Gucci has scored a win in a counterfeiting-centric case against Lord & Taylor. In a newly-filed order, a federal court in New York awarded Gucci $1.3 million in damages and reiterated an earlier permanent injunction, barring Lord & Taylor Ecomm LLC, a digital reincarnation of the legacy department store, from infringing Gucci’s trademarks. The judgment also confirms a finding of civil contempt against the retailer for ignoring prior court orders – but stops short of imposing additional monetary penalties.
The case highlights ongoing tensions between luxury brands and digital platforms over the sale of counterfeits. It also reinforces the willingness of U.S. courts to issue permanent injunctions and financial remedies in response to unchecked infringement, particularly in cases where defendants fail to participate in litigation or comply with court directives.
The Background in Brief: Gucci America, Inc. filed suit in November 2023, alleging that Lord & Taylor Ecomm LLC was selling counterfeit Gucci-branded items online, including handbags, belts, and shoes. Although Lord & Taylor Ecomm initially appeared in the case, it subsequently ceased participating in the litigation entirely. In August 2024, the court entered a default judgment against the retailer and issued a permanent injunction requiring it to stop infringing Gucci’s marks and to turn over or destroy all infringing inventory.
Lord & Taylor Ecomm ignored the order, including its mandate the Lord & Taylor destroy or surrender the counterfeit goods at issue, prompting Gucci to seek civil contempt sanctions.
Taking up the matter earlier this year, a court-appointed magistrate judge in the Southern District of New York recommended damages totaling $1.3 million – based on the scale of the alleged infringement – and also recommended that Lord & Taylor be held in contempt for failing to comply with the injunction.
A Win for Gucci (Minus the Horsebit)
In a ruling on October 17, Judge Lorna G. Schofield adopted the magistrate judge’s findings in full, awarding Gucci $1.3 million in statutory damages under the Lanham Act – a figure she said is “slightly more than 1.5 times the estimated profits,” balancing compensation with a punitive component.
While Gucci had sought $14 million in damages based on alleged counterfeiting of three of its registered marks, the GUCCI word mark, the Interlocking GG logo, and the Horsebit design, the court awarded damages only for the first two. The judge declined to include the Horsebit mark in the calculation, citing the complaint’s failure to properly allege that Gucci owns the registration for that mark or that the mark is valid and protected under the Lanham Act. In the absence of those essential elements, the court concluded that Gucci did not establish a basis for liability with respect to the Horsebit mark and limited statutory damages accordingly.
In a separate contempt proceeding, the court affirmed that Lord & Taylor Ecomm was in civil contempt for failing to comply with the injunction. However, additional sanctions, including a $3,000-per-day coercive fine and enhanced damages, were denied. The court pointed to a lack of evidence that the company still held the counterfeit goods, coupled with its claimed financial distress, in concluding that further monetary penalties would likely be ineffective or disproportionate.
THE BIGGER PICTURE: The Gucci decision underscores the ongoing risks for brands in a digital retail environment where legacy names can be reactivated as opaque e-commerce operations. Lord & Taylor, once a fixture in American department store history that filed for bankruptcy back in 2020, has in recent years become just such a cautionary tale – with its digital arm accused of using the brand name to peddle fakes under the radar.
The case is Gucci America, Inc. v. Lord & Taylor Ecomm LLC, 1:23-cv-10239 (SDNY).
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