Wednesday, July 16, 2014

Victoria’s Secret v. Preferred Fragrance Ends with a Whimper?



As we noted in February, Preferred Fragrance, its former chief, and the company that acquired it were sued by L Brands, Inc. for trademark infringement. LB claimed that a series of PF products too closely resembled those of its own Victoria’s Secret and Bath & Body Works brands: VS Coconut Passion versus PF Coconut Dream, VS Mango Temptation versus PF Mango Seduction, and so on.

L Brands was looking for a jury trial in Federal court, destruction of the infringing products, disgorgement of profits, and treble damages. In anticipation of a good courtroom battle FN ordered up a supply of popcorn. Sadly, we never got around to popping it.

Yesterday FN commenter “Alex” (why the private Blogger profile, dude?) asked about the status of the lawsuit. We checked and lo and behold, discovered that the case had been settled less than a week ago. Hmmm. So how did it play out?

LB filed the complaint on February 6. There followed a bunch of boring, routine legal filings. Then, on April 25, attorneys for former PF head Ezriel Polatsek filed a motion to have him dismissed from the lawsuit. They claimed LB had failed to state a specific claim against him and that he was in the complaint solely because he was a corporate officer of JPF at the time of the alleged infringement, which by itself is not sufficient basis to hold him liable for the company’s actions. Judge Gregory Frost ordered a hearing on the motion and April 29 LB’s attorneys agreed to dismiss the claims against Polatsek.

By May 14, both sides had apparently reached a settlement. After some delays, the case was officially closed on July 10 (“Stipulated Dismissal With Prejudice” Case 2:14-cv-139-GLF-NMK Doc #33).

The terms of settlement have not, to our knowledge, been made public. There appears to have been no public statement by any of the parties. Mr. Polatsek seems to have wriggled off the hook. However we can no longer find the allegedly infringing Preferred Fragrance products for sale on the web. Does this mean PF quietly folded and pulled the items in question? Perhaps. From an economic point of view, knock-off brand may consider out of court settlements simply a cost of doing business. Of course it’s possible that L Brands, Inc. got spanked so badly in the negotiations that it agreed to go home quietly and empty-handed.

Nah.

3 comments:

Alex said...

I have my profile on private because I run several blogs and couple of them are X-rated, and I don't want people find out about it.

I think that a lot of big companies are quick to sue in order to intimidate and put pressure on smaller companies, all while making the news with PR statement. But once the time gets to going to court, the plaintiff gets laxed since he/she knows that the legal process is costly and that theres no guarantee of victory, so they are quick to settle or drop the case.

I remember several years ago, when I took the Fashion Law in college, the instructor taught us that while at first sight the products may look very similar, almost to a copy, but in court they break up every small detail to make the argument. Probably the same thing happened to Prada's lawsuit against PF's Party Candy; because PF's is still available for purchase on Amazon and in other online shops.

I found out about PF because I was doing a search on European American Designs - a company that makes knock-off fragrances that sell for $1.00 at Dollar Tree and Deals stores. And PF name popped-up in the searches, so I dug further until I stumbled upon their lawsuit with Prada, and then I stumbled upon this blog.

In conclusion, I think that these companies that are marketing knock-offs on a large scale are smart enough to design the packaging and the labels so they won't lose in court. A chain of retail stores called Aldi is also a big marketer of knock-off packagings and labels of well-known brands, but they don't seem to have run-ins with the court system. At least when it comes to trade dress.

Avery Gilbert said...

Alex:

I agree that trademark infringement suits are not as easy to win as they may appear to be to non-lawyers. Not sure I agree with your analysis that plaintiff motivation is just intimidation. After all, a trademark holder has an obligation to defend the mark lest he be seen as condoning infringing products; this would weaken his claim against true infringers.

Regarding the Preferred Fragrance products targeted by Victoria's Secret and BBW: I can't find them on Amazon or elsewhere. Leads me to suspect they were pulled from the market. On the other hand, as you point out, PF's Party Candy is still on Amazon. But that's a different lawsuit. I'll try to see what happened there.

Alex said...

I agree about trademark protection, but what I meant in my previous post is that some companies are quick to pull the trigger and fail to do the legwork.

I'm not for trademark infringement but I do like the freedom of choice and the idea of competition. I like the idea of being able to get a nice-smelling fragrance for cheap. Lot of fragrances these days are going "trough the roof": in 2008 an 3.4oz bottle of Dior's J'adore fragrance was priced at $88.00, now in 2014 the same fragrance is priced at $115.00. Knowing that there are decent knock-offs out there that can be purchased at the fraction of the original, makes me feel good that there is such a choice. Sure, the cheap juice is not as good as the original, but low price make my wallet happy.

I also like the goofy names that the knock-offs have, and its a habit of mine to check the dollar stores for new fragrances, as a novelty thing. Couple of days ago I seen this fragrance called Extreme Happiness, which was a knock-off of the CK Euphoria, and I burst out in laughter, because I remembered George Carlin's "More Than Happy" monologue.