In recent years, womenswear brand, Tory Burch, has become one of the more aggressive brands in policing its well-known trademark, as the number of sellers of discount "Tory Burch" accessories seemingly multiply. Over the past few months, the company has been suing quite a bit and June appears to be no exception. The brand (in connection with River Light V, L.P., the owner of Tory Burch's IP rights) is consistently targeting hundreds of online sellers of counterfeit goods, filing trademark infringement lawsuits, and asking the courts not only for injunctive relief (read: for the court to prohibit the defendants from selling infringing goods immediately and permanently) but also asking for ownership of the domain names at issue and millions of dollars in damages.
The latest string of lawsuits filed by Tory Burch target what appear to be online stores that operate a substantial portion of their businesses via Facebook. Miami-based Medina's Collections, Brooklyn-based Circa Vintage House, and Los Angeles-based ITBAG, INC. and the companies' owners/operators, have been named in three separate suits this month, in which Burch is alleging that the companies wrongfully manufactured, imported and sold bags using Tory Burch's registered trademarks. It appears the last defendant, Chan Ho, the owner of ITBAG, INC, is no stranger to counterfeiting, having lost a trademark infringement lawsuit brought by Chanel in the Northern District of California in August 2010. It seems that the $500,000 penalty stemming from the Chanel case (an amount that defendant Chan Ho likely didn't pay, as he probably didn't show up in court and couldn't be located thanks to the online nature of his business), hasn't served as much of a deterrent.
Instead, it serves as an indication of nature of the ongoing fight brands face against online sellers of counterfeits. Like Chanel, the Tory Burch brand and others routinely file trademark infringement lawsuits as a means of obtaining the domain names under which the counterfeiters operate their businesses. However, as Chan Ho has demonstrated in this case, the counterfeiters very often find new means to sell their goods, often via new domain names or via social media sites, such as Facebook and Twitter. Still, with the duty of policing a trademark being on the owner, brands have little choice but to consistently file suits to protect their marks, which amount to one of the most valuable assets they have. Note to Louis Vuitton, Burberry, Michael Kors and Chanel, these sites are also selling some questionable goods of yours.