Chanel Goes Coco Over Unauthorized Sales, Hashtags

In March 2018, iconic fashion house Chanel sued What Goes Around Comes Around (“WGACA”), a reseller of luxury goods à la Poshmark and The RealReal (which Chanel has also sued). These retailers are essentially online thrift stores (WGACA is also brick-and-mortar), solely trafficking in high-end designer goods and apparel instead of ratty Wranglers and stained JCPenney tops. 

WGACA, Poshmark, The RealReal, and others of their ilk tout how recycling luxury items is good for the environment (not to mention their bottom lines); Chanel, however, finds their practices less than noble. In its lawsuit, Chanel accused WGACA of trademark infringement and false advertising by selling unauthorized Chanel products and using the Chanel trademark too prominently in its marketing. I wanted to highlight this case because it’s an important lesson in what is and is not permitted when it comes to using someone else’s trademarks and other materials associated with a brand.

Full disclosure: Another reason I find this case interesting is that as the quality of mass retailers gets worse and worse every year, the only way for me to find well-made goods at a non-astronomical price is through the resale market. So yeah, I’m a little personally involved here.

Chanel, Inc. v. WGACA, LLC, went to trial in January of this year. On February 6, the jury returned a verdict for Chanel and awarded them $4 million in statutory damages for willful trademark infringement. How did they reach this conclusion? 

Let’s start with some background. Under the first sale doctrine, once a genuine product is sold, the person who purchases it is free to resell it without risk of liability to the brand owner. Likewise, it’s totally fine to use someone else’s brand or trademark to accurately describe the pre-owned item in sales materials. For example, I can snap a photo of a pair of Nike Air Force 1s or a Birkin bag taking up space in my closet, list it for sale on eBay or Facebook Marketplace and use the brand name in my written description along with pics of the brands’ trademarks (assuming the item I’m listing is genuine) — provided I use the marks or brand names only to the extent necessary to describe what I’m selling, and I don’t do anything that might suggest that I’m affiliated with Nike or Hermès or that either company is endorsing my resale of the items. 

While there was no question that many (although not all) of the goods WGACA offered were genuine, WGACA ran into trouble with Chanel because there was significant evidence that WGACA used Chanel’s marks too prominently and too often. For example, on social media, it hashtagged posts with #WGACACHANEL. Elsewhere, WGACA featured a Chanel mark more prominently than its own brand mark. Moreover, WGACA’s website and other communications included the statement “WGACA CHANEL – 100% Authenticity Guaranteed.” The jury appears to have viewed this as WGACA suggesting it was endorsed by or had a relationship with Chanel, and on this basis, ruled for Chanel. 

WGACA also sold items that, according to Chanel, were never approved for retail, including handbags with voided or pirated serial numbers as well as decorative items Chanel lent to retailers. On this issue the District Court granted summary judgment in favor of Chanel, finding these items were never authorized for sale by anyone, much less WGACA. 

What lessons should resellers take away from this? For starters, there’s plenty of room to truthfully advertise the resale of authentic luxury goods. However, it’s important to have specific processes in place to vet any advertising to make sure it doesn’t suggest an affiliation with the brand where there isn’t one. In a similar vein, resellers need to develop programs that ensure the goods they offer for sale are authentic and were originally sold by the brand or, if that’s not always possible, to accurately communicate with consumers. 

But the case isn’t closed yet. It remains before the District Court on Chanel’s request that WGACA be prevented from, among other things, using Chanel’s marks to promote WGACA’s business; including the word Chanel in any hashtags; and using in its advertising any Chanel-branded items other than items actually for sale by WGACA. 

I’m curious to see what happens at the preliminary injunction hearing. Here, I’m particularly interested in what the Court has to say about the use of hashtags on social media because this seems like an area where, to date, most courts have assumed that a hashtag using a brand name is infringing or gives rise to liability. Perhaps this Court will give us a more nuanced analysis. I hope so, since I believe that resellers like WGACA and The RealReal will continue to thrive as consumers look to both save money and purchase goods with a smaller environmental impact which, as mentioned above, is a key element in these resellers’ marketing. Of course, one could question whether their “green” claims constitute false advertising, but that’s a question for another day.