Posts Tagged: "knockoffs"

While many holiday shoppers may think that they’re getting a bargain by purchasing goods displaying a particular brand without having to pay brand prices, these shoppers are unwittingly gifting low-quality items or worse, products that pose health hazards, to their friends or loved ones. Thanks in large part to the Internet, counterfeiting operations have reached epidemic levels in recent years. Nearly half of all brand owners are losing revenues because of the sale of counterfeits and, in 2017, U.S. customs agencies seized a total of 34,143 shipments carrying counterfeited goods being imported into the U.S. But counterfeiting is a victimless crime, the common refrain goes. Nothing could be further from the truth. Terrorist organizations and organized crime families are turning to counterfeiting as a meaningful source of income given the exceptionally low penalties even if they are caught and extraordinarily high profit margins — profit margins that are even higher than selling drugs on the street. 

A New York City-based souvenir and apparel firm City Merchandise filed a complaint alleging claims of copyright infringement against the American subsidiary of French luxury fashion house Balenciaga in the Southern District of New York. Unlike many other copyright suits, which typically involve infringement claims made by a high-end fashion designer against a competitor offering cheap knockoff products, the allegedly infringing products in this case are sold for thousands of dollars more than the original articles marketed by the plaintiff.

Branded apparel companies face many challenges in protecting their IP assets, including the unavailability of copyright protection for fashion designs, the length of time necessary to secure a design patent, the challenge of securing secondary meaning required for a trade dress claim before the market is flooded with knock-offs, and the geographic and practical impediments to pursuing counterfeiters, who are often foreign-based and/or judgment proof.  Perhaps mindful of the limited statutory protections for IP assets and the significant damages being incurred at the hands of infringers, various courts, particularly in the Second and Ninth Circuits, have in recent years taken steps to enhance the alternatives available to apparel companies confronted by the scourge of knockoffs.  Specifically, such court decisions have (1) expanded the scope of potential contributorily liable actors, and (2) broadened the means of freezing and attaching assets of foreign counterfeiters.

The PTAB is openly refusing to follow the Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., it has found a term previously determined definite by the Federal Circuit to be indefinite, and the Solicitor’s Office is siding with an infringer with a reputation as a knock-off artist over an independent inventor… But why doesn’t the USPTO follow Nautilus? Because the Patent Office feels that since they apply the broadest reasonable interpretation to claims that means that the indefiniteness standard set forth by the Supreme Court in Nautilus does not apply to the Office. Breathtaking!

Mark Lopreiato, the inventor of the Forearm Forklift, recorded sales of $4 million in 2008 but since then has seen a 30% drop, which he attributes to cheap replicas available on eBay and Amazon. In point of fact, there have been a number of examples of innovative companies suffering from the sale of replicas on Amazon and other e-commerce sites. In extreme cases, global brands like Birkenstock have stopped business with Amazon and other e-commerce retailers altogether. Sustained pressure on e-commerce sites from both professional and governmental bodies have yielded some results in recent years, with almost every major site now offering some level of IP protection tool or process. This also serves the interest of bigger sites as Amazon, eBay and their Chinese counterpart Alibaba are shielded from legal liability, provided they can offer a timely takedown service for IP owners.

The latest estimate from the International Trademark Association (INTA) notes the global impact of piracy and counterfeiting will hit $4.2 trillion (USD) by 2022… While buying a “knockoff” product may not seem to present harm on the surface, a report from the Organization for Economic Cooperation and Development warns that purchasing counterfeit or pirated goods present “a significant economic threat that undermines innovation and hampers economic growth.” … Fire, electric shock, injury and, at times, fatalities are just some of the risks in using a counterfeit product. Within the past few years, several highly publicized electrocution deaths have been linked to counterfeit iPhone adapters.

In late 2014, Nike Converse Inc. launched an aggressive attack in the U.S. District Court in Brooklyn against companies including Walmart, Under Armour and Ralph Lauren for infringing upon Converse’s signature Chuck Taylor shoe. Nike Converse sued a total of 31 companies for copying the rubber “bumper” running around the front, a “toe cap” on the top of the shoe above the bumper, and lines or stripes running around the sides of the classic kick. Many of us have either owned or seen the Chuck Taylor and can identify these unique traits.

Protecting intellectual property today is more challenging than ever, and the stakes are high. An open and rapid-fire exchange of information has become the norm in our digital age. Add the global nature of the market and persistent technological advancements, and it should come as no surprise that imitators stand ready to capitalize on the latest breakthroughs. As their low-cost, low-quality products flood a market, not only do they claim valuable market share, but they have potential to erode the credibility of an entire category and its leaders. Any company that produces a product must consider the prospect of knockoffs, and the potential impact imitations will have on market share and brand perceptions. Obtaining IP protection directed at mitigating knockoffs can be highly beneficial, particularly for start-ups that may have limited resources and brand awareness.