People who buy fiberglass replicas of Lambos, are not likely to be in the market for Lambos ND Alabama http://t.co/66v8yKlDA3
— TrademarkBlog (@TrademarkBlog) September 9, 2014
$5500 in fines for a MARLBORO recidivist counterfeiter SDNY http://t.co/RuSdBUZsjz
— TrademarkBlog (@TrademarkBlog) September 9, 2014
Lady Gaga is performing at Madison Square Garden in NY on July 6,7 and 9 and February 21 and 22. Her trademark representatives beliieve that bootleg merchandise will be sold at these shows, and have filed a ‘John Doe trademark complaint.’ John Doe actions are interesting as they represent an exception to the law’s antipathy to the events depicted in the movie ‘Minority Report’ in which Tom Cruise works for the Precrime Department.
To plagiarize myself:
. . . the law permits the filing of a case against describable but presently unknown persons for anticipated describable future infringement, of a type where a law enforcement officer can make an on-the-scene determination that something is very likely an infringement.
A policy rationale for a John Doe seizure is that without on-the-spot seizure, the TM owner will suffer irreparable harm, as immediately following the event, the defendant and their proceeds will vanish, thus making an after-the-fact lawsuit purposeless. John Doe seizures are granted usually in connection with short-lived events such as sporting championships or concerts, where unincorporated, premise-less entities possessing small inventories (also known as kids holding duffel bags of shirts) are likely to offer counterfeit merchandise. The seizure order should contain sufficient specificity such that a marshal can make a determination whether a shirt constitutes a counterfeit, with a high degree of accuracy (for example, does the shirt bear the registered logo of the band, or not?). A court may blue-pencil plaintiff’s requested parameters of the seizure with regard to what constitutes plaintiff’s marks, vicinity and timing of permitted seizures. Bear in mind that if the seizure turns out to be unlawful, the vendor should be able to seek compensation from the plaintiff.
Complaint Lady Gaga John Doe
Important Decision: Gucci Pleads Good Contributory Infringement Action Against Credit-Card Processors
This is an important SDNY decision. Gucci sued companies that process credit card transactions for ‘replica’ websites. On 12(B)(6) motion, Court holds:
Gucci can proceed with its action against Defendants if it can show that they (1) intentionally induced the website to infringe through the sale of counterfeit goods or (2) knowingly supplied services to websites and had sufficient control over infringing activity to merit liability.
Gucci fails to allege inducement but sufficiently pleads ‘knowledge’ or ‘willful blindness.’ Interesting fact: one credit card processor conducted reviews of ‘charge-backs’, instances where the customer demands a refund. Some customers demanded refunds because the goods were counterfeit (see page 19 of decision).
The idea of going against credit card processors has been previously explored under California state unfair competition law.
Decision Gucci v Frontline (Credit Card)
Three widely cited U.S. government estimates of economic losses resulting from counterfeiting cannot be substantiated due to the absence of underlying studies. Generally, the illicit nature of counterfeiting and piracy makes estimating the economic impact of IP infringements extremely difficult, so assumptions must be used to offset the lack of data. Efforts to estimate losses involve assumptions such as the rate at which consumers would substitute counterfeit for legitimate products, which can have enormous impacts on the resulting estimates. Because of the significant differences in types of counterfeited and pirated goods and industries involved, no single method can be used to develop estimates. Each method has limitations, and most experts observed that it is difficult, if not impossible, to quantify the economy-wide impacts. Nonetheless, research in specific industries suggest that the problem is sizeable, which is of particular concern as many U.S. industries are leaders in the creation of intellectual property.
New website for identifying counterfeits: IsItFake.Org.
There is a website named Upstate Belle Empire and it advertises that it’s ‘spent years searching the marketplace for True (sic) designer brands at huge discounts.” It displays logos such as these:
One item advertised today are these Coach Rainboots:
. . .which Coach says is a counterfeit.
This last bit on the UBE home page struck me as somewhat unusual:
This is the first website I’ve seen carrying Prada that provides this service.
Complaint Coach Belle Epoque
Yeshiva University runs the Albert Einstein College of Medicine. Someone is promoting an Albert Einstein University medical school, allegedly in Grand Cayman, which doesn’t seem to exist (see paras. 26 on in the complaint).
Complaint Yeshiva v Albert Einstein University
Burberry obtains judgement of $4 million in statutory damages, based on $1 million per type of counterfeit good, against ‘serial’ counterfeiter.
Decision Burberry Statutory Damages
This is a complaint Philip Morris brought against six grocery stores and ten John Does, for selling counterfeit cigarettes. What’s interesting is how the Court will handle the joinder of these defendants – I did not see allegations in the complaint of any sort of connection between them (apart from the allegation that they all sell counterfeit cigarettes).
Complaint Philip Morris Counterfeit