L’Oreal scored a major victory in trademark protection against smell-alike perfumes this past month in England’s Court of Appeal. In L’Oréal v. Bellure, the court held that Bellure’s use of lists in its advertising that compared its perfumes’ scents to those of well-known L’Oréal perfumes constituted trademark infringement. This widely-reported decision indicates a sea change in European trademark law, which is now recognizing the marketing and monetary effort a company expends when creating and maintaining trademarks. It also is a broad decision, perhaps having wide-ranging effects in other industries. This decision implements judgment in the European Court of Justice – the highest court in the European Union. Thus, the decision in this case applies to all of Europe.  
 Continue Reading Smells Like Trademark Protection: Copycat Perfumes Cannot Engage in Comparative Advertising, on Odor of the Court

In Fendi Adele S.R.L. v. Burlington Coat Factory, No. 06 Civ. 85 (LBS), 2010 WL 431509 (S.D.N.Y. Feb. 8, 2010), the United States District Court for the Southern District of New York, in light of the prior 1987 injunction prohibiting defendant Burlington Coat Factory ("Burlington") from selling counterfeit Fendi products in its stores, recently held that the continued sale of counterfeit handbags featuring the trademarks of plaintiff Fendi Adele S.R.L. ("Fendi") violated the prior order, was in contempt of the district court’s prior order, and awarded treble damages against Burlington. This decision provides yet another reminder of how courts have dealt harshly with retail vendors who have willfully purchased and sold counterfeit goods, especially where there was a prior injunction against violation of the Fendi trademarks.
 Continue Reading The Southern District Of New York Sends A Clear Message To Retailers Selling Counterfeits That Failing To Exercise Due Diligence In Purchasing Products After An Injunction May Result In Trebled Damages Of Millions Of Dollars

Two recent cases highlight the issues faced when seeking an award for willful damages in trademark infringement cases involving counterfeit goods. Burberry brought an action against Designers Imports ("Designers") in 2007 (the "Designers Action") for selling counterfeit Burberry goods, featuring the Burberry name, the Burberry Check design and the Burberry “Equestrian Knight” on horseback (collectively, the “Burberry Marks”). Burberry also brought suit in 2008 against Euro Moda, Inc., Moda Oggi, Inc., and John Fanning (collectively, “Euro Moda”) for selling counterfeit scarves, hats, clothes, and handbags bearing the Burberry Marks (the "Euro Moda Action"). The Courts awarded Burberry $1.5 million in damages in the Designers Action and $4 million in the Euro Moda Action, each of which was considerably less than the statutory maximum, which was what Burberry sought in each case.
 Continue Reading Courts Double-Burberry-Check The Math And Award Damages Less Than The Statutory Maximum For Willful Infringement

Since the proliferation of the internet and online advertising, trademark owners have sought to prevent  the unauthorized use of their marks as keywords for online advertising on search engines. In the Second Circuit before 2009, trademark owners had difficulty protecting their marks where the competitor’s link simply shows up as "Sponsored Link" on the landing page, and no other use of the mark has been made, because of the decision in 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005), which held that no Lanham Act "use", and, thus, no actionable Lanham Act claim, exists for the use of a trademark in a keyword or metatag, where (a) the defendant does not place the trademark on any product, good or service, (b) it is not used in any way that would indicate source of origin, and (c) where defendant’s use of plaintiff’s trademark is strictly internal and not communicated to the public, as the use does not indicate the source or origin of the product. 
 Continue Reading “Google AdWords — Be Careful What You Bid For”

By Craig Cardon and Elizabeth Berman

The California Court of Appeal has recently published two new decisions involving data privacy class actions. Both involve claims under the Song-Beverly Credit Card Act. The most recent, Jessica Pineda v. Williams-Sonoma Stores, Inc., 2009 DJDAR 15191, affirmed the judgment against the plaintiff on the grounds that it is not a violation of Song-Beverly to request a zip code during a credit card transaction, even if the zip code is matched with a name to acquire that individual’s address, and that the same conduct is not a serious invasion of privacy where the home address information is publicly available and plaintiff has taken no special steps to protect it. Approximately one month earlier, the same panel held in Susan Powers v. Pottery Barn Inc., (2009) 177 Cal.App.4^th 1039, that the federal CAN-SPAM Act does not preempt a Song-Beverly claim based on a request for an email address, and sent the case back to the trial court for further proceedings.
 Continue Reading Retailers Get More Clarity On Key Privacy Issues In Song-Beverly Cases – Zip Code O.K., Reverse Lookup O.K., E-MAIL Address Not Preempted

To read this article on bankruptcies in the fashion industry published by American Lawyer, please click here, or visit the AmLaw Daily website.Continue Reading The Bankruptcy Files: Haute Couture Edition

From Coco Chanel to Zac Posen, many fashion designers’ personal names (and personalities) have become synonymous with the fashion houses they represent. Anything associated with a famous designer’s name often becomes more coveted due to the reputation, history, and recognition that the designer carefully built around it over time. As a result, designers’ personal name trademarks often become their most valuable assets. The Joseph Abboud case illustrates some of the issues associated with selling, assigning, or licensing all of a designer’s names and trademarks to someone else, and designers should take note of its implications. 
 Continue Reading Trends May Come and Go, But Personal Name Trademarks Are Here to Stay