A Georgia federal judge handed a partial victory to Luxottica Group, which is in the midst of a contributory trademark infringement battle with Greenbriar Marketplace II, LLC (“Greenbriar”) in connection with the sale of counterfeit eyewear. Luxottica, which filed suit in April 2015 in the US District Court for the Northern District of Georgia, alleges that the defendants are responsible for the sale of fake Ray-Bans and “faux-kleys,” or fake Oakleys – at two Atlanta shopping centers: Greenbriar Discount Mall and Greenbriar Strip Plaza.
Plaintiff Luxottica – which maintains a brand portfolio that includes practically every well-known brand, such as Ray-Ban, Persol, and Oliver Peoples, as well as the rights to design, manufacture, and distribute eyewear of luxury brands including Burberry, Prada, Chanel, Miu Miu, and Versace – has landed a preliminary victory. According to a court order issued in late September, the eyewear giant has defeated the summary judgment motion of the shopping center landlord on its claim for contributory trademark infringement.
After sending a cease and desist letter to the defendants about the sale of counterfeit merchandise by tenants of their property, “Luxottica seeks to hold Defendants as the owners and operators of the Greenbriar Discount Mall [and Strip Plaza] contributorily liable … for the infringing acts of the individual vendors directly engaged in selling the counterfeit merchandise.” Put simply, Luxottica is looking to hold the owner and/or operator of the shopping center accountable for the counterfeit activities of the tenants. This is significant as Greenbriar is not the owner or operator of the flea market where the fake eyewear was being sold.
Defendant Greenbriar – the entity that owns Greenbriar Discount Mall and Greenbriar Strip Plaza – filed a summary judgment motion, denying responsibility for the trademark infringement committed. Per Greenbriar, “A mere property owner with no operational or managerial control … is not labile for contributory trademark infringement as a matter of law.”
In the decision, Judge Amy Totenberg ruled in Luxottica’s favor. According to the ruling, “A landlord may be held liable for contributory trademark infringement by continuing to lease space to a tenant whom it knows or has reason to know is engaging in trademark infringement even without direct control over the infringing conduct.”
Courts have – in a number of instances – found contributory trademark liability on behalf of owners and operators of flea markets in which counterfeit and infringing goods are being sold. For instance, in a 2013 case that Coach filed against a flea market operator, the Sixth Circuit held the defendant was contributorily liable when he continued to rent space and facilities to vendors he knew or should have known were engaging in infringing activity (Coach, Inc. et al v. Frederick Goodfellow, no. 12-5666 (6th Cir. 2013)). Similar findings have come out of other circuits, as well.
The case at hand is different in that it “may be the first instance in which a Court has recognized the potential contributory liability of a landlord entity that isn’t also the flea market owner/operator,” says Luxottica’s counsel David Rosemberg.
* The case is LUXOTTICA GROUP, S.p.A. v. GREENBRIAR MARKETPLACE II, LLC, et al., Civil Action No. 1:15-cv-01382.
Nicole Malick is a student at the University of Pennsylvania Law School.