Juicy Couture Unable to Block Hong Kong Website’s Counterfeit Goods
By: Amelia Wong
On March 12, 2013, a New York federal judge held that the Court did not have jurisdiction over the foreign entity Bella International Ltd. (Bella), a Hong Kong-based retailer, to ban Bella from selling alleged counterfeit Juicy Couture Inc. (Juicy) items on its Hong Kong website. The Court’s rationale was that Bella did not have enough ties to the United States for the Court to have jurisdiction over Bella.
Juicy first filed the Hong Kong suit against Bella in 2008, alleging trademark infringement because Bella sold “Juicy Girl” clothing and accessories. Juicy brought the U.S. action in July 2012 alleging that Bella violated U.S. and New York law by selling $3000 worth of Juicy Girl to U.S. consumers, some of which were Juicy Couture’s investigators.
Juicy sought an injunction to enjoin Bella from counterfeiting and infringing the Juicy mark. While Juicy was successful in obtaining a preliminary injunction to enjoin Bella from selling the goods to U.S. customers, the Court declined to exercise extraterritorial judgment over Bella’s foreign activities. The Court found that infringement was likely to exist because of the public recognition and strength of the Juicy mark. Additionally, the Court declined to exercise extraterritorial judgment because Bella’s activities in the U.S. were not enough to give an American court jurisdiction. The website only sold $3000 worth of merchandise to U.S. customers and U.S. customers were not its biggest target.
Judge Ronnie Abrams stated, “The strength of the plaintiff’s marks, similarities of parties marks and competitive proximity…all strongly favor the plaintiff…However, the court concludes that the Lanham Act should not be applied extraterritorially…to any other websites hosted abroad.” Judge Abrams further stated that the Hong Kong action would determine whether the Juicy Girl mark was enforceable in Hong Kong.
Juicy’s representative was pleased that the court recognized Juicy’s trademark and believed it was a good direction. Juicy is currently taking action against defendants in Hong Kong and Canada, believing that the Court’s trademark recognition would play a strong role in future cases.
Judge Abram’s decision is significant because she refused to apply the Lanham Act to a foreign company and left it up to the Hong Kong courts to decide. This could be viewed as a weakness because “Juicy Girl” items are still available on .hk websites. If trademark infringing items are allowed to be sold on international websites, U.S. consumers can still access these websites and purchase the items through E-commerce. Due to the fast-paced nature of technology and E-commerce, Judge Abram’s decision could instead be seen as a setback to trademark protection.