The image of “inseparable love’ created by the Cartier Love Bracelet is one which has captured the hearts or romantics all across the globe. The concept of the bracelet “locked” onto your wrist by your lover in all its 7000$ glory, creates a beautiful symbolism, resulting in the bracelet becoming a status symbol among wealthy teenagers and young adults since the 2010s. However, many find it unfair that it is only those with the financial upper hand have been able to live this experience, hence resulting in the market for counterfeits or “inspired by” pieces.
A counterfeit refers to the imitation of something authentic, with the intent to deceive the public into believing it to be the original. This was what was alleged by Cartier and Amazon in June of 2022[1].
The two companies banded together to file a lawsuit against a social media influencer and eight other businesses for advertising, promoting, and facilitating the sale of counterfeit products through Instagram and other websites, hereby infringing on Cartier’s trademark and Amazon’s integrity policy[2].
A case was initiated in the U.S District Court for the Western District of Washington with the plaintiff alleging that the defendants engaged in a campaign to sell counterfeit Cartier products, particularly the love bracelet in the Amazon Store.
The plaintiff further pleaded that while the defendant(s) claimed to be selling non-branded items on their page, such was not the case when the product arrived. The counterfeit of the Love Bracelet was initially listed as “Women’s Fashion Classic Screw Love Titanium Steel Bracelet”, with no mention of Cartier or the iconic screw motif of the Love bracelet. However, when customers purchased the generic product from Amazon, what they received was a counterfeit of the Love bracelet that bore the Cartier trademark.
The plaintiff further alleged that the accused directed buyers to their Instagram account which further directs the followers to links for other counterfeit Cartier products.
Under these circumstances, the plaintiffs listed six claims of relief including allegations of trademark and contributory trademark infringement. However, the question arises as to whether or not the infringement would be flagged if it weren’t for the simple addition of the Cartier mark, irrespective of the design of the bracelet.
It also brings the question of infringement of the LOVE Trade Dress, with both the look of the screw motif and the function of it in the bracelet being identical to the Love Bracelet. It is strange how the issue of selling counterfeits was flagged by Amazon only after the Cartier trademark was revealed and not when the bracelet showed a clear copy of the Cartier design. We may also bring up the question as to why Cartier seems to have not addressed the gazillions of dupes openly being sold on the internet, social media in particular.
This article aims to analyze this ongoing case and point out potential outcomes as per the trends in Fashion Litigation, trademark, and patent infringement in the United States, and exploring the line between what may be considered a “counterfeit”, and what designs are simply “inspired” by another.
A genuine mark is a word, phrase, design, or combination that identifies goods or services and distinguished them from the goods and services of others. A counterfeit mark can be defined as an imitation of registered marks which are “likely to cause confusion, cause the mistake, or to deceive.[3]”
We can see how this plays out in the case of Rolex Watch USA, Inc. v. Canner[4] in which several Deputy United States Marshals seized counterfeit watches that bore the Rolex trademark, with the court identifying that the trademark stamped on the watches as identical to the originals, hence actively causing confusion and intentionally deceiving people’s eyes. The same can be said for the present case where the bracelet clearly bore the Cartier wordmark on the bracelet.
In order to prove trademark infringement, Cartier would be required to prove that (1) it owns a valid protectable trademark and (2) the infringers used the trademark commercially, without the consent of Cartier to deceive the public[5].
This would be fairly easy to prove considering that Cartier clearly owns a registered wordmark, furthermore, with Cartier being able to prove that the defendants are creating inferior goods, by comparing their bracelets with its own, it would be able to prove that the defendants are selling cheap quality duplicates at a low price in order to deceive the public.
The repercussions for counterfeiting have been elaborated on in Title 15 U.S. Code, Section 1114 (1)(a) which states that any person who, without the consent of the registrant, uses a counterfeit of a registered mark in a commercial reproduction, shall be liable in a civil action by the registrant.
Hence, it is this author’s opinion that in such a situation, the defendants would ideally be held accountable by the courts, considering the open and blatant use of the trademark without Cartier’s request. However, while the brand of Cartier has value unlike any other, one must also note that it’s not simply a name or mark that makes an item recognizable.
The Love Bracelet, with its unique design, has become an iconic piece of jewelry recognized worldwide, resulting in Cartier registering the LOVE Trade Dress in order to protect its collection, of which the bracelet is a part of. Hence, while the violation of the Cartier wordmark does require proper action, it seems odd that the brand did not seem to file a suit for the violation of trade dress.
The iconic and widely recognized screw mechanism of the bracelet, one of its main selling points, falls under the criteria of trade dress thanks to its recognizable shape and iconic screw function. The unique utility aspect of the screw satisfies the criteria required of a trademark, hence another intellectual property right which can be proved to have been violated by the defendants.
Furthermore, if we take a look back to 2018, we can take a look at the case of Cartier vs Wholesale Jewelry, where Cartier sued the defendant for infringing upon the “LOVE Trade Dress”, hence why Cartier has spared the countless numbers of dupes on the market until now is something we may never know.
We can also look at this case through the lens of copyright. The case of Herbert Rosenthal Jewelry Corp v. Kalpakian[6] can be used for questioning the line between an imitation (counterfeit) and an inspired piece of jewelry, in the sense that the court looked at the two bee pins in the case and established that copyright applies to the expression of an idea, and not the idea itself.
This is a potential argument that could have been made strongly by the defendants if the Cartier word mark had not been used. It could be argued that the bracelet being sold by the defendant was their expression of a certain idea and hence fell under copyright protection. The defendants could have also argued that the bracelet design was unique as it possessed a “spark of creativity”[7], the bare requirement for copyright protection in the USA.
However, if we apply the test of “substantial similarity[8]’a test of copyright, to the present case, the situation may run in the favor of Cartier again. The test has two prongs –
- Whether the defendants’ ideas, patterns and objective details of the product are “substantially similar” to that of the plaintiff.
- If the design choices were made in order to achieve the same visual impact as that of the plaintiff.
In the present case, the similarity of the design of the counterfeit to Cartier’s, the identical placement of the screw, etc, can be proved to have been done to have the same impact as the well-established jeweler, as well as being “substantially similar” to the design of the plaintiff, and giving Cartier a chance to seek relief for a breach of copyright.
A thorough physical comparison of pieces from both brands will be able to determine the aforementioned criteria, giving both parties a chance to prove their points and for the courts to determine what would be the best course of action.
All brands, big or small, have the right to protect their creations, however, this still does not diminish the issue of the several counterfeit items of multiple brands floating around the market. The exclusivity of a lot of these items makes them desirable to all, hence resulting in those who cannot afford the actual product, buying counterfeits. This does not justify the damage these products do to a brand, however, and hopefully, Cartier and Amazon will be able to get the justice they deserve.
[1] Amazon.com v. PHMN9Y3V, C22-840 MJP (W.D. Wash. Jul. 7, 2022); see also Amazon.com Inc et al v. YFXF.
[2] Id.
[3] 1715 (G). Trademark Counterfeiting-Requirements for a “Counterfeit Mark”, Criminal Resource Manual, The United States Department of Justice Archives, https://www.justice.gov/archives/jm/criminal-resource-manual-1715-trademark-counterfeiting-requirements-counterfeit-mark
[4] Rolex Watch USA, Inc. v. Canner, 645 F. Supp. 484, 489 (S.D. Fla. 1986).
[5] Jack Kealy, Is it Love? – Cartier and Amazon File Suit Alleging Fake Cartier Love Jewelry, ROMANO LAW (July 29,2022) https://www.romanolaw.com/2022/07/29/is-it-love-cartier-and-amazon-file-suit-alleging-fake-cartier-love-jewelry/
[6] Herbert Rosenthal Jewelry Corp. v. Kalpakian (446 F.2d 738 (9th Cir. 1971)
[7] What is Copyright, COPYRIGHT.GOV, https://www.wipo.int/trademarks/en/.
[8] Van Cleef Arpels Logistics v. Landau Jewelry, 583 F. Supp. 2d 461 (S.D.N.Y. 2008)
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