News & Analysis as of

Counterfeiting Corporate Counsel

Brownstein Hyatt Farber Schreck

Emerging Counterfeiting Tactic: Private Label Marks to Evade Online Enforcement

A new and increasingly sophisticated form of counterfeiting is challenging traditional brand protection strategies. Counterfeiters are now avoiding the use of well-known house marks and instead applying “private label” marks...more

McDermott Will & Schulte

Dolly Pardon: American Girl Can Sue Foreign Counterfeiter for Internet Sales

The US Court of Appeals for the Second Circuit clarified its standards for establishing personal jurisdiction over foreign defendants that conduct business over the internet. American Girl, LLC v. Zembrka, DBA...more

Troutman Pepper Locke

Etsy Targeted Over Sale of Counterfeit Products

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U.S.-based international trade group Cashmere and Camel Hair Manufacturers Institute (CCMI) recently filed a lawsuit against global online marketplace Etsy, Inc. in U.S. District Court for the District of Massachusetts for...more

Seyfarth Shaw LLP

New Federal Disclosure Requirements for Online Sellers Target Anonymous Counterfeiters

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A new federal law requires increased transparency in online sales transactions with the aim of protecting consumers against fraudsters and counterfeiters that historically have been able to hide anonymously behind unverified...more

McGlinchey Stafford

Ninth Circuit Holds Delta-8 THC Products Are Federally Legal

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In 1965, Bob Dylan sang in Subterranean Homesick Blues that “you don’t need a weatherman to know which way the wind blows.” Thanks to a May 19 decision from the Ninth Circuit, we do not need a weatherman when it comes to the...more

Morgan Lewis

Jury Finds for Online Marketplace over Atari in Trademark Infringement Case

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In the case, Atari had alleged that Redbubble failed to adequately police its marketplace to remove artist uploads that counterfeited or infringed upon Atari’s trademarks in its logo and other iconic images. As part of its...more

McDermott Will & Schulte

Eye Don’t: No Counterfeiting Without Likelihood of Confusion

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Referring to the act of counterfeiting as “hard core” or “first degree” trademark infringement, the US Court of Appeals for the Ninth Circuit for the first time confirmed that the Lanham Act requires a likelihood of confusion...more

Haug Partners LLP

Amazon Announces It Will Publicly Display U.S. Third Party Sellers’ Names and Addresses to Combat Counterfeit e-Commerce Goods

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In 2020, Amazon, one of the world’s largest e-commerce platforms, has implemented and established strategies, features and resources that are noteworthy to address the rampant issue of counterfeiting and piracy throughout...more

Neal, Gerber & Eisenberg LLP

Client Alert: U.S.-China Trade Deal Promises Better Intellectual Property Protection for U.S. Businesses in China

On January 15, 2020, the U.S. and China signed Phase One of the Economic and Trade Agreement Between the Government of the United States of America and the Government of the People’s Republic of China (the “U.S.-China Trade...more

ArentFox Schiff

Trump Administration Cracks Down on Counterfeit and Other Goods Imported Contrary to Law - US Government Announces First Step in...

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Last week, the Trump Administration announced a plan to crack down on the sales of contraband and counterfeit goods online. The steps will affect a number of parties in the supply chain from importers and sellers to customs...more

Seyfarth Shaw LLP

New Federal Contract Reporting Requirements Aimed at Protecting Supply Chains Through Detection of Counterfeit Parts

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Federal contractors already subject to a myriad of reporting requirements should be prepared for yet another. Effective December 23, 2019, a new Federal Acquisition Regulation (“FAR”) provision entitled “Reporting of...more

Fenwick & West LLP

Eleventh Circuit Affirms Contributory Trademark Infringement Award

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The United States Court of Appeals for the Eleventh Circuit affirmed liability under the “know or has reason to know” standard for contributory trademark infringement in Luxottica Group, S.p.A. v. Airport Mini Mall, a case...more

Shutts & Bowen LLP

Landlord Liable for Subtenants’ Trademark Infringement

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If you asked most commercial landlords what keeps them up at night, they probably wouldn’t say that they worry about their tenants committing trademark infringement.  Granted, trademark infringement is not likely to be an...more

BakerHostetler

China: New Trademark Law Will Come Into Effect on Nov. 1, 2019

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On April 23, the Thirteenth Standing Committee of the National People’s Congress passed the fourth amendment to the Trademark Law of China. The new trademark law will come into effect Nov. 1, 2019. ...more

Knobbe Martens

Divide and Conquer: How Louis Vuitton's Brand Protection Strategy Might Increase the Opportunities for Brand Owners to Combat...

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On November 7, 2018 Louis Vuitton Malletier, S.A. filed a complaint in the Southern District of New York against i-Fe Apparel, Inc., Yongun Jung, and a number of presently unknown entities and individuals (“Defendants”)....more

Knobbe Martens

Ethical Brand Protection in the Age of Social Media: Fair Ball or Foul?

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Presentation Goals - • WHAT - Build and maintain strong brand equity through proper trademark policing • HOW - Protect the brand via a custom enforcement strategy • CONSIDERATIONS - Promote ethical investigations in...more

Hogan Lovells

UK Supreme Court holds rights-holders should bear the costs of web-blocking injunctions

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The Supreme Court handed down its much anticipated judgment in Cartier International AG v British Telecommunications Plc yesterday. ...more

Hogan Lovells

UK Supreme Court case: criminal sanctions for trade mark infringement

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R v M; R v C and R v T - The Supreme Court has held that the criminal sanctions under section 92(1) of the Trade Marks Act 1994 (“the Act”) will apply to the sale or so called “grey” market goods as well as counterfeit...more

Bennett Jones LLP

Federal Court Cracks Down on Intentional Infringement with $1 Million Punitive Damages Awards

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It's been a costly week for intentional infringers of intellectual property (IP) rights. In two separate decisions, the Federal Court of Canada has awarded $1 million in punitive damages. These are among the highest punitive...more

BCLP

EU Retail News – September 2016

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UK retailers, like all businesses, are facing several years of uncertainty following the Brexit vote. This uncertainty will not be alleviated until the terms of the UK’s withdrawal from the European Union are defined and...more

BCLP

Online Seller Wins Dismissal of RICO Claims in Counterfeiting Action by Fashion Retailers

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A New York federal court recently held that defendant Alibaba Group Holding Ltd. (“Alibaba”), which is notorious for allegedly enabling the sale of counterfeit products, did not violate federal racketeering law by selling...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Trademark Protection — 5 Practical Considerations

When Tim Berners-Lee developed the World Wide Web in 1990 as a tool to share information among specialized researchers, he likely did not anticipate the degree to which his invention would radically change — in just a few...more

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