Chanel made headlines in March 2018 when it filed a striking lawsuit against a resale company, alleging that it was trying to “deceive consumers into falsely believing [that it] has some kind of … affiliation with Chanel or that Chanel has authenticated [the pre-owned] goods [it was offering up] in order to trade off of Chanel’s brand and goodwill,” all while allegedly offering up infringing products. The defendant in the case, which was filed in the U.S. District Court for the Southern District of New York: The now-30-year-old luxury resale What Goes Around Comes Around, against which Chanel lodged trademark infringement, unfair competition, false advertising, and false association claims.
In response to Chanel’s suit, What Goes Around Comes Around (“WGACA”) – which touts itself as “the leading global purveyor of authentic luxury vintage accessories and apparel” – has argued that it should be shielded from liability on the basis that Chanel’s lawsuit is an impermissible attempt by Chanel to bar the legitimate resale of its products, and that WGACA uses the Chanel trademarks simply to identify its products (which it claims amounts to nominative fair use), and does not claim any affiliation or sponsorship by Chanel.
Reflecting on the significance of the lawsuit (and Chanel’s ongoing case against The RealReal), Foley & Lardner’s Jeffrey Greene and Allison Haugen have stated that the implications “could be broad-reaching, providing guidance to resellers on the parameters of a fair use defense to trademark infringement claims.” They also stand to provide “insights into the validity of antitrust-type claims in instances of claimed interference with the resale market, as well as how resellers ought to describe the authenticity of the goods they sell.”
Given the importance of the case (particularly in light of the rising value of the resale market), we have put together a brief timeline of significant filings (complete with links to any corresponding documentation and/or articles) in order to help you to stay abreast of developments in the case …
Apr. 9, 2025: In a memo of law, Chanel opposes WGACA’s post-trial motion to overturn a jury’s unanimous verdict finding WGACA liable for willful counterfeiting, arguing that ample evidence supported the jury’s verdict that WGACA sold counterfeit Chanel-branded handbags, including items bearing stolen and voided serial numbers, and that the jury’s statutory damages award of $4 million was justified, legally sound, and entitled to extraordinary deference under federal law.
Apr. 2, 2025: In a reply memo, Chanel argues that it is entitled to attorneys’ fees, refuting WGACA’s claim that the case is not “exceptional,” asserting that WGACA engaged in deceptive and obstructive litigation tactics, misrepresented facts (such as denying receipt of a cease and desist letter), and continued infringing behavior even after being warned. Chanel emphasizes that the legal standard for awarding fees has been met on the basis of its willful infringement and unreasonable litigation conduct.
WGACA’s attempts to narrow the definition of an “exceptional” case and downplay the jury’s verdict are meritless, per Chanel, which also maintains that WGACA raised no substantial objections to the reasonableness of its fee request, further supporting its motion.
Apr. 1, 2025: Amid its early bid to appeal the SDNY’s final judgment (and stay the damages it owes to Chanel), WGACA posted a supersedeas bond in the sum of $4.455 million.
Mar. 27, 2025: WGACA has lodged a notice with the U.S. District Court for the Southern District of New York that it is appealing the final judgment to the United States Court of Appeals for the Second Circuit.
Mar. 26, 2025: In a trio of filings, WGACA is seeking a new trial and judgment as a matter of law on the basis that the jury verdict is unsupported and that the $4 million statutory damages award is excessive and unconstitutional. In a separate letter (and in a precursor to further action in this case), it asks the court to issue formal findings of fact to support its disgorgement ruling, calling them essential for appeal. Finally, WGACA is opposing Chanel’s request for attorneys’ fees, arguing the case is not “exceptional” under the Lanham Act.
Mar. 12, 2025: Chanel is angling to recoup the costs it paid to its counsel following a resounding victory in the trademark infringement case, in which a New York federal jury unanimously found WGACA liable for willfully infringing Chanel’s trademarks, selling counterfeit goods, and engaging in false advertising. The $6.7 million sum, if awarded by the court, would come in addition to the $4 million that the jury awarded to Chanel – and that the court subsequently ordered WGACA to pay.
Feb. 26, 2025: In a final judgment, issued by Judge Louis Stanton of the U.S. District Court for the Southern District of New York, the court formalizes the jury’s findings and imposes strict penalties on WGACA, including: a permanent injunction restricting WGACA’s use of Chanel’s trademarks and branding; $4 million in statutory damages for selling counterfeit handbags; and disgorgement of $12,739 in profits from the sale of unauthorized Chanel-branded handbags and 779 counter-support items.
Jan. 31, 2025: Chanel and WGACA have unsuccessfully attempted to resolve their respective arguments over a portion of the court’s proposed injunction. In a letter on January 31, Chanel’s counsel alerted the court that the parties have met and conferred on “a reasonable compromise that works for both of [their] businesses” regarding Paragraph 3(c) of the proposed injunction, which would prohibit WGACA from: “Advertising, offering for sale, or selling any CHANEL-branded items that have not been authorized for sale by Chanel, including but not limited to, point-of-sale items and retail props, after notification by Chanel that such items have not been authorized for sale.”
Chanel is angling to get the court to remove the the last thirteen words of that provision (“after notification by Chanel that such items have not been authorized for sale”) on the basis that it imposes “an undue burden upon Chanel and is contrary to the Lanham Act and established precedent.”
Since the parties are “at an impasse” over this provision, Chanel requests that the court schedule a conference to address the issue.
The case is Chanel, Inc. v. What Goes Around Comes Around, LLC, et al., 1:18-cv-02253 (SDNY).
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