Litigation Practice
K&S Succeeds In Appeal Reversing Dismissal of Personal Jurisdiction Over Internet Counterfeiting Operation
Chloe v. Queen Bee of Beverly Hills, LLC (2010)
K&S successfully prosecuted an appeal before the Second Circuit, reversing dismissal of a case against an internet counterfeiting operation on personal jurisdiction grounds. The opinion is important to clients who seek to enforce their rights against on-line infringers. The internet has proven to be a powerful tool for marketing of goods – including infringements and counterfeits. The Second Circuit decision allows trademark owners to bring suit in a more convenient location, such as where the trademark owner operates its business, and not only where the counterfeiter resides. The decision is ground-breaking in its implicit rejection of the reasoning of some courts that a website directed to the entire country is not directed to any single state.
K&S Successfully Appeals Denial of Trade Dress Registration
In re Cartier, N.V. (TTAB 2010)
K&S successfully prosecuted an appeal before the Trademark Trial and Appeal Board, reversing the denial of registration of Cartier’s famous Pasha Chronograph design as a trademark. The Board re-affirmed that it evaluates secondary meaning on the totality of design elements and found secondary meaning was amply proven.
K&S Obtains Over $1 Million Judgment Against On-Line Counterfeiters; Husband Of Principal Held Liable As “Partner”
Act II Jewelry, LLC dba lia sophia v. Zhu (EDVa. 2010)
K&S obtained a judgment in excess of $1 Million against an on-line counterfeiting operation in Virginia. The principal, Mu Ying Zhu, sold over $300,000 of counterfeit “lia sophia” brand jewelry on eBay, using the name “2008JewelryQueen.” The court, after finding liability on summary judgment, held a jury trial which found Zhu a willful infringer, and awarded treble profits and attorney’s fees. The jury also found Zhu’s husband, James Mullins, liable as her partner in the on-line counterfeiting business. In an issue of first impression, the court held that, under the Virginia Uniform Partnership Act, this finding of a partnership rendered the husband jointly liable for treble damages and attorney’s fees.
K&S Obtains $7.2 Million Default Judgment Against Counterfeit Handbag Distributor
Chloe v. Queen Bee of Beverly Hills, LLC (2009)
K&S obtained a $7.2 Million default judgment against Alexander Zar, a prominent fashion dealer, who supplied counterfeit goods to numerous entities throughout the United States.
K&S Obtains $1 Million Consent Judgment On Eve Of Trial
Chloe v. Designer Imports USA (2009)
After obtaining an ex parte seizure order and conducting full discovery, this counterfeiting action on behalf of fashion house Chloe was set for trial. Defendant sought to exclude the most damning evidence of willful conduct. K&S succeeded in obtaining highly favorable rulings that kept that evidence in. The counterfeiter then quickly agreed to $1 Million judgment to avoid trial.
The evidence the counterfeiter sought to exclude was developed from records subpoenaed from Defendant’s Customs broker. K&S is, to our knowledge, the only firm to have used this type of evidence.
K&S Succeeds In Establishing Validity Of 40 Year Old Copyright Thought To Have Been Abandoned To The Public Domain
Van Cleef & Arpels v. Landau Jewelry (2008)
Van Cleef & Arpels is a world famous fashion house, known as the “Jeweler to Royalty.” Among its successful products is its Alhambra jewelry line. First designed and introduced in 1968, in the last decade it has enjoyed a revival, with skyrocketing sales and abundant media exposure. But with success comes imitation – knockoff jewelry at all price levels became rampant.
Van Cleef had a copyright registration for the Alhambra design. However, when introduced in the United States in the late 1960s, the items in the line lacked a copyright notice. Under the law in effect at the time, that meant loss of copyright.
K&S succeeded in establishing that Van Cleef was entitled to a restoration of the copyright under the little known Uruguay Rounds Agreement Act, which restored foreign copyrights in such situations. This required a detailed showing of the history of creation and publication of the work in the U.S. and abroad. Working with foreign counsel, K&S was able to make a compelling showing, and obtained a summary judgment ruling that Van Cleef owned a valid and subsisting copyright in the design.
K&S Litigates Trade Dress Case Against Heidi Klum And Obtains Favorable Settlement
Van Cleef & Arpels v. Heidi Klum GmbH (2008)
Van Cleef & Arpels introduced a highly successful jewelry design in 1968, known as the Alhambra. The original design was covered by copyright, whose validity was established in another case. But beginning in 2000, Van Cleef created a number of design variations, all with a similar design theme but with substantial design variations as well.
When famous model and designer Heidi Klum began marketing jewelry with similar designs, Van Cleef needed a strong legal theory to pursue. Neither copyright nor trade dress rights fit the broad range of designs in the Alhambra line. K&S successfully argued that the Alhambra line constituted a family of trade dress. After several months of litigation, we were able to obtain a favorable settlement, including a phase out of the offending line.
Ms. Klum later remarked in an interview: “Van Cleef — they have a thousand lawyers. I’m a small fry next to that.” In actuality, those thousand Van Cleef lawyers were three K&S lawyers on the case.
K&S Obtains $100,000 Judgment In Trade Dress Case
Cartier v. Samo’s Sons (2008)
Cartier’s famous Tank Francaise line was copied and sold by various New York City jewelers. K&S obtained favorable settlements from all but one jeweler. As to the remaining jeweler, Cartier obtained summary judgment on liability for trade dress infringement, saving the need for client witnesses to testify at trial. It then obtained a $100,000 profits award after a bench trial on damages. Judgment was later affirmed by the Second Circuit.
K&S Obtains Asset Freeze Over Software Counterfeiter
McAfee, Inc. v. Cao (2007)
Software manufacture McAfee assisted the New York Police Department in conducting a raid and criminal prosecution of a notorious software counterfeiter. After conviction, McAfee was surprised to learn that the authorities intended to return the monies seized in the raid after the criminal fine was paid by the counterfeiter! K&S quickly filed a federal civil action and obtained a temporary restraining order freezing returns of these assets. The counterfeiter soon settled the case, with the bulk of the freezed assets paid out to McAfee in settlement.
K&S Establishes That Altered Luxury Watches Are Counterfeit As A Matter Of Law
Cartier v. Symbolix, Inc. (2005)
Cartier v. Aaron Faber Jewelry, Inc. (2005)
Cartier v. Premier Leasing Group, Inc. (2005)
K&S succeeded in putting a stop to a practice among jewelers which plagued its client, the well-known jewelry house Cartier. Small jewelers were taking genuine Cartier watches, adding diamonds thereon, and then passing them off to the public as genuine Cartier watches with factory mounted diamonds. K&S succeeded in having such watches declared counterfeit as a matter of law and obtained preliminary and the later permanent injunctions against the practice. K&S also obtained substantial damage awards from the jewelers.
K&S Prevails Over Jeweler Selling Knockoff Design Watches, Establishes Trade Dress Rights In Four Famous Watch Lines
Cartier v. Four Star Jewelry Creations (2004)
K&S won a trade dress case after trial against jeweler Four Star Jewelry Creation, Inc., which had been selling close copies of four famous Cartier watch designs. K&S lawyers established that these designs are protected as Cartier’s trade dress under Section 43(a) of the Trademark Act. It obtained both permanent injunctive relief and damages.
K&S Obtains $2 Million In Statutory Damages And A Contempt Finding In Counterfeiting Case
Gucci v. Duty Free Apparel (2004)
K&S obtained a $2 Million statutory damages award on behalf of Gucci America, Inc. in a case brought against a notorious high-end counterfeiter. In the same case, the counterfeiter was found to be in willful contempt of a permanent injunction entered in conjunction with a summary judgment on liability.
K&S Uses Patent Marking Statute To Force A Lower Settlement Of Design Patent Case
Vetrerie Bruni SpA v. Shonfeld’s (USA), Inc. (2003)
Plaintiff asserted a design patent for a decorative bottle. The accused item was only a small part of our client’s line, so it did not mind discontinuing that one item. But settlement talks foundered when the plaintiff demanded an exorbitant payment for past sales. K&S relied on the patent marking statute – which requires the item to be marked with the patent number, or else damages are limited to the time after actual notice of the patent. This legal argument (and the spectre of a partial summary judgment on the issue) convinced the plaintiff to make a substantial cut in its settlement demand. A settlement agreement was then easily reached.
K&S Obtains 15 Year Ban On Dealings In Branded Goods From Major Membership Warehouse Chain
Gucci America, Inc. v. Costco, Inc. (2003)
Fashion house Gucci America, Inc. had been plagued for years by Costco, a national warehouse chain, which had been selling Gucci branded goods, some genuine, others counterfeit or otherwise infringing. K&S finally settled one infringement case with entry of permanent injunction barring for fifteen (15) years sales of any goods, genuine or counterfeit, bearing the GUCCI mark.
K&S Established That ISPs Are Not Immune From Claims Of Secondary Trademark Liability
Gucci America, Inc. v. Hall and Associates (2001)
In case of first impression, K&S established that Internet Service Providers (ISPs) such as web-hosting companies, can be held secondarily liable for trademark infringement by allowing their services to be used by websites to sell infringing goods. The court rejected immunity arguments raised under the Communications Decency Act of 1996.
Patent Practice
K&S Overcomes Patent Office Rejections to Secure Allowance of Patent Claims Directed to the Use of Statistical Analyses to Determine a Genotype
U.S. Patent Number 7,585,466, Automatic Genotype Determination
K&S took over prosecution of a patent application based on the use of Bayesian statistics to assign a genotype. After receiving rejections based on both prior art and failure to comply with the written description and enablement requirements, K&S successfully overcame the allegations and obtained valuable patent rights.
K&S Receives over Forty-Five Notices of Allowances for siRNA patents
siRNA is a technology that is based on the phenomenon that short double stranded RNA has the ability to silence gene expression. K&S drafted and prosecuted to allowance over sixty patents for this technology (with more in the pipeline).
K&S Successfully Opposes Kerr McGee Patent In European Patent Office
K&S prepared and caused to be filed opposition papers in the EPO that resulted in the revocation of EP 0 565 342, which was assigned to Kerr McGee and directed to a titanium dioxide pigments.
K&S won on appeal to the Board of Patent Appeals and Interferences U.S. Patent Number 6,656,290.
K&S successfully appealed an inorganic soldering technology finally rejected by the United States Patent Office.
K&S secured allowance on U.S. Patent No. 6,946,125 directed to method of treating West Nile Virus.
K&S drafted and prosecuted patents directed to methods of treating West Nile Virus Infections using Interferon.
K&S performed numerous diligences on Intellectual Property on technology involving medical devices and new biological and pharmaceutical compositions.
K&S Successfully Opposes Parlanca Patent in European Patent Office
K&S prepared and caused to be filed opposition papers in the EPO that resulted in the revocation of EP 0 970 244, which was assigned to Parlanca Limited and directed to a method and system of identification of a meat product by genotyping.
K&S Causes Reexamination of Patent by United States Patent Office of Patent Subject to Litigation
U.S. Patent Number 5,241,972, Method for Debulking Tissue
After analyzing a patent asserted against its client, the Laser Spine Institute, in litigation, K&S identified a substantial new question of patentability and caused the United States Patent Office to commence a reexamination proceeding with respect to that patent.
K&S Has Prosecuted 120 Design Patents
K&S has prosecuted 120 design patents to protect valuable client rights in ornamental designs. These designs range from luxury goods such as watches, pens and perfume bottles to accessories for electronic equipment.
Trademark Practice
K&S Successfully Opposes Registration By Notorious “Register Squatter”
Montblanc-Simplo GmH v. United Brands (2009)
Montblanc has enjoyed trademark rights in its name MONTBLANC for close to a century. But in 2008, a company filed an application for MONT BLANC for over 130 types of high technology, computer related products. Given the different product lines, showing confusion would be difficult.
K&S obtained discovery that the applicant had no business plans or other concrete proofs of its intent to use the proposed mark on the product. It then obtained summary judgment finding no bona fide intent to use the mark on such products, and denying the application.
K&S Obtains Multiple Trade Dress Registrations For Watch Designs
U.S. TM Reg. Nos. 3,208,458; 3,282,739; 3,282,739; 3,282,846; 3,282,847; 3,211,038; 3,211,039
After K&S prevailed in a trade dress litigation involving watch designs, it used the detailed bench decision and trial record to obtain seven trademark registrations for these designs from the Trademark Office. Such registrations provide perpetual protection to the client in these designs, so long as they continue to be used. Indeed, after five years, they will enjoy incontestable status under the Trademark Act.
K&S Obtains Trade Dress Registration For Pen Design
U.S. TM Reg. No. 3,659,753
K&S has obtained trade dress protection for designs for other products. K&S obtained a trademark registration for the STARWALKER Pen Design created and marketed by famous pen designer Montblanc-Simplo GmbH.