Luxottica Group S.p.A. V. Li, No. 16 C 487 & 1227, Slip Op. (N.D. Ill. Feb. 25, 2017) (Shah, J.).

Judge Shah granted plaintiffs Luxottica and Oakley (collectively “Luxottica”) Fed. R. Civ. P. 56 motion for summary judgment in this Lanham Act dispute regarding Wayfarer sunglasses and earrings bearing Luxottica’s marks.

Defendant operated several online stores selling counterfeit goods, specifically sunglasses and earrings. Defendant conceded that Luxottica’s trademarks were valid and incontestable. Defendant also conceded likelihood of confusion. Defendant’s defense was based upon fair use, but that failed. Defendant argued that it was using wayfarer to describe the shape of the sunglasses and that it was used so frequently across the internet that it no longer was understood to distinguish Luxottica’s sunglasses, but a shape of sunglasses. But “wayfarer” does not describe any characteristic of the sunglasses. Therefore, the argument failed.

Defendant’s argument was almost a genericness argument, but because it was not explicitly or fully made, the Court did not consider it.

Considering defendant’s “bare-bones” procedures to avoid infringement, the purposeful nature of the infringement, Luxottica’s efforts in protecting its marks, and the vast reach of defendant’s internet shops, a high award was necessary to compensate Luxottica, penalize defendant and deter future infringement. Defendant’s “inadequate” efforts to minimize its infringing activities mitigated the damages “to some degree.” The Court, therefore, awarded $60k in damages.

The Court entered a permanent injunction. Luxottica showed irreparable harm based upon the confusion created by defendant’s infringing activities and the balance of harms favored Luxottica. Being enjoined from breaking the law was not a hardship.

The Court also awarded Luxottica reasonable attorney’s fees  because it was required for cases of intentional use of a counterfeit mark. The Court ordered the parties to comply with Local Rules 54.1 & 54.3 to determine the appropriate fees.