Luxottica Group S.P.A. v. Li, No. 16 C 487 & 1227, Slip Op. (N.D. Ill. Feb. 15, 2017) (Shah, J.).

Judge Shah granted plaintiffs (collectively “Oakley”) summary judgment of Lanham Act trademark infringement and counterfeiting and awarded statutory damages of $60,000 in this case involving Oakley’s WAYFARER and ALHAMBRA marks.

Defendants did not dispute likelihood of confusion. Instead, defendants argued that WAYFARER was descriptive of a broad style of sunglasses based upon its frequent use. The Court held that defendants could not prove that WAYFARER was descriptive of a shape of sunglasses. The Court noted that defendants’ argument sounded more like a genericness argument, but because they did not make that argument the Court did not consider it. Defendants did not contest infringement of the ALHAMBRA marks.

Defendants arguments in favor of minimal damages were unpersuasive. Their “bare-bones” anti-counterfeit measures were insufficient. Oakley’s requested $90,000 was well below the maximum damages allowed. Considering defendants’ purposeful infringement, Oakley’s efforts to promote and protect its brands, and defendants’ ability to reach a “vast” customer base, a high award was necessary to compensate plaintiffs, penalize defendant and deter future unlawful acts. The Court, therefore, awarded $60,000 in damages for the WAYFARER violations and the same amount for the ALHAMBRA marks.

The Court also awarded a permanent injunction against future counterfeit sales. Finally, the Court awarded reasonable attorney’s fees and costs because defendants counterfeiting was exceptional.