The Fashion Law Exclusive - Marc Jacobs is not only being sued at the moment, the brand has files a lawsuit of its own. You likely recall that the New York-based design house was recently sued by Adidas for allegedly copying the sportswear giant's three-stripe trademark. Well, now Marc Jacobs is doing some litigating of its own, as it has filed a trademark infringement lawsuit against sixty six different websites. According to Jacobs' suit, which was filed earlier this month in the US District Court for the Southern District of Florida, the 66 named websites, including marcbymarcjacobsinc.com, marcjacobsmarc.com, tobevogue.com, and BitcoinFashion.net, are responsible for operating websites using Jacobs' trademark without the authorization to do so and in case that's not enough, these sites are also allegedly selling counterfeit goods under the Marc Jacobs and Marc by Marc Jacobs labels.
According to its complaint, Marc Jacobs states that the defendant websites are "actively using, promoting and otherwise advertising, distributing, selling, and/or offering for sale substantial quantities of counterfeit goods with the knowledge and intent that such goods will be mistaken for the genuine high quality products offered for sale by Marc Jacobs despite Defendants’ knowledge that they are without authority to use the Marc Jacobs trademarks." The alleged result of such behavior? Well, consumers will be confused as to the source of the goods and whether they are actually affiliated with Marc Jacobs "at the time of initial interest, sale, and in the post-sale setting, who will believe Defendants’ Counterfeit Goods are genuine goods originating from, associated with, and approved by Marc Jacobs." (This is the key concern in most trademark infringement actions, as the purpose of a trademark is to help identify the source of certain goods).
Oh and that's not all. Marc Jacobs is accusing the 66 websites of being part of a large "infringement and counterfeiting scheme," in which they are "all concurrently employing substantially similar, and often times coordinated, paid advertising and SEO strategies based, in large measure, upon an illegal use of counterfeits and infringements of the Marc Jacobs Marks. Specifically, Defendants are using counterfeits of Marc Jacobs’ famous name and the Marc Jacobs Marks in order to make their websites selling illegal goods appear more relevant and attractive to search engines across an array of search terms." Ouch.
Marc Jacobs, which is owned by French luxury conglomerate, LVMH Moët Hennessy • Louis Vuitton LVMH, has asked the court to force the defendants to immediately and permanently cease the use of its trademarks and the unauthorized sale of counterfeit goods, as well as pay up $2 million for “each counterfeit trademark used and product sold," in accordance with the Lanham Act (the federal law governing trademark rights and infringement), and $100,000 for each cybersquatted domain.
While you my think that with so many defendant domains named in the lawsuit, Marc Jacobs is sure to walk away with a substantial damages amount, but that’s not guaranteed. In fact, the collection of substantial damages from the operators of the 66 websites is unlikely, as chances are, they've done a pretty good job of hiding their identities and their assets, and most likely will not be located or show up in court. With this in mind, the monetary award that is part of online trademark counterfeiting rulings is often more symbolic than anything else. It is worth noting, however, that as a result of “Operation In Our Sites,” a U.S. government initiative, the Department of Justice may recover funds that defendants collected via PayPal. Money transferred from PayPal accounts to other bank accounts may also be collected. This is important because otherwise, the money would be nearly impossible to recover as the defendants are almost always based overseas. This is not to say that counterfeiters are becoming increasing able to out-smart the court’s ability to access their PayPal accounts, as well as their traditional cybersquatting websites. Thus, what companies often deem to be the reward in these types of cases are the discontinued use of the websites offering the counterfeit goods for sale and their subsequent ownership of the sites.
The ongoing and difficult landscape for fighting online counterfeiters is something Jacobs speaks to in its complaint. The Design house states: "In order to combat the indivisible harm caused by the combined actions of Defendants and others engaging in similar conduct, each year Marc Jacobs expends significant monetary resources in connection with trademark enforcement efforts, including legal fees, investigative fees, and support mechanisms for law enforcement, such as field training guides and seminars. The recent explosion of counterfeiting over the Internet has created an environment that requires companies such as Marc Jacobs to file a large number of lawsuits, often it later turns out, against the same individuals and groups, in order to protect both consumers and itself from the ill effects of confusion and the erosion of the goodwill connected to the Marc Jacobs brand." More to come ...