Fendi Adele, S.R.L. v. Ashley Reed Trading, Inc.
507 F. App'x 26
2d Cir.2013Background
- Fendi Adele S.R.L., Fendi S.R.L., and Fendi North America, Inc. sue Ashley Reed Trading, Inc. and associated defendants for trademark counterfeiting, false designation of origin, and dilution under the Lanham Act and New York law.
- The district court granted summary judgment finding willful infringement and ordered disgorgement of profits for 2005–2006, with trebled damages, prejudgment interest, costs, and attorneys’ fees.
- Liability was deemed established for 2001–2006 based on Minerva’s testimony and circumstantial evidence of improper sourcing and record-keeping.
- Ashley Reed unsuccessfully argued acquiescence and laches as defenses to the claims.
- The court calculated damages using Ashley Reed’s 2005–2006 profits, without deducting costs due to lack of proof of specific cost deductions.
- Fendi cross-appealed, challenging the limitation of damages to 2005–2006; the court remanded for an equitable determination.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Acquiescence and laches barred claims? | Fendi did not actively consent; suit timely after discovery of counterfeit. | Defenses require active consent or unreasonable delay prejudicing defendant. | Neither defense succeeds; claims not barred. |
| Admissibility of Minerva deposition testimony? | Minerva’s testimony establishes liability and internal checks confirming counterfeit findings. | Minerva testimony was inadmissible or improperly relied upon. | Court properly admitted; evidence supports liability. |
| Infringement period liability pre-2005? | Liability extends 2001–2006 based on similar sourcing and conduct. | Pre-2005 infringement requires direct proof; not shown. | Liability resolved for 2001–2006 on summary judgment. |
| Willfulness must be proven at summary judgment? | Willfulness not strictly required due to Lanham Act amendment in some circuits. | Willfulness must be shown; disputed facts remain. | Willful infringement shown; summary judgment appropriate. |
| Damages deduction for costs in profits? | Deductions from gross revenue should reduce profits before trebled damages. | Burden to prove cost deductions; none shown. | District court correctly declined to deduct costs. |
Key Cases Cited
- ProFitness Physical Therapy Ctr. v. Pro-Fit Orthopedic & Sports Physical Therapy P.C., 314 F.3d 62 (2d Cir. 2002) (evidence admissibility and burden on summary judgment)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (willful blindness concept in infringement)
- Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257 (2d Cir. 2005) (standard for willfulness in trademark cases)
- United States v. 755 Forest Road, 985 F.2d 70 (2d Cir. 1993) (willfulness can be proven without actual knowledge)
- Scott v. Harris, 550 U.S. 372 (2007) (test for crediting testimony on summary judgment)
- Louis Vuitton Malletier S.A. v. LY USA, Inc., 676 F.3d 83 (2d Cir. 2012) (standard for equitable consideration in damages awards)
- Manhattan Industries, Inc. v. Sweater Bee by Banff, Ltd., 885 F.2d 1 (2d Cir. 1989) (deduction of costs from profits in damages analysis)
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment burden-shifting framework)
- Ellicott Square Court Corp. v. Mtn. Valley Indem. Co., 634 F.3d 112 (2d Cir. 2011) (standard for reviewing summary judgment de novo)