Luxury brands Cartier, Chloé, Montblanc, et al. win summary judgment against second largest B2B website
Clients Richemont International, et al.
Jones Day secured a significant ruling for firm clients Cartier, Chloé, Alfred Dunhill, MontBlanc, Panerai, and A. Lange & Söhne against TradeKey Pvt Ltd. and SISCOM (collectively "TradeKey") the operator and owner of the self proclaimed second largest B2B website.
Judge Feess of the Central District of California granted summary judgment against TradeKey for contributory counterfeiting, contributory trademark infringement, and related state claims, finding TradeKey operated a virtual swap meet where they knowingly supplied the services of their B2B website to thousands of TradeKey members offering for sale counterfeit goods in bulk and assisted Premium Members to offer for sale counterfeits bearing plaintiffs’ marks.
TradeKey had argued the luxury brands needed to submit notice and takedown requests based on the Tiffany v. eBay case. The court agreed with the brand owners’ argument that TradeKey had the legal knowledge required to be held responsible where it actively promoted and facilitated the sale of counterfeits goods through thousands of member listings offering replica or fake goods, the services TradeKey.com provided to the investigators posing as premium members, and the statements of TradeKey employees.
The Court granted broad injunctive relief essentially prohibiting any listing, displaying or use of the six luxury brands' trademarks on its websites and also ordered TradeKey to monitor its own website to ensure it is in compliance.
This win comes after multiple prior wins Jones Day secured for these six luxury brands, including court orders finding personal jurisdiction over the foreign operator and owner of the TradeKey.com websites; personal jurisdiction over the foreign owner and president of the 400+ employee companies based on a "guiding spirit" theory; granting the plaintiffs' motions to dismiss multiple counterclaims brought against the plaintiffs, their computer experts involved in a Lanham Act seizure to preserve evidence of counterfeiting and outside counsel for violations of the Stored Communications Act and Computer Fraud and Abuse Act; defeating a motion to disqualify plaintiffs' counsel brought 15 months after the start of the litigation; granting plaintiffs' motion for contempt against TradeKey for violations of a Consented Interim Injunction and a Default Order against individual defendants; and defeating an amended CFAA counterclaim brought by TradeKey on novel constitutional grounds.
Chloé SAS et al. v. Sawabeh Information Services Co. et al., Civil Action No. 2:11-cv-04147 (C.D. Cal.)