Design Copycat Stopped By Trade Dress Law

Edie Parker LLC v. Smolen (2016)

Edie Parker's unique handbag designs earned it accolades and wide recognition in the fashion world.  Its most prominent design became a “must-have” item for high-fashion events like the Oscars.  But then a vendor on social media began selling similarly designed (and cheaply made) knockoffs that put Edie Parker’s reputation at risk.  And, the vendor, to attract attention, even used the client’s trademark on its hashtags!

After significant litigation, the trade dress suit ended with an injunction barring all future sales of the copied designs and a hefty damages award.  It also achieved recognition of the client’s design as a valid, and protectible trade dress.  We were then able to use that judgment to stop other knockoff sellers without having to resort to litigation.

$4.5 Million Damages Award Against Manufacturer Of Knockoff Watches; Trade Dress Rights Established In Famous Watch Line

Audemars Piguet Holding SA v. Swiss Watch International Watch, Inc. (2014)

Our lawyers won a trade dress case after trial against the owners of the well-known website The defendants sold thousands of cheap knockoff watches copying the design of the Audemars Piguet Royal Oak watch. The Royal Oak watch, referred to in the marketplace as a “classic” and an “icon,” constitutes a significant part of the client’s business.  Despite repeated warnings the defendants refused to stop.  

Our lawyers established that the Royal Oak design is protected as Audemars Piguet’s trade dress under the Trademark Act, that the infringement was in bad faith, and obtained a recall, permanent injunctive relief, and substantial damages.

Successful Appeal Reversing Dismissal Of Personal Jurisdiction Over Internet Counterfeiting Operation

Chloe v. Queen Bee of Beverly Hills, LLC (2010)

Our lawyers successfully prosecuted an appeal before the Second Circuit, reversing dismissal of a case against an internet counterfeiting operation on personal jurisdiction grounds.  The opinion is important to clients who seek to enforce their rights against on-line infringers.  The internet has proven to be a powerful tool for marketing of goods – including infringements and counterfeits.  The Second Circuit decision allows trademark owners to bring suit in a more convenient location, such as where the trademark owner operates its business, and not only where the counterfeiter resides.  The decision is ground-breaking in its implicit rejection of the reasoning of some courts that a website directed to the entire country is not directed to any single state.

Successful Appeal Of Denial Of Trade Dress Registration

In re Cartier, N.V. (TTAB 2010)

Our lawyers successfully prosecuted an appeal before the Trademark Trial and Appeal Board, reversing the denial of registration of Cartier’s famous Pasha Chronograph design as a trademark.  The Board re-affirmed that it evaluates secondary meaning on the totality of design elements and found secondary meaning was amply proven.

Over $1 Million Judgment Obtained Against On-Line Counterfeiters; Husband Of Principal Held Liable As “Partner”

Act II Jewelry, LLC dba lia sophia v. Zhu (2010)

Our lawyers obtained and collected a judgment in excess of $1 Million against an on-line counterfeiting operation in Virginia.  The principal, Mu Ying Zhu, sold over $300,000 of counterfeit “lia sophia” brand jewelry on eBay, using the name “2008JewelryQueen.”  The court, after finding liability on summary judgment, held a jury trial which found Zhu a willful infringer, and awarded treble profits and attorney’s fees.  The jury also found Zhu’s husband, James Mullins, liable as her partner in the on-line counterfeiting business.   In an issue of first impression, the court held that, under the Virginia Uniform Partnership Act, this finding of a partnership rendered the husband jointly liable for treble damages and attorney’s fees.


$7.2 Million Default Judgment Obtained Against Counterfeit Handbag Distributor

Chloe v. Queen Bee of Beverly Hills, LLC (2009)

Our lawyers obtained a $7.2 Million default judgment against Alexander Zar, a prominent fashion dealer, who supplied counterfeit goods to numerous entities throughout the United States.


$1 Million Consent Judgment Obtained On Eve Of Trial

Chloe v. Designer Imports USA (2009)

After obtaining an ex parte seizure order and conducting full discovery, this counterfeiting action on behalf of fashion house Chloe was set for trial.  Defendant sought to exclude the most damning evidence of willful conduct.  Our lawyers succeeded in obtaining highly favorable rulings that kept that evidence in.  The counterfeiter then quickly agreed to $1 Million judgment to avoid trial.

The evidence the counterfeiter sought to exclude was developed from records subpoenaed from defendant’s Customs broker.  Our lawyers are, to our knowledge, the only ones to have used this type of evidence.


Trade Dress Case Litigated Against Heidi Klum And Favorable Settlement Obtained

Van Cleef & Arpels v. Heidi Klum GmbH (2008)

Van Cleef & Arpels introduced a highly successful jewelry design in 1968, known as the Alhambra.  The original design was covered by copyright, whose validity was established in another case.  But beginning in 2000, Van Cleef created a number of design variations, all with a similar design theme but with substantial design variations as well.

When famous model and designer Heidi Klum began marketing jewelry with similar designs, Van Cleef needed a strong legal theory to pursue.  Neither copyright nor trade dress rights fit the broad range of designs in the Alhambra line.  Our lawyers successfully argued that the Alhambra line constituted a family of trade dress.  After several months of litigation, we were able to obtain a favorable settlement, including a phase out of the offending line.

Ms. Klum later remarked in an interview: “Van Cleef — they have a thousand lawyers. I’m a small fry next to that.”  In actuality, those thousand Van Cleef lawyers were three of our lawyers on the case.


Sucessfully Establishing Validity of 40 Year Old Copyright Case Though to Have Been Abandoned to the Public Domain

Van Cleef & Arpels v. Landau Jewelry (2008)

Van Cleef & Arpels is a world famous fashion house, known as the “Jeweler to Royalty.”  Among its successful products is its Alhambra jewelry line.  First designed and introduced in 1968, in the last decade it has enjoyed a revival, with skyrocketing sales and abundant media exposure.  But with success comes imitation – knockoff jewelry at all price levels became rampant.

Van Cleef had a copyright registration for the Alhambra design.  However, when introduced in the United States in the late 1960s, the items in the line lacked a copyright notice.  Under the law in effect at the time, that meant loss of copyright.

Our lawyers succeeded in establishing that Van Cleef was entitled to a restoration of the copyright under the little known Uruguay Rounds Agreement Act, which restored foreign copyrights in such situations.  This required a detailed showing of the history of creation and publication of the work in the U.S. and abroad.  Working with foreign counsel, our lawyers were able to make a compelling showing, and obtained a summary judgment ruling that Van Cleef owned a valid and subsisting copyright in the design.


$100,000 Judgment Obtained In Trade Dress Case

Cartier v. Samo’s Sons (2008)

Cartier’s famous Tank Francaise line was copied and sold by various New York City jewelers.  Our lawyers obtained favorable settlements from all but one jeweler.  As to the remaining jeweler, Cartier obtained summary judgment on liability for trade dress infringement, saving the need for client witnesses to testify at trial.  It then obtained a $100,000 profits award after a bench trial on damages.  Judgment was later affirmed by the Second Circuit.

Asset Freeze Obtained Over Software Counterfeiter

McAfee, Inc. v. Cao (2007)

Software manufacture McAfee assisted the New York Police Department in conducting a raid and criminal prosecution of a notorious software counterfeiter.  After conviction, McAfee was surprised to learn that the authorities intended to return the monies seized in the raid after the criminal fine was paid by the counterfeiter!  Our lawyers quickly filed a federal civil action and obtained a temporary restraining order freezing return of these assets.  The counterfeiter soon settled the case, with the bulk of the frozen assets paid out to McAfee in settlement.


Altered Luxury Watches Are Counterfeit Established As A Matter Of Law

Cartier v. Symbolix, Inc. (2005)

Cartier v. Aaron Faber Jewelry, Inc. (2005)

Cartier v. Premier Leasing Group, Inc. (2005)

Our lawyers succeeded in putting a stop to a practice among jewelers which plagued its client, the well-known jewelry house Cartier.  Small jewelers were taking genuine Cartier watches, adding diamonds thereon, and then passing them off to the public as genuine Cartier watches with factory mounted diamonds.  Our lawyers succeeded in having such watches declared counterfeit as a matter of law and obtained preliminary and the later permanent injunctions against the practice.  Our lawyers also obtained substantial damage awards from the jewelers.


Jeweler Selling Knockoff Design Watches Is Found Liable, Trade Dress Rights Established In Four Famous Watch Lines

Cartier v. Four Star Jewelry Creations (2004)

Our lawyers won a trade dress case after trial against jeweler Four Star Jewelry Creation, Inc., which had been selling close copies of four famous Cartier watch designs.  Our lawyers established that these designs are protected as Cartier’s trade dress under Section 43(a) of the Trademark Act and obtained both permanent injunctive relief and damages.


$2 Million In Statutory Damages And A Contempt Finding Obtained In Counterfeiting Case

Gucci v. Duty Free Apparel (2004)

Our lawyers obtained a $2 Million statutory damages award on behalf of Gucci America, Inc. in a case brought against a notorious high-end counterfeiter.  In the same case, the counterfeiter was found to be in willful contempt of a permanent injunction entered in conjunction with a summary judgment on liability.


15 Year Ban On Dealings In Branded Goods Obtained From Major Membership Warehouse Chain

Gucci America, Inc. v. Costco, Inc. (2003)

Fashion house Gucci America, Inc. had been plagued for years by Costco, a national warehouse chain, which had been selling Gucci branded goods, some genuine, others counterfeit or otherwise infringing.  Our lawyers finally settled one infringement case with entry of permanent injunction barring for fifteen (15) years sales of any goods, genuine or counterfeit, bearing the GUCCI mark.


ISPs Are Not Immune From Claims Of Secondary Trademark Liability Established

Gucci America, Inc. v. Hall and Associates (2001)

In a case of first impression, our lawyers established that Internet Service Providers (ISPs) such as web-hosting companies can be held secondarily liable for trademark infringement by allowing their services to be used by websites to sell infringing goods.  The court rejected immunity arguments raised under the Communications Decency Act of 1996.


First U.S. Case to Impose Statutory Damages for Sale of Counterfeit Goods

Guess? v. Gold Center Jewelry (1998)

In the first case to impose statutory damages in a trademark counterfeiting case after that remedy was legislatively created, our lawyers, relying on a similar provision in the Copyright Act, convinced the court to look at a variety of factors, including the intent of the defendant, the extent of profits that could be ascertained, and the need to deter other actors, to arrive at a substantial award. 

These principles have been successfully employed in many subsequent counterfeiting cases by various trademark owners.


Supplier Of Counterfeits Liable For Trademark Owner’s Attorney’s Fees In Earlier Suit Against Supplier’s Customers

Gucci America, Inc. v. Rebecca Gold Enterprises, Inc. (1992)

In a case of first impression, our lawyers established that a supplier of counterfeit goods is liable for a trademark owner’s attorney’s fees incurred in a prior action against the supplier’s retail customers.


Counterfeiter Liable, After Notice Of Infringement, For All “At Cost” Sales

Polo Fashions, Inc. v. Dick Bruhn (1986)

In a case of first impression, our lawyers established that a trademark owner is entitled to recover, after providing defendant with notice of selling counterfeits, the entire amount which defendant received from dumping the goods “at cost.”


Printer Has Affirmative Duty to Determine Legitimacy of Customer Using Famous Mark

Polo Fashions, Inc. v. Ontario Printers, Inc. (1984)

In case of first impression, our lawyers established that a printer has an affirmative duty to determine the legitimacy of a person placing an order for a product bearing the mark of a famous manufacturer.

 Trademark Prosecution

Registration By Notorious “Register Squatter” Successfully Opposed

Montblanc-Simplo GmH v. United Brands (2009)

Montblanc has enjoyed trademark rights in its name MONTBLANC for close to a century.  But in 2008, a company filed an application for MONT BLANC for over 130 types of high technology, computer related products.  Given the different product lines, showing confusion would be difficult.

Our lawyers obtained discovery that the applicant had no business plans or other concrete proofs of its intent to use the proposed mark on the product.  We then obtained summary judgment finding no bona fide intent to use the mark on such products, and denying the application.


Multiple Trade Dress Registrations For Watch Designs Obtained

U.S. TM Reg. Nos. 3,208,458; 3,282,739; 3,282,739; 3,282,846; 3,282,847; 3,211,038; 3,211,039

After our lawyers prevailed in a trade dress litigation involving watch designs, it used the detailed bench decision and trial record to obtain seven trademark registrations for these designs from the Trademark Office.   Such registrations provide perpetual protection to the client in these designs, so long as they continue to be used.  Indeed, after five years, they will enjoy incontestable status under the Trademark Act.


Trade Dress Registration For Pen Design Obtained

U.S. TM Reg. No. 3,659,753

Our lawyers have obtained trade dress protection for designs for other products.  We obtained a trademark registration for the STARWALKER Pen Design created and marketed by famous pen designer Montblanc-Simplo GmbH.

Design Patent

In Excess of 100 Fashion Design Patents Prosecuted

Our lawyers have prosecuted in excess of 100 design patents to protect valuable client rights in ornamental designs.  These designs range from luxury goods such as watches, jewelry, eyewear, pens, and perfume bottles.