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Couture in Court

Originally posted 2012-02-29 23:27:24. Republished by Blog Post Promoter

Fabulous filings for fashionistas — and those who just want to look like them!

Luxury goods rental

Originally posted 2013-08-15 15:06:12. Republished by Blog Post Promoter

“Bag Borrow or Steal™ – Borrow or Rent the Latest Authentic Designer Handbags Purses Jewelry and Accessories.”

You know they — the Big IP guys — are sitting in conference rooms trying to figure out how to stop this.

Soon enough when you buy a Gucci bag, it will come with a non-transferable “licensing” agreement!

My actual prediction:  They will make IP claims preventing the display of their merchandise in connection with promotion of this service, claiming, preposterously, a LIKELIHOOD OF CONFUSION as to affiliation, sponsorship, ownership… something.

Fashion Law at the Federal Bar Association

Via fashionista-lawyer-to-the-fashionista-stars Olivera Medenica, it’s time to roll up for the Federal Bar Association‘s 2016 Fashion Law Conference at the Parson’s School of Design!

Look, here’s the text I copied and pasted from the FBA website, minus the egregiously unfashionable FBA html:

Fashion Law Conference 2016 FBA

Parsons School of Design: School of Fashion
Starr Foundation Hall, UL102
University Center 
New York, NY

The program is organized by the The Federal Bar Association in collaboration with CAREER SERVICES at The New School.

Fashion is a $300 billion industry in the United States—even more on a global scale. Join the Federal Bar Association for a high-energy conference focused on the unique legal issues affecting this economic giant. Legal professionals and industry representatives will explore practice areas including labeling regulation, ethical sourcing of labor, anti-counterfeiting, antitrust issues, e-commerce, and mobile apps.

Check out our guest post on The Fashion Law to examine shining examples of ethical bling and industry-related regulations in place to ensure the integrity of diamond and gold supply chains.

Previous related posts can also be found here. CLE credit is available, and attendees will benefit from networking opportunities throughout the day.

Interested in becoming a conference sponsor? Fill out our sponsor request form here and email to Heather Gaskins at [email protected].

Now, fabulous, no? Go!  Registration, program and other information about the event are available at the FBA website.Fashion Law Conference 2016 via Medenica Law

Famous names on famous dames

Originally posted 2013-04-29 12:04:56. Republished by Blog Post Promoter

Oscars after-party thoughts: Did you ever wonder about just how far someone can go “knocking off” a famous designer gown?

Counterfeit Chic twirls around some elegant ideas.

Parlous times

Originally posted 2007-11-02 10:58:37. Republished by Blog Post Promoter

New York magazine:

It’s mortifying enough to be busted carrying a faux designer handbag (um, not that we would know or anything), but imagine how much worse it must be to be caught by the designer.

I know that haunts my nights on the town. Or would, if I ever bought counterfeits. Of course.

Best of 2014: Lady calls me up…

Originally posted 2014-12-24 07:50:40. Republished by Blog Post Promoter

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…

Ruff times for Vuitton

Chewy Vuitton

IP Law Chat reports that LVMH has lost its appeal (decision here) of the “Chewy Vuitton” decision. Here’s an interesting sidelight, and one that may have reverberations beyond this case:

[T]he strength and distinctiveness of the LOUIS VUITTON mark worked against Louis Vuitton in the context of its dilution by blurring claim, making it more likely that a parody (at least an obvious one) will not impair the distinctiveness of the famous mark.

Clients like this — Europeans — must be foaming at the mouth about this one, because European “industrial property” law works entirely differently. But the Fourth Circuit didn’t even throw LVMH a bone.

UPDATE:  I’m reminded that I predicted a reversal.  Me, wrong.

Mark-o! Polo!

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

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



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”

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 (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 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] 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] 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  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!