[author: Tiffany Blofield ]
I am going to Paris in a couple of weeks, so the recent $100 million judgment in favor of the Paris based Hermès International SCA (“Hermès”) piqued my interest. Unlike my prior post Stealing Trademarks Can Land You in Jail, the Hermes case involved civil claims brought against individuals operating a network of Internet websites offering to sell counterfeit Hermès products.
The counterfeiters registered at least 34 domain names, including several with the word Hermès along with its bag names: Birkin and Kelly. Hermès sells two handbags named after famous actresses. The Birkin bag was named after actress and singer Jane Birkin. I saw an episode of “Sex and the City” this weekend where Samantha was fired for using her client’s name (Lucy Liu) to go to the head of a list with a two year wait to obtain the coveted bag. The Kelly bag was coined after actress and Princess of Monaco Grace Kelly covered her pregnant stomach with a Hermès bag. These bags sell from $6,000 to $150,000.
When the defendants failed to answer the complaint filed by Hermès, the court entered a default judgment and permanent injunction. In addition to trademark counterfeiting, infringement and dilution, the court also entered judgment on the cybersquatting claim. Cybersquatting involves registering or using a domain name with the bad faith intent to profit from the goodwill of another’s trademark. In other words, the defendants were selling knock-off products through these domain names. The court’s order also provides that upon receiving notice Internet search engines (e.g., Google) and social media websites (e.g., Facebook) are required to de-index and remove infringing domain names and websites from any search results pages. This type of relief will likely be requested more frequently by litigants with Internet shopping’s growing popularity.
Other fashion designers have, and will continue to, enforce their trademark rights and work to shut down counterfeiters. Indeed, there is another counterfeit handbag battle pending before the Second Circuit. Fendi Adele SRL (“Fendi”) is arguing that it can obtain enhanced damages from an alleged counterfeit merchandise seller’s conduct without showing that the conduct was willful. This battle (going back to 2006) is a topic for a blog post on another day.