Chanel is currently embroiled in yet another trademark infringement lawsuit. Last week, the Paris-based design house filed a few trademark infringement lawsuits. One of those lawsuits is against Beth Val Colbert Greenberg, of Button Jewelry by Val Colbert, in the Southern District of New York Court. According to Chanel's complaint, Greenberg is violating its trademarks with her Button Jewelry collection, which consists of bracelets, necklaces and other items that prominently feature Chanel buttons (pictured after the break below).
Since Chanel filed suit, Greenberg appears to have removed the potentially infringing designs, and filed a lawsuit of her own in the U.S. District Court for the Northern District of Georgia. According to her complaint, in 2008, two years after she launched her Button Jewelry line, she was contacted by Chanel, which claimed that her use of the buttons infringed its trademark. At the time, Colbert denied any such infringement, and Chanel's legal team left her alone until this past September, when they sent her another cease and desist letter, “alleging unauthorised use, counterfeiting and infringement of its Chanel trademarks" before filing suit last week.
According to Greenberg's lawsuit, in which she is seeking a declaratory judgement that her jewelry does not infringe Chanel's trademark, she “re-purposes” the Chanel buttons, turning them into jewelry, which sells for upwards of $200. Further, Greenberg states that all of the buttons she uses are meticulously sourced to ensure that they are authentic Chanel buttons, and most are acquired via eBay, secondhand and antique stores and private collectors. (This raises the question of what role, if any, the first sale doctrine (the copyright and trademark theory that holds that once a manufacturer rightfully sells a copyright or trademark-bearing good, the purchaser of that good has the right to resell it without infringing the rights of the copyright or trademark owner), plays in this scenario. On its face, the scenario seems as though it would weigh in Greenberg's favor, as she claims she legally purchased authentic buttons (which may be protected by both trademark and copyright law, depending on the specific buttons at issue).
As for Chanel, by filing a trademark infringement lawsuit, the design house is arguing that Button Jewelry is causing confusion amongst consumers regarding the source of its jewelry, as it does bear a Chanel logo. (Side note: Chanel will also likely argue that Greenberg's designs are heavily relying on the established appeal of the Chanel brand to make a profit). As for whether there is a likelihood of confusion, I'm not entirely sure. It seems to me that initial sale confusion may be low in this case; consumers are buying the Button Jewelry pieces from Greenberg's site, which states that the buttons are vintage. Post-sale confusion, however, seems like a good fit here. As indicated by its name, in a post-sale confusion scenario, it is not the initial purchaser that is likely to be confused about the source of the goods but the broader public.
Also worthy of note: other Button Jewelry designs include Dior and Louis Vuitton buttons. So, this may be the beginning of an ever bigger lawsuit. More to come ...
images courtesy of tfs & val colbert