image: Burberry

image: Burberry

THE FASHION LAW EXCLUSIVE – After filing suit in February against J.C. Penney for “willfully and intentionally” attempting to “capitalize on the strength and worldwide fame” of its plaid print trademark, Burberry has quietly settled the $2 million plus matter out of court. According to the docket for the Southern District of New York court, the London-based fashion brand filed a notice of voluntary dismissal early last month, suggesting that the parties had come to a resolution out of court, and the case has since been dismissed.

According to Burberry’s complaint, which cited claims of federal trademark infringement, trademark counterfeiting, False Designation of Origin and False Descriptions and Representations, and trademark dilution in connection with Penney’s sale of goods bearing the brand’s iconic plaid pattern: “Even though defendants’ infringing products are of inferior quality, they appear superficially similar to genuine Burberry products Defendants’ actions are intended to deceive and mislead consumers into believing that defendants’ or their products are authorized, sponsored by or connected to Burberry.”

While the terms of the parties’ settlement are confidential, we do know that all of the allegedly infringing goods have been removed from J.C. Penney’s website. From the outset, the retailer denied any liability, as it held that the Levy Group, one of its New York City-based apparel suppliers, which was also named as a party in the suit, was responsible for indemnifying J.C. Penney in case of any infringement actions. As such, we know that Penney is likely to be financially unaffected by the settlement, as it stated at the outset of the case that it would be “fully indemnified by the [Levy Group, which supplied the allegedly infringing goods], and therefore any damages awarded in the case will be fully covered by the supplier.”