There are two trends you can almost invariably count on when it comes to the intersection of law and fashion: the law not being protective enough and brands that can afford it being extremely aggressive in the rare case that there is intellectual property protection. The latter takes shape when a brand with a lot of resources to throw at legal teams brings suit against the likes of flea markets, online sellers offering up counterfeits, and websites that use a trademark in its URL. Typically, these suits are looking to gain control of the website in question or to close the marketplace selling the goods, as collecting monetary damages is fairly unlikely. Two recent suits illustrate how well-funded brands zealously guard their intellectual property.
In the first, Manolo Blahnik brought suit against individuals and business entities operating commercial websites that offer for sale trademark infringing goods and counterfeits. The complaint asked the District Court for the Northern District of Illinois to transfer control of websites selling counterfeit Manolo Blahnik shoes and accessories and to freeze the assets and bank accounts of those being sued. According to the lawsuit, it is believed that the defendants live in China and other foreign jurisdictions, which is what often makes these cases feel like a waste time and resources. While this suit might be successful, finding an actual person to hold accountable will be difficult. So the same person or people will be able to start another commercial website selling trademark infringing goods, when and if those in question are stopped.
The complaint alleges that the defendants created hundreds of Internet stores and purport to be selling genuine products. In reality, though, these websites are selling low quality counterfeit Manolo Blahnik products to consumers. And they are making quite a profit at it, too. “Internet websites like the Defendant Internet Stores are estimated to receive tens of millions of visits per year and to generate over $135 billion in annual online sales," the lawsuit states.
Blahnik also asserts that several of defendants’ websites utilize Manolo Blahnik trademarks in their domain names, which constitutes cybersquatting because each defendant has a bad faith intent to profit from the mark by registering domain names that are “identical to, confusingly similar to, or dilutive of Manolo Blahnik trademarks.”
The luxury brand asked the court to issue a restraining order against the defendants, enjoining the manufacture, importation, distribution, and sale of counterfeit Manolo Blahnik products as well as an order temporarily transferring defendants’ domain names to Manolo Blahnik. The suit also seeks all profits realized by the defendants, which should “be increased by a sum not exceeding three times the amount thereof as provided by law”, or, alternatively, statutory damages. And finally, defendants should be responsible for attorneys’ fees and costs, according to the lawsuit.
History tells us that even if the ruling is wholly in Blahnik’s favor, it is not likely to actually get everything asked for (because of the whole accountability problem mentioned above). Nevertheless, suits like this one are required if Blahnik is going to combat the unauthorized use of its trademarks and protect consumers from buying cheap versions of the real thing.
Similarly, Chanel has sued a Spanaway-based online website for selling counterfeit products. The lawsuit, filed in U.S. District Court in Tacoma, accuses owner Kelly Brennan of selling low quality (and hideous, in our opinion) items featuring Chanel's trademarks for extremely low prices. The site offers a range of items from Chanel, Yves Saint Laurent, Coach and other high-end retailers.
In both of these suits, it's likely that neither brand's bottom line is being hugely impacted. The point, though, is bigger than that, and it’s twofold. First, it's good business to establish yourself as a highly protective brand, so seedy businesses are at least hesitant to steal your intellectual property. Second, in order to maintain some level of exclusivity when it comes to your trademarks, it's important to police the big and small infringers and every seller in-between. As far as we're concerned, if you've got the budget to bring suit, do it.
JENNIFER WILLIAMS is a recent law school graduate who writes about fashion, the legal avenues available for protecting it, and the ways in which the laws are falling short. She is currently awaiting admission to the NY State Bar. For more from Jennifer, follow her on Twitter.