Louis Vuitton Achieves Genuine Victory Over Flea Market's Phony Sales

by Sheppard Mullin Richter & Hampton LLP

[author: Tyler Baker]

Luxury brand titan Louis Vuitton recently achieved a significant victory over counterfeiting of its designer products. In an action brought in the U.S. District Court for the Western District of Texas, Louis Vuitton sued the Eisenhauer Road Flea Market, its owner, Bruce L. Gore, and its manager, Patricia D. Walker, for contributory trademark infringement, alleging that the defendants had failed to prevent vendors from selling fake Louis Vuitton goods at the flea market. See Louis Vuitton Malletier v. Eisenhauer Road Flea Market, Inc., No. SA-11-CA-124 (W.D. Tex.). Louis Vuitton stated that counterfeit “LV” products were abundant at the flea market and that Louis Vuitton had given Gore and Walker sufficient opportunities to discipline their vendors that engaged in phony sales. Louis Vuitton alleged, notwithstanding this notice, that Gore and Walker chose to be “willfully blind” to such infringing activity. Gore testified that he warned market tenants not to sell counterfeit goods, only to have those vendors nonetheless engage in distribution of bogus items after they said they would not.

On January 12, 2012, a unanimous jury found in favor of Louis Vuitton, deciding that nine trademarks were infringed, and awarded $400,000 for each mark. On January 31, U.S. District Court Judge Harry Lee Hudspeth entered a judgment in accordance with the jury verdict which was, if nothing else, comprehensive in its scope of remedying the situation for the present and future. In addition to finding the defendants jointly and severally liable for $3.6 million in compensatory damages, the judgment also permanently enjoined the defendants from further acts of contributory trademark infringement with respect to the Louis Vuitton trademarks. Specifically, the defendants were ordered not to lease space to tenants whom the defendants know, have reason to know, or have been presented with credible evidence that are selling or distributing products bearing counterfeit Louis Vuitton trademarks. The defendants themselves also were banned from selling Louis Vuitton counterfeits and engaging in any conduct which would contribute, directly or indirectly, to counterfeiting of Louis Vuitton trademarks by flea market tenants. The Court’s order went further, requiring the defendants or their agents to conduct periodic inspections of the booths maintained by flea market tenants to guard against Louis Vuitton counterfeits, and to post signs at each market entrance warning lessees and the public that the tenants were not authorized to sell Louis Vuitton merchandise, and that doing so was a criminal offense. The judge also required that all future lease agreements for the flea market expressly prohibit the sale of Louis Vuitton counterfeits, and permitted Louis Vuitton representatives or agents to conduct unannounced random inspections during normal flea market business hours to search for Louis Vuitton fakes.

In response to the Court's order, the flea market accused Louis Vuitton of forcing the flea market to do the luxury brand’s job, i.e., enforcement of Louis Vuitton trademarks, and that the company had other means by which to police counterfeiting, e.g., by alerting law enforcement agencies or by pursuing the vendors directly in civil or criminal court. Louis Vuitton responded that the flea market was infested with counterfeit merchandise and that the defendants simply turned a "blind eye" to the counterfeits.

This case should send a powerful message to commercial landlords of flea markets who suspect or have been warned that phony designer merchandise is being sold on their premises. While Louis Vuitton noted that suing the flea market was an extreme measure taken only once such measures are deemed necessary, this case should serve as a warning that established luxury brands, such as Louis Vuitton, police their marks vigilantly against contributory infringement, whether it be in the physical world or cyberspace.

Louis Vuitton already secured an important victory against online contributory trademark infringement where the defendant provided web-hosting for numerous websites that sold counterfeit Louis Vuitton products. See Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011). In Akanoc, Louis Vuitton sued the defendant for contributory trademark and copyright infringement and counterfeiting after the defendant failed to end service for the infringing sites, despite eighteen notices of infringement from Louis Vuitton. The trial and appellate courts found the defendant liable for contributory copyright and trademark infringement because of the way it had guided web users to the infringing sites and exercised direct control over and monitored the websites. The Akanoc case is analogous to the Eisenhauer Road Flea Market case in that both cases demonstrate that neither the real world nor the world wide web are safe havens for trademark infringement.


Written by:

Sheppard Mullin Richter & Hampton LLP

Sheppard Mullin Richter & Hampton LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.