Category Archives: Counterfeiting

For Once, A Counterfeiter We Can All Get Behind (well, most of us anyway)…

Did you see the New York Times story on admitted counterfeiter Hyman Strachman, street name: “Big Hy?” Big Hy is not selling his bootleg DVD’s out of the trunk of his car in his hood or at Long Island flea markets.He’s sending them by the carton-load to US Troops overseas and he has been doing so for nearly ten years. Big Hy is not involved in an organized criminal enterprise–he’s a 92-yr old Jewish military veteran who spends his days and his disposable income making sure our soldiers get to see the movies that everyone at home is talking about–The Hangover, The King’s Speech, and Moneyball, just to name a few examples.

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Counterfeits: Louis Vuitton Sues Over Use of Fake Vuitton Luggage in ‘Hangover’ Film

LVMH Moet Hennessy Louis Vuitton SA (MC) sued Time Warner Inc. (TWX)’s Warner Brothers Entertainment unit for trademark infringement last week in New York federal court. Louis Vuitton, the famed luxury handbag and luggage maker, claims that a duffle bag used in the film “The Hangover: Part II”  was fake, despite the fact that Alan, the Zach Galifianakis character, refers to it as real. You can see a shot of Alan and his “Louis Vuitton” luggage here at the Clothes On Film blog. Louis Vuitton says that Alan’s “Careful, that’s a Louis Vuitton” line has become a popular catchphrase and that the movie has produced consumer confusion. Its lawsuit also claims that there has been gossip and Internet buzz about whether or not Alan’s bag is real.

But the complaint (posted in full here by Paid Content) alleges that the bag not genuine and is instead made by the Chinese American company Diophy, which Louis Vuitton is currently suing at the International Trade Commission in an attempt to prevent knock-off items from being sold in the U.S.

Vuitton states that it does authorize product placement in movies, but only with its permission and only with genuine products. According to Louis Vuitton, Warner is ignoring the general practice in the movie industry of clearing the use of a branded product with the brand owner.

In addition to an award of money damages, litigation costs and attorney fees, Louis Vuitton seeks an order barring the advertising, promotion and distribution of the film (as well as the destruction of all copies of the film) that contain any scenes with the allegedly infringing bag,

Despite being critically panned, the movie has certainly drawn a lot of litigation. In April, the tattoo artist who created Mike Tyson’s distinctive tattoo sued over the use of that design in the film. That case settled in June for undisclosed terms. In addition, an Australian stunt man who sustained physical injuries while filming a botched car chase scene also filed a suit against Warner Bros, as did a screenwriter who claimed his ideas were stolen and used in the movie’s script.

The duffle bag case is Louis Vuitton Malletier SA v. Warner Bros. Entertainment Inc., 1:11-cv-09436-ALC, U.S. District Court, Southern District of New York.

Trademark Counterfeiting: Chanel Obtains Order Seizing Hundreds of Domain Names

After a number of ex parte hearings (where the other side is not present), luxury goods maker Chanel has won recent court orders against hundreds of websites distributing and selling counterfeit merchandise. A federal judge in Nevada issued an order that allows Chanel to seize the domain names in question and transfer them all to GoDaddy.com. After the seizure, when the alleged counterfeiter’s url is entered, it forwards to a page that contains notice of the seizure and nothing more. The judge also ordered “all Internet search engines” and “all social media websites”—specifically naming Facebook, Twitter, Google+, Bing, Yahoo, and Google—to “de-index” the domain names and to remove them from any search results. In effect, he’s allowing Chanel to waive a magic wand and remove the counterfeiters from cyberspace.

Like many other owners of famous marks that are prime candidates for counterfeiting, Chanel filed a lawsuit naming “Does 1-1000,” individuals, entities, and websites it believes to be illegally knocking off its merchandise. Whenever it finds a new site that it believes is counterfeiting, it adds that site to the lawsuit. Once it identifies a defendant, it then moves quickly for ex parte relief to obtain an injunction prohibiting the counterfeiting and, in this case, obtaining the offending domain names, and removing them from the search results of all the major search engines.

The power given to the mark holder in this situation is quite extraordinary. I’ve been involved in matters where the mark holder obtains the ex parte injunction, with all the papers under seal, and walks unannounced into the alleged counterfeiter’s place of business with the US Marshall and confiscates computers, documents, merchandise, and files, all without the counterfeiter being able to tell its side of the story till long after the dust has settled. I have never been involved in a matter where the alleged counterfeiters weren’t actually counterfeiting so it really wasn’t a problem. However, one can easily imagine the situation where mistakes could be made, especially on the facts described in the Wired article. The moral of this story is do not sell knockoff Chanel merchandise, or even merchandise that could perceived to be Chanel merchandise, unless you aren’t particularly attached to your domain name.

 

 

A Counterfeit Paris

This is slightly off-topic but I thought it was fascinating. As a IP lawyer, I help clients deal with the problem of counterfeit products. But how about a counterfeit city? During World War II, the French built a fake Paris, recreating all of its iconic buildings out of wood, in an effort to confuse the Germans and prevent the bombing of the real Paris. Fake Paris was 15 miles away, along the Seine. Fake Paris was immediately dismantled after the war. Whether it would have worked or not, we’ll never know but thankfully Paris avoided the German bombs anyway.