Fashion, Retail and Consumer Products

EXPERIENCE & RECENT REPRESENTATIONS

Beauty products manufacturer Coty Inc. in its:
- $1.14 billion initial public offering
- Purchase of OPI, a manufacturer and marketer of nail care and skin care products
- Acquisition of skin care and cosmetics company Philosophy, Inc.
- Investments from two private equity funds
- $2.5 billion credit facility
Apparel company Iconix Brand Group with its:
- Joint venture with Reliance Brands in India to sell fashion and home brands from the Iconix portfolio, including Ed Hardy, Mossimo, London Fog and Ocean Pacific
- Licensing matters and support relating to the sale of Umbro France by Nike Inc. to Noël France
- Private offering of $400 million of convertible senior subordinated notes
Footwear and apparel manufacturer Wolverine World Wide with its:
- Joint venture with Forus SA to form Lifestyle Brands of Colombia to market footwear in Colombia
- Joint venture in India with Tata International Limited for the sale and distribution of products using Wolverine brands in India
Catterton Partners in its:
- Equity investment in the initial public offering of portfolio company Restoration Hardware, a luxury home furnishings retailer
- Investment in Baccarat, a designer and manufacturer of crystal glass
- Sale of portfolio company Frederic Fekkai, a manufacturer of luxury beauty and hair care products, to Procter & Gamble
Proenza Schouler, LLC, the luxury womenswear and accessories company, in its:
- Sale of a significant equity interest to Castanea Partners
- Licensing agreements for new product categories and international retail boutiques
Tiffany & Co. in its offering of senior notes ranging from $50 million to $250 million.
Sandbridge Capital in its equity investments in:
- Thom Browne, Inc.
- Derek Lam International
- The owner of the Rossignol brand
Goldman, Sachs & Co. as financial adviser to:
- Belk in its sale to Sycamore Partners
- Ascena Retail Group in its acquisition of Ann Inc.
- Saks Inc. in its sale to Hudson’s Bay Company
Amazon.com, Inc. in its:
- $847 million acquisition of Zappos.com, Inc., an online retailer of footwear and apparel
- Investments in LivingSocial.com, an online coupon company
- Sale of AbeBooks, an Internet retailer of used books

Representing Gucci America, Inc., Balenciaga America, Inc., Bottega Veneta Inc., Yves Saint Laurent America, Inc. and their parent company, Kering S.A. against a group of online merchants who were responsible for sales of counterfeit merchandise through the family of websites that The Wall Street Journal has called “China’s – and by some measures, the world’s – biggest online commerce company,” the Alibaba Group. Gibson Dunn obtained a temporary restraining order and preliminary injunction on the clients’ behalf and subsequently filed an additional complaint against the Alibaba Group and its affiliated companies, asserting: claims of contributory trademark infringement and counterfeiting for knowingly allowing the listed merchants to sell counterfeits; direct federal trademark infringement and dilution claims related to Alibaba’s use of the plaintiffs’ trademarks; New York State trademark claims; and a RICO claim.
Secured an important precedent for all trademark owners from the Second Circuit in affirming the most relevant parts of a series of orders that Gibson Dunn had previously obtained for luxury brands such as Gucci and Tiffany & Co. in combatting the sale of unlawful counterfeits. In particular, the Second Circuit unequivocally affirmed the injunctions issued against the defendant/counterfeiters in both cases, finding that “[t]he court had personal jurisdiction over the defendants, as well as the equitable authority to issue the prejudgment freeze” to preserve the availability of final equitable relief, such as an accounting of profits. Importantly, the Circuit found that “a district court need not preliminarily establish personal jurisdiction over a nonparty bank to restrain a defendant’s assets.” The Second Circuit further confirmed the authority of the district court to order a defendant to “‘freeze’ property under the party’s control, whether the property be within or without the United States.” The court further held in the Gucci case that the district judge had properly analyzed whether comity principles permitted the order compelling the Bank of China to produce documents relating to the defendants’ Chinese bank accounts. The district court had found, among other things, that the United States’ “powerful interest” in protecting intellectual property outweighed China’s demonstrably limited interest in bank secrecy and that the bank’s purported exposure to liability for producing the requested information was “unduly speculative.”
Successfully represented Gucci America, Inc. in a suit in the Southern District of New York against Frontline Processing Corporation, Durango Merchant Services and Woodforest National Bank on claims of contributory trademark infringement for having knowingly assisted websites selling counterfeit goods by facilitating credit card sales. Gibson Dunn defeated defendants’ closely watched motion to dismiss, in which they challenged the court’s personal jurisdiction and their liability for contributory trademark infringement. Gibson Dunn subsequently achieved a favorable settlement on the eve of trial.
Obtained a temporary restraining order and preliminary injunction on behalf of a U.S. sporting goods brand shutting down 476 separate counterfeiting websites by freezing their domain names.
Represented Tiffany (NJ) LLC and Tiffany and Company (Tiffany) in the Southern District of New York against multiple defendants on claims of trademark infringement and counterfeiting. Ruling on Tiffany’s request for multimillion-dollar statutory Lanham Act damages and other relief, a U.S. Magistrate Judge adopted a methodology for counting statutory damages that was then adopted by the district court and has served as a model in subsequent cases.
Successfully represented Gucci America, Inc., Balenciaga, S.A. and Balenciaga America, Inc. in an action for trademark infringement and counterfeiting in the Southern District of New York, obtaining an ex parte prejudgment asset freeze and, later, a default judgment. Plaintiffs sought discovery from United Overseas Bank (UOB) in connection with the defendant’s accounts at UOB’s Malaysian subsidiary. UOB refused to comply despite a court order to do so on the grounds of Malaysian bank secrecy law and lack of power over its subsidiary to force the turnover of documents. Rejecting these arguments, the court held the bank in contempt and imposed a daily coercive fine, following which a settlement was reached, all account documents were turned over and monetary compensation paid.
Obtained a series of temporary restraining orders and final judgments for Gucci, Chloé SAS, and Alfred Dunhill Ltd. in trademark infringement actions against operators of websites that sold counterfeit goods, requiring payments of $11.5 million and injunctive relief. As part of efforts to collect that judgment, Gibson Dunn obtained an order compelling the defendant/counterfeiter’s non-party foreign bank to comply with a document subpoena and an asset freeze injunction.
Represented Balenciaga America, Inc. and other manufacturers and sellers of luxury goods in the Southern District of New York against manufacturers of counterfeit versions of plaintiffs’ products, securing a favorable ruling on the issue of personal jurisdiction. The court denied the defendants’ motion to dismiss for lack of personal jurisdiction and failure to state a claim, and upheld a preliminary injunction freezing the defendants’ assets to secure plaintiffs’ right to equitable relief. The court subsequently entered judgment against the defendants, making that injunction permanent and awarding plaintiffs $12.4 million.

Secured a confidential settlement for Nike Inc. resolving its case against three former top Nike footwear designers in the Oregon Circuit Court less than six months after winning a TRO and a preliminary injunction preventing the designers from (1) disclosing misappropriated trade secrets, (2) working for Adidas or any Nike competitor, and (3) publicly associating themselves with Adidas on social media. Nike won a series of important victories over defendants and third-party Adidas during discovery, which exposed numerous breaches of contract by the defendants and led to revelations that they had destroyed relevant evidence.
Served as lead counsel to Foot Locker and its subsidiaries Footlocker.com and Eastbay in numerous patent litigations related to various technologies including ecommerce, web architecture, digital images, e-mail notification, gift cards and point-of-sale terminals. Gibson Dunn has further assisted Foot Locker in technology licensing and intellectual property counseling matters.
Successfully represented CytoSport’s “Muscle Milk” trademark and product in the Eastern District of California. After CytoSport obtained a preliminary injunction enjoining its competitor Vital Pharmaceuticals (VPX) from using the “Muscle Power” trademark, VPX brought a counterclaim that CytoSport’s promotion of its “Muscle Milk” product constituted false advertising. Gibson Dunn aggressively challenged VPX’s asserted evidence of consumer confusion in discovery and obtained an order precluding VPX’s expert from offering a consumer survey on the confusion allegedly caused by CytoSport. Gibson Dunn then obtained summary judgment, dismissing VPX’s false advertising claim, and negotiated a consent order converting the preliminary injunction against VPX’s “Muscle Power” product to a permanent injunction. That injunction cancelled VPX’s competing trademark registrations and withdrew VPX’s administrative challenges to CytoSport’s trademark registrations
Represented CNS Vital Signs, one of the leading sellers of neurocognitive testing software, in a case brought by its chief rival, Impact Applications, Inc. in the Western District of Pennsylvania, alleging that CNS’s concussion tests and their marketing infringed Impact’s trademarks and copyrights and otherwise constituted unfair and deceptive trade practices. In response to Gibson Dunn’s motion to dismiss, a U.S. Magistrate Judge recommended that it be granted but that Impact be given leave to replead. Gibson Dunn briefed objections and advocated for dismissal with prejudice, which the district court’s chief judge subsequently granted in light of Impact’s failure to file amended claims that cured the problems identified in Gibson Dunn’s papers.
Won Federal Circuit affirmance, on behalf of the University of Southern California (USC), of the Trademark Trial and Appeal Board’s decision to refuse registration of the “SC” trademark to the University of South Carolina. In 2002, USC formally opposed South Carolina’s application to federally register a stylized version of the “SC” trademark, alleging that South Carolina’s “SC” mark infringed on USC’s federally registered and common law “SC” marks. In response, South Carolina counterclaimed to cancel USC’s federal trademark registration for its “SC” interlock logo. The Board ruled that both universities’ marks are identical or confusingly similar and that they are used on identical or similar products that travel through the same trade channels. USC also prevailed on the issue of priority.

Obtained a landmark victory for the world’s largest retailer when the U.S. Supreme Court unanimously reversed class certification of the biggest employment discrimination class in history. Rejecting a 6-5 decision by the en banc Ninth Circuit, the Court held that a class plaintiff must come forward with “significant proof” that an employer operated under a “general policy of discrimination.” In a case where such proof “is entirely absent” and plaintiffs’ evidence is “worlds away” from the required significant proof, the case lacks commonality and cannot proceed as a class action.
Represented the Retail Industry Leaders Association and the United States Chamber of Commerce in an amicus brief in the U.S. Supreme Court supporting the grant of certiorari in an important ERISA preemption case. The Ninth Circuit decision in the case conflicted with a Fourth Circuit case that Gibson Dunn won in 2007.
Advised Abercrombie & Fitch Co.’s compensation committee with respect to executive compensation plans and arrangements and related SEC disclosure obligations.
Represented Fossil Stores, the U.S. retail store chain, in California in a wage and hour class action involving termination pay.

Represented the fast-food chain McDonald’s Corporation in a variety of antitrust counseling and government-related matters in the United States and Europe. Gibson Dunn previously secured summary judgment for McDonald’s before a U.S. district court and, on appeal, before the Ninth Circuit in a case involving allegations of federal antitrust and Washington state law violations.
Obtained very favorable settlement for Amazon.com in the BookLocker antitrust class action in U.S. federal court in Maine. Gibson Dunn acted as lead counsel in the case, which involved a challenge to Amazon.com’s arrangements for purchasing print-on-demand books and got considerable attention in the publishing industry.

Obtained voluntary dismissal of a consumer class action for client Coty Inc. in the Southern District of California. Plaintiff asserted claims under California’s Unfair Competition Law and Consumers Legal Remedies Act for breach of express warranty in connection with Coty’s marketing of its Rimmel London Lash Accelerator Mascara with Grow-Lash Complex product. As a result of Gibson Dunn’s motion to dismiss for lack of federal subject matter jurisdiction, plaintiff voluntarily dismissed all claims.
Reached an extraordinarily successful resolution for Frito-Lay and PepsiCo. in a Proposition 65 case filed by the attorney general of California that sought to make the company post cancer warnings on its potato chips. Gibson Dunn was retained in the middle of fact discovery and helped the company reach a settlement that did not require any warning to be posted on its products.
Won Seventh Circuit affirmance of the Northern District of Illinois’s dismissal with prejudice of all claims against Panda Express, the popular Chinese food and restaurant chain, arising from Panda’s buy-out of a former business partner. The plaintiff, an investor in the former partner, attempted to bring claims previously advanced and settled by the former partner and sought multimillion-dollar damages, including punitive damages, against Panda’s founders. The Circuit held that the causes of action were improper and already released shareholder derivative claims under Delaware law, and that any individual allegations failed to state a claim.
Won unanimous federal appellate victory for Peerless Importers as intervenor-defendant upholding the constitutionality of New York state’s ban on direct shipments of out-of-state wines to in-state consumers. The U.S. Supreme Court ultimately overturned these state laws. Successfully defended Peerless in class action brought by delinquent retailers seeking a price preference afforded to prompt payers.

Represented Home Depot in a series of lawsuits in states around the United States that have denied Home Depot refunds on monies that it remitted as sales tax in connection with its private-label credit card program transactions on which the consumers then defaulted.

Secured approval from the City of San Francisco for Urban Realty, Inc. to construct a $65 million retail shopping center on Market Street, San Francisco’s busiest thoroughfare. The project, six stories tall and approximately 375,000 square feet in size, will be the first major new construction project on Market Street in the past several years.
Represented developer Universal Paragon Corporation as its lead counsel in negotiations to develop Brisbane Baylands, a project expanding over approximately 600 acres in the Baylands area of California. The proposed project includes over eight million square feet of mixed commercial, office, retail, restaurant and open space uses.
Represented Rockpoint Group, L.L.C. in connection with a joint venture acquisition and financing of an office/retail project in the Georgetown section of Washington, D.C.
Served as lead counsel in the successful process to secure unanimous approval of the redevelopment of the 238-acre Hollywood Park Racetrack with a new mixed-used community. This multibillion-dollar Inglewood, California, project is composed of approximately 620,000 square feet of retail, a hotel, a card room, housing units, a four-acre school or civic site and 25 acres of public parks and open space, all centered on a lake and waterfall.
Represented Fifteen Group, LLC in its redevelopment of Wyvernwood Gardens in Los Angeles, one of the largest privately owned housing complexes west of Chicago. The existing housing complex is being replanned and zoned. Future development plans are anticipated to involve a $2 billion redevelopment of the site with 300,000 square feet of mixed commercial/retail uses, housing units and 10 acres of improved public open space and parks.
Served as lead counsel to the developer Treasure Island Community Development in a joint venture among Wilson Meany Sullivan/Stockbridge Real Estate Funds, Lennar and Kenwood Partners in its negotiations to redevelop the former Naval Station at Treasure Island and assist the City of San Francisco in negotiating for the transfer of the former base. The project proposes a sustainable neighborhood on Treasure Island, centered on a new ferry terminal, approximately 250,000 square feet of retail space, residential units and 300 acres of open space and recreation.
Served as lead counsel to the developer Stellar Management in its proposed redevelopment of San Francisco’s Villas Parkmerced, the largest residential project in San Francisco. The project would construct a new neighborhood core containing a supermarket and retail stores and would implement an advanced sustainability plan.

Fashion, Retail and Consumer Products

LEADERS

Howard S. Hogan

Overview

EXPERIENCE & RECENT REPRESENTATIONS

RECENT PUBLICATIONS

Second Circuit Issues Important Ruling on Trademark Settlements and Antitrust/IP Interface

How Trade Dress Law Has Evolved During COVID

COVID-19 Relief Bill Creates New Small Claims Copyright Board, Stronger Criminal Penalties for Illicit Streaming

New Law Creates Procedural Tools to Challenge Fraudulent Trademark Filings and Formalizes Presumption of Irreparable Injury for Trademark Violations

Should the Law Treat Profit Awards Differently in Trademark Infringement and Dilution Cases?

Navigating TM Profits Remedy After High Court Decision

Supreme Court Holds That A Federal Ban on “Immoral or Scandalous” Trademarks Violates the First Amendment

Gibson Dunn Earns 79 Top-Tier Rankings in Chambers USA 2019

SEC Warns Public Companies on Cyber-Fraud Controls

Supreme Court Finds Failure to Prove a Sherman Act Section 1 Violation in Credit Card Market

WTR1000 Recognizes Gibson Dunn’s Trademark Work

The Beginning of the End, or the End of the Beginning? The General Court’s Ruling in the Coty Case

Supreme Court Strikes Down Ban on Registration of Disparaging Trademarks on First Amendment Grounds

Supreme Court Establishes National Test to Determine When an Artistic Element of a Useful Item Is Protectable Under the Copyright Act

Corporate Social Responsibility Statements – Recent Litigation and Avoiding Pitfalls

E-Textiles: Regulating The Future Of Fashion

Drone Privacy: Voluntary Best Practices Released by Multi-Stakeholder Group

Follow the Money

FTC Enforcement Targets Native Advertising

Webcast – From Distressed to Dressed: Overcoming the Challenges and Realizing Opportunities for Fashion, Retail, and Consumer Businesses

U.S. CFPB Announces Rulemaking To Curtail Use Of Arbitration Agreements That Bar Class Actions In Consumer Financial Contracts

IP Suit Over Katy Perry Dress Faces Big Hurdles

A Practical Guide to the Use of the Commissioned Public Report as an Effective Crisis-Management Tool

Lynch Provides ‘Beast Mode’ Seminar on use of Trademarks

U.S. Supreme Court Endorses Use of Issue Preclusion to Prevent Court Litigation of Issues Tried Before Administrative Trademark Board

Cybersecurity and Data Privacy Outlook and Review: 2015

2014 Year-End Update on Corporate Non-Prosecution Agreements and Deferred Prosecution Agreements (Bloomberg BNA’s Securities Regulation & Law Report)

New FTC Report Sets Out Principles Likely to Influence Regulation of the “Internet of Things”

Federal Circuit Restates Test to Evaluate Trademarks That Use Geographic Terms

Ninth Circuit Decision Reaffirms New Paradigm on Interplay Between First Sale, Import Rights Under the Copyright Act, Suggests Continuing Viability of Copyright Misuse Defense

Supreme Court Resolves Circuit Split, Holds That Jury Should Decide Whether a Current Trademark Is Close Enough to a Predecessor to Benefit from Historic Use

Key Issues In The Global Game Of Luxury M&A

U.S. Supreme Court Resolves Circuit Split on Standing to Bring Lanham Act False Advertising Claims

U.S. Commerce Department Announces Plan to Accelerate Transition to Private Management of the Domain Name System

The Glamorous Side of Intellectual Property Law

A Look At Shareholder Activism In The Retail Sector

Selective Distribution and e-Commerce: Recent developments in EU and national case law

OSHA’s New Emphasis on the Retail Industry

RPM Under EU Competition Law: Some Considerations From a Business and Economic Perspective

Limited Purpose Bank Charters for Commercial Firms: The End of the Dodd-Frank Moratorium

Indian Government Amends Foreign Direct Investment Policy

The CPSC’s Latest Attempts to Expand Its Enforcement Authority

SEC Issues Guidance on Use of Social Media to Disseminate Corporate Information

Federal Trade Commission Updates Online Advertising Disclosure Guidelines; Addresses Mobile Devices and Social Media

U.S. Supreme Court Holds That a Covenant Not to Sue Can Moot a Trademark Challenge

Indian Government Liberalizes Foreign Direct Investment in the Retail Sector

Shining the Light on California’s “Shine the Light” Law

Five Tips for Directors of Retail and Consumer Products Companies

Nationwide Privacy Class Action Dismissed in In re iPhone Application Litigation Based on Lack of Article III Standing

New Decision Confirms Federal Courts’ Power to Freeze Counterfeiters’ Overseas Assets and Order Production of Foreign Bank Records

Social Media and the Federal Securities Laws

European Commission Adopts Retail Market Monitoring Report

Important New Decision Establishes That Credit Card Processors May Be Held Liable as Contributory Trademark Infringers for Knowingly Servicing Merchants Who Sell Counterfeits

Strategies for Allocating Long-Term Value In Fashion and Apparel License Agreements

Liability of Directors with Special Expertise under Federal Securities Law and Delaware Corporate Law