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Anti-Counterfeiting Update

By Sarah Robertson, Susan Progoff, and Fara Sunderji

Recently, the designer Tory Burch was awarded relief in two different cases pending before the United States District Court for the Northern District of Illinois. In Tory Burch LLC v. The Partnerships and Unincorporated Associations Identified on Schedule "A," Civil Action No. 13 C 2059 (March 27, 2013), Judge Kendall granted an ex parte temporary restraining order against an inter-related group of Chinese-based individuals and business entities alleged to be working in concert to manufacture and sell counterfeit TORY BURCH merchandise, which was offered through hundreds of websites and online marketplaces. The court also authorized the transfer of the defendants' domain names to Tory Burch and froze the defendants' financial assets that were subject to the court's jurisdiction, such as PayPal accounts and other means by which the defendants received payment for their counterfeit products. As the defendants had provided false addresses to the domain name registrars, the court permitted them to be served by e-mail and electronic publication. Finally, the court granted the plaintiff's motion for expedited discovery of the defendants' bank and payment system accounts, finding good cause for such discovery because the defendants were located overseas and had gone to great lengths to conceal their identities.

In the second case, Tory Burch LLC v. The Partnerships and Unincorporated Associations Identified on Schedule "A," Civil Action No. 13-cv-1396 (April 8, 2013), the court entered a default judgment against a group of defendants who were selling counterfeit TORY BURCH merchandise online. In addition to granting the same kind of injunctive relief to Tory Burch, the court in this case awarded the plaintiff statutory damages of $2 million from each defendant, and directed that all monies held by PayPal in the defendants' accounts be released to the plaintiff as partial payment of the damages award. The plaintiff also received ongoing authority to serve the court's order on any banks, other financial institutions and financial service providers in the event that a new account controlled by the defendants is identified and, upon receipt of the court's order, the financial institution or provider is required to transfer any funds in any such account to the plaintiff.

Adidas and Reebok obtained similar relief from the United States District Court for the Southern District of Florida in Adidas AG v. Adidascrazylight2.com. Civil Action No. 13-21230-CIV-ALTONGA (April 16, 2013), in which Adidas and Reebok sought a temporary restraining order and preliminary injunction against a series of partnerships and unincorporated associations that operate websites selling infringing ADIDAS and REEBOK merchandise. The court granted a temporary restraining order prohibiting the defendants from advertising or selling counterfeit or infringing merchandise and from disposing of any products or evidence relating to the manufacture or sale of such merchandise. In addition, the court directed the defendants to discontinue all use of the plaintiffs' trademarks in connection with the defendants' websites, and in any domain names, metatags, source code, advertising links, search engines' databases or cache memory, and in any other form that is visible to computer users. The defendants were also enjoined from transferring the domain names in issue during the pendency of the lawsuit and the domain name registrars were directed to transfer the domain names to the plaintiff for deposit with the court. The court further ordered the privacy services for the domain names in issue to disclose the owners of the domain names to the plaintiff.

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This page contains a single entry from the blog posted on July 18, 2013 1:37 PM.

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