GMA Accessories, Inc. v. BOP, LLC
765 F. Supp. 2d 457
S.D.N.Y.2011Background
- GMA owns the CHARLOTTE mark (Registration #2,535,454) for clothing in Class 25.
- Electric Wonderland operates a showroom broker for fashion brands and earns commissions on sales.
- Charlotte Solnicki goods were shown in Electric Wonderland’s showroom labeled 'Charlotte Solnicki.'
- GMA filed suit in Apr 2007; Electric Wonderland was served in Apr 2008 and default was entered, later vacated.
- Court denied summary judgment on liability for direct and contributory infringement; addressed damages and counterfeiting claims.
- Court held Charlotte is a suggestive mark with weak inherent strength and weighed Polaroid factors to assess confusion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Direct liability for infringement | GMA contends Electric Wonderland used Charlotte in commerce via showroom sales. | Electric Wonderland argues it did not label or sell Charlotte goods itself. | Summary judgment on direct liability denied |
| Contributory liability knowledge | GMA asserts Electric Wonderland knew or should have known of infringement. | Electric Wonderland argues no actual knowledge and only late notice. | Material facts disputed; summary judgment on contributory liability denied |
| Likelihood of confusion under Polaroid | GMA claims strong mark and confusing similarity with Charlotte Solnicki goods. | Electric Wonderland argues weak mark strength and insufficient visibility in showroom context. | Dispute of material fact; summary judgment denied |
| Damages under 15 U.S.C. §1117(a) | GMA seeks monetary relief based on willful violation and/or actual confusion or bad faith. | Electric Wonderland argues pre-1999 and current standards require actual confusion or bad faith. | Actual confusion or bad faith required; damages claim denied |
| Counterfeiting claim | GMA asserts Charlotte labeling constitutes counterfeit markings. | Electric Wonderland contends labeling is not identical or substantially indistinguishable nor counterfeit. | Counterfeiting claim granted |
Key Cases Cited
- Famous Horse Inc. v. 5th Ave. Photo Inc., 624 F.3d 106 (2d Cir. 2010) (use in commerce and likelihood of confusion framework)
- Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (Polaroid eight-factor likelihood of confusion analysis)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (contributory infringement standard; knowledge required)
- Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) (marks strength categories and distinctiveness)
- Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (establishes eight-factor test for likelihood of confusion)
- In re Inwood Laboratories, Inc., 456 U.S. 844 (Supreme Court, 1982) (definition of use in commerce and related liability scope)