## Facts

- Chanel, Inc. sold luxury goods using registered trademarks.
- Italian Activewear of Florida, Inc. imported and sold designer-labeled goods, including items bearing Chanel marks.
- Mervyn Brody, Italian Activewear’s president and chief operating officer, arranged purchase and importation of handbags and belt buckles bearing Chanel trademarks from a European broker who was not an authorized Chanel dealer.
- Some of the Chanel-marked goods were resold to California buyers; Myron Greenberg (a friend and business associate of Brody) introduced Brody to these buyers and expected a percentage of their purchases.
- The goods were later determined to be counterfeit, and Chanel seized the items sold to the California buyers.
- After learning of the seizure, Greenberg went to the store and removed the remaining Chanel-marked merchandise, placing it in his car.
- Brody asserted he believed the goods were genuine and claimed to have made some effort to verify authenticity; other facts supported an inference that he disregarded obvious risks.
- Chanel sued for Lanham Act trademark infringement and sought mandatory treble damages and attorneys’ fees under 15 U.S.C. § 1117(b) based on intentional use of a counterfeit mark.
- The district court granted summary judgment on infringement liability against the corporation, Brody, and Greenberg; issued a permanent injunction; and awarded treble damages and attorneys’ fees against all three under § 1117(b).

## Issues

1. Whether summary judgment properly established Italian Activewear’s liability for trademark infringement based on selling counterfeit Chanel-marked goods.
2. Whether summary judgment properly imposed personal liability on Brody as a corporate officer based on his role in the infringing conduct.
3. Whether summary judgment properly imposed personal liability on Greenberg based on his participation in sales activity and removal of goods after the seizure.
4. Whether summary judgment properly found “intentional” infringement with knowledge of counterfeiting, triggering mandatory treble damages and attorneys’ fees under 15 U.S.C. § 1117(b).

## Decision

- Affirmed summary judgment that Italian Activewear infringed Chanel’s trademarks.
- Affirmed summary judgment imposing personal liability on Brody for the infringement.
- Vacated summary judgment imposing personal liability on Greenberg and remanded for factfinding.
- Vacated the award of treble damages and attorneys’ fees under § 1117(b) and remanded because intent and knowledge were not established as a matter of law.
- Affirmed in part, vacated in part, and remanded for further proceedings.

## Legal Principles

- Selling or distributing goods bearing a counterfeit mark constitutes trademark infringement under the Lanham Act where the counterfeit nature and use in commerce are undisputed.
- A corporate officer may be personally liable for trademark infringement when he personally participates in, or directs and controls, the infringing acts.
- Enhanced remedies under 15 U.S.C. § 1117(b) require proof that the defendant intentionally used a counterfeit mark and knew the mark was counterfeit.
- Summary judgment is generally inappropriate where intent, knowledge, and competing inferences from the evidence create a genuine dispute of material fact.
- Personal liability for non-officer participants depends on fact-specific proof of active participation and requisite knowledge.

## Conclusion

The Eleventh Circuit held that the corporation’s infringement and the president’s individual responsibility were established on summary judgment, but it required trial-level factfinding on whether the infringement was intentional and knowing for § 1117(b) remedies and on whether a non-officer associate’s conduct and knowledge justified personal liability.


Chanel, Inc. v. Italian Activewear of Fla., Inc., 931 F.2d 1472 (11th Cir. 1991)