Fashion Apparel Law Blog : Fashion Apparel Law Lawyer & Attorney : Sheppard Mullin Law Firm : Fashion Legal Issues

Sheppard Mullin congratulates our clients and friends Janie Bryant and Doug Hall, who won awards for excellence in film and television at the 2010 Costume Guild Awards held February 25, 2010. Janie Bryant won for her work on the Mad Men television series and Doug Hall won the contemporary film award for his work on Crazy Heart. Congratulations to both!

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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.
 

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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.
 

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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. 
 

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Partner, Bob Darwell will be speaking at Fashion Week in Milan on March 2nd, 2010.

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Partner, Ted Max spoke at the Volunteer Lawyers for the Arts on Feb 2, 2010.

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On Friday, December 18, 2009, the Consumer Product Safety Commission ("CPSC")  issued a notice announcing a revision to the terms of the stay of enforcement of the stringent certification and testing requirements under the Consumer Product Safety Improvement Act ("CPSIA"). With regard to testing and certifying children’s products for compliance with phthalate levels, the stay is continued while the CPSC works toward finalizing the accreditation requirements for testing labs. Once standards for a particular category of product are published in the Federal Register, the responsible parties will have 90 days to achieve compliance with the testing and certification requirements.  For children’s products subject to lead testing requirements, the stay has been extended for an additional year, to February 10, 2011.[1]
 

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Abercrombie & Fitch has taken quick action to protect its signature fragrance "Fierce" against pop diva, Beyonce Knowles' proposed naming of her forthcoming perfume by Coty, Inc. after her alter ego, "Sasha Fierce". According to the complaint for trademark infringement filed by A & F on September 19, 2009, A & F has held a registered trademark for the mark "Fierce" for fragrances since May 2003, and "Fierce" is the scent wafting from all A & F stores as it is dispersed either though a scent machine or by constant spraying of the cologne by A & F employees. The goal being that every A & F garment is infused by the citrus scent.
 

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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.
 

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