Baker & McKenzie
Learn about us Locally »
English (Change Language)
Baker & McKenzie
Learn about us Locally
and/or
Combining the knowledge of local laws and cultures with a global reach is just one of the ways Baker & McKenzie separates itself from other firms. Our genuinely global perspective allows us to operate without boundaries around the world, in every jurisdiction that is important to your business.

Select a region or country to learn about on-the-ground resources immersed in the local culture or Learn about us Globally to view our talent and services worldwide.

When content is available in multiple languages, please select your preference on the right.

LVMH Awarded USD32.4 Million in Contributory Copyright and Trademark Infringement Suit Against Web Hosters

Author/s: Pamela T. Church
In an important victory for intellectual property rights holders fighting online counterfeiters, a jury in the U.S. District Court for the Northern District of California found two web hosting businesses and their principal liable for contributory copyright and trademark infringement by reason of their hosting of websites selling counterfeit Louis Vuitton bags. Louis Vuitton Malletier SA ("LVMH") was awarded USD32.4 million in consequential and statutory damages. Significantly, Louis Vuitton Malletier SA v. Akanoc Solutions, Inc. et al (No. 07 Civ. 3952) is one of few cases (if not the only one) in which statutory damages have been awarded for contributory trademark infringement since the availability of statutory damages was added to the Lanham Act in 1996.

LVMH discovered that the Defendants were hosting websites selling counterfeit and infringing goods in late 2006, and sent the Defendants a number of notices requesting take-down, however, the websites either continued to operate unchanged, or were simply moved to new IP addresses. In August 2007, LVMH filed suit against the Defendants, alleging contributory and vicarious copyright and trademark infringement. The vicarious infringement claims were dismissed on summary judgment, however, the contributory infringement claims remained.

After trial, the jury found that 13 of the 15 trademarks and both of the copyrights enumerated in LVMH's complaint were infringed by Defendants customers. The jury also found that the Defendants acted willfully in contributing to their customer's direct infringement. LVMH was able to prove that the Defendants were aware of the counterfeit sales but did nothing. The jury awarded a total of USD31,500,000 in statutory damages for contributory trademark infringement against the three Defendants, and USD900,000 in statutory damages for contributory copyright infringement. The 1996 Lanham Act provides for statutory damages as an alternative to actual damages in civil counterfeiting litigation. Similar to statutory damages in copyright law, the Plaintiff is given the option to elect statutory damages when unable to prove actual damages.

The Louis Vuitton case differed factually from Tiffany v. eBay, a 2008 S.D.N.Y. case in which eBay was held not liable for facilitating the sale of counterfeit items on its website. In Tiffany, the district court found that eBay had taken significant measures to curtail and prevent counterfeit activities – for example, eBay had developed a fraud engine to check listings for counterfeits, and had developed a Verified Rights Owner program that rightsholders could use to police their trademarks and inform eBay through notice-and-takedown forms. In a separate case brought by LVMH against eBay in France, however, eBay was ordered last summer to pay over USD60 million in damages to LVMH in respect of the sale of counterfeits on its site.
Search Globally






or
Search Globally
Alphabetical by Last Name
Every day our more than 4,000 lawyers, economists, tax advisors and other professionals share insights and best practices across borders and practices. We speak more than 75 languages and represent more than 55 nationalities, and the close relationships among our people fosters the trust needed to develop and deliver world-class solutions to multinational clients.

We share an uncompromising commitment to excellence, which explains why more of our lawyers are included as leading lawyers in the Chambers Global Guide to the World’s Best Lawyers than any other Global 20 law firm.

To find a Baker & McKenzie lawyer or other professional, enter a search parameter to the left.
Passionately global
We are passionately global — it's in our DNA.

We started with a vision of going global and were in eight countries before our 10th anniversary. Today we have 76 offices in 47 countries -- including the emerging markets so important to the growth of your business.
We offer world-class career opportunities around the globe, while our entrepreneurial culture makes Baker & McKenzie a unique place to develop professionally.

Explore us Locally by selecting a region, country or office below, or select Submit to view our site Globally.