Simon Frankel

Simon Frankel

Simon Frankel, a partner in the firm’s San Francisco office, has broad civil litigation experience. His practice focuses on copyright and trademark litigation, technology and Internet privacy disputes, and legal issues related to visual art. Mr. Frankel’s extensive intellectual property litigation work includes copyright, patent, trademark, anti-counterfeiting, and right of publicity matters. In the anti-counterfeiting area, Mr. Frankel has worked extensively with U.S. Customs and Border Protection in protecting clients’ intellectual property rights.

His other civil litigation work includes numerous licensing disputes and consumer class actions, including unfair competition and false advertising claims under California Business and Professions Code Section 17200, and Internet privacy claims under the Electronic Communications Privacy Act and the Computer Fraud and Abuse Act.

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Retail distribution in Africa: challenge and opportunity

The economy in Sub-Saharan Africa continues to grow.  A handful of the 10 fastest growing economies in the world are in Africa, it has the world’s greatest population of young people and the number of middle class consumers – estimated to be 350 million – is booming. With such a growing, promising market, comes great … Continue Reading

Top 10 global consumer trends in 2015

Top 10 global consumer trends in 2015 Euromonitor recently published its yearly report on the “Top 10 Global Consumer Trends in 2015”. The trends will certainly capture the eye of luxury brands, and we pick up on some points of particular interest. Consumers now see “consumption as a route to progress” according to Euromonitor International. … Continue Reading

Guess Wins Latest Trademark Infringement Dispute Against Gucci in the French Courts

The Court of Paris has ruled in favour of Guess in the latest lawsuit brought by Gucci for alleged infringement of some of its trademarks.  Gucci claimed that Guess was infringing its rights by selling wallets, belts, and other products whose designs copied or mimicked its own. On 30 January 2015, the Court of Paris … Continue Reading

Giant multinational Unilever drops suit against innovative start-up Hampton Creek over eggless “mayonnaise”

On October 31 of last year, Unilever filed a lawsuit against Hampton Creek, a start-up company that makes Just Mayo, an eggless spread that tastes like mayonnaise, only to drop the suit a month and a half later. Unilever claimed that Just Mayo was stealing market share from its Hellman’s and Best Foods mayonnaise products … Continue Reading

Serial brand creator Marcia Kilgore sells Soap & Glory to Alliance Boots

UK retailer Alliance Boots has reportedly acquired the beauty brand Soap & Glory for an undisclosed sum. Bliss spa and FitFlop creator Marcia Kilgore founded Soap & Glory in 2004 and since then the brand has become best known for its range of affordable bath, body and skincare products, which are sold in appealing retro … Continue Reading

ISPs ordered to block websites infringing trademarks

The English High Court ordered recently ordered several internet service providers (ISPs) to block access by their subscribers to certain websites that advertised and sold goods infringing certain registered trademarks. The claimants (owners of a large number of UK-registered trademarks for Cartier, Montblanc, IWC and other luxury brands) sought orders requiring the ISPs to block, … Continue Reading

Ralph Lauren succeeds in opposing “parody trademark” before EU Court

With Contributions From Ramon Luque The General Court (EU) recently delivered a judgment which could offer brand owners greater protection against adaptations and parodies of their brands.  The case is  The Polo/Lauren Company v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). In late 2009, FreshSide Ltd filed a Community trade … Continue Reading

Mirror, mirror on your app…The cosmetics industry embraces digital

L’Oreal launched its Makeup Genius app earlier this year. It’s been lauded as one of the best attempts at enabling users to apply make-up virtually, through a smartphone or other device. This has prompted a number of market observers to ask whether the colour cosmetics industry is on the cusp of a digital revolution, and … Continue Reading

Michael Kors, Costco settle “Bait and Switch” Mother’s Day ad dispute; raises question of best brand policing strategy

With Contributions From Matthew Verdin Michael Kors, LLC and Costco Wholesale Corp. recently settled a trademark infringement lawsuit that the famous fashion designer company filed against the warehouse giant over a nationwide “bait and switch” ad campaign for Mother’s Day.  The lawsuit raises the question of how brand owners can best police their trademarks for … Continue Reading

Belgian court declares Louboutin trademark invalid in three European countries

Christian Louboutin SA’s registered trademark on red-soled shoes is one of the most litigated intellectual property rights in the fashion industry in recent years.  In a decision on the validity of the trademark in March, the Brussels District Court held against Louboutin and declared the trademark void in Belgium, the Netherlands and Luxembourg. Louboutin had … Continue Reading

Advocate General clarifies “individual character” requirement for unregistered community design rights

A recent opinion issued by Advocate General Melchior Wathelet could strengthen the IP rights of fashion designers in Europe.  In a long-running infringement case by Karen Millen Fashions against Dunnes, a major retail chain in Ireland, the Advocate General’s opinion issued to the Court of Justice of the European Union (CJEU) sides with designer Karen … Continue Reading

The protection of brands in Europe using a Community Registered Design – Trunki v Kiddee

“Copycat” branding — where a lesser known brand mimics the appearance or design of a more successful or well-known brand — is becoming more common. Copycat products will often undercut the better known brand on pricing, in order to attempt to access a piece of the market captured by that brand. Designers looking to use … Continue Reading

Swiss court refuses to scrub toothpaste fine for import bans

Prices of branded goods in Switzerland have historically been higher than in neighboring countries.  As a result, measures that impede parallel imports into Switzerland have long been seen as preventing Swiss customers from purchasing cheaper products from the European Union (EU), and have triggered complaints to the Swiss competition authority (ComCo).  ComCo has actively investigated … Continue Reading

Two Polish distributors of luxury watches fined for unlawful price fixing

The Polish Competition Authority’s probe into the luxury watch sector led to a first round of fines this week – two distributors of branded watches were fined the equivalent of ca. EUR 275,000, for fixing with their downstream retailers minimum retail prices for the sale of watches. PHU Jubiler and Anyro&Co retail and wholesale watches … Continue Reading

London Fashion Week: Model Rights?

As models are flown in from across the globe for London Fashion Week, we take the opportunity to remind businesses of their responsibilities towards models under UK employment law. Last summer, we blogged on the movement gathering momentum both in the UK and further afield to ensure that models’ working conditions provide adequate protection. The … Continue Reading

In China, it’s use it or lose it or else, get to be well-known: lessons to draw from Burberry’s battle to defend its signature tartan

A brand iconic for its tartan-lined raincoats faces stormy weather in China (at least in a metaphoric sense).  Burberry — like other brands with a strong presence in the People’s Republic— confronts the challenge of protecting its trademark under Chinese law, and there are lessons to absorb from its experience.  Burberry is currently appealing a … Continue Reading

The campaign against chains – formula retail in San Francisco

“Formula retail” has been a popular buzz phrase in San Francisco this year, as restrictions over formula retail (more commonly known as chain stores) have thwarted such businesses as American Apparel,Chipotle and Jack Spade from opening locations in certain areas of the city. Backlash against chain stores is not a new phenomenon.  Between 1980 and 2000, for … Continue Reading

Brands look to adapt as austerity drive hits luxury goods sector in China

Increased scrutiny in China of the consumption of luxury goods appears to be contributing to slowing demand in certain sectors.  As previously reported, the case of Yang Dacai, a Chinese official who became the subject of an internet campaign focused on the many luxury watches he owned, led to public outrage and an investigation by … Continue Reading

FTC has its eye on native advertising

Native ads, or advertisements that imitate the form and style of the content in which they are featured, are the hottest new trend in advertising.  This comes as no surprise to consumers: three-quarters of US publishers already offer some form of native ads, and another 17 percent say they are considering offering it within the … Continue Reading

Growth in the California organic products market matched by increase in consumer litigation

Buoyed by health and environmental concerns, the demand for “organic” and “natural” products is soaring in the United States.  The U.S. organic industry was estimated to be worth over USD 31.5 billion in 2011, an increase of 9.5% from the previous year and nearly double its size from five years earlier.  Given that organic products … Continue Reading

Ruling on borderline product classification highlights lack of harmonization in the EU

The Court of Justice of the European Union (CJEU) recently delivered its judgment in case C-109/12 concerning the legal status of medical devices.  The CJEU confirmed Advocate General Sharpston’s opinion that Member States may classify the same product differently and confirms previous rulings of the CJEU.  If the ruling is applied to other borderline products, such as cosmetics and … Continue Reading

Andy Rosen and the CFDA launch new initiative to revitalize New York City manufacturing

Andy Rosen, founder of the designer brand Theory, along with the Council of Fashion Designers of America (“CFDA”) and the New York City Economic Development Cooperation are launching the Fashion Manufacturing Initiative to raise funds for New York city factories that are at least two-years-old.  By encouraging American designers to manufacture domestically, this initiative is … Continue Reading

Spanx v. Yummie Tummie design patent lawsuit — the battle lines are drawn

Launched by Sara Blakely in 2000, Spanx is a well-established women’s shapewear brand with worldwide brand recognition.  Since Spanx’s launch, numerous competitors have flooded the market.  Among them is Yummie Tummie, which was founded by reality TV personality Heather Thomson in 2008.  Yummie Tummie and Spanx are now embroiled in a design patent dispute in … Continue Reading

Luxury in Lagos: Nigeria embraces extravagance

Nigeria is often said to be the African country with the highest growth potential along with Angola.  It is the continent’s most populous country (with over 168 million people) and, despite 50% of the population living in poverty, there are still over 60 million who are upwardly mobile in society — a number that exceeds … Continue Reading