With the holiday shopping season in full swing, the National Basketball Association, Major League Baseball and the National Hockey League have once again joined as plaintiffs in a civil action aimed at counterfeiters seeking to take advantage of the heightened demand for sports apparel.
On December 12, 2013, the three professional sports organizations filed a complaint in the U.S. District Court for the Northern District of Illinois against unnamed foreign “partnerships and unincorporated associations” doing business through interactive Internet websites accessible in Illinois. NBA Properties, Inc., et al. vs. The Partnerships and Unincorporated Associations, Case No. 1:13-cv-08870 (N.D. Ill.)
The professional sports organizations are joined as plaintiffs in the lawsuit by the Collegiate Licensing Company, an organization representing nearly 200 colleges and universities, in addition to bowl games, athletic conferences, the Heisman Trophy Trust and the NCAA; the Board of trustees for the University of Alabama and the Board of Regents of the University of Oklahoma.The plaintiffs allege that the defendants—most of whom are believed to be in the People’s Republic of China—sell or offer for sale unlicensed and counterfeit products featuring one or more of the trademarks owned and/or licensed by the plaintiffs.
According to the complaint, the defendants facilitate sale of their counterfeit products by incorporating the plaintiff’s trademarks into their domain names, and designing their Internet stores so that they appear, at least to unsuspecting consumers, to be legitimate online retailers. The suit seeks not only to enjoin the defendants and anyone acting in concert with them from selling fake products, but also an order requiring that online marketplace The suit further seeks monetary damages for the defendants’ trademark infringement, consisting either of defendants’ profits from the sale of counterfeit goods along with treble damages for the infringement, or statutory damages.s such as iOffer, social media platforms like Facebook and Twitter, and Internet search engines such as Google and Yahoo, disable defendants’ accounts and cease providing services to the counterfeiters. This suit represents the second time in just the last few months that these sports organizations have banded together in bringing an action against foreign sellers of counterfeit goods. A similar suit filed on October 7, 2013 resulted in a default judgment in favor of the plaintiffs. On November 20, 2013, U.S. District Judge Rebecca Pallmeyer not only permanently enjoined defendants from using the plaintiffs’ trademarks; but ordered the transfer of almost 900 domain names, including, e.g., “bestmlbjerseysus.com,” “nbajerseymvp.com” and “nhljerseysshoponline.com” to the plaintiffs control, Judge Pallmeyer’s order also restrained banks and other financial institutions from transferring or disposing of money found in defendants’ financial accounts, including their PayPal accounts. The court ordered that the funds in these accounts be instead released to plaintiffs in partial payment of their damages.
The sale of counterfeit sports merchandise, which may be of lesser quality than officially licensed goods, has been a long-standing problem for major U.S. sports organizations. In July 2013, the NFL succeeded in obtaining a $273 million judgment against the operators of more than 1,000 websites that were selling counterfeit NFL merchandise. The NBA in particular has also been long known for its aggressive stance against counterfeiters, bringing prior legal actions against, e.g., mobile street vendors selling unauthorized merchandise in and around Dallas in advance of the 2010 NBA all-star game.
This article was prepared by Kathy Grant (Katharyn.email@example.com / + 1 210 270 7182) of Norton Rose Fulbright’s United States’ Intellectual property group.