## Facts

- Gucci owned federally registered “GUCCI” word and “G/GG” design marks used on luxury accessories, including handbags, wallets, watches, and jewelry.
- Duty Free Apparel, Ltd. (a Manhattan retailer) sold merchandise in-store and through a website; Joel Soren was its president.
- Gucci investigators made test purchases from Duty Free Apparel, including a wallet and handbags marketed as Gucci products at luxury-level prices.
- After suit began, Duty Free Apparel identified Harvest Wrap, Inc. as its source for Gucci-branded goods; Harvest Wrap was owned by Kurt Davidsen.
- Gucci’s quality-control expert examined the purchased items and related backpacks linked to the supply chain and concluded the items were counterfeit based on specific physical and manufacturing inconsistencies (e.g., stitching, hardware, labels/markings, serial numbers, and materials).
- Gucci moved for partial summary judgment on federal liability against Duty Free Apparel, Soren, Harvest Wrap, and Davidsen, and sought a permanent injunction barring further counterfeit sales.

## Issues

1. Whether the Gucci-branded goods sold by Duty Free Apparel and supplied through Harvest Wrap were counterfeit and infringed Gucci’s federally protected marks.
2. Whether Duty Free Apparel and Soren were liable for trademark infringement based on documented sales and Soren’s role in the business.
3. Whether Harvest Wrap and Davidsen were liable for supplying counterfeit goods into commerce, including under indirect liability theories.
4. Whether Gucci was entitled to permanent injunctive relief to prevent continued infringement.

## Decision

- The court granted Gucci partial summary judgment on liability on its federal trademark claims against Duty Free Apparel, Soren, Harvest Wrap, and Davidsen.
- The court found the record established the goods were counterfeit and that defendants failed to raise a genuine dispute of material fact on authenticity or responsibility.
- The court issued a permanent injunction barring defendants from future dealings in counterfeit Gucci merchandise and imposing restrictions designed to prevent continued infringement.

## Legal Principles

- Counterfeit use of a registered mark on the same type of goods supports liability when unrebutted evidence shows the goods are not genuine.
- In counterfeit-mark cases, use of identical marks on the same categories of goods supports a finding (and practical presumption) of consumer confusion absent contrary evidence.
- A corporate officer may be personally liable for trademark infringement when the officer is an active, moving force behind the infringement or has the authority to supervise the infringing conduct.
- A supplier who places counterfeit goods into commerce may be liable under indirect liability doctrines where knowledge or willful blindness is supported by the circumstances.
- Summary judgment is appropriate on trademark counterfeiting claims when purchase evidence, expert analysis, and supply-chain proof are unrebutted and defendants do not present evidence creating a triable fact dispute.
- Permanent injunctive relief is appropriate where infringement is established and the record shows a risk of ongoing or repeated violations.

## Conclusion

The court held that documented sales, expert proof of counterfeit characteristics, and supply-chain evidence established federal trademark liability as a matter of law for both the retailer and its principals and supplier, and it entered a permanent injunction to prevent further trafficking in counterfeit Gucci goods.


Gucci Am., Inc. v. Duty Free Apparel, Ltd., 286 F. Supp. 2d 284 (S.D.N.Y. 2003)