When it comes to high fashion, pop culture, humor, and countercultural commentary, courts and IP counsel must draw fine lines between protected creative expression and actionable trademark infringement. Enter the “Boatkin,” a fresh flashpoint in the IP debate.
New England Signature Mashup High Fashion
Jen Risk is a 41-year-old self-taught seamstress and founder of the Hathaway Hutton brand. She reworks luxury goods and adorns luxury products with hand-painted touches. One example is a mashup: the Boatkin.
The Boatkin combines the silhouette and hardware of the Hermès Birkin bag with the canvas construction of the L.L. Bean Boat and Tote, a summer boating staple long associated with Nantucket, Martha’s Vineyard, and Cape Cod. The bag looks and feels like an L.L. Bean tote bag, but is shaped like a Birkin, complete with similar hardware. Risk described the aesthetic to the New York Times as “quiet luxury with a smirk.” Is this true parody, protected by the First Amendment?
Potential Claims
There was no litigation pending when the New York Times interviewed Risk. However, Hermès holds registered trademarks for the Birkin name, the bag’s shape, and its trade dress. If the company were to file suit, it could allege trademark or trade dress infringement and dilution by blurring under the Lanham Act. Specifically, Hermès could argue that the Boatkin’s hardware, design, and name create a likelihood of confusion as to the bag’s source, sponsorship, or approval. Brands in similar situations may claim dilution alongside confusion, arguing that even absent consumer confusion, the Birkin’s trade dress is blurred or weakened by the Boatkin’s existence.
Parody is protected under the fair use doctrine, and Risk’s description of her work as commentary on luxury and consumerism suggests that the fair use argument could be available. However, this defense has limits, as we saw in Jack Daniel’s Properties v. VIP Products LLC (2023), in which the U.S. Supreme Court held that when a product functions as a source identifier, not merely as expressive commentary, First Amendment protections may not shield it from trademark liability.
Reliable Consumer Survey Use
Consumer perception surveys can be central to trademark infringement cases. If Hermès were to allege trademark infringement, a likelihood-of-confusion survey could measure whether consumers believed that Hermès produces the Boatkin, that it is licensed or approved by Hermès, or that the bag, Risk, or Hathaway Hutton is affiliated with the French fashion house. If the lawsuit included a dilution claim, a likelihood of dilution survey could assess whether consumers associate the junior mark, the Boatkin, with the senior mark, the Birkin, in a way that weakens the Birkin’s distinctiveness. A fame or awareness survey could also be relevant, as widespread recognition of the Birkin among the general public is a prerequisite for any federal dilution claim.
Consumer recognition of parody can bolster expressive use claims under precedent set by Rogers v. Grimaldi, a case that has attracted renewed attention in the wake of the Jack Daniel’s decision. Hathaway Hutton could commission its own research to measure whether consumers perceive the Boatkin as humorous, satirical, or critical commentary, and whether they understand it as artistic expression rather than a product of Hermès or an affiliated source. The smaller company could also retain an expert to rebut survey evidence submitted by Hermes.
Parody, Property, and the Power of Survey Evidence
Whether you represent a fashion house protecting brand equity or a new designer, IMS Legal Strategies provides the consumer research and expert testimony to support your position. Our survey experts have conducted likelihood of confusion surveys, dilution surveys, fame surveys, and survey rebuttals in matters before federal and state courts, the U.S. Trademark Trial and Appeal Board, and the BBB National Programs’ National Advertising Division (NAD). Contact us to discuss how survey evidence can strengthen your litigation strategy.
