Christian Dior Couture SA v. Lin

Background

Christian Dior Couture SA and Louis Vuitton Malletier sued defendants over the unauthorized use of their registered trademarks on counterfeit products. The opinion describes the defendants as street sellers and shop owners in New York City who sold counterfeit bags, backpacks, scarves, and other goods. After a New York City Police Department raid in Chinatown in fall 2022, nearly $10 million in counterfeit goods were seized from the defendants and others.

The plaintiffs asserted claims for trademark counterfeiting, trademark infringement, trademark dilution, false designation of origin, unfair competition, passing off, and injury to business reputation and dilution of trademark. Nine other defendants had previously entered consent judgments. The motion addressed nine defendants: Xiaole Lin, Yongchan Zhang, Xiaoliu Wang, Guo L. Huang, Fei Y. Lu, Xingyun Hu, Yu Hu Qu, Cai Qin Xie, and Xiaowei Gao.

Liability

The court applied the two-part test used by the Second Circuit for trademark claims: whether the mark is entitled to protection and whether the defendant’s use is likely to confuse consumers about the origin or sponsorship of the goods. The plaintiffs submitted proof of their registered trademarks, which established the first part of the test. The court held that a separate multi-factor confusion analysis was unnecessary because counterfeit products, by their nature, cause confusion.

The court therefore held that liability was established and granted summary judgment as to all nine defendants.

Statutory damages

The Lanham Act permits a trademark owner to elect statutory damages instead of actual damages before final judgment. The opinion states that the ordinary statutory range is $1,000 to $200,000 per counterfeit mark per type of goods sold, and that the range increases to $1,000 to $2 million when the conduct is willful. The plaintiffs requested $1 million per counterfeit mark per type of goods sold, which they calculated as more than $650 million overall.

The court instead awarded $50,000 per mark per type of goods sold. In setting the amount, it considered the defendants’ sales prices, the uncertainty about the plaintiffs’ lost revenue, the high value of the Dior and Louis Vuitton marks, deterrence, the defendants’ willful conduct, and the defendants’ apparent roles as street sellers rather than manufacturers or high-level producers. The court stated that the resulting awards would be in the tens of millions and were appropriate under the circumstances.

The court listed these awards, per defendant and brand, as inclusive of fees and costs:

- Xiaole Lin: $1,550,000 to Dior and $1,050,000 to Louis Vuitton. - Yongchan Zhang: $1,000,000 to Dior and $4,700,000 to Louis Vuitton. - Xiaoliu Wang: $1,450,000 to Dior and $2,950,000 to Louis Vuitton. - Guo L. Huang and Fei Y. Lu: $700,000 to Dior, joint and several, and $4,00,000 to Louis Vuitton, joint and several. - Xingyun Hu: $1,000,000 to Dior and $3,800,000 to Louis Vuitton. - Yu Hu Qu: $950,000 to Dior and $3,400,000 to Louis Vuitton. - Cai Qin Xie: $1,450,000 to Dior and $4,200,000 to Louis Vuitton. - Xiaowei Gao: $250,000 to Dior and $250,000 to Louis Vuitton.

Other relief and disposition

The court ordered the parties to settle a proposed permanent injunction within ten days of the order in order to receive the requested equitable relief. Judge Alvin K. Hellerstein also directed the clerk to terminate the plaintiffs’ motion, identified as ECF No. 168. The opinion grants summary judgment and statutory damages; it does not itself state that the permanent injunction was entered.