Although trumpeted in the legal and fashion press as a major counterfeiting victory on summary judgment, absent the severe sanctions imposed on the defendants in River Light V, L.P. and Tory Burch LLC v. Lin & J International, Inc., 2014 WL 6850966 (S.D.N.Y. Dec. 4, 2014) (“Tory Burch”), plaintiffs might not have prevailed at all at this stage; and even in victory, the opinion deals almost entirely with infringement, not counterfeiting. In Tory Burch, the plaintiffs sued an individual defendant and three companies she controlled for counterfeiting and trademark infringement over their use of symbols that were similar to Tory Burch’s ubiquitous logo. Following a series of sanctions against the defendants for egregious litigation conduct, including striking defendants’ opposition to the summary judgment motion, Tory Burch won an unopposed motion for summary judgment.

A typical motion for summary judgment may be granted only when all of the submissions taken together “show that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law,” with the movant bearing the burden of demonstrating the absence of material fact and the court viewing all facts in the light most favorable to the non-moving party. Fed. R. Civ. P. 56(a); Eastman Kodak Co. v. Image Tech. Servs., Inc., 504 U.S. 451, 456 (1992). However, when a motion for summary judgment is unopposed, a court must merely “ensure that each statement of material fact is supported by record evidence sufficient to satisfy the movant’s burden of production” and “must determine whether the legal theory of the motion is sound.” Jackson v. Fed. Exp., 766 F.3d 189, 194 (2d Cir. 2014).  That standard significantly directed the outcome in Tory Burch.

First, press reports of the opinion skipped over the fact that it deals almost entirely with proof of trademark infringement, not counterfeiting.  In addition, in assessing likely confusion on the infringement claim, Tory Burch benefitted from the relaxed standard on an unopposed summary judgment motion.

For example, in Tory Burch, the Court used two pieces of record evidence to find the presence of actual customer confusion: (i) the fact that U.S. Customs agents seized some of the defendants’ products, unprompted, believing them to be counterfeits of Tory Burch products; and (ii) the results of a survey conducted by Tory Burch’s expert.  Neither of those bits of evidence showed consumer confusion.  The first showed lack of confusion by Customs agents, and did not involve consumers.  The second measured only likely confusion, not actual confusion.

There were also potential issues with the survey, absent an unopposed motion: the sample size was relatively small and photos were used to test for post-sale confusion rather than using actual products as they are worn by consumers, which is the preferable way to test for post-sale confusion. See, e.g. J.M.D. All-Star Import and Export Inc., 486 F. Supp. 2d 286, 289 (S.D.N.Y. 2007) (“an allegedly counterfeit mark must be compared with the registered mark as it appears on actual merchandise to an average purchaser”).

To be sure, the result reached by the SDNY in Tory Burch was correct in this matter because of the egregious conduct of the defendants described by the court.  But this decision is limited by the context in which it was decided – a motion for summary judgment in which the opposition was stricken; and it remains curious as to why the press needed to portray this as a counterfeiting – rather than infringement – victory.