Luxottica and The RealReal appear to have settled a relatively short-running lawsuit over the reseller’s alleged practice of “knowing[ly] and deliberate[ly] hijacking of Luxottica Group’s and Oakley’s famous trademarks” by way of the “promotion and sale of sunglasses bearing counterfeits of the Ray-Ban and Oakley trademarks” on its e-commerce site. In response to a joint stipulation of dismissal lodged with the court on January 10, Judge Jose Martinez of the U.S. District Court for the Southern District of Florida dismissed the case with prejudice, meaning that Luxottica cannot refile the very same claims against the reseller at a later date.
The dismissal comes seven months after Luxottica first filed suit against The RealReal, “seeking to address the defendant’s counterfeiting activities and to protect unknowing consumers from purchasing counterfeit merchandise.” Pointing to a number of test purchases of Ray-Ban and Oakley sunglasses by an investigator on The RealReal’s e-commerce site carried out between July 2019 and May 2021, three of which came with “a pamphlet declaring ‘Authenticity Guaranteed’ and ‘At The RealReal, there is an expert behind every item,’ and ‘Our . . . luxury brand experts inspect every item we sell,’” Luxottica alleges that it “determined that the sunglasses and related accessories … were in fact counterfeit products that infringed one or more of the Ray-Ban and Oakley trademarks.”
Setting out a single claim of trademark counterfeiting, Luxottica asserted in its June 2021 complaint that The RealReal’s activities “are likely to create a false impression and deceive consumers, the public, and the trade into believing that there is a connection or association between the counterfeit merchandise and Luxottica Group and Oakley,” and sought monetary damages and injunctive relief to preliminarily and permanently bar The RealReal from such alleged activities going forward.
In response to Luxottica’s suit, The RealReal argued in its subsequently-filed answer that it should be shielded from the eyewear titan’s claims by an array of affirmative defenses. According to the reseller, Luxottica’s complaint should be barred – in whole or in part – by the doctrine of laches and by the doctrines of waiver, estoppel, acquiescence and/or unclean hands – because the eyewear-maker was aware of the alleged infringement as early as July 2019 but failed to object and “unreasonably delayed in bringing suit.”
Beyond that, The RealReal argued that it is protected by the First Sale doctrine (the legal tenet that mandates that once a trademark owner releases its goods into the market, it generally cannot prevent the subsequent re-sale of those goods), as Luxottica “authorized the sale of [the] products bearing its trademarks to consumers who then sold [those] products through The RealReal’s website.” (In making such a claim, The RealReal seemed to suggest that either the glasses at issue were, in fact, authentic – or that if they were infringing, they, nonetheless, originated from Luxottica or an authorized party.)
Among other defenses, The RealReal asserted that any alleged infringement on its part “was innocent” and that “at all times, [it] acted in good faith.” To the extent the products identified in the complaint are, in fact, counterfeit goods, The RealReal claimed that it “was unaware” of that.
In the last major pre-settlement development, Luxottica attempted to get more than half of The RealReal’s defenses – including laches and waiver, estoppel, acquiescence and/or unclean hands – tossed out, largely to no avail. In terms of the laches and waiver/unclean hands defenses, in an order dated December 15, Judge Martinez determined that despite Luxottica’s claims to the contrary, The RealReal sufficiently alleged facts that support these affirmative defenses, and thereby, provided “fair notice to [Luxottica] of the nature of the defenses.”
As for the defenses in which The RealReal alleged that Luxottica’s claims are barred because it did not suffer any damages as a result of The RealReal’s alleged conduct; that if it did suffer damages, they “were not caused by [The RealReal];” and that Luxottica is not entitled to injunctive relief because “at a minimum, [it] suffered no irreparable injury, and [thus, has] an adequate remedy at law,” the court again refused to strike the defenses. Luxottica argued that these affirmative defenses “are mere denials of allegations in the complaint,” and thus, and should be stricken, but in light of the fact that “federal courts have repeatedly held that ‘[w]hen this occurs, the proper remedy is not strike the claim, but rather to treat it as a specific denial,’” the court opted not to toss out the defenses.
The case is Luxottica Group S.p.A. and Oakley, Inc., 1:21-cv-22058 (S.D. Fla.)