Gucci America, Inc. v. Guess?, Inc.
2012 WL 2304247, 868 F. Supp. 2d 207, 2012 U.S. Dist. LEXIS 84232 (2012)
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Rule of Law:
Intentional copying of a senior user's famous trademark elements creates a strong inference of a likelihood of confusion, supporting claims for trademark infringement and dilution, even if the junior user's products are not identical and are sold at a different price point.
Facts:
- Gucci America, Inc. ('Gucci'), a luxury fashion house, has for decades used and heavily promoted iconic designs, including a green-red-green stripe ('GRG Stripe') and a repeating diamond pattern with interlocking Gs ('Repeating GG Pattern'), particularly in a brown and beige color scheme ('Diamond Motif Trade Dress').
- Guess?, Inc. ('Guess') is a mid-market fashion brand that positions itself as a trend-follower.
- In 2007, Guess's footwear licensee, Marc Fisher Footwear ('MFF'), sent emails to its manufacturer with instructions to make a stripe detail on a shoe 'Green/Red/Green like the GUCCI,' and offered to send a Gucci shoe as a sample.
- Guess and its licensees developed a 'Quattro G Pattern,' which was a repeating diamond pattern featuring the letter G.
- In 2006, to develop a two-tone woven canvas fabric, an MFF designer sent clippings of Gucci's Diamond Motif fabric to an Italian supplier, who sent back samples referred to as 'as Gucci' fabrics.
- Internal communications at Guess and its licensees acknowledged the similarity of their Quattro G pattern to Gucci's design, with one email noting a Guess shoe 'looks so similar to Gucci but it is nice,' and another executive stating the pattern was 'pretty close to the Gucci pattern.'
- Guess first used a 'Square G' design in 1996, two years after Gucci began using its similar 'Stylized G' mark but before that mark had become famous.
- In 2008, Guess began using a 'Script Guess' logo that Gucci alleged was confusingly similar to its 'Script Gucci' trademark.
Procedural Posture:
- Gucci America, Inc. filed a complaint against Guess?, Inc. and its licensees in the U.S. District Court for the Southern District of New York.
- Gucci alleged trademark infringement, trade dress infringement, trademark dilution, and unfair competition under the Lanham Act and New York law.
- Gucci also sought cancellation of Guess’s '4G Square Repeating Logo' trademark registration.
- Defendants answered, denying all claims, raising affirmative defenses, and filing a counterclaim to cancel Gucci’s 'Stylized G' trademark registration.
- On a motion for partial summary judgment, the court ruled that Gucci was not entitled to monetary relief on certain dilution claims.
- The case proceeded to a bench trial before Judge Scheindlin.
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Issue:
Does a competitor's intentional copying of distinctive elements from a luxury brand's famous designs for use on lower-priced goods constitute trademark infringement and dilution, even if the overall products are sold under the competitor's own brand name?
Opinions:
Majority - Judge Shira A. Scheindlin
Yes, a competitor's intentional copying of a luxury brand's distinctive design elements for use on lower-priced goods constitutes trademark infringement and dilution. The court found that Guess and its licensees intentionally copied Gucci’s GRG Stripe and its Diamond Motif Trade Dress in bad faith to trade on Gucci's reputation and goodwill. For the GRG Stripe, the evidence of intentional copying was so egregious that it created a likelihood of confusion without a full analysis of the Polaroid factors. For the Quattro G Pattern, the court applied the Polaroid factors and found that while the patterns were not identical, Guess's bad faith and the visual similarities—especially in the brown/beige colorway—created a likelihood of post-sale confusion and dilution by blurring. However, infringement was limited to specific product variations that created the same overall commercial impression as Gucci's designs. The court rejected Gucci's claims regarding the Script Guess mark, finding it was not similar to the Script Gucci mark, and also rejected claims regarding most of the Square G designs, finding them dissimilar or protected by Guess’s innocent use.
Analysis:
This decision significantly clarifies the boundary between permissible inspiration and illegal infringement in the fashion industry. It affirms the viability of post-sale confusion theory, where liability attaches not because the initial buyer is confused, but because the public at large may be confused upon seeing the infringing product. The case establishes that strong evidence of intentional copying can be decisive in finding infringement, even when products are sold in different market tiers and under different brand names. The court’s remedy—limiting financial recovery to profits from only the specific colorways and styles found to be infringing—demonstrates a nuanced approach that tailors relief directly to the harm caused, rather than issuing a blanket condemnation of an entire product line.
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