in the case - det juridiske fakultet (uio)...the handbags in question are counterfeits of the louis...

Mai Andersen, Mikkel Jensen og Pia Kayser

Side 1 af 22

In the case

Louis Vuitton Malletier

ctr.

Ms Christine Holm

and

Finn.no


Side 2 af 22

Statement of Claims

1 Ms Holm being ordered to destroy the goods in her possession (Louis Vuitton Speedy 35 bought in

Portugal in a small shop on the beach) or, subsidiary, to deliver the goods to the proprietor, or, more

subsidiary, to refrain from advertising the goods or selling them to others. ......................................................7

1.1 Trade marks.......................................................................................................................................7

1.1.1 Trade mark rights..........................................................................................................................7

1.1.2 Trade mark infringement ..............................................................................................................9

1.2 The copyright ..................................................................................................................................11

1.2.1 The rights ....................................................................................................................................11

1.2.2 The copyright infringement ........................................................................................................12

2 Ms Holm being ordered to give her consent to destruction of the 10 remaining Louis Vuitton handbags

as specified in claim 1 once these have been suspended by Norwegian customs, alternatively once the

handbags have come into the possession of Ms Holm. ....................................................................................13

2.1 The Customs Act.............................................................................................................................13

2.2 Louis Vuitton’s Custom Notice Application ..................................................................................13

2.3 Consent to destruction.....................................................................................................................14

3 Ms Holm being ordered to remove the advertisement from the website and to refrain from uploading it

again or showing it in any other way on any media, digital as well as printed, including other advertisements

that exhibit the handbags as specified in claim 1. ............................................................................................14

4 Ms Holm being ordered to pay damages covering all expenses, lost profit, a reasonable royalty and

harm to the reputation of the trade mark in the amount of DKK 173,250.- and interest on this amount from

the date of this statement of claims and until payment takes place. .................................................................15

4.1 Lost profit........................................................................................................................................15

4.2 A reasonable royalty .......................................................................................................................16

4.2.1 Trade mark..................................................................................................................................16


Side 3 af 22

4.2.2 Copyright ....................................................................................................................................16

4.3 Harm to the reputation ....................................................................................................................17

4.3.1 Trade marks ................................................................................................................................17

4.3.2 Copyright ....................................................................................................................................17

4.4 Louis Vuitton’s expenses to monitor of the market ........................................................................17

5 The Operator being ordered to remove the advertisement from the website and refrain from publishing

it again. .............................................................................................................................................................18

6 The Operator being ordered to pay damages covering all expenses, lost profit, a reasonable royalty and

harm to the reputation of the trade mark in the amount of DKK 173,250.- and interest on this amount from

the date of this statement of claims and until payment takes place. Subsidiary the Operator to pay damages

from the date of receiving the requirement of removing the advertisement of an amount appointed by the

court and interest on this amount from the date of this statement of claims and until payment takes place....19

7 Conclusion ................................................................................................................................................19

EXHIBIT 1 .........................................................................................................................................................20

EXHIBIT 2 .........................................................................................................................................................21

EXHIBIT 3 .........................................................................................................................................................22


Side 4 af 22

Claims

1. Ms Holm being ordered to destroy the goods in her possession (Louis Vuitton Speedy 35 bought

in Portugal in a small shop on the beach) or, subsidiary, to deliver the goods to the proprietor, or,

more subsidiary, to refrain from advertising the goods or selling them to others.

2. Ms Holm being ordered to give her consents to destruction of the 10 remaining handbags as

specified in claim 1 once these have been suspended by Norwegian customs, alternatively once the

handbags have come into the possession of Ms Holm.

3. Ms Holm being ordered to remove the advertisement from the website, finn.no and to refrain

from uploading it again or showing it in any other way on any media, digital as well as printed,

including other advertisements that exhibit the handbags as specified in claim 1.

4. Ms Holm being ordered to pay damages covering all expenses, lost profit, a reasonable royalty

and harm to the reputation of the trade mark in the amount of DKK 173,250.- and interest on this

amount from the date of this statement of claims and until payment takes place.

5. The Operator being ordered to remove the advertisement from the website, finn.no and refrain

from publishing it again.

6. The Operator being ordered to pay damages covering all expenses, lost profit, a reasonable

royalty and harm to the reputation of the trade mark in the amount of DKK 173,250.- and interest

on this amount from the date of this statement of claims and until payment takes place. Subsidiary

the Operator to pay damages from the date of receiving the requirement of removing the

advertisement of an amount appointed by the court and interest on this amount from the date of this

statement of claims and until payment takes place.

Facts

The subject of the matter is infringement of Louis Vuittons trade mark and assessment of damages.

The parties of the matter


Side 5 af 22

The claimant - Louis Vuitton Malletier (hereinafter Louis Vuitton)

Louis Vuitton is a French fashion house founded in 1854. Louis Vuitton became well known by

creating luggage, bags and accessories as innovative as they were elegant and practical. Louis

Vuitton is well known for its LV monogram and is known as a symbolic of luxury. The monogram

LV is placed on most of the products. Louis Vuitton is especially known for its handbags, suitcases

and luggage in general. The Louis Vuitton Brand and the famous LV monogram are among the

world's most valuable brands. Forbes annual ranking list of the 100 "Best Global Brands" in 2010

shows Louis Vuitton as being number 16.

Respondent 1 - Ms Christine Holm (hereinafter Ms Holm)

Ms Holm is a young Norwegian girl.

Respondent 2 - The Operator of the Website finn.no (hereinafter the Operator)

Finn.no was established in March 2000. It is a website specializing in advertisements and services

regarding sales and purchase involving private individuals as well as small and large commercial

businesses. The website has more than 4.1 million visitors each month and is the largest market

place in Norway. Every day more than 300.000 advertisements are available on finn.no, and the

website has a turnover of more than NOK 700 millions a year.

The more specific facts

During a holiday in Portugal Ms Holm purchased 16 handbags bearing the trade mark 'Louis

Vuitton'. Ms Holm has informed Louis Vuitton that the bags were purchased from a small shop on

the beach. While the exact prices of the handbags have not been made known to the claimant, it is

undisputed that the handbags were purchased at unusually low prices. Six of the

purchased handbags were brought across the Norwegian border in Ms Holm's luggage. To Louis

Vuitton's knowledge the remaining 10 handbags have not yet been delivered to Ms Holms address

in Norway. When Ms Holm came home from her holiday she managed to sell two of the handbags

to acquaintances of her.

In addition, Ms Holm placed an advertisement for the handbags on the website finn.no where she

demanded a price above her own purchase price, but considerably below the retail price in Norway.


Side 6 af 22

Louis Vuitton quickly contacted Ms Holm and demanded that she destroyed the goods in her

possession or, alternatively, delivered the goods to Louis Vuitton without any remuneration. Ms

Holm refused to do so.

Louis Vuitton furthermore contacted the Operator of the website finn.no and required that the

advertisement was immediately removed from the website. The Operator refused to do so.

The handbags in question are counterfeits of the Louis Vuitton Speedy 35 bag with the LV

Monogram canvas, zip closure and padlock, rounded handles, trimmings in natural cowhide leather

and the measurement (LxHxD): 35cm x 23cm x 18cm. All of these characteristics can also be found

on the counterfeit handbags; in fact the bags are identical to each other.

Louis Vuitton has several registered trade marks including the ‘Louis Vuitton’ word mark, the ‘LV’

figurative mark and the ‘Monogram’ Canvas also as a figurative mark (see Exhibit 1). For the sake

of the context in our argumentation, these registrations are accounted for below (1.1.1).


Side 7 af 22

Argumentation

1 Ms Holm being ordered to destroy the goods in her possession (Louis Vuitton Speedy 35

bought in Portugal in a small shop on the beach) or, subsidiary, to deliver the goods to the

proprietor, or, more subsidiary, to refrain from advertising the goods or selling them to

others.

1.1 Trade marks

1.1.1 Trade mark rights

1.1.1.1 'Word' mark - 'Louis Vuitton'

‘Louis Vuitton’ is registered as a trade mark (w) in accordance with the directive 2008/95/EC,

Article 2 and the Danish and the Norwegian Trade Mark Acts, Section 2(1). The word mark is

registered in the Nice Classifications 16, 18 and 25.

1.1.1.2 Figurative marks - 'LV' and ‘Monogram’

The ‘LV’ logo and the Canvas “Monogram” are registered as figurative marks in accordance with

the directive 2008/95/EC, Article 2 and the Danish and the Norwegian Trade Mark Acts, Section

2(1). The figurative marks are registered in the Nice Classifications 16, 18 and 25.

1.1.1.3 3D mark - The Speedy Bag

According to the directive 2008/95/EC, Article 2 and the Danish and the Norwegian Trade Mark

Acts, Section 2(1) the shape of a product can be protected as a trade mark (3D trade mark). This

protection is also established in the Mag-lite case from the European court of Justice C-136/02,

where a flashlight was protected as a trade mark.

In order for the product itself to be protected as a trade mark, it is required that the consumers

perceive the shape as a link between the product and the company. The trade mark has to separate

the company’s goods from other companies’ goods.


Side 8 af 22

The ability for a trade mark to separate a company’s goods from others can be acquired through

establishment on the market. A well-established trade mark is thus more likely to obtain the

necessary distinctiveness.

The Speedy Bag in its current shape has been on the market since 1969 and is one of Louis

Vuitton’s most popular handbags. In addition, it is one of the most purchased handbags worldwide.

It is furthermore often used in television, movies and magazines because of its recognizable features

as a symbol of Louis Vuitton.

The iconic squared shape with rounded corners and distinguished trimmings in leather and the small

rounded leather handles, which are attached to the bag with leather chapes as well as the zip closure

with golden padlock are all characteristics that separate the Speedy bag from other bags and which

is recognized as being Louis Vuitton by consumers.

The length of the rounded handles is ideal for carrying the bag in the bend of the arm in a

characteristic manner, which lead consumers’ thoughts to Louis Vuitton as well.

In light of the above as well as the exceptional quality, the long standing development, innovative

design, well-established trade mark and the fact that it is one of the most well known and

prestigious bags in the world, the Speedy bag should be considered a trade mark itself, cf. the

Danish and the Norwegian Trade Mark Acts, Section 2(1).

1.1.1.4 Well-known trade marks

The Danish and the Norwegian Trade Mark Acts, Section 4(2) and the Paris Convention, Article 6

b, offer a wider protection for well-known trade marks. These provisions protect against harm to the

reputation or distinctiveness of the trade mark.

As mentioned above, Louis Vuitton as a brand was rated number 16 on Forbes annual ranking list

of the 100 "Best Global Brands" of 2010. It is undeniable that Louis Vuitton is a well-known trade

mark and that it has a reputation as such. This is stated in several cases worldwide e.g. case C-

236/08 for the European Court of Justice (Google vs. Louis Vuitton) and will also be documented

through the examination of witnesses. Consequently, the trade marks of Louis Vuitton enjoy a


Side 9 af 22

wider protection than other marks, cf. the Danish and the Norwegian Trade Mark Acts, Section

4(2).

1.1.2 Trade mark infringement

1.1.2.1 'Course of trade'

The Trade Mark Acts are only applicable to infringements carried out in the course of trade, cf. the

Danish and the Norwegian Trade Mark Acts, Section 4.

In a case from the Danish Maritime and Commercial Court from the 12th November 2007 – case

SH 2007.V-0038-06 (Canada Goose), it was established that a purchase of 10 jackets with the intent

to resale was made in the course of trade. The Court emphasized that since the jackets were

purchased as one unit by the same wholesaler the jackets were considered as purchased in the

course of trade.

Ms Holm has purchased a total of 15 bags in Portugal from the same wholesaler. The bags are

purchased over a period of two days: first 5 bags, then the remaining 10 bags. As the two purchases

are only one day apart they should be considered as one. The 15 handbags are undeniably purchased

with intent to resale and to make a profit.

Consequently, Ms Holm's use of the trade marks in question has been made in the course of trade.

1.1.2.2 Bad faith

Given the large quantity of the handbags purchased and the context the purchases take place, Louis

Vuitton considers it to be undeniable that Ms Holm was in bad faith regarding the authenticity of

the handbags.

1.1.2.3 Identical or similar trade marks

A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor

shall be entitled to prevent all third parties not having his consent from using in the course of trade:

any sign which is identical or similar with the Community trade mark in relation to goods or


Side 10 af 22

services which are identical or similar with those for which the Community trade mark is registered,

cf. Council Regulation (EC) No 207/2009, Article. 9(1), litra a and the Danish and the Norwegian

Trade Mark Acts, Section 4(1).

Immediately below we have inserted pictures of the relevant products showing the trade marks.

These pictures are also produced as Exhibit 2 and Exhibit 3.

The counterfeit bag that Ms. Holm bought in Portugal Louis Vuitton’s Speedy 35

The counterfeit handbags purchased by Ms. Holm bear the figurative marks registered by Louis

Vuitton (”Monogram” and the LV logo). The marks on the counterfeit handbags do not differ from

the trade marks registered by Louis Vuitton, and thus, the trade marks are identical. Consequently,

the handbags constitute an infringement of Louis Vuitton’s trade mark rights to the figurative

marks, cf. the Council Regulation (EC) No 207/2009, Article 9(1), litra a and the Danish and the

Norwegian Trade Mark Acts, Section 4(1).

Furthermore, the counterfeit handbags as such are identical or at least confusingly similar to the

Speedy Bag which as stated above is protected by trade mark law as a 3D trade mark. Therefore the

handbags themselves constitute an infringement of Louis Vuitton’s trade mark rights to the 3D


Side 11 af 22

marks as well, cf. the Council Regulation (EC) No 207/2009, Article 9(1), litra a and the Danish

and the Norwegian Trade Mark Acts, Section 4(1).

In addition to this, Ms Holm is infringing Louis Vuitton’s trade mark (w) by using ‘Louis Vuitton’

in the advertisement at finn.no.

1.1.2.4 Well-known trade marks

According to the wording of the Danish and the Norwegian Trade Mark Acts, Section 4(2), the

wider protection applies to goods which are not similar to those for which the trade mark right

applies.

However, in the case C-292/00 (Zino Davidoff) The European Court of Justice established that the

wider protection also applies to goods which are similar to those for which the trade mark right

applies.

In the case in question the trade mark is well-known and the goods are identical. By using the trade

marks in the advertisement Ms. Holm is causing serious harm to the reputation of Louis Vuitton as

well as risking a dilution of the trade marks.

1.2 The copyright

1.2.1 The rights

1.2.1.1 The Monogram

The Canvas “Monogram” (the Canvas) was created in 1896. It constitutes of graphic symbols,

including quatrefoils and flowers as well as the LV monogram. At the time of its creation, the

Canvas was innovative and exclusive in its expression. The unique design was thought up by

Georges Vuitton, the son of Louis Vuitton for the purpose of decoration, but also as a way to

distinguish the Louis Vuitton bags from other bags on the market. The design of the Canvas is a

work of art and holds a high degree of originality. The Canvas is therefore protected under the

Danish and the Norwegian Copyright Acts as an artistic work, cf. the Danish and the Norwegian

Copyright Acts, Section 1.


Side 12 af 22

Georges Vuitton passed away in 1936 and the copyright protection as such has therefore expired, cf.

the Danish and the Norwegian Copyright Acts, Section 63. However the moral rights of the artist in

the Danish and the Norwegian Copyright Acts, Section 3 remain, cf. the Danish and the Norwegian

Copyright Acts, Section 75. This includes the right of respect in the Danish and the Norwegian

Copyright Acts, Section 3(2) which prevents others from changing the work or make the work

available to the public in a form or context injurious to the artist.

1.2.1.2 The Speedy Bag

The Speedy bag itself was created by Georges Vuitton in 1932. As a tribute to the actress Audrey

Hepburn, the Speedy bag was reinterpreted in 1969 whereby it became the version of the Speedy

bag known today. This interpretation of the Speedy bag was an expression of creativity from the

entire Louis Vuitton design team. Such interpretation of a previous work is protected under the

Danish and the Norwegian Copyright Acts, Section 4 as an alteration.

1.2.2 The copyright infringement

1.2.2.1 The Monogram

The moral rights/ right of respect in the Danish and the Norwegian Copyright Acts, Section 3(2)

prevent others from changing a work or make a work available to the public in a form or context

which is offensive to the reputation of the artist.

In 1896 George Vuitton created the monogram (as also stated above). Inspired by his father he

created this work of art which was to embellish all products from Louis Vuitton. He incorporated

his father’s initials in order to create a work of art which should be associated with luxury and

exclusivity. Hereby he immortalized his father and the company that he created.

It is against George Vuitton’s ideas and intentions with his work when the monogram is placed on

counterfeit products of poor or at least uncertain quality. Furthermore the unusually low prices

collide with Georges Vuitton’s thoughts of exclusivity. For these reasons the use of the Monogram

is offensive to the reputation of the artist, Georges Vuitton. Thus the use constitutes an infringement

of the right of respect in the Danish and the Norwegian Copyright Acts, Section 3(2).


Side 13 af 22

1.2.2.2 The Speedy Bag

According to The Danish and the Norwegian Copyright Acts, Section 2 the holder of the copyright

can prevent others from making the work available to the public e.g. by offering the work for sale.

By selling the counterfeit bags or attempt to sell the counterfeit bags at the website finn.no Ms.

Holm is infringing Louis Vuitton’s copyright to the Speedy bag cf. the Danish and the Norwegian

Copyright Acts, Section 2.

Furthermore, the context in which the bags are being offered for sale is offensive to the reputation

of the artist, Georges Vuitton and the house of Louis Vuitton cf. the Danish and the Norwegian

Copyright Acts, Section 75, cf. Section 3.

As a consequence of the above it must be considered to be documented that Ms Holm is infringing

the trade mark rights and copyright of Louis Vuitton and therefore should be ordered to destroy the

goods in her possession or, subsidiary, to deliver the goods to the proprietor, or, more subsidiary, to

refrain from advertising the goods or selling them to others.

2 Ms Holm being ordered to give her consent to destruction of the 10 remaining Louis

Vuitton handbags as specified in claim 1 once these have been suspended by Norwegian

customs, alternatively once the handbags have come into the possession of Ms Holm.

2.1 The Customs Act

2.2 Louis Vuitton’s Custom Notice Application

Regarding the 10 remaining handbags yet to be delivered at Ms. Holm’s address in Norway, Louis

Vuitton has filed a Custom Notice Application requesting the Norwegian Customs to detain any

goods addressed to Ms. Holm. As stated above, Louis Vuitton has a strong suspicion that the goods

in question are in fact counterfeit products. This suspicion derives from the fact that the 6 handbags

already delivered to Ms. Holm and sold or attempted sold in Norway are counterfeit bags.


Side 14 af 22

2.3 Consent to destruction

Once the counterfeit goods have crossed the Norwegian border and are withheld in the Customs, a

notification will be given to Ms. Holm, cf. Section 15-1(2) in the Norwegian Customs Act

(Tolloven)

For the reasons mentioned above, Ms. Holm shall send a written and signed statement on voluntary

destruction to the Norwegian Customs and a copy of the statement to Louis Vuitton. This statement

shall be given within five days from the notification of the detention in Customs, cf. the Norwegian

Customs Act, Section 15-1(1).

As a consequence, Ms Holm should be ordered to give her consents to destruction of the 10

remaining handbags as specified in claim 1 once these have been suspended by Norwegian customs.

If the products actually reach Ms Holm’s address, she should be ordered to give consent to the

destruction of the products regardless of this fact.

3 Ms Holm being ordered to remove the advertisement from the website and to refrain

from uploading it again or showing it in any other way on any media, digital as well as

printed, including other advertisements that exhibit the handbags as specified in claim 1.

Louis Vuitton’s trade mark rights are accounted for above (1.1.1.).

By using the images of the trade marks and the word mark ‘Louis Vuitton’ in the advertisement on

finn.no, Ms. Holm is infringing Louis Vuitton’s trade mark rights.

Therefore, she should be ordered to remove the advertisement and refrain from displaying it again.


Side 15 af 22

4 Ms Holm being ordered to pay damages covering all expenses, lost profit, a reasonable

royalty and harm to the reputation of the trade mark in the amount of DKK 173,250.-

and interest on this amount from the date of this statement of claims and until payment

takes place.

As stated above, Ms Holm has violated several of Louis Vuitton’s IP rights. Consequently, Louis

Vuitton is entitled to compensation.

4.1 Lost profit

Still more people use the Internet both in their everyday life and in their professional life. It is

commonly known that you can buy and sell things on the Internet. All types of goods are now being

offered for sale on the Internet and Internet sales have to some degree replaced the traditional sales

in physical stores.

The relevant segment involves costumers who vary in social status, age, sex, and educational

background.

Given the Louis Vuitton bags’ exclusivity the prices to some degree dictate the costumers of Louis

Vuitton. However, the high prices do not prevent a person from saving up money for a Louis

Vuitton handbag if this is a priority to the person. Therefore the relevant segment to Louis Vuitton

consists of different types of consumers.

It is possible to buy original goods from luxury brands at favorable prices on the Internet. The

wording of the advertisement and the context in which it is brought leads the consumers to believe

that the bags offered for sale are genuine Louis Vuitton handbags.

Given the fact that Internet shopping involves all types of costumers, the Louis Vuitton consumer

segment will inevitably overlap into the Internet consumer segment. It is reasonable to assume that

the costumers who bought Ms Holm’s handbags would otherwise buy their Louis Vuitton handbag

at a certified retailer. Consequently, Louis Vuitton suffered loss of profit.


Side 16 af 22

The retail price for a Louis Vuitton Speedy 35 handbag is € 490.- or DKK 3,650.-.

Louis Vuitton demand (the retail price x 5) € 2,450.- or DKK 18,250.- in compensation for loss of

profit. If Ms Holm claims that not all the imported handbags have been sold we request (1) that she

hand over the counterfeit bags for destruction and cover all associated expenses.

4.2 A reasonable royalty

4.2.1 Trade mark

According to the Danish and the Norwegian Trade Mark Acts, Section 43 the right holder is entitled

to compensation for wrongful and unjustified use.

Reasonable royalty is based on what would normally be a agreed on in a trademark license

agreement.

Louis Vuitton estimates that our normal royalty under a license agreement would add up to 40% of

the licensee’s profit. In the case in question Louis Vuitton estimates the royalty to be DKK 10,000.

This will be documented through the examination of witnesses.

4.2.2 Copyright

The Danish and The Norwegian Copyright Acts, Section 83 give a right to royalty for wrongful or

unjustified use.

Under copyright law reasonable royalty is the payment that the copyright holder could claim if the

use had been legitimate i.e. according to an agreement with the copyright holder. It should be noted

that Louis Vuitton would never had entered into such an agreement. However, Louis Vuitton has a

claim for royalty and estimate that the royalty should be fixed at DKK 20,000. This will be

documented through the examination of witnesses.


Side 17 af 22

4.3 Harm to the reputation

4.3.1 Trade marks

When the consumers buy a Louis Vuitton handbag they are insured a high-quality product. This

guarantee is one of the main reasons for Louis Vuitton’s exclusivity. Products sold under the Louis

Vuitton brand that are substandard or of uncertain quality causes serious harm to Louis Vuitton’s

exclusive image and trade marks.

The quality of the bags sold by Ms Holm is uncertain and the price is below the retail price. Both

factors cause considerable harm to the reputation of Louis Vuitton. Because of the serious harm to

Louis Vuitton’s reputation and Ms Holms bad faith regarding the authenticity of the handbags,

Louis Vuitton claims damages in the amount of DKK 100,000.-.

4.3.2 Copyright

As stated above, counterfeit products are offensive to the reputation of the artist Georges Vuitton

and the Louis Vuitton design team. Consequently, Louis Vuitton is entitled to compensation in the

amount of DKK 15,000.-.

4.4 Louis Vuitton’s expenses to monitor of the market

In case law it is established that a right holder can claim compensation for expenses regarding

monitoring of the market to detect counterfeit products and other infringements cf. U.2005.60 V.

Louis Vuitton has a team of employees who monitor the market for counterfeit products. ‘Louis

Vuitton’ is one of the most counterfeited brands worldwide and as a result Louis Vuitton has

ongoing expenses in the attempt to control and prevent counterfeiting. Ms Holm should be ordered

to pay compensations on this matter. Louis Vuitton estimates a reasonable compensation to amount

to DKK 10,000.-. This will be documented through the examination of witnesses.

As a consequence Ms Holm should be ordered to pay damages covering all expenses, lost profit, a

reasonable royalty and harm to the reputation of the trade mark in the amount of DKK 173,250.-

and interest on this amount from the date of this statement of claims and until payment takes place.


Side 18 af 22

5 The Operator being ordered to remove the advertisement from the website and refrain

from publishing it again.

By providing uncontrolled advertising space on the website finn.no the Operator is aiding and

abetting a trade mark infringement and is subsequently violating Article 9 of council Regulation

(EC) No 207/2009.

In a recent and similar case from The Paris Court of Appeal of the 3th of September 2010 the court

stated that eBay was liable for a counterfeiting conviction for selling on its website imitation Louis

Vuitton Moet Hennessey (LVMH) products between 2001 and 2006. This decision dismissed

eBay’s claim for exemption on the grounds that it was acting merely as a provider of hosting

services. Consequently, a provider of advertising space has to apply measures, such as e.g. filter

listings before the advertisements are posted on the website that prevents counterfeit products from

being advertised on the website, as well as prohibit sale of counterfeit products.

Given the fact that infringing advertisement can be shut down easily and without any costs, the

responsibility should rest with the Operator and there should be willingness to grant a request from

proprietors on alleged infringement.

The Operator of finn.no has to the best of our knowledge not taken any measures to prevent sale of

counterfeit products, and we therefore request (2) that the respondent provide sufficient

documentation of measures taken to prevent trade mark infringement when the advertisements are

placed on their website. In failing to do so the Operator should be held liable from the time where

the advertisement were placed on the website.

As a consequence of the above it must be considered to be documented that the Operator is aiding

and abetting the infringements mentioned above, and therefore should be ordered to remove the

advertisement from the website, finn.no and refrain from publishing it again.


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6 The Operator being ordered to pay damages covering all expenses, lost profit, a

reasonable royalty and harm to the reputation of the trade mark in the amount of DKK

173,250.- and interest on this amount from the date of this statement of claims and until

payment takes place. Subsidiary the Operator to pay damages from the date of receiving

the requirement of removing the advertisement of an amount appointed by the court and

interest on this amount from the date of this statement of claims and until payment takes

place.

Since the Operator is aiding and abetting IP infringements which entitle Louis Vuitton to

compensation the Operator has joint and several liability with Ms Holm.

If the court in spite of the argumentation above (5) should find that the Operator cannot be held

responsible for the infringements before they became positively aware of these, Louis Vuitton

claims subsidiary that the Operator should be held liable from the time where Louis Vuitton

informed the Operator of Ms Holm’s unlawful conduct. Consequently, the Operator should be

ordered to pay an amount appointed by the court.

Consequently, the Operator should be ordered to pay damages covering all expenses, lost profit, a

reasonable royalty and harm to the reputation of the trade mark in the amount of DKK 173,250.-

and interest on this amount from the date of this statement of claims and until payment takes place.

Subsidiary the Operator to pay damages from the date of receiving the requirement of removing the

advertisement of an amount appointed by the court and interest on this amount from the date of this

statement of claims and until payment takes place.

7 Conclusion Consequently, it must be considered to be documented that Holm and Finn.no are infringing

the IP rights of Louis Vuitton and therefore should be ordered to pay compensation as stated

above.


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EXHIBIT 1

03/10/10 19.59OAMI-ONLINE - CTM-ONLINE - Detailed results

Side 2 af 2http://oami.europa.eu/CTMOnline/RequestManager/en_print_NoReg#

Trade mark No: 001274372 Type of mark: FigurativeFiling date: 11/08/1999 Date of

registration:14/12/2000

NiceClassification:

9, 35, 41 Status: Registration expired

Name of theowner:

Michael Yates

Applicant’sreference:

RMV/T95263EM

Trade markbasis:

CTM

5 LV



NiceClassification:

9, 14, 24 Status: RegisteredPublication of registration

Name of theowner:

LOUIS VUITTONMALLETIER (SociétéAnonyme)


7842

Trade markbasis:

CTM

6 LV



NiceClassification:


Name of theowner:


Trade markbasis:

CTM

7 LV



NiceClassification:


Name of theowner:


Trade markbasis:

CTM

| | | |

Version: 9.3.3

Office for Harmonization in the Internal Market (Trade Marks and Designs) Avenida de Europa 4, E-03008 Alicante, Spain - Tel: +34 96 513 9400 - e-mail:

03/10/10 20.03OAMI-ONLINE - CTM-ONLINE - Detailed results

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OHIM The Trade Marks and Designs Registration Office of the European Union

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CTM-ONLINE - Detailed results

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1 LOUIS VUITTON Trade mark No: 001172857 Type of mark: Word

Filing date: 11/05/1999 Date ofregistration:

09/06/2000

NiceClassification:


Name of theowner:



7828

Trade markbasis:

CTM

2 LOUIS VUITTON Trade mark No: 000015610 Type of mark: Word

Filing date: 01/04/1996 Date ofregistration:

16/03/1998

NiceClassification:


Name of theowner:


Trade markbasis:

CTM

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Version: 9.3.3

Office for Harmonization in the Internal Market (Trade Marks and Designs) Avenida de Europa 4, E-03008 Alicante, Spain - Tel: +34 96 513 9400 - e-mail:


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EXHIBIT 2 Bag purchased by Ms. Holm in Portugal


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EXHIBIT 3 Authentic Louis Vuitton Speedy 35

in the case - det juridiske fakultet (uio)...the handbags in question are counterfeits of the louis...

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