The Legal Couture and Unique Design of IP Law in Counterfeit Battles: A Gucci Case-Study

By: Hannah Steinberg

From runway to social media to website to store, consumers race to shop the newest trends, carefully curating their purchases to reflect their own style while relaying trends. However, fashion consumerism would not be what it is today without department stores. Upon emerging in the 19th century as large-scale retail establishments offering a wide variety of goods under one roof, they revolutionized shopping with fixed prices, elegant displays, and customer service innovations. As luxury brands gained traction and appeal, many flocked to these flagships to seek out their latest purchase and gain their newest form of expression and wealth. 

When Lord & Taylor, a popular location for consumers to splurge on their newest Gucci item, was revealed to sell counterfeit items, Gucci pursued aggressive legal action. The nature of such action is part of a broader movement of luxury brands fighting back against counterfeit sellers, something pioneered by Chanel’s victory against Amazon in 2017. This case inspired and aided in the development of Gucci’s case, as the ruling in Chanel v. Amazon reinforced the precedent that resellers and retailers can be held liable for the selling of counterfeit luxury goods, despite them not being the original manufacturers. Gucci’s legal strategy tangibly expresses the growth of this movement and the broader initiative of luxury brands to use intellectual property law to maintain brand integrity, in a time of fashion dominated by the internet, a major hub for the selling of counterfeit goods. 


In November of 2023, Gucci filed a lawsuit against Lord & Taylor Ecomm LLC in the U.S. District Court for the Southern District of New York, in which the luxury brand accused Lord & Taylor of selling counterfeit Gucci products, including handbags, shoes, and belts, through its e-commerce platform. Gucci alleged that these items unlawfully bore counterfeit versions of its well-known logo and used related design elements, misleading consumers and diluting the brand’s exclusivity [1]. 


The default judgment issued by the court was grounded in the Lanham Act (15 U.S.C. § 1114, § 1125). In the United States, this act allows for trademark registration and protection of the owners of registered trademarks from the use of similar marks if such use allows for consumer confusion, thus the act is commonly used in cases of counterfeiting [2]. In particular, the act only protects trademarks that are used for commercial purposes; are distinct in nature, such as being an iconic brand logo. Similarly, the trademark can not be mandatory for a product to properly function, drawn from the functionality doctrine that protects against monopolies, meaning one trademark owner can not own all rights to a specific product. 


Under the Lanham Act, Gucci was successfully able to argue that Lord & Taylor’s sale of counterfeit goods constituted trademark infringement. This act supports how Lord & Taylor created consumer confusion in replicating Gucci’s iconic logo and trademark as many customers were deceived into thinking they were buying an authentic Gucci product. This trademark is integral to their commercial sales as many buy Gucci products due to its status as a luxury brand with impressive quality, distinct designs, and an iconic fashion statement. Thus, deception of the authenticity of the item's logo raises commercial concerns. As the Gucci logo is famously distinct, this has significant legal importance as a non-authentic Gucci product that contains the logo may trick customers into thinking it is authentic resulting in its sale and potential harm to the Gucci brand name if the quality is subpar. Moreover, the Lanham Act is applicable to convict Lord & Taylor as the third provision can be applied as the Gucci logo, the product’s trademark, is not integral to the product’s function. Hence, it is legally sound for Gucci to hold this trademark as it does not create a monopoly so Lord & Taylor has no ground to sell products that steal this trademark. 


Additionally, Gucci utilized the Federal Trademark Dilution Act of 1995 to assert a claim of trademark dilution. Trademark dilution is the unauthorized use of a famous mark in a way that weakens its distinctiveness or harms its reputation. This act is applicable regardless of whether consumer confusion occurs since these trademarks are so famous and are a “household-name” so jurisdictions aimed to protect them in other circumstances as well. The forms of dilution include blurring, when a famous mark’s uniqueness is diminished by its use on unrelated products, and tarnishment, when the use of the trademark creates damaging associations that harm the brand’s reputation [3].


Consequently, as Gucci is a highly-reputable and well-known brand, they are protected even if Lord & Taylor’s actions did not cause any consumer confusion to occur. Gucci’s logo was diluted as it was tarnished in its use on products that do not necessarily represent the brand or its standards and thus might hurt their impressive reputation.


As a result of both of these acts being violated, the court ordered an inventory inspection at Lord & Taylor, which they complied with, leading to the confirmation of counterfeit goods being sold. Nevertheless, Lord & Taylor later failed to respond to Gucci’s discovery requests, leading the court to enter into a default judgment in Gucci’s favor in August of 2024. This decision included a court-issued permanent injunction, an order prohibiting the retailer from selling counterfeit Gucci products, and a mandate that Lord & Taylor surrender all counterfeit inventory to Gucci for impoundment and destruction [4]. 


Despite this clear ruling, Lord & Taylor has refused to comply, prompting Gucci, on February 6, 2025, to file a memorandum, a document recording the terms of the legal decision, and to request that the court hold Lord & Taylor in civil contempt—a legal sanction imposed when a party disobeys a court order. The goal of such an action is not to punish the disobedient party but rather compel their compliance, sometimes issuing fines or jail time to accomplish this. However, such punishments are avoidable by simply complying with the court’s requirements [5]. 


Gucci argues that Lord & Taylor’s ongoing noncompliance meets the legal standard for contempt as established in A.V. by Versace, Inc. v. Gianni Versace, S.p.A which established that to prove contempt, a party must show that (1) the underlying court order is clear and not up to interpretation, (2) the violation has concrete evidence, and (3) the opposing party gave no reasonable effort to comply [6]. 


This request is currently being evaluated and pursued by the court due to Gucci’s concrete argument for this sanction. This includes the court’s 2024 default judgment being explicit, the lack of evidence of both Lord & Taylor’s adherence and any effort made to rectify this. Nonetheless, the court is currently evaluating whether or not civil contempt is in fact applicable. More importantly, Gucci emphasizes that willfulness is not required for a contempt finding, meaning that Lord & Taylor’s continued inaction alone justifies sanctions. Although the outcome is still unclear, based on the presented evidence and precedents set, Gucci has a good chance of receiving their request and a sanction of civil contempt to be issued on lord & Taylor. If so, law enforcement will be empowered to confiscate and destroy the counterfeit merchandise, effectively preventing Lord & Taylor from profiting further from the sale of unauthorized goods. Additionally, monetary sanctions could be levied against the retailer, adding financial pressure to ensure future compliance. 


​This case highlights the broader challenges luxury brands face in combating counterfeit sales within the evolving retail landscape. As someone who has grown up walking wide-eyed through department stores to gawk at the newest luxury items, I have always formed an association between the two and looked to these stores as a dependable source of designer goods. Hence, this revelation was groundbreaking for the fashion world, especially as it raises the question, how many other brands have suffered the same fate at department stores or in general?




[1] The Fashion Law. 2025. “Gucci Claims Lord & Taylor Won’t Turn over Counterfeits in Lawsuit.” TFL. February 12, 2025. https://www.thefashionlaw.com/gucci-claims-lord-taylor-wont-turn-over-counterfeits-in-on going-lawsuit/.
[2] Cornell Law School. 2018. “Lanham Act.” LII / Legal Information Institute. November 12, 2018. https://www.law.cornell.edu/wex/lanham_act.
[3] International Trademark Association. 2020. “Trademark Dilution (Intended for a Non-Legal Audience).” International Trademark Association. November 9, 2020. https://www.inta.org/fact-sheets/tra demark-dilution-intended-for-a-non-legal-audience/.
[4] O’Hanlon, Cara. 2025. “Gucci Escalates Legal Action against Lord & Taylor over Counterfeits - Fordham Intellectual Property, Media & Entertainment Law Journal.” Fordham Intellectual Property, Media & Entertainment Law Journal. March 12, 2025. http://www.fordhamiplj.org/2025/03/12/gucci-escalate s-legal-action-against-lord-taylor-over-counterfeits/.
[5] Wex Definitions Team. 2022. “Contempt of Court, Civil.” LII, Legal Information Institute. Cornell Law School. July 2022. https://www.law.cornell.edu/wex/contempt_of_court_civil.
[6] U.S. District Court for the Southern District of New York. 2025. “AV by Versace, Inc. V. Gianni Versace, SpA, 279 F. Supp. 2d 341 (S.D.N.Y. 2003).” Justia Law. 2025. https://law.justia.com/cases/federal/d istrict-courts/FSupp2/279/341/2386336/.

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