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THE DUANE MORRIS REPORT 2017
FASHION, RETAIL, LUXURY AND CONSUMER GOODS
• ANTITRUST
• ACQUISITIONS
• CONSUMER PROTECTION LAWS
• CORPORATE
• DISTRIBUTION AND LICENSING
• FINANCING
• GOVERNANCE AND COMPLIANCE
• INTELLECTUAL PROPERTY
The competition for consumers is higher than ever. At Duane Morris, we are positioned to counsel clients across a myriad of legal matters so they can focus on their creative objectives. Duane Morris attorneys in the fashion, retail and consumer goods practice have extensive experience working closely with numerous companies across the industry, from the development phase to product launches and brand protection.
For the past several months, we have represented a variety of clients, from startups to global brands, with all types of matters. We are pleased to present highlights of our work in this report.
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INSIGHTS FROM OUR PROFESSIONALS
“Fast fashion is dependent on high volume... As the consumer becomes more conscious, they may be moving away from impulse purchases of garments that are made to be off trend the moment they are placed in a shopping bag.” “Fast Fashion Industry No Longer Invincible,” TheStreet
“Just because [a company] might take the risk of infringing on others’ designs doesn’t mean it wants anyone else to profit off its own. In order to be copyrightable, a design has to be able to be separated from the garment it’s on.”
“Fast-Fashion Firm’s Quick Turn on IP,” Los Angeles Business Journal
“[W]hile there probably isn’t a copyright or trademark protection on the musicians’ faces themselves, their estates have an interest in the matter.”
“Kendall & Kylie Slapped Tupac and Biggie on $125 T-Shirts
With Their Own Faces,” Yahoo Style
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SERVICES PROVIDED
NANETTE HEIDE
CHRISTIANE SCHUMAN CAMPBELL
DUANE MORRIS ALERTS
• “Victory for Varsity! But Also for Fashion? Supreme Court Rules in Star Athletica v. Varsity Brands”
• “Best Practices for Suppliers and Creditors in a Transformative Retail Environment”
• BEKO
• BELLE&BEANZER LLC
• BON-TON STORES
• CHANEL
• CVS PHARMACY
• EMY MACK
• FASHIONCRAFT-EXCELLO
• FIRMENICH
• FOOT LOCKER
• GOPRO
• GOYARD
• HELEN JON
• JAGUAR LAND ROVER
• JOHN PAUL MITCHELL SYSTEMS
• KOCH FOODS
• LABELUX
• LACE SILHOUETTES LINGERIE
• LENOX
REPRESENTATIVE CLIENTS
• LABOR AND EMPLOYMENT
• LITIGATION
• PATENTS
• PRIVATE EQUITY
• REAL ESTATE
• TAX
• TRADE SECRETS
• TRADEMARK PORTFOLIO MANAGEMENT
• MARIACHI IMPORTS
• NANETTE LEPORE
• NAKED BRAND GROUP
• NIC+ZOE
• OUI HOURS
• POLDER HOUSEWARES
• REVELATIONS PERFUME & COSMETICS
• SCHOLASTIC
• SERENA & LILY
• TIFFANY & CO.
• UNILEVER
• VF SPORTSWEAR
• WOLFORD AG
• YOUR STYLE UNZIPPED
• ZAGLIANI
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EXAMPLES OF OUR WORK
Corporate
• Represented the jewelers of tiaras for PBS’ award-winning
“DOWNTON ABBEY” in connection with corporate matters.
• Represented JAGUAR LAND ROVER in connection with
establishing its electric motor racing team. Also advised
JLR with licensing and trademarks in Korea, Colombia and
South Africa.
• Represented NAKED BRAND GROUP INC. (Nasdaq: NAKD) in
a $5 million at-the-market (ATM) equity offering of common
stock with Maxim Group LLC, as agent, which was completed
from start to finish in 14 hours. Naked is an apparel and lifestyle
brand company that is currently focused on innerwear products
for women and men.
• Represented LABELUX, a progressive luxury group with a
global assembly of lifestyle brands such as Jimmy Choo, Bally
and Zagliani, in connection with various corporate matters.
• Represented REVELATIONS PERFUME & COSMETICS in the
development and sale of a perfume to benefit the National
Children’s Cancer Society.
• Represented JMK CONSUMER GROWTH PARTNERS in its
Series B Preferred Stock investment of Miyoko’s Kitchen, a
pioneer and authority in nondairy, vegan cheese and butter
alternatives. The proceeds from the financing will be used to
complete a new manufacturing facility in Petaluma, California,
which will provide capacity that is 30 times the current level,
as well as to support the significant growth expected in the
coming years.
• Represented the owners of a furniture retailer with
approximately 40 locations in several states in its sale for
$42 MILLION.
• Represented POLDER HOUSEWARES and its affiliates in the
sale of substantially all of its assets to a buyer, which is majority
owned by entities affiliated with Topspin Partners, a suburban
New York-based private equity fund.
• Represented BEKO USA, an appliance and consumer electronics
brand, in connection with transactional matters to establish its
presence in the United States.
• Represented a major global jewelry group on the establishment
of retail operations in Vietnam.
• Represented a publicly traded lifestyle merchandising retailer
with respect to ongoing SEC reporting obligations, corporate
governance and various transactional matters.
• Advised a major regional internet-based fashion retailer in
respect to its cross-border procurement agreements.
• Advised an offeror in connection with the acquisition of a
Singapore-listed retailer with regional offices and a market
capitalization of S$150 MILLION.
• Represented a private equity fund in the sale of a portfolio
company furniture retailer with 40 locations in several states.
• Represented the agent and lead lender in a syndicated senior
credit facility in support of Invus’ acquisition of Ashley Stewart,
a plus-size fashion leader.
• Represented FIRMENICH INCORPORATED in connection with
the negotiation and signing of a merger agreement pursuant to
which Firmenich will acquire Agilex Holdings, Inc., a portfolio
company of New York-based private equity firm MidOcean
Partners.
• Provided contract advice to a service-disabled veteran-
owned small business that provides planning and support to
government teams, as well as consulting, strategic planning
and engagement services to companies pursuing government-
related opportunities.
• Represented a New Jersey supermarket in obtaining approval
for it to participate in the federal Women, Infants and Children
(WIC) program.
• Advised a construction firm in Singapore in the debarment of
the company.
• Advised an Italian luxury fashion house in connection with
proposed changes to its commission/sales incentive plan for
sales associates and department managers, the review of a
franchising agreement, the review of a loan agreement and
other corporate matters.
• Represented an international fashion retailer in connection
with the review of a shop lease agreement, as well as currently
advising the firm on the potential termination of one of its joint
venture companies.
• Represented a major regional internet-based fashion retailer in
connection with its cross-border procurement agreements.
• Represented an American accessories designer and
manufacturer in connection with its acquisition of a start-
up, followed by the establishment of the designer’s presence
in Vietnam.
• FashionCraft-Excello, Inc. v. CheapFavorShop.com, WeddingFavors.org,
CustomGift.com, BabyFavors.com, Outdoor Living, Inc., a.k.a.
OutdoorLiving.com, Wish Rocket, LLC and Ronald G. Spinks Jr.,
Case No. 1:16-cv-00381-PKC-RER (E.D.N.Y. 2016). Represented
FASHIONCRAFT-EXCELLO in an action involving trademark
infringement, copyright infringement, false designation of
goods, false advertising, unjust enrichment, deceptive acts and
business practices, deception and confusion of consumers, and
damage to FashionCraft-Excello’s reputation and goodwill in
connection with the marketing and sale of wedding and event
favors and gifts.
• Represented MARIACHI IMPORTS in connection with several
copyright matters.
• Represented one of the largest supply chain services leaders,
providing grocery and foodservice supply chain solutions for
convenience stores, mass merchants, drug stores and chain
restaurants throughout the United States, in connection with a
copyright matter.
• Represented a provider of liturgical vestments in connection
with a copyright matter.
• Represented a Hong Kong beer company in connection with
trademark applications for its products.
• Represented MAISON GOYARD in connection with a copyright
infringement dispute.
• Represented a fine jewelry brand in connection with copyright
protection.
• Represented an innovative toy company in connection with a
copyright infringement matter.
Litigation
• Representing U.S. GOLF MANUFACTURERS ANTI-COUNTERFEITING
WORKING GROUP, consisting of six of the most well-known golf
companies in the world, in various antitrust guidance.
• Obtained dismissal on behalf of CONOPCO, INC. D/B/A
UNILEVER of all claims brought by manufacturer and supplier
American Accessories International, LLC, which had alleged
breach of contract, promissory estoppel, promissory fraud,
negligent misrepresentation and fraudulent concealment.
• Defended an international luxury cosmetics brand with
300-PLUS RETAIL LOCATIONS and 800-PLUS INTERNATIONAL
LOCATIONS against false labeling allegations.
• Represented tenants of a large shopping mall in a high court
suit against the landlord for breach of the tenancy agreements.
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• Represented an affiliate of a luxury jewelry and specialty
retailer in connection with a full range of corporate services,
including a project to expand its factory facilities in Vietnam,
implementation of stock option plans, restructuring of
management personnel and corporate governance protocols,
and other employment matters.
• Represented a Swiss luxury watch and jewelry maker in
connection with corporate matters, including employment law
advice, review of data protection policy, review of franchise
agreement and other guidance.
• Represented DECATHLON SINGAPORE, PTE. LTD. in connection
with various lease agreements and Singapore sports lease
advice. Also advised the multinational sporting goods retail
store with a number of contractual and regulatory matters
across the Southeast Asian region.
• Represented EREADY COUTURE, PTE. LTD., a manufacturer of
fashion apparel and accessories, in connection with drafting
a franchise/distribution agreement, as well as advice on
commercial and legal issues relating to such agreements.
• Acted for a renowned American multinational luxury retailer
pertaining to licensing, labor law, customs and tax issues to
establish a 100 percent foreign-owned retail business in Vietnam.
Intellectual Property
• Represented SERENA & LILY, a home and lifestyle brand with
a California focus, in connection with trademark matters and
general IP counsel.
• Prepared and filed infringement claims to remove infringing
listings on internet shopping platforms, such as Amazon, eBay
and Alibaba.
• Representing SCHOLASTIC in a patent infringement action
involving ultraviolet penlights utilizing invisible ink that
fluoresces under ultraviolet light, as well as other matters.
• Representing an international consumer electronics company in
licensing involving both design patents and utility patents.
• Represented a Spanish textile manufacturer in negotiation
of design and supply contracts with large retail group in the
U.S. The negotiation involved design and supply agreements,
trademark license agreement and related contracts.
• Represented UNILEVER USA in connection with copyright matters.
• Providing copyright advice to a premium spirits and wine
company in the U.S.
• Represented a dance supply company in connection with
contract/trademark dispute litigation.
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• Represented a Denmark-based activewear company in a
dissolution proceeding in the Supreme Court of New York
concerning the appropriateness of dismissal based on the
voting provisions enumerated in the shareholders’ agreement.
• Counseled an international clothing retailer regarding conflict of
interest and engagement questions concerning outside counsel.
• Represented a businessman in a California Department of
Business Oversight investigation for violations of various
securities and consumer protection laws.
• Obtained on behalf of a city a dismissal of a case brought by
a community organization alleging the city and individual city
council members violated conflict of interest laws by accepting
excessive campaign donations in exchange for the city council’s
approval of two high-end luxury hotels in the city.
• Represented cosmetology school operator JOHN PAUL
MITCHELL SYSTEMS in multiple matters, including for an order
from the U.S. District Court for the Central District of California
granting summary judgment in a putative class action case,
holding the schools did not owe wages to students who were in
training for their profession.
• Represented a provider of health and wellness products in
connection with a request for a foreign deposition in Florida.
• Represented a full service importer of quality foods from
around the world in connection with breach of contract and
fraud allegations.
• Represented an organization in the gasoline service stations
industry in connection with negotiating a lease with potential
litigation.
• Represented a developer of productive and efficient workplace
environments in connection with a vendor dispute.
• Represented a retailer of optical products and services in the
negotiation and review of service agreements, as well as in the
defense of an unsolicited advertisement complaint.
• Represented a leading musculoskeletal implant manufacturer
in connection with noncompete matters.
• Assisting major retailers and importers of clothing, linens and
jewelry with safety compliance issues associated with U.S.
Consumer Product Safety Commission (CPSC).
• Representing major retailers and importers of clothing, linens
and jewelry with shipping compliance issues.
• Represented an international online clothing retailer in
connection with a compliance matter.
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• Represented an electronic equipment and supplies company,
one of the 10 companies involved in high-profile recalls for
hoverboards, in negotiating with the Consumer Product Safety
Commission, planning adequate and cost effective remedies
and drafting various recall documents for inclusion in press
releases and publications.
Employment, Labor, Benefits and Immigration
• Represented WOLFORD AG, a manufacturer of textiles for
women’s apparel and accessories, in connection with claims
that it violated restrictive covenants by poaching employees
from a beachwear company.
• Represented retail client in lawsuit involving claims of disability
discrimination, failure to accommodate and retaliation under
the New Jersey Law Against Discrimination.
• Obtained resolution for national retail chains against
allegations of website accessibility issues under the Americans
with Disabilities Act (ADA).
• Represented VF SPORTSWEAR, whose brands include The
North Face, Nautica and Kipling, in connection with advice and
counseling related to employment litigation.
• Represented KOCH FOODS, one of the largest poultry
processors in the United States, in connection with a racial
discrimination lawsuit.
• Represented a medical device firm in connection with a
termination of employment matter.
• Represented a provider of high-quality energy drinks, shots
and waters in connection with breach of contract and
termination matters.
• Represented a North American leader in private label beverage
manufacturing in the defense of discrimination and wrongful
termination claims, a noncompete dispute and response to a
violation notice of California Proposition 65.
Real Estate
• Represented NIC+ZOE, a manufacturer and retailer of women’s
fashion apparel, in connection with leases for retail locations
and defense against IP infringement claims.
• Negotiated and drafted design and construction agreements for a
retailer for a series of new facilities throughout the United States.
• Represented the owner/operator of a luxury Miami hotel/
condominium mixed-use project against claims for
mismanagement and allegations of decline in property values.
PROFESSIONAL AFFILIATIONS
Our attorneys serve on boards, support and present at industry conferences and organizations, including:
Cosmetic Executive Women
CEW is a global community with 8,000 members committed to moving the beauty industry forward.
Independent Cosmetic Manufacturers and Distributors
ICMAD is a nonprofit trade association dedicated to providing programs and services to creative and innovative cosmetic companies to help them succeed in the rapidly changing, highly competitive cosmetics and personal care industries.
Nobiyo Freshwear™ is a patent-pending undergarment that manages perspiration and odor in the sweat-prone areas.
Personal Care Products Council
A leading national trade association representing the global cosmetic and personal care products industry with more than 600 member companies that are committed to product safety, quality and innovation.
Professional Retail Store Maintenance Association
PRSM is committed to serving facilities management professionals and to leading the industry by providing resources, solutions networking and knowledge sharing.
Retail Marketing Society
An organization focused on exploring issues affecting the retail industry, including apparel,
accessories, cosmetics, supermarkets, electronics and real estate.
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• Represented a Korean construction major in a claim commenced
by its subcontractor for the sum of S$5 MILLION under the SOP
Act involving a mixed development consisting of a condominium
and shopping center integrated with a bus interchange and the
mass rapid transit system in Singapore.
• Represented COMMUNITY LOAN FUND OF NEW JERSEY, INC.
in connection with the deployment of $6.8 million of federal
New Markets Tax Credit allocation for the development of an
arts and innovation center, which will provide 20,000-square-
feet of educational, training, retail and entrepreneurial space
for the Cumberland County Community College, located in
Millville, New Jersey.
• Prepared a design/construction agreement for a retail center at
the iconic TIME WARNER CENTER.
• Prepared a design and construction agreement for a retail
center at New York City’s HUDSON YARDS, which boasts
Neiman Marcus as an anchor tenant.
• Prepared the design and construction agreements for numerous
retail locations for a designer of outdoor clothing and gear for
climbing, surfing, skiing and snowboarding.
• Prepared build-outs for retail at BRONX TERMINAL MARKET
and GATEWAY CENTER in Brooklyn.
• Prepared design agreements for the GRAND AVENUE PROJECT,
a development to revitalize Downtown Los Angeles with a mix
of commercial, retail, cultural spaces and residential units.
• Prepared design and construction agreements for FOREST CITY RATNER at East River Plaza shopping mall in New York City.
• Represented a Florida-based restaurant in a landlord/tenant dispute and a partnership dispute over 11 restaurants.
Tax
• Represented a wine and spirits store in connection with collect use tax on the sale of wine shipped into Illinois.
• Represented a DUNKIN’ DONUTS store in connection with state tax litigation.
Bankruptcy
• Represented landlords in the chapter 11 cases of Vestis, Eastern Mountain Sports and Bob’s Stores.
FOR MORE INFORMATION, PLEASE CONTACT:NANETTE C. HEIDE Partner P: 212.692.1003 [email protected]
This publication is for general information and does not include full legal analysis of the matters presented. It should not be construed or relied upon as legal advice or legal opinion on any specific facts or circumstances. The invitation to contact the attorneys in our firm is not a solicitation to provide professional services and should not be construed as a statement as to any availability to perform legal services in any jurisdiction in which such attorney is not permitted to practice.
OFFICE LOCATIONS AND REACH
UNITED STATES
Atlanta
Baltimore
Boca Raton
Boston
Cherry Hill
Chicago
Houston
Lake Tahoe
Las Vegas
Los Angeles
Miami
New York
Newark
Philadelphia
Pittsburgh
San Diego
San Francisco
Silicon Valley
Washington, D.C.
Wilmington
> Joint ventures in Myanmar, Oman, Shanghai and Singapore
> Alliances in Mexico and Sri Lanka
> Leadership positions with international networks of independent law firms
INTERNATIONAL
Hanoi Ho Chi Minh City London Myanmar
Oman Shanghai Singapore Taiwan
© Duane Morris LLP 2017 | July 2017
GLOBAL NETWORK
Clients benefit from Duane Morris’ global network
of resources. We represent clients with matters,
or a presence, in many countries, including:
• AUSTRIA
• COLOMBIA
• DENMARK
• FRANCE
• KOREA
• SINGAPORE
• SOUTH AFRICA
• SPAIN
• SWITZERLAND
• TURKEY
• UNITED KINGDOM
• UNITED STATES
• VIETNAM
SETTING THE TREND
We are proud to assist these organizations committed to propelling the next generation of fashion designers and innovative products.
Alley to the ValleyA community of the world’s most influential women in entrepreneurship, venture capital and angel investing, corporate, law, accounting, management consulting, literary and speaking agencies, and media, among other accomplished women.
House of DIFFA Design Industries Foundation Fighting AIDS (DIFFA) hosts multiple events
highlighting the design community and raising funds to benefit those living with or affected by HIV/AIDS.
Las Vegas Fashion Council LVFC is committed to advancing the Las Vegas fashion industry and expanding the economy by cultivating relationships between fashion professionals, students, emerging artists, community leaders and organizations.
Women Founders & FundersWFF connects women entrepreneurs with potential funders to enable founders to accelerate growth and scale in their companies, as well as provides education, networking and partnership opportunities.
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