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Shades of Confusion

At the annual Feast of San Gennaro in New York's Little Italy, stands selling traditional sausage & peppers or zeppole mingle with carnival barkers and other standard street fair fare.  There's even a bit of Italian style, in the form of sunglasses by Dolce & Gabbana and Prada...or is there?

Approaching the the NYS Collection stand on Mulberry Street, the sun-dazzled consumer sees neat rows of sunglasses at bargain prices, all labeled with impressive designer names in large, bold print.  These aren't your usual cluttered trays of counterfeits; each pair has its own holder, and mirrors hang at a convenient height to reflect customer desire. 

A closer look at the displays, however, reveals that the boldface designer names aren't really what they seem.  Instead, NYS Collection's small print invites browsers to "compare our prices to" those of designer labels.

Below the brand names, there's a disclaimer in even smaller print: 

We have no association or relationship with the above named company whatsoever.  The consumer may compare our price and product to the above.  However, our product is unique and different than the above mentioned product.  We do not represent our sunglasses to be the originals nor are they copies to the above. 

In other words, the brand names are used as bait to lure in potential buyers, who are then informed that they aren't really being offered $10 Prada shades -- but hey, these look pretty good for the price.  And did you really want the label, anyway?

NYS Collection prides itself on its chain of shopping mall kiosks and especially on its displays, which have apparently been copied by competitors.  But is its use of designer brand names in proximity to generic sunglasses legal, even with a disclaimer?

Perhaps not, according to the doctrine of "initial interest confusion."  In trademark law, the standard test for infringement is one of "consumer confusion."  If the defendant's use misleads the consumer as to the origin of goods or services, then it infringes the plaintiff's mark.  The special case of initial interest confusion arises when the consumer is attracted in the first place by the use of someone else's trademark, even though no sale is completed as a result of the confusion. 

So you may wander over to the NYS Collection display because the idea of $10 Prada shades sounds good, but by the time you buy them you've realized that they're not really Prada, and you don't care.  Under the law, that can be just as much an infringement as if you really thought you were getting Prada. 

It would seem that whoever wrote NYS Collection's disclaimer isn't just wearing shades, but blinders -- or is looking at the law through seriously rose-colored glasses.

For further discussion of the doctrine of initial interest confusion, check out this article from Professor Jennifer Rothman. 

And next up:  Is the snake girl in the sideshow tent at San Gennaro really a reptile, or just more snake oil?