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Mark-o! Polo!

Originally posted 2011-06-02 11:11:25. Republished by Blog Post Promoter

Horses and perfume -- perfect together

Looks like somebody’s going to be ponying up:  here’s the latest in the saga between the (old) rich (the U.S. Polo Assocation) and the (new) preposterously rich (Ralph Lauren):

The US Polo Association filed a suit against Ralph Lauren claiming that the fashion giant is trying to make money off the logo and the sport itself. The lawsuit comes as the US Polo Association looks to market its own line of fragrances.

A New York judge didn’t see things quite the same way as the Polo Association, though. Federal judge Robert Sweet noted that Ralph Lauren has been using the single player polo logo in conjunction with the word ‘polo’ on its products since 1978. He stated that while there is plenty of room for both companies to “engage in licensing activities,” it is another matter entirely for the US Polo Association to “use ‘polo’ in conjunction with the double horsemen mark on fragrances.” According to the judge, such use would cause confusion among consumers. Judge Sweet issued a permanent injunction requiring the polo association to drop all claims.

No respect for the upper crust

The opinion is here, via the Law of Fashion blog, which explains the context of the dispute — which outfit was the first one to realize that horses and fragrance were a good association? — and comments insightfully:

In a nutshell, Judge Sweet ruled that Polo Ralph Lauren got to the fragrance market first, and that the official U.S. Polo Association — which entered the market twenty years later, with a confusingly similar logo — is out of luck.  Permanently enjoined, to be precise.

Apart from arguing that there was no likelihood of confusion here, the USPA had accused Ralph Lauren and its fragrance licensees of “attempting to monopolize the depiction of the sport of polo.”  The Court responded:

There is . . . clearly room in our vast society for both the USPA and [Ralph Lauren] to engage in licensing activities that do not conflict with one another, and nothing contained in this opinion should be construed as precluding such activities . . . . Nonetheless, to the extent the USPA [uses] “polo” in conjunction [with] the Double Horsement mark on fragrances, this is another matter.

This ruling is especially interesting because, in 2006, a jury found that “the solid Double Horsemen mark with [the accompanying text] ‘USPA’ [was] not infringing in the context of the apparel market.”  (Emphasis added; for more on the previous case, look here and here.)  For Judge Sweet, the fact that the present dispute involved fragrances, not apparel, and that the text accompanying the “Double Horsemen mark” differed in the two cases, meant that the earlier outcome had no bearing here.

Bear?  Horse?  Perfume?

What do I know?  In any event it appears that the Association’s claims failed the smell test.

Best of 2006: Side by side comparison doesn’t decide likelihood of confusion

Originally posted 2006-07-11 17:14:18. Republished by Blog Post Promoter

Dooney & Bourke’s pattern

Originally posted on July 11, 2006.

This is an important decision: The Second Circuit Court of Appeals has partially reversed the earlier ruling of the U.S. District Court for the Southern District of New York (full decision here) in Louis Vuitton Malletier v. Dooney & Bourke, Inc.

Here’s the “money quote” as a once-great blogger taught me to say (citations and internal quotes omitted; link added) :

We turn next to the question of likelihood of confusion. . . . The similarity of the marks is a key factor in determining likelihood of confusion. To apply this factor, courts must analyze the mark’s overall impression on a consumer, considering the context in which the marks are displayed and the totality of factors that could cause confusion among prospective purchasers.’ The district court here noted that there were “obvious

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

similarities” between the Louis Vuitton and Dooney & Bourke handbags. However, it determined that despite the similarities, the two marks were not confusingly similar. It appears the trial court made the same mistake that we criticized in [the] Burlington Coat Factory [decision]: inappropriately focusing on the similarity of the marks in a side-by-side comparison instead of when viewed sequentially in the context of the marketplace.

The district court reasoned:

Read More…

“A crippling but necessary deterrent”

Originally posted 2012-07-24 21:10:22. Republished by Blog Post Promoter

Bella No More

Last week, on July 19th, the Southern District of New York put the pedal to the Lanham Act metal in in Coach v. Allen.  It’s a summary judgment imposing molto statutory damages — $44 million — for trademark counterfeiting in the Southern District of New York.  And it’s not a default judgment.  No, it’s even (for the defendants) worse.

The decision is a judicial catalog of, unsurprisingly, picture-perfect anticounterfeiting investigatory and legal enforcement techniques employed on behalf of Coach by Gibney Anthony & Flaherty, led by my former partners Brian Brokate and John Macaluso, against a chronic counterfeiter who, as  you will see, really just does not get it.

They call him “Tall Man”

The court does not say so, but this defendant evidently goes by the nickname “Cleopatra.”  Yes, “queen of denial” — because like a lot of these cases, there’s something pretty pathetic about the defense here.  The defendants not only sold outright fake Coach stuff brazenly over the Internet but proceeded to “represent themselves” in this action, and to do so, evidently, quite stupidly.  Something other than hilarity ensues:

This is an action for counterfeiting and trademark infringement involving defendants Linda Allen and Courtney L. Allen (hereinafter collectively referred to as “Defendants”), who allegedly counterfeited and so infringed on seventeen Coach federally registered trademarks on eleven types of goods for a total of twenty-two separate infringements.

Defendant Linda Allen is an admitted counterfeiter who has previously been sued for trademark infringement. During the course of this case, Defendants proclaimed their innocence despite emails, letters, website registrations and testimony evidencing their infringing activities. Defendants refused to respond meaningfully to legitimate requests to produce documents that detail such illegal sales. Only through subpoenas to the third parties did Coach discover any meaningful information about Defendants’ illegal activities, and it may just be the tip of the iceberg.

There is no genuine issue of material fact that counterfeit and infringing Coach merchandise was being offered for sale and sold on BellaFashions.net (the “Website”) and that defendants Linda Allen and Courtney L. Allen personally engaged in the conduct that forms the basis of this action.

Defendants are pro se. Their opposition to the motion was originally due on May 29, 2012. Defendants missed the deadline. However, on June 5, 2012, they faxed unsworn letters to the Court containing general denials of affiliation with the Website and a reliance on the disclaimers. . . . Defendants presented no admissible evidence in opposition to the summary judgment motion.

IP Enforcement Attorney John Macaluso

John Macaluso: Bane of counterfeiters

This can’t go well for defendants, and it doesn’t.  I mean, they’re not even trying:

In March, 2011, Coach discovered the website BellaFashions.net which was being used to promote and offer for sale handbags, duffle bags, wristlets, wallets, scarves, hats, umbrellas, shoes, key chains and sunglasses. The products distributed on the Website were explicitly identified as Coach handbags and accessories.  . . .

The Website was registered to “Linda Allen, [XYZ] Cold Spring Road, Syosset, NY 11791. The administrative contact was listed as “Allen, Linda” at the same address indicated above with the following contact information: frog[XYZ]@aol.com and phone number (516) 921-[ABCD}.  “[XYZ] Cold Spring Road, Syosset, NY 11791″ is the home address of defendants Linda Allen and Courtney L. Allen.  Frog[XYZ]@aol.com is the current e-mail address of defendant Linda Allen.  (516) 921-[EFGH] is the fax number for the Defendants’ home office.

You know … “It’s sure quiet out here.  Almost too quiet!

Well, the truth is, sometimes cases like this can be the most frustrating, especially where there’s pro se representation — the less rational, the harder it can be, depending on the judge, to pin these folks down.  Believe me.

Here, however, Judge Colleen McMahon keeps her eyes on the ball, and methodically demonstrates why Coach is entitled to the full boat:  Maximum statutory damages of $2,000,000 for each and every trademark infringed; of which, you will recall, there were two-and-twenty.  The court readily finds willfulness here, including by dint of this beauty:

Defendant Linda Allen produced a redacted copy of the sales confirmation sent to Coach’s agent hiding the fact that the logo for her former business was prominently displayed on it, which directly links her to the Website. Additionally, Defendant Courtney L. Allen made misrepresentations in her deposition when she indicated that she had never sold Coach products through eBay.com.  However, records subpoenaed from eBay, Inc. indicate that she sold Coach items from her account.

Clever rouses, eh!  The court notes also an earlier, essentially identical judgment entered against defendant Linda Allen, and then drops the hammer on the two of them:

Linda Allen plainly requires substantial deterrence because she has not been deterred by prior judgments. She persists in her contumacious behavior. This award may be crippling, but it is plainly needed to prevent Allen from going back once again into the business of counterfeiting. There is no allegation that Courtney L. Allen has been involved in the prior instances of counterfeiting – there has never been a judgment entered against her. However, the evidence against her establishes willfulness, so it is perfectly appropriate to award maximum statutory damages against her.

Because Defendants have clearly acted in bad faith by distributing counterfeit versions of Coach’s merchandise, I grant the request that Coach receive the maximum amount of statutory damages for willful infringement for twenty-two separate acts of infringement.

Yep:  “Infinity dollars” —  that’s what what $44 million sounds like to me.  But note that the court never actually says the number, but instead pulls a yeasty, fresh-baked “maximum amount of statutory damages” formulation out of the oven for full effect.

Effect noted.  Unlike in the idiotic made-up-infinity-IP-damages scenario, here an award of infinity dollars against real crooks doing real counterfeiting,  doing it spectacularly openly and uber-stupidly — and litigating as if it’s all a big joke — probably makes some  sense.

If not here, where?  Certainly here, if anywhere.  Maybe $10 million wouldn’t have gotten their attention — would it get yours? Who knows.  But $44 million, and the magic words “maximum amount” — now that’s a conversation starter!  Or a counterfeiting-career ender.

You’d think.  Maybe this time, someone will!

Best of 2014: Lady calls me up…

Originally posted on February 27, 2014.

Did you ever wonder what happened in the Val Colbert declaratory judgment action against Chanel?  Yeah, I forgot about it too, and evidently I was not alone.  Because something did happen, and no one seemed to notice.

But more about that in a minute.  Here’s why I even thought of it.

Lady calls me up — can I do anything for her?  She sells, or someone else sells but she sells them for her, or the other way around — anyway, there were these listings on eBay, for buttons that were removed from authentic designer clothing.  In other words, authentic designer buttons, being sold detached from the clothing they came in with.

And eBay, it appears, removed these listings, and there ought to be a law!

There is a law, actually.  It’s the law of contracts, and, all things being equal (yes, they never are, but let us say it), it’s the law that governs almost everyone’s relationship with eBay, which is a private company.  Your contract with eBay, as a seller or a buyer, is of course subject to its rules and regulations.  And just like Mom’s and Dad’s rules and regulations, and those of almost any private party that are not restricted by the criminal law or civil rights concerns, those rules can be whatever the parties agree to.  Or, in the case of eBay, whatever anyone who wants to play has to agree to, because for most of us, eBay will not negotiate.

eBay will negotiate with others, however — others who are not like you and me because they are rich , if only (though seldom only) in brand equity.  These parties have, at least in theory, the ability to upset the nice way it’s going for eBay, litigation-wise, on IP issues such as secondary liability for trademark infringement.

And these parties, many of whom are designers, really really really hate it when people do anything — anything! — well, anything other than burn it up or shoot it into outer space — with the hardware, buttons or other stuff bearing their logos but not the stuff they were originally attached to.  I should not have to explain why they hate this.  And by all indications, they have made this fact clear to eBay, which, despite what you think, mostly wants to work with these outfits.  For the goose does continue to lay very nicely the golden eggs.

ebay-logoAnd eBay hears it.

So, we know, again, that eBay can remove your listing for any reason or for no reason, almost all the time.  Many of the reasons it does have for such removals do exist, however, and they have to do with intellectual property — and not always with infringement, much less counterfeiting.  No, your authentic stuff may be pulled from eBay even though it is authentic, as eBay explains:

If we removed your listing, it’s probably because it either violated the law or one of our policies. Or, it may have been removed because the item’s rights owner (for example, Coach or Louis Vuitton) asked us to remove it. This can happen even if your item is genuine.

So how about the buttons, the ribbons, the hardware?  For your non-listing pleasure,  here is the specific rule that you agreed to when you agreed to sell on eBay which addresses that question: Read More…

Strange trademark things going on — or perhaps nothing going on at all — with Charriol

I don’t know much about fine jewelry.  But a person looking at retail jewelry online during this, the season of discounting, pointed out to me last night that there seemed to be something very strange going on concerning nomenclature for jewelry pieces being offered on various store websites.  It seemed to have to do with pieces made by Charriol. Or was it, rather, Alor?  Or, A’lor?

The Trademark Blog:  "Mandatory Zut Alors Pun Here"

The Trademark Blog: “Mandatory Zut Alors Pun Here”

Being the kind of people we were, we assumed it “must be some trademark thingy,” and I, for one called it a night.

The jewelry-window-shopping person, however, was intrigued, and journeyed to the Charriol website, and found a URL that went http://www.charriol.com/legal.  And this is what it said:

Dear Partners,

Many of our trusted CHARRIOL dealers have recently experienced a marketing campaign by CHARRIOL’s longtime licensee/distributor, A’lor International Ltd., aimed at persuading you that CHARRIOL’s internationally famous cable design and products were returning to their original ‘A’lor roots’ or that CHARRIOL was changing its name to ALOR.  Some of you have been informed that ALOR cable jewelry was replacing CHARRIOL cable jewelry, and that CHARRIOL was either exiting the market or being ‘rebranded’ as ALOR.  Others have been persuaded to abandon their CHARRIOL displays or to replace well-displayed CHARRIOL jewelry with ALOR collections.

CHARRIOL and A’lor have tested their recent disputes in court and CHARRIOL maintains that A’lor, as the licensee of CHARRIOL, has a contractual obligation not to distribute its current lines of identical jewelry to CHARRIOL jewelry under the ALOR name.  And a federal court has recently agreed, because on April 10, 2014, the United States District Court for the Southern District of California ruled that A’lor is barred from infringing CHARRIOL cable trademarks by selling ALOR jewelry that uses such cable.  A’lor is similarly barred from using CHARRIOL trademarks, including cable, distributing or selling products with the cable design, advertising that A’lor was or is being ‘rebranded’ or merged with CHARRIOL, and other similar commercial activities which have caused great confusion in the jewelry and luxury goods marketplace.

The federal court on April 10 issued an injunction against A’lor which provides specifically:

Read More…

To die for!

Originally posted 2010-03-15 23:59:25. Republished by Blog Post Promoter

Counterfeit Chic logo

My own moments of snark notwithstanding–no, you don’t even get a link; if you missed it, then good–I am pleased to announce that the very bestest blog on fashion IP is back on track after an utterly inexcusable fashionable hiatus from posting: Susan Scafidi’s Counterfit Chic!

Now I have to go back to checking, but it will be a pleasure as I:

Oh there’s more, more, more, which is how we like it.  Get Counterfeit Chic back on your short list!

Smocking it out

Originally posted 2007-05-21 18:21:57. Republished by Blog Post Promoter

Sabrina alleged knockoffBen Manevitz updates us on the Diane van Furstenburg “you stole my smock” litigation.

Ben’s take: “As a litigator, I’m going to give everyone involved in any litigation the secret! the best piece of advice ever! Ready? Here: Shut Up!”

Easy advice to give, but darn it, I like to say “smock”!  Smock, smock, smock, smock, smock, smock.

An emphatic NO!

Originally posted 2009-10-05 14:36:53. Republished by Blog Post Promoter

JOOP!

Chatty Kathy:

German designer Wolfgang Joop’s bid to have a punctuation mark trademarked [sic] for his Joop! clothing and perfume company has been denied by European Union judges. Joop applied to register two versions of an exclamation point: the first is a simple exclamation and the other is inside a rectangular frame.

Can’t blame him for trying!

Say — maybe he can get a registration for WRITING IN ALL CAPS INSTEAD?!

But, of course

Originally posted 2007-09-10 15:09:53. Republished by Blog Post Promoter

Shoes are dropping all over Europe:

L’Oreal, the world’s largest cosmetics group, has launched legal action against eBay, alleging the online auctioneer does not do enough to combat the sale of counterfeits, the company said on Monday.

We’ve been genuinely interested in this issue for a long time — if you’re new, click here and here.

The sincerest form of flattery

Originally posted 2011-11-08 08:32:22. Republished by Blog Post Promoter

Susan Scafidi seems genuinely shocked — no, I mean, genuinely!  — over this comment by Ralph Lauren:

Nit fun unzer

When the New York Times‘ Eric Wilson listened to Oprah Winfrey and Ralph Lauren chat for charity, one exchange stood out:

“How do you keep reinventing?”

“You copy,” he said. “Forty-five years of copying, that’s why I’m here.”

Of course, everyone knows that the signature looks of the Ralph Lauren family of brands are inspired by classic Americana — with an occasional detour around the globe — but coming from the guy who was on the losing end of the best-known design piracy case of the late 20th century, the admission strikes a chord.

Honestly, honesty?  Now, when the U.S. may be on the brink of finally passing a law that, while it wouldn’t come anywhere near the level of the French protection that wrangled Ralph, would have a similar effect in some cases?

Oh, that law!

Well, a litigation dust-up here and there notwithstanding, Ralph can afford to be honest, honestly.  I think, indeed, Mr. Lifshitz is referring not to copying other proprietary designs, but to that talent that turned him into a gazillionaire:  Mastering the art of assimilating and replicating the look and feel not, with all due respect, of “classic Americana” but a very focused upper-crust Northeastern WASP sub culture and making it his own.

I when I was in college, I observed plenty of Jewish kids from backgrounds like mine, but a generation or two deeper entrenched in assimilation, do this on a personal level.  Some pulled the copying it off, some didn’t.  (I mainly went in the other direction.)  Ralph went beyond accessorizing social climbing mobility and ethnic metamorphosis to selling them.  And he did  it brilliantly, tastefully and very, very profitably.

He’s a real gem.  Why should he lie about “stealing”?

The better question is a question on the one Susan asks at the end of her article:  “Now, when the U.S. may be on the brink of finally passing a law that, while it wouldn’t come anywhere near the level of the French protection that wrangled Ralph, would have a similar effect in some cases?

Of course it would.  Absolutely.  But the real question is not what would effect would the substantive provisions of the IDPPPA have had, in the abstract.  It’s what effect would the cost of the IDPPPA have had on the young House of Lauren. Read More…

Side by side comparison doesn’t decide likelihood of confusion

Originally posted 2006-07-11 17:14:18. Republished by Blog Post Promoter

Dooney & Bourke’s pattern

This is an important decision: The Second Circuit Court of Appeals has partially reversed the earlier ruling of the U.S. District Court for the Southern District of New York (full decision here) in Louis Vuitton Malletier v. Dooney & Bourke, Inc.

Here’s the “money quote” as a once-great blogger taught me to say (citations and internal quotes omitted; link added) :

We turn next to the question of likelihood of confusion. . . . The similarity of the marks is a key factor in determining likelihood of confusion. To apply this factor, courts must analyze the mark’s overall impression on a consumer, considering the context in which the marks are displayed and the totality of factors that could cause confusion among prospective purchasers.’ The district court here noted that there were “obvious similarities” between the Louis Vuitton and Dooney & Bourke handbags. However, it determined that despite the similarities, the two marks were not confusingly similar. It appears the trial court made the same mistake that we criticized in [the] Burlington Coat Factory [decision]: inappropriately focusing on the similarity of the marks in a side-by-side comparison instead of when viewed sequentially in the context of the marketplace. The district court reasoned:

Read More…

The DO’s & DON’Ts of Fashion Lawyers’ Advertising

Originally posted 2012-10-23 21:13:14. Republished by Blog Post Promoter

Tomorrow night TONIGHT (October 24th) at Fordham Law School I will be speaking on a panel with fashion lawyers Bernice K. Leber of Arent FoxTed Max of Sheppard Mullin and Jeff Trexler of Fordham about “Fashion Lawyers’ Advertising.”  It’s “a Fashion Law Ethics & Professionalism CLE program”!  The distinguished panel will discuss “strategies for maintaining professional standards while promoting a practice in this newly defined and growing field.”

DATE: Tuesday, October 24, 2012
TIME: 6:30-8:30 pm
PLACE: Fordham Law School, 140 W. 62nd Street, Room 430 B/C

Click here to register if you’re a lawyer.  Click here to register if you’re something else.  Don’t ask, just click.

I am going to really have to be a “fashion lawyer” for this, I think.  I presume that means I will have to wear something nice.  Or extra nice!

And, of course, this is the “advertising.”  Seems ethical and professional, no?

We can discuss it tomorrow night, uptown.  See you there!