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Preetha Chakrabarti

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Earlier this month, the U.S. District Court for the Northern District of California ruled in favor of Marc Jacobs and its retailers, refusing to grant summary judgment to Korean luxury skin-care company Amarte USA Holdings, Inc. on its claim that Marc Jacobs’ EYE-CONIC eye shadow infringed Amarte’s rights to its trademarked EYECONIC eye cream. Ruling on cross-motions for summary judgment, U.S. District Judge Charles R. Breyer found that there was no likelihood of confusion between the products, so Marc Jacobs and the retailers were not liable for trademark infringement or other claims hinging on consumer confusion.Continue Reading Northern District of California Wipes Away EYECONIC / EYE-CONIC Trademark Litigation

France is ramping up its enforcement efforts against counterfeit fashion as the 2024 Paris Olympics open. As it readied Paris for the Olympics, France reinforced existing efforts to dissuade consumers from purchasing and carrying knockoff goods and to target the vendors of these goods. In anticipation of a flood of tourists for the 2024 summer games, the French government has placed notices at its airports, warning consumers of the significant penalties they may face from buying and wearing counterfeit clothing and accessories, up to a €300,000 fine and three years’ imprisonment. It has also conducted raids on vendors selling counterfeit items, including an early April one where police shuttered almost a dozen sellers and seized 63,000 counterfeits, including bags and shoes, at the famed Saint-Ouen flea market.Continue Reading Authorities Go for Gold on Fake Fashion Enforcement as Paris Olympics Begin

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Last month, Senators Christopher Coons (D-Del.) and Chuck Grassley (R-Iowa), introduced a resolution designating July as “National Anti-Counterfeiting and Consumer Education and Awareness Month” (S. Res. 736). As counterfeits flood the market, totaling almost $3 billion in estimated retail value in 2023 alone, the resolution aims to increase anti-counterfeiting awareness for consumers and businesses alike.

In 2023, the United States seized over 23 million counterfeit goods, with an estimated retail value of $2.76 billion—nearly double the reported amount and value from 2020. Many things have contributed to this increase, including the continued expansion of e-commerce and a lack of consumer awareness.Continue Reading Keepin’ it Real: It’s National Anti-Counterfeiting Month

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Europe’s biggest online fashion retailer, Zalando, recently agreed to dramatically and rapidly overhaul its sustainability marketing in the face of pressure by the European Commission. This is yet another example of why companies need to be extremely careful when making environmental claims in their advertising. Such claims are facing increasing regulatory scrutiny and activist litigation in the European Union, the United Kingdom, the United States and elsewhere around the globe.Continue Reading Scrutiny of Green Claims is in Fashion: Zalando Forced to Overhaul Sustainability Claims

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Considering Use in Commerce, Source-Identifying-Function, and Conduct vs. Confusion

On June 29, 2023, the Supreme Court vacated the 10thCircuit’s decision in Abitron Austria GmbH et al. v. Hetronic International Inc. (“Hetronic”). The Supreme Court principally held that the Lanham Act does not have extraterritorial application. As Crowell previously discussed, the Supreme Court sought briefing on Hetronic from the U.S. Solicitor General, signaling an interest in addressing the Tenth Circuit’s decision, the extraterritoriality of the Lanham Act, and the complex circuit split that has at least three distinct tests. Although the Court agreed 9-0 that the lower court’s decision should be vacated, Justice Alito’s majority opinion and Justice Sotomayor’s concurring opinion disagreed on the second step of the extraterritoriality test, specifically regarding whether foreign conduct can have domestic implications. The majority disagreed with both the Tenth Circuit and the Solicitor General, concluding that the Lanham Act cannot apply to foreign defendants’ foreign conduct.Continue Reading The Unanimous, but Contentiously Fractured, Supreme Court Decision on Extraterritoriality of the Lanham Act

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On February 27, 2023, the Federal Trade Commission (“FTC”) Division of Advertising Practices updated their business guidance on the usage of Artificial Intelligence (“AI”) for 2023. In their post titled “Keep your AI claim in check”, the FTC guides marketers on how best to legally and efficiently utilize AI in advertising and avoid AI washing. Building upon the FTC’s previous AI guidance of 2020 and 2021, this year’s iteration emphasizes that false or unsubstantiated claims about a product’s efficacy—including those that involve promises about the ability of AI—runs afoul of the FTC Act. Specifically, the FTC reminds marketers of the following questions that they should consider with the increasing use of AI in products:Continue Reading Everyone’s Talking AI, Including the FTC: Key Takeaways from the FTC’s 2023 AI Guidance

Meta Birkin

The global fashion marketplace is experiencing unprecedented digital transformation with the emergence of the metaverse and NFTs. Given implementation is still in its early stages, fashion brands have closely watched the Hermès vs. Rothschild “MetaBirkins” dispute as a case that has the power to help define the future boundaries for what constitutes trademark infringement in the metaverse.Continue Reading A victory for Hermès in the bag: How the “MetaBirkins” verdict may pave the landscape for the future of fashion and the metaverse

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#ICYMI – The Federal Trade Commission (“FTC”) extended the public comment period on its solicitation for public comments regarding potential updates and changes to the Green Guides (Guides for the Use of Environmental Marketing Claims) by 60 days.  On December 14, the FTC held an open meeting and voted to notice the public comment period. On December 20, the FTC noticed the public comment period on the Federal Register, which would have originally expired on February 21, 2023. All public comments must now be filed by April 24, 2023.Continue Reading Green Guides Comment Deadline Extended

The Federal Trade Commission (“FTC”) announced it is seeking public comment on potentially updating, expanding, and/or altering the Guides for the Use of Environmental Marketing Claims, known as the Green Guides (16 CFR pt 260).  Yesterday, December 14, 2022, the FTC held an open Commission meeting where the Commissioners voted 4-0 to approve the publication of a Federal Register notice announcing a public comment period.  The notice is expected to be published in mid-January.  Once the notice is published in the Federal Register, comments will be due within sixty days.   

The FTC’s Green Guides are designed to help advertisers avoid making environmental claims that may mislead consumers.  77 Fed. Reg. 62122 (Oct. 11, 2012).  The Green Guides discourage unqualified environmental benefit claims, nothing that they are difficult, if not impossible, to substantiate.  The Green Guides were first issued in 1992 and last updated in 2012.  An update to the Green Guides has been expected and desired by many as the Green Guides help businesses to make accurate environmental marketing claims and, if followed, help businesses ward off allegations of deceptive advertising claims. Continue Reading FTC Seeks Public Comments on the Green Guides

On November 21, 2022 the U.S. Supreme Court agreed—after passing on the issue once before—to hear Jack Daniel’s (JDPI) challenge to the Ninth Circuit’s ruling in VIP Prods. LLC v. Jack Daniel’s Props, where the Ninth Circuit affirmed without opinion the district court’s grant of summary judgment to VIP and the dismissal of JDPI’s trademark infringement claim,[1] on the grounds that JDPI could not satisfy either prong of the Rogers test. The Rogers test balances free expression under the First Amendment against the trademark protections of the Lanham Act. The Supreme Court granted certiorari on the questions of whether parody uses of another’s mark receive First Amendment protection from liability under the Lanham Act and whether parody is exempt from claims of dilution by tarnishment under 15 U.S.C. § 1125(c)(3)(C). The decision could clarify the balance between trademark and the First Amendment, an issue that has long-confounded practitioners.Continue Reading More Bark or Bite? U.S. Supreme Court to Decide Whether the First Amendment Has the Teeth to Protect Whiskey Bottle Shaped Dog Toy Maker from Jack Daniel’s Lanham Act Claims