Grace Han Stanton and Colleen Ganin Quoted in The Fashion Law—Chanel Settles Upcycling Suit Over Jewelry Made From Logo-Bearing Buttons
Grace Han Stanton and Colleen Ganin were quoted in "Chanel Settles Upcycling Suit Over Jewelry Made From Logo-Bearing Buttons," an article in The Fashion Law, regarding Chanel's settlement in the trademark infringement and dilution lawsuit that it waged against a company for upcycling and selling jewelry constructed with allegedly authentic Chanel buttons.
Perkins Coie's Grace Han Stanton and Colleen Ganin echoed this sentiment, stating that upcycling is "a fairly novel area for courts," and the outcome in at least one case" illustrates that these cases often are not clear-cut." In its a 2020 decision in Hamilton International Ltd. v. Vortic LLC, a U.S. District Court for the Southern District of New York judge held that Vortic's use of Hamilton marks in connection with its sale of refurbished watches was not likely to cause consumer confusion due to its "full disclosure" that the watches were created with Hamilton watch parts but otherwise not affiliated with Hamilton. The court found that the Vortic's use of the Hamilton mark on the watches "was permissible even if [Vortic] gets some advantage" in the process, Stanton and Ganin noted.
The Second Circuit upheld the lower court's determination in September 2021, serving to muddy the waters to an extent, as Ghajar and Roumiantseva assert that decision was "somewhat of an outlier in a series of prior cases on watch modifications."
