The Case of the Counterfeit Cell Phone Case

Speck Products, manufacturers of form-fitting, stylish mobile device cases announced that they have obtained a judgment from the United States Federal District Court for the Central District of California against Tsai & Shaw, a company that has been selling counterfeit Speck iPhone cases. The judgment includes a permanent injunction against Tsai & Shaw, as well as an award for the damages.

Speck designs cases for the leading brands of smartphones, e-readers, tablets and laptops. Based in California, Speck was started in 2001 by a group of design engineers who love both technology and gadgets. Their goal is to make cases that are not only nice to look at, but also have clever surprises to them. Speck is among the top smartphone case manufacturers, and has been given awards for their innovative designs.

Wining this case is not only a big victory in the fight to protectSpeck’s brand, but also a win in the fight to protect the product that is the embodiment of the U.S. patent for the CandyShell case, which Speck was awarded in August 2012.

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U.S. Patent No. 8,204,561, which covers the CandyShell case, explains the invention generally as follows:

The present invention is an improvement over the existing cases because it combines the best features of both hard cases and the elastomeric cases while being only a single part, which is particularly useful from a consumer viewpoint. The present invention provides a hard protective exterior shell. This hard protective exterior shell allows the device maximum protection from impacts with sharp objects. The hard protective exterior shell mimics the finish of existing phones, MP3/4 players, and other mobile electronic devices. Many users like the feel of the original phone and would like to maintain that feel but still want protection for their device. The hard protective exterior shell of the present invention has a low coefficient of friction. This allows the device to easily be slipped in and out of pockets easily without becoming attached or without great resistance to clothing materials. A major complaint from current elastomeric case users.

The CandyShell comes in an array of bright colors such as CinnaRibbon Red, GuavaGoo Pink, BatWing Black and JujuJulep Green. It is one of Speck’s most popular iPhone cases with consumers.

In the complaint against Tsai & Shaw, Speck states that, “among other things, Defendant has advertised, offered to sell and has sold products that infringe the trademarks of Plaintiff to consumers. … Defendant has also offered to sell and actually sold counterfeit products using an interactive internet website and knowing or having reason to know that consumers throughout the United States … would purchase said counterfeit goods from Defendant, believing that they are authentic goods manufactured and distributed by Plaintiff or its authorizing manufactures.”

Tsai & Shaw operated an Amazon storefront under the name “TwinMore.” The products advertised and sold through their store bore unauthorized Speck symbols and registered trademarks. Speck says that they sales of these fake items that have their marks “are likely to cause confusion, mistake, or to deceive, mislead, betray, and defraud consumers to believe that they substandard imitations are genuine products.”

The case against Tsai & Shaw is just one of the several judgments in the last year that equals over $1.2 million in damages against Tsai & Shaw and other counterfeiters. In a statement released by Speck, they stated that the Tsai & Shaw case was “the largest amount of counterfeit sales the company has uncovered and litigated against.”

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Speck was granted a permanent injunction and Tsai & Shaw were ordered by the court to cease any “importing, exporting, marketing, selling, offering for sale, distributing or dealing in any product or service that uses, or otherwise making any use of, any of Plaintiff’s Speck and CandyShell trademarks and copyrights.”

CEO of Speck Products, Irene Baran, said that “We are sending a clear message that Speck is making every effort to avoid inferior product getting in the hands of our consumers. We take pride in the protection that an authentic Speck product provides and know that it cannot be matched by counterfeits. The global and social impact of counterfeiting is enormous. It undermines both jobs and growth, and as an industry we need to do a better job galvanizing efforts in order to stem the tide.”

In an effort to thwart counterfeits, Speck even goes so far to have a “Watch out for Fakes” badge on their site, attempting to make the case to consumers that inferior, counterfeit items are being passed off to unsuspecting buyers.They say that they are aware of the copycat Speck cases, and while they are flattered others admire their design, their cases cannot be easily copied. They ask consumers to avoid fake cases and purchase real Speck cases, which come with 1-year warranties. They also have a form to fill out if you spot a fake so that customers may help stop counterfeit products.

With Speck’s vigilant efforts to rid themselves of counterfeits, it should come as no surprise that this is not the first lawsuit surrounding their popular CandyShell case. In February 2011, Speck filed numerous lawsuits against various eBay sellers who were allegedly selling smartphone cases strikingly similar to Speck’s own. Speck claimed that the eBay sellers were distributing cases that used names and images markedly similar to theirs, which could confuse consumers and aid in the sales of unauthorized products.

Speck continues to do it’s best to keep counterfeit products off the market to protect not only their good name, but they loyal customers as well. It is perhaps unfortunate that owners of popular brands and innovative products have to be so vigilant in their effort to protect what they have developed. Thanks to the Internet and global distribution and manufacturing chains it is more important than ever for companies to watch for and take action against counterfeit products. Counterfeiting is big business and the criminal penalties are quite low in comparison to many other crimes, which has caused large, multi-national criminal organizations – from terrorists to crime families – to move into this lucrative trade.

For more on this topic please see:

• Counterfeiting, A Growing Worldwide Problem
• Combating Counterfeiting and Unauthorized Product Sales
• Health & Safety Risks from Counterfeits in the Supply Chain
• The Problem with Counterfeit and Black Market Drugs