Court grants fashion company Troy Burch partial summary judgment in trademark infringement case

By John Sammon | Nov 10, 2018

MIAMI — The U.S. District Court for the Southern District of Florida on Nov. 2 granted a partial summary judgement to a fashion company suing a woman for allegedly using its logo to sell similar products on eBay.

A trial in the case of River Light V and Tory Burch versus the defendant, Emily Guzman Tanaka, is set for Nov. 13.

Tory Burch, an American fashion designer, is the owner of a clothing apparel and accessories company that produces and sells dresses, shoes and handbags with corporate headquarters in New York and a store outlet in Miami. The store, founded in 2004, has grown into a billion-dollar business with 3,000 employees and 190 stores worldwide.

The complaint alleges that Tanaka offered and sold counterfeits of Tory Burch products on website eBay and infringed on the company’s logo, a decorative cross design.

Tanaka argued that summary judgement was not appropriate in the case because attorneys for Tory Burch failed to prove each of Tanaka’s transactions was wrongful, that she thought what she was doing was legal and that Tory Burch had failed to police its own trademark.

According to the court brief, Tanaka did not attempt to dispute that the trademarks on the products she sold were not just similar, but identical to Tory Burch's marks, and that the handbags, wallets and jewelry Tanaka sold were alleged “knockoffs” of Tory Burch products.

“The similarity of the [opposing] parties’ trade channels and customers increases the likelihood of confusion,” the court opinion stated.

The court decided Tanaka’s claim that her products sold on eBay were mere listings and did not constitute advertising was unworkable, saying that eBay was in fact a vehicle for advertising products.

In addition, the court termed as “bad faith” Tanaka putting a tag on her products that they were 100 percent guaranteed authentic, saying it was an alleged attempt to derive benefit off the reputation of the plaintiff.

The evidence presented by Tory Burch in-house counsel Wendy Kaplowitz showed five items Tanaka displayed on eBay exhibiting the Tory Burch logo next to actual items Tory Burch sells.

The plaintiffs requested a summary judgement against Tanaka including allegations of counterfeiting, Florida trademark dilution, injury to business reputation, false advertising and copyright infringement.

The court decided that a summary judgement holding Tanaka liable for Florida trademark dilution was not warranted as the plaintiff had not made specific claims regarding the state in its motion. The court also found accusations of state common-law trademark and unfair competition claims inapplicable because the fashion company had not made clear which state law had been violated.

“Without knowing which state law applies, the Court has no way of evaluating whether Tory Burch’s burdens under both state and federal law are coextensive,” the opinion stated.

Claims of counterfeiting, federal trademark dilution, federal false advertising, federal copyright and trademark infringement and federal unfair competition were granted summary judgment, though the amount of damages will be resolved during the trial period, the opinion said.

U.S. District Judge Robert N. Scola Jr. presides over the case.

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