Thursday, November 11, 2010

Name-Brand Retailer Can Pursue False Ad Suit Against Wholesaler of Counterfeit Jeans

This posting was written by William Zale, Editor of CCH Advertising Law Guide.

Famous Horse, operator of the name-brand clothing retailer V.I.M., had standing to assert a Lanham Act claim that wholesalers of counterfeit Rocawear jeans falsely advertised that V.I.M. was a satisfied customer, the U.S. Court of Appeals in New York has ruled.

Standing to Sue

The federal Circuits have split on the issue of standing under Sec. 43(a) of the Lanham Act, the court observed. The Seventh, Ninth, and Tenth Circuits have applied a strong categorical requirement that a commercial plaintiff bringing an unfair competition claim must be in competition with the alleged false advertiser. The Third, Fifth, and Eleventh Circuits applied a more flexible standard.

Famous Horse had standing whether the more flexible reasonable interest test or the stronger categorical requirement was applied. Famous Horse, which sold genuine Rocawear jeans, was clearly in competition with the wholesalers, who sold counterfeit Rocawear jeans, the court found.

The V.I.M. chain of stores, according to Famous Horse, was known for selling genuine name-brand clothing at very low prices. Famous Horse alleged that it was uniquely affected by the wholesalers’ sale of counterfeit Rocawear jeans in two ways: first, its reputation as a discount store was harmed because consumers believed that it sold Rocawear jeans at inflated prices compared to counterfeit jeans supplied by the wholesalers; and second, consumers who learned of counterfeit Rocawear jeans on the market would believe that V.I.M. similarly peddled counterfeit clothes.

Reasonable Interest to Protect

The court held that Famous Horse alleged a reasonable interest to be protected against the wholesalers’ alleged false advertising as well as a reasonable basis for believing that this interest would be damaged by the alleged false advertising.

Proof of actual losses would be difficult, in the court’s view, given that V.I.M. stores operated in a large market that included luxury retailers selling name brands at full price, discounters of various stripes, and numerous counterfeiters selling fake versions of name brands. Famous Horse alleged sufficiently plausible claims, however, to overcome a motion to dismiss.

The opinion in Famous Horse, Inc. v. 5th Avenue Photo Inc. will be reported at CCH Advertising Law Guide ¶64,046.

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