Date: 3/24/2017

Miami Partners George Mahfood and David Rosemberg Achieve Victory for Client

A Georgia federal jury on Tuesday February 28, 2017 found that an Atlanta-area shopping center owner, indoor flea market operator and several family members contributorily infringed Luxottica Group's Ray-Ban and Oakley's trademark rights in connection with market's tenant/vendors' sale of counterfeit Ray-Ban and Oakley trademarked sunglasses over a number of years. Jurors sided with the brand owner following a ten-day trial, and awarded statutory damages in the amount of $1.9mm according to the verdict form returned last Tuesday. But the jury also said that the contributory infringement was not willful.

Luxottica Group and Oakley's complaint, filed in April 2015, accused Defendants of contributory trademark infringement under the Lanham Act. Defendants Airport Mini Mall, LLC operates the indoor flea market known as Old National Discount Mall in College Park, Georgia. The discount mall operates under a landlord-tenant lease agreement with Yes Assets, LLC, the property owner. Both entities are owned by Jerome Yeh and his wife Jenny Yeh, and managed by their adult children Donald Yeh and Alice Jamison, and a third party property manager. Luxottica Group and Oakley say they first reached out to Defendants about their vendor/tenants counterfeiting activities in December, 2014 following a November 2014 raid in which federal and state law enforcement officers seized more than 8,000 counterfeit items, including counterfeit Ray-Ban and Oakley sunglasses from the market's tenant/vendors. Luxottica's investigators later returned to the mall in spring 2015 and discovered that vendors were still selling fake Ray-Ban sunglasses. In April 2015, Luxottica and Oakley sent a second cease and desist letter.

In October 2015, the Defendants filed motions for summary judgment, which U.S. District Judge Amy Totenberg denied.

Luxottica Group and Oakley, Inc. were represented by Miami Partners George G. Mahfood and David B. Rosemberg with the assistance of their paralegal, Jessica Palmer. According to Rosemberg, this may be the first instance in which a jury has found contributory trademark liability against a landlord that isn’t also the flea market owner/operator.

The case is Luxottica Group S.p.A. and Oakley, Inc. v. Airport Mini Mall, LLC, et. al. (Case No. 15-01422) in the United States District Court Northern District of Georgia.