In the case of Playboy Enterprises International, Inc. v Fashion Nova, Inc. Case 2:20-cv-09846, Playboy is suing fast fashion retailer Fashion Nova for alleged trade mark infringement and dilution, as set out in a complaint filed in the Californian Courts.

Below is an example of a Playboy BUNNY COSTUME® next to one of Fashion Nova’s allegedly infringing costumes.

BACKGROUND

Playboy is a “lifestyle and entertainment brand” who “has become famous and well-known in the United States and around the world” [13].

First introduced in the 60s, initially as a uniform for the servers at the Playboy Club in Chicago, the BUNNY COSTUME® “has been non-functional and has served to distinguish Playboy’s goods and services from those of its competitors and to identify Playboy as the source of those goods or services” [19]. It has been worn by Dolly Parton and Kate Moss.

On 27 October 2020 Playboy filed a complaint against Fashion Nova in the Californian Courts for their alleged “blatant copies of the Bunny Costume…throughout the peak of Halloween season®” [2]. The complaint comes after Playboy sent a cease and desist letter to Fashion Nova in relation to their alleged sale of fancy dress costumes that “are materially indistinguishable from Playboy’s BUNNY COSTUME®” [25].

Playboy claims that the sale of the Fashion Nova products are “plainly an attempt to piggyback off the popularity and renown of Playboy’s iconic BUNNY COSTUME®, which Playboy has cultivated for more than six decades.” [4]

Playboy owns several trade marks for the BUNNY COSTUME® in a number of goods and services, below is the drawing of the registered BUNNY COSTUME®.

The Bunny Costume Mark

Playboy claims that the use of “Bunny of the Month” in its advertising for some of the allegedly infringing products is “a clear and unauthorized reference to Playboy’s famous PLAYMATE OF THE MONTH trademark” [5].

Playboy also claims that there has been confusion in the resale market with resellers describing the Fashion Nova costumes as “playboy bunny costume” [29].

Playboy also argues dilution as the sale of the Fashion Nova costumes create an association between Playboy and Fashion Nova, a “fast fashion”[30] brand. Further still, Playboy argues that Fashion Nova’s “failure to implement appropriate quality controls further diminishes the value of trademarks, as evidenced by complaints from its own consumers” [30]. Playboy then goes on to provide examples of customer dissatisfaction in relation to the quality/sizing.

CAUSES OF ACTION

Playboy brings 6 causes of action against Fashion Nova:

  1. Infringement of Registered Trademarks Under Section 32 of the Lanham Act, 15 U.S.C. § 1114

Playboy alleges that “Fashion Nova’s sale, offering for sale, distribution, and advertising of the Infringing Products are likely to continue to cause, have caused, and are intended to cause confusion and mistake among, or to deceive, consumers and the trade” [37].

  1. Trademark Infringement and False Designation of Origin Under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)

Playboy claims that the “unauthorized use of BUNNY COSTUME® and the PLAYMATE OF THE MONTH trademark in commerce in connection with the Infringing Products, constitute a false designation of origin, false and misleading representations of fact, and false and misleading descriptions of fact, which have caused and are likely to cause confusion, mistake, and deception in violation” [42].

  1. Trademark Dilution, 15 U.S.C. § 1125(c)

Playboy further claims that its goods are “inherently distinctive and have acquired a high degree of distinctiveness through Playboy’s use of the BUNNY COSTUME® and the PLAYMATE OF THE MONTH trademark in commerce for six decades” [47] and that Fashion Nova’s use of Playboy’s trade marks and “sale without Playboy’s authorization is likely to cause dilution by blurring and tarnishment of, and does in fact dilute and detract from the distinctiveness” [49].

  1. Common Law Trademark Infringement

Playboy claims that “Fashion Nova’s actions, including but not limited to unauthorized use of the BUNNY COSTUME® and the PLAYMATE OF THE MONTH trademark in commerce in connection with the Infringing Products, constitute trademark infringement which has caused and is likely to cause, confusion, mistake and deception” [55].

  1. Trademark Dilution, California Business & Professions Code § 14247

It is alleged that Fashion Nova’s “use…likely to cause dilution of the trademarks, with consequent damage to Playboy and its substantial business and goodwill symbolized by the {PB TMs]” [61].

  1. Unfair Competition Under California Common Law and California Business & Professions Code § 17200, et seq.

Playboy also alleges that “Fashion Nova has intentionally and willfully engaged in unlawful, unfair, and/or fraudulent methods of competition methods of competition and unfair, or fraudulent business act or practice and unfair, deceptive, untrue, or misleading advertising” [65].

Playboy claims that Fashion Nova’s lack of response to the cease and desist letter “is an intentional delay tactic” [33] so that Fashion Nova can continue to sell in the build up to Halloween “when demand for the BUNNY COSTUME® is at peak” [33]. Playboy seeks a trial by jury and in its prayer for relief requests include injunctive relief, an account of profits by Fashion Nova, actual and punitive damages.