif harms the reputation of the Golden Arches.
On the one hand, Moschino’s could argue that its immortalisation of McDonald’s in fashion designs by using the heart-shaped motif is complimentary. Yoox draws a parallel to Andy Warhol’s ability “to bring supermarket shelves into art museums around the world” via the lowly Campbell’s soup can. And, indeed, some of the pieces in the collection may well be destined for a museum exhibition.
On the other hand, McDonald’s could argue that Moschino uses the heart-shaped motif in fashion designs to draw an unflattering comparison between fast food and fast fashion. Naming the capsule collection “Fast Fashion — Next Day After The Runway” and retailing it on the day following the show both skewers the high street chains creating fast fashion and beats them at their own game, but at the expense of McDonald’s Golden Arches. In 2001, McDonald’s was the primary target in Eric Schlosser’s bestseller Fast Food Nation. In 2012, fast fashion came under similar scrutiny in Elizabeth L. Cline’s book Overdressed. Katha Pollitt of The Nation praised the book, saying “Overdressed does for t-shirts and leggings what Fast Food Nation did for burgers and fries.”
This negative association makes it unlikely that McDonald’s, if approached during the development of the collection, would have granted Moschino permission to use its trademarks through a license. Emails to representatives of Moschino to determine whether the company sought and was granted permission from McDonald’s went unanswered.
It's likely that Moschino chose not to seek permission because the company believes that it can rely on the defense of parody, something which has artistic merit and critical function, and is covered by law. Indeed, the law does provide that a parody is an exception to dilution, but only if the defendant does not use the parody as a designation of source for its own goods and services. In other words, the exception does not apply when a parody is used as a trademark, and this is exactly what Moschino has done.
In addition, in the case of Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC (2007) the court explained that a parody may cause dilution by blurring “if the parody is so similar to the famous mark that it likely could be construed as actual use of the famous mark itself.”
Whether a court would find the heart-shaped motif to be so similar to the Golden Arches that it amounts to actual use is the heart of the matter, no pun intended.
Anjli Patel is a lawyer based in Toronto.