On the morning of Nov. 12, 1986, Carla Fendi presided over a somewhat unusual spectacle of destruction outside of Tavern on the Green in New York. Thousands of fake Fendi bags and accessories — covered in the iconic double-F logos, which were particularly popular at the time — were crushed in garbage trucks in front of press and curious spectators, in an effort to publicize the Italian fashion house’s crackdown on counterfeit goods.
Helping oversee the “Fendi Crush,” as it was dubbed, was a young attorney named Sonia Sotomayor, who had helped create an aggressive anticounterfeiting effort for Fendi at the law firm of Pavia & Harcourt. Today, that attorney is now a history-making judge on the U.S. Court of Appeals for the Second Circuit, nominated by President Obama for elevation to the U.S. Supreme Court.
Prior to her 16-year career on the federal bench, Sotomayor spent eight years in private practice, from 1984 to 1992, as a civil litigator at Pavia & Harcourt, with much of her work focused on representing European fashion and luxury brands. Fendi was one of her key clients, but she also did work for companies like Bulgari, Ferrari and Italian eyewear maker Lozza. Anticounterfeiting initiatives were a major focus of her work on behalf of those firms, and Sotomayor’s actions in this area made for a colorful — and sometimes dramatic — work life.
If confirmed by the Senate, Sotomayor will surely be the only Supreme Court justice who has chased a band of counterfeiters around the parking lot of Shea Stadium on the back of a motorcycle. Or accompanied federal marshals on raids of Chinatown storefronts, wading into dank basements to sort through phony Fendi bags and Rolex watches. But for the future judge, these cloak-and-dagger activities were the highlights of her private practice, which she joined following a five-year stint as an assistant district attorney in New York prosecuting murders, robberies and child abuse cases.
“My investigative experience with the Manhattan D.A.’s office came in handy when I found myself doing anticounterfeiting work on behalf of Fendi and other trademark owners,” said Sotomayor in a 1997 speech to the International Anticounterfeiting Coalition in Washington, D.C. “I particularly enjoyed the many lovely afternoons in Chinatown spent, wearing a bulletproof vest, with Heather McDonald — the ‘Dragon Lady,’ as she was affectionately called by the local vendors — seizing counterfeit goods from the nooks and crannies that many of us never imagined existed within the maze of buildings that is Chinatown.”
McDonald was an attorney with another law firm at the time, who worked on anticounterfeiting measures for Swiss watch and French luxury brands. The lawyers were friendly and often worked together with police and Customs authorities on behalf of their respective clients.
“We spent a lot of time together in the back of police vans with the windows blacked out,” remembered McDonald, who is now a partner at Baker Hostetler specializing in intellectual property enforcement and anticounterfeiting litigation. “Frankly, it was a little bit like the Wild West in those days. Counterfeiting had just become illegal with the passage of a federal law in 1984 [which allowed civil seizures of counterfeit goods], and this was the early days of enforcement. There was the possibility of violence and we had bodyguards that stuck to us like glue. But as in her entire career, Sonia was a worker: she got right into those dirty basements — you can imagine what they looked like — and took inventory of the counterfeit merchandise.”
Of her spin around the Shea Stadium parking lot on the back of a motorcycle to give chase to a group of counterfeiters, Sotomayor told her IACC audience: “I have never gotten back on a motorcycle after that day, when I belatedly realized that cars were much bigger than motorcycles, and that I had lost reason in the heat of pursuit by ever getting on the motorcycle as a passenger at all.”
Sotomayor worked closely with the late Frances Bernstein, a partner at Pavia & Harcourt, to create Fendi’s national anticounterfeiting program. The two launched the effort in 1985, a year after Sotomayor joined the firm, and from 1988 to 1992, she was the partner in charge of the program. According to papers filed with the Senate Judiciary Committee overseeing Sotomayor’s confirmation proceedings, she applied for injunctive relief to seize counterfeit goods about once every two months during this period.
In a speech, Sotomayor called her intellectual property practice the “most enjoyable” part of her work at Pavia & Harcourt, a firm that continues to work with European fashion houses like Valentino and Aeffe SpA. She may have been drawn to the boutique law firm because of the nature of its cases, which involved a lot of litigation, noted Alessandro Saracino, now a partner at the firm but a young protégé of Sotomayor during her tenure there.
“With her criminal law background, she was able to use her experience prosecuting violent crimes, organizing complex cases and working with the police,” explained Saracino. “You have to remember that the general concept at that time was that knockoffs of designer goods were somewhat normal. It was a bit daring to go after counterfeiters. Judges were very cautious about ordering seizures, and Sotomayor was able to present very compelling cases on behalf of the trademark owners.”
Saracino added that Sotomayor’s fluency in Spanish — she is the first Latina woman nominated to the Supreme Court — helped her quickly develop a working knowledge of Italian to communicate with her Italy-based clients. “The clients literally adored her,” he remembered.
Not all of Sotomayor’s cases involved Chinatown storefronts and police raids. In 1987, she represented Fendi in suing Burlington Coat Factory, alleging the off-price retailer knowingly trafficked in counterfeit goods. Sotomayor sought triple profits and punitive damages in her case against Burlington Coat Factory, and the two parties ended up settling out of court.
Other fashion-related cases Sotomayor worked on included one in 1990 in which she represented Bulgari Corp. of America in a dispute over its rent in the Crown Building at 730 Fifth Avenue. Bulgari lost the case, but remains in that location to this day. That same year, she helped represent Ferrari North America in a dispute with one of its dealerships in California over stipulations in its franchise agreement, and won the case for the parent company.
Crucially for the fashion industry, during her time at Pavia & Harcourt, Sotomayor was a key player in drafting anticounterfeiting legislation that became part of the New York state penal code (Sections 165.70 - 74). She worked on the project with McDonald and another attorney in the field, Veronica Hrdy, who is now vice president and general counsel at Chanel.
“It was the first law in New York state that made the sale of counterfeit merchandise illegal,” said McDonald. “We spent a lot of time working on that together, and we were the principal drafters of the original legislation. We worked with industry lobbyists and lawmakers to make it law.”
With Sotomayor’s experience advocating on behalf of trademark owners, the question arises whether it could subtly tinge her attitude toward intellectual property cases that may come before the Supreme Court. But McDonald dismisses that notion. “I don’t think that would be a fair comment. If you read her decisions, she has shown that she really cares about the specific facts of a particular case and applies the facts at hand,” she noted.
While emphasizing it is very premature to conjecture on possible Supreme Court cases, McDonald noted there are issues involving the sale of counterfeit merchandise on Internet sites, such as eBay, that could one day come before the court. Tiffany & Co. has an appeal before the U.S. Court of Appeals for the Second Circuit, where Sotomayor now sits, in its battle with eBay over the policing, or lack thereof, of counterfeit merchandise on the auction site. Sotomayor may or may not be part of the three-judge panel that hears that particular case.
In her speech to the IACC, Sotomayor noted that issues surrounding trademark and trade dress in the modern economy are complex. “Copyright and patent laws give only limited monopolies to their owners,” she explained. “Trademark and trade dress protection could potentially be unlimited and might well affect the competition among product producers.”
She told the assembled intellectual property attorneys, “It is you, the practitioners, who will help shape the focus of the arguments…that might convince the courts that applying traditional trademark or dress tests correctly could enhance, rather than restrict, competition by stimulating creative product designs and investments in promoting those designs.”
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