Background and Overview:
In September 2015, Coty, along with its licensors Calvin Klein, Vera Wang, and Lady Gaga, filed a lawsuit in U.S. District Court for Southern District of New
York against Excell Brands, LLC, a manufacturer of so-called â€œalternative fragrancesâ€ marketed
as â€œversionsâ€ of genuine Coty fragrances. See Coty Inc. v. Excell Brands, LLC, No. 15-cv-7029
(JMF), 2017 WL 4155402 (S.D.N.Y. Sept. 18, 2017). Excell offered â€œversionsâ€ of popular Coty
fragrances in packaging that closely resembled Plaintiffsâ€™ packaging, bearing names that
evoked the product names of the originals, as shown in the representative examples below:
In addition, Excell used Plaintiffsâ€™ house and product marks prominently in purported disclaimers
on the front and back of its packaging. The legend on the front of the boxes identified the Excell
fragrance as â€œOur Version ofâ€ the Coty fragrance, while the legend on the back stated that that
the Excell fragrance â€œis not associated with the makers ofâ€ the Coty fragrance, as by the
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The lawsuit targeted 21 specific knock-off fragrances offered by Excell as â€œversionsâ€ of various
Calvin Klein, Vera Wang, Lady Gaga, and JOOP! fragrances. Plaintiffs asserted claims for
trademark infringement, unfair competition, trademark dilution, and false advertising. Excell
raised defenses of nominative fair use (claiming that its use of Plaintiffsâ€™ marks in its legends
was a legitimate form of comparative advertising) and laches. The case proceeded to trial in
March of this year before Judge Furman in the U.S. District Court for the Southern District of
New York. On September 18, Judge Furman issued a 67-page opinion and order.
The Courtâ€™s Decision: Judge Furman found Excell liable on each of Plaintiffsâ€™ claims and
soundly rejected Excellâ€™s fair use defense. He awarded Plaintiffs both permanent injunctive relief
as well as Excellâ€™s gross revenue on its sales of the relevant fragrances, totaling more than $6.5
million. The courtâ€™s decision includes numerous findings and conclusions that help to advance
the law in this area, and provides brand owners with new ammunition to rein in the alternative
fragrance and similar parasitic industries going forward. Highlights include:
ï‚· Every one of Excellâ€™s 21 fragrances at issue was found to â€œblatantly copyâ€ and infringe the corresponding Coty original. This includes certain Excell fragrances with names and/or packaging less similar to Cotyâ€™s originals than others, and so provides a basis to pursue knock-off fragrances that do not mimic the original fragrances so closely.
ï‚· Excellâ€™s â€œdisclaimersâ€ were ineffective, and actually made confusion more likely because â€œCotyâ€™s marks are more prominent and accentuated on Excellâ€™s fragrances than both the supposedly disclamatory language (â€˜Our Version Ofâ€™ and â€˜Not Associated Withâ€™) and Excellâ€™s own marks.â€
ï‚· Excellâ€™s use of Plaintiffsâ€™ marks in its purported â€œdisclaimersâ€ dilutes those marks both by â€œblurringâ€ (weakening their distinctiveness) and by â€œtarnishingâ€ (associating them with inferior goods) under both federal and state law. This holding provides a strong basis to pursue other knock-off manufacturers using similar legends.
ï‚· â€œOur Version Ofâ€ implies to consumers that the products are â€œsimilar, if not equivalentâ€, and constitutes false advertising when the products are not close substitutes. This holding should also prove extremely helpful in pursuing other knock-off companies using similar language.
ï‚· The court categorically rejected Excellâ€™s fair use defense: â€œExcellâ€™s fair use argument would be on firmer ground if it sold its fragrances in generic bottles and cartons, picked fragrance names that were unrelated to any of Cotyâ€™s, included its disclaimers without prominently displaying Cotyâ€™s typesetting or marks, and marketed its own brand on the packaging in a noticeable manner.â€ This puts those in the alternative fragrance industry on notice that if they wish to rely on fair use, they had better significantly minimize their use of the branding indicia of the original products.
The decision also establishes a number of other points that will be helpful to brand owners in future enforcement efforts, such as inferring actual confusion and bad faith from copying, and applying the concepts of initial-interest and post-sale confusion, which are useful to reach knock-off products sold at lower price points and through different channels than the originals.