Gucci America, Inc. v. Duty Free Apparel, Ltd.
2003 U.S. Dist. LEXIS 17624, 2003 WL 22290216, 286 F. Supp. 2d 284 (2003)
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Rule of Law:
In a trademark infringement action involving counterfeit goods, once the plaintiff establishes a prima facie case with expert evidence that the goods are counterfeit, the defendant cannot defeat a motion for summary judgment with mere speculation or conclusory denials; the defendant must produce specific, hard evidence to create a genuine issue of material fact.
Facts:
- Gucci America, Inc. owns the registered trademark 'GUCCI' and its associated logos for luxury goods.
- On August 14, 2000, Gucci investigators purchased a wallet and a handbag purported to be Gucci products from retailer Duty Free Apparel Ltd. ('DFA').
- In May 2001, an assistant for Gucci’s counsel purchased a handbag purported to be a Gucci product from DFA's website.
- DFA identified its supplier of 'Gucci' goods as Harvest Wrap, Inc.
- In late 2002, Harvest Wrap sold numerous 'Gucci' backpacks to Sherry Dvorkin, an accessories reseller.
- Dvorkin provided two of the backpacks she purchased from Harvest Wrap to Gucci's attorneys.
- Gucci's quality control expert, Luciano Chiarelli, examined the five items (two handbags, one wallet, and two backpacks) and concluded all were counterfeit, identifying specific deviations from genuine Gucci products.
Procedural Posture:
- Gucci America, Inc. filed suit against Duty Free Apparel Ltd. (DFA) and its president, Joel Soren, in the U.S. District Court, alleging federal and state trademark violations.
- After DFA identified Harvest Wrap, Inc. as its supplier, Gucci amended its complaint to add Harvest Wrap and its owner, Kurt Davidsen, as defendants.
- Gucci filed a motion for partial summary judgment on the issue of liability for its federal Lanham Act claims against all defendants.
- Gucci also moved for a permanent injunction to prevent future sales of counterfeit merchandise by the defendants.
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Issue:
Does a defendant's sale of goods, which are identified as counterfeit by the plaintiff's expert, constitute a violation of the Lanham Act sufficient to grant summary judgment on liability when the defendant fails to offer any countervailing evidence beyond mere speculation?
Opinions:
Majority - Marrero, District Judge
Yes. A defendant's sale of goods identified as counterfeit by an expert violates the Lanham Act, and summary judgment is appropriate when the defendant fails to counter the plaintiff's prima facie case with specific, hard evidence. In cases of counterfeiting, the likelihood of confusion is presumed, so the court need not conduct the full 'Polaroid' factor analysis. The central issue becomes whether the goods are, in fact, counterfeit and whether the defendant sold them. Gucci presented a compelling prima facie case through its expert's detailed report and an established chain of custody for the items. Harvest Wrap’s opposition, which consisted of speculation that the items could be authentic but defective or that a witness may have substituted the bags, did not constitute the 'specific facts' or 'hard evidence' required to defeat summary judgment. Mere metaphysical doubt is insufficient to create a genuine issue for trial.
Analysis:
This decision solidifies the high evidentiary burden on defendants facing summary judgment in counterfeit trademark cases. It establishes that once a plaintiff presents credible expert testimony and evidence tracing the counterfeit goods to the defendant, the defendant cannot survive summary judgment by merely attacking the plaintiff's evidence with speculation. This ruling strengthens the hand of trademark holders by allowing them to resolve clear-cut counterfeit cases more efficiently, without the need for a full trial, unless the defendant can produce affirmative evidence (like their own expert) to genuinely dispute the facts.
