Valentino, That Belongs to Someone Else

In March 2022, the textile and garment manufacturer Mrinalini sued Valentino for the unauthorized use of copyright protected fabric designs and trade secret stitching techniques without compensation. Consequently, Mrinalini, Inc. (“Mrinalini”) claims that the Italian luxury fashion house Valentino S.p.A. and the American counterpart Valentino U.S.A. (collectively, “Valentino”) illegally enriched itself at the expense of Mrinalini. Allegedly, Valentino profited millions from taking, using and copying Mrinalini’s intellectual property amounting to claims of unjust enrichment, copyright infringement and trade secret misappropriation.

Background

In the complaint filed in New York, Mrinalini claims that its business relationship with Valentino has been characterized by consistent intellectual property issues and unprofessional practices. Mrinalini asserts that Valentino persistently used and sold its original fabric designs and complete garments since the beginning of the fifteen-year relationship without compensation. In addition, Mrinalini claims that Valentino’s entities and employers were disrespectful. Further, as part of business, Valentino demanded expensive gifts and sexual favours.

Mrinalini and Valentino’s relationship demonstrates issues that arise due to the fashion industry’s global value and supply chain. Fashion houses do not independently engage in all aspects of garment creation, rather the fashion industry is comprised of textile producers, fashion designers, apparel manufacturers, specialized factories, marketers, trend forecasters, retailers and so forth [3]. Consequently, the fashion industry outsources to and collaborates with independent firms which creates the opportunity for legal issues [3].

Copyright Infringement

Under U.S. copyright law, and similarly in Canada, complete fashion garments do not qualify for copyright protection because they are ruled as useful articles, but there is an exception [1]. Many elements and features of fashion designs can be protected through conceptual separability, including specific expressions of fabric designs. Conceptual separability allows the copyright protection of features of useful articles if they can be imagined as separate from the useful article and if they can, it is a copyright protected work [1]. Conceptual separability was affirmed in the Star Athletica L.L.C. v. Varsity Brands, Inc. U.S. Supreme Court decision where designs on cheerleader uniforms were ruled as copyright protected because when the designs were imagined as separate from the uniform, like on a canvas, they would be considered colour block art. Through this, expressions of fabric patterns can be copyright protected, while allowing designers to use the type of fabric, and broad idea of the design such as flowers and polka dots.

Mrinalini argues that Valentino violated the Copyright Act of 1976 by infringing on Mrinalini’s copyright protected fabric designs. Specifically, Valentino allegedly copied and used eight of Mrinalini’s fabric designs on garments without compensation which are “Ruffle”, “Rose”, “Polka Dots”, “Flowers”, “Chevron Eagle” “Cape”, “Two Flowers”, and “Wave”.

Trade Secret Misappropriation

Trade secrecy protection covers confidential business information, which in the fashion industry can include special manufacturing technics, colour blends, sewing techniques and so forth [2]. Protection is lost if the secret is leaked or if the technique or formula can be discovered through reverse engineering products [2].

Mrinalini claims that Valentino engaged in trade secret misappropriation. Mrinalini created the “Intarsia” sewing technique which “is an intricate way to join several pieces of fabric into a rich and textured whole, elegant to meet the tastes of sophisticated clientele”. Mrinalini argues that it took reasonable measures to maintain secrecy through confidentiality agreements and only informing those necessary. Further, the technique cannot be learned from inspecting the work as even Valentino tried to learn the technique and was unable to without improper behaviour. Allegedly, Valentino videotaped the technique under, at least implied, confidentiality, but shared the technique with other suppliers and competitors to source the cheapest supplier.

Unjust Enrichment

Consequently, Mrinalini claims Valentino unjustly enriched from profiting from Mrinalini’s designs and secret technique. Specifically, Mrinalini alleges that Valentino has earned tens of millions of dollars if not more from Mrinalini’s original work. At the core of the relationship, Valentino is “one of the largest fashion names in the world” whereas Mrinalini is a small business.

Conclusion

It will be interesting to see how the case unfolds because recently Valentino has resurged its visibility with its hot pink collection. For example, Conan Gray’s “hot pink Valentino look shut down Coachella” and Ariana Grande wore a hot pink Valentino look when announcing r.e.m. beauty would be available at Ulta. In addition, The Fashion Law explained that Valentino might bring up that Mrinalini was aware of their actions for nearly two decades and did not take action sooner. Further, The Fashion Law states that it is difficult to have a successful trade secret case.

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[1] Charles Colman, “Copyright”, G. Jimenez and B. Kolsun, eds., Fashion Law: A Guide for Designers, Fashion Executives, and Attorneys (Fairchild Books) 45-53

[2] George Gottlieb, “Design Patents, Utility Patents, and Trade Secrets”, G. Jimenez and B. Kolsun, eds., Fashion Law: A Guide for Designers, Fashion Executives, and Attorneys (Fairchild Books) 55-65

[3] Guillermo C. Jimenez, “A Survey of Fashion Law: Key Issues and Trends”, G. Jimenez and B. Kolsun, eds., Fashion Law: A Guide for Designers, Fashion Executives, and Attorneys (Fairchild Books) 1-23