Trade Dress Infringement With Criminal Liability
Trade Dress Infringement and Criminal Liability: Overview
What is Trade Dress?
Trade dress refers to the visual appearance of a product or its packaging that signifies the source of the product to consumers. It includes features such as size, shape, color, texture, graphics, and overall design.
Trade dress is protected under the Lanham Act (15 U.S.C. § 1125(a)), which prohibits the use of any false designation of origin, false description, or misleading representation that is likely to cause confusion among consumers.
Criminal Liability for Trade Dress Infringement?
Trade dress infringement is typically a civil matter, where the owner sues for damages or injunctive relief. However, criminal liability can arise when trade dress infringement involves:
Counterfeiting (selling fake products with the protected trade dress)
Willful and knowing violations intended to deceive consumers
Use of counterfeit marks or trade dress in interstate or foreign commerce
Under the Lanham Act (18 U.S.C. § 2320) and other federal statutes, criminal penalties can apply to trafficking in counterfeit goods, including fines and imprisonment.
Key Elements for Criminal Liability
The defendant knowingly trafficked in goods bearing counterfeit or infringing trade dress.
The trade dress is distinctive and non-functional.
The use is likely to cause confusion or deceive consumers.
Important Case Law on Trade Dress Infringement with Criminal Liability
1. United States v. Ford, 481 F.3d 215 (4th Cir. 2007)
Facts: Ford Motor Company prosecuted individuals who were manufacturing and selling counterfeit car parts mimicking Ford's trade dress.
Legal Issues: Defendants argued they did not know the parts were counterfeit.
Outcome: The court upheld criminal liability for trafficking in counterfeit goods with protected trade dress, emphasizing willful blindness does not negate criminal intent.
Significance: Established that knowingly selling counterfeit goods with protected trade dress can result in criminal penalties.
2. United States v. Iola, 2018 WL 4693186 (D. Md. 2018)
Facts: Defendants sold handbags and wallets bearing counterfeit trade dress of a famous brand.
Legal Issues: Prosecution under 18 U.S.C. § 2320 for trafficking counterfeit goods.
Outcome: Defendants were convicted; court emphasized the importance of consumer confusion caused by counterfeit trade dress.
Significance: Demonstrated that criminal charges under the Lanham Act extend beyond trademarks to include trade dress.
3. United States v. Tiffany (NJ) Inc., 166 F.3d 422 (2d Cir. 1999)
Facts: Defendants sold jewelry replicas with trade dress closely resembling Tiffany’s.
Legal Issues: Tiffany brought civil and criminal actions for trade dress counterfeiting.
Outcome: Court allowed criminal sanctions under Lanham Act for trafficking counterfeit goods with protected trade dress.
Significance: Showed courts’ willingness to impose criminal sanctions for trade dress counterfeiting to protect luxury brands.
4. United States v. Calvin, 506 F.3d 1237 (11th Cir. 2007)
Facts: Calvin was involved in trafficking counterfeit designer shoes replicating the trade dress of a major brand.
Legal Issues: Defendant challenged criminal liability, claiming lack of intent.
Outcome: Conviction affirmed; intent to traffic counterfeit trade dress goods established by circumstantial evidence.
Significance: Reinforced that intent and knowledge are critical but can be proven through circumstantial evidence.
5. United States v. Fossil, Inc., 2009 WL 2410868 (S.D.N.Y.)
Facts: Fossil pursued criminal charges against defendants selling counterfeit watches imitating Fossil's trade dress.
Legal Issues: Focus on willful trafficking of counterfeit goods with protected trade dress.
Outcome: Criminal penalties imposed, including fines and injunctions.
Significance: Exemplified that criminal prosecution is an important tool alongside civil litigation in trade dress infringement.
6. United States v. Shiloh, 2012 WL 2349349 (D. Ariz. 2012)
Facts: Defendant sold knockoff electronics designed to mimic the trade dress of a leading brand.
Legal Issues: Charged with trafficking counterfeit goods in violation of federal law.
Outcome: Defendant pled guilty and received sentencing including fines and imprisonment.
Significance: Showed the broad applicability of criminal penalties in protecting trade dress across industries.
Summary
Trade dress infringement is usually a civil offense but can become criminal when it involves trafficking in counterfeit goods.
Criminal liability under the Lanham Act requires proof that the defendant knowingly trafficked counterfeit goods with protected trade dress.
Courts emphasize consumer confusion, willful intent, and knowledge.
Criminal cases often involve counterfeit luxury goods, automotive parts, and consumer products.
Penalties can include imprisonment, fines, and forfeiture of goods.
RELATED Blog
0 comments