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Image: Fear of God

Fear of God shed light on the state of counterfeiting in a new lawsuit that it filed against a long list of defendants, which it claims are using its trademarks to piggyback on the “widespread fame, outstanding reputation, and significant goodwill” of the Fear of God brand, and confuse consumers into buying copycat products. In the routine anti-counterfeiting complaint that it filed in a federal court in Illinois on Thursday, the fashion brand whose fans include Kanye West, Rihanna, Kendall Jenner, and Travis Scott alleges that as a result of the defendants’ bad acts, it continues to be “irreparably damaged through consumer confusion, dilution, and tarnishment of its valuable trademarks.” 

According to the newly-filed complaint, Fear of God asserts that it is an apparel company that was started by Jerry Lorenzo in 2013 that “specializes in the sale of high-end streetwear and accessories displaying the FEAR OF GOD trademark.” As a result of “the substantial time, money, and other resources” that it has spent “advertising, promoting and marketing featuring the FEAR OF GOD trademarks,” paired with the “extensive unsolicited publicity resulting from their stylish, high quality and innovative designs,” Fear of God claims that its name and corresponding trademarks “have become famous throughout the United States and around the world.” 

As Fear of God has grown into “a multi-million-dollar operation” and its products have “become among the most popular of their kind in the world,” the brand alleges that it has fallen victim to “significant counterfeiting,” which it says has prompted it to file this suit, as well as others, to combat such counterfeiting and protect consumers from such fake products. 

The Los Angeles-based brand argues that the counterfeiting at play is problematic – and particularly confusing – because the defendants are “designing their e-commerce stores [and] operating under the Seller Aliases so that they appear to unknowing consumers to be authorized online retailers, outlet stores, or wholesalers.” Specifically, Fear of God claims that the counterfeit-selling “e-commerce stores … look sophisticated and accept payment in U.S. dollars via credit cards, Alipay, Amazon Pay, Western Union, and/or PayPal.” At the same time, the brand alleges that the defendants “employ and benefit from substantially similar advertising and marketing strategies,” and “often include content and images that make it very difficult for consumers to distinguish such stores from an authorized retailer.” 

According to Fear of God, the advertising and selling of such counterfeit wares stands in contrast to its longstanding practice of “carefully planning and curating design collections” – which it says are “inspired by a luxe sensibility that appeals not only to its traditional customer base, but also to the consuming public at large” – in order “to provide its customers with unique apparel and products.” 

Addressing the long list of counterfeiter defendants, which are identified exclusively by e-commerce marketplace seller aliases and e-commerce store urls, Fear of God claims that they “reside and/or operate in the People’s Republic of China or other foreign jurisdictions with lax trademark enforcement systems, or redistribute products from the same or similar sources in those locations.”  As for the sale of the counterfeit goods, themselves, on third-party marketplaces, such as Alibaba, eBay, and Amazon, Fear of God argues that it is up against a number of barriers, as the “tactics used by the defendants to conceal their identities and the full scope of their operation make it virtually impossible for [it] to learn [their] true identities and the exact interworking of their counterfeit network.” 

Fear of God argues that the “third party service providers” at play – such as the e-commerce marketplace sites, which are not named as defendants – “do not adequately subject new sellers to verification and confirmation of their identities, allowing counterfeiters to ‘routinely use false or inaccurate names and addresses when registering with these Internet platforms’” to the detriment of rights holders, such as Fear of God. 

Citing an article from business law professor Daniel C.K. Chow and also pointing to language from the Department of Homeland Security’s 2020 “Combating Trafficking in Counterfeit and Pirated Goods” report, Fear of God’s counsel states that “platforms generally do not require a seller on a third-party marketplace to identify the underlying business entity,” and thus, the counterfeiters can have “many different profiles that can appear unrelated even though they are commonly owned and operated.” This enables counterfeiters “to hedge against the risk of being caught and their websites taken down from an e-commerce platform by preemptively establish[ing] multiple virtual store-fronts,” and thus, amounts to an example of e-commerce giants and other third-party service providers “creat[ing] bureaucratic or technical hurdles to helping brand owners to locate or identify sources of counterfeits and counterfeiters.” 

With the foregoing in mind, Fear of God claims that unless “the defendants’ actions are enjoined, [it] will continue to suffer irreparable harm to its reputation and the goodwill of the FEAR OF GOD trademarks.” In addition to monetary damages and an order requiring the defendants to cease their sales of counterfeit or otherwise infringing Fear of God products,  Fear of God wants the court to require “those with notice of the injunction, including, without limitation, any online marketplace platforms such as eBay, AliExpress, Alibaba, Amazon, Wish.com, and Dhgate” – none of which are named as defendants – to “disable and cease displaying any advertisements used by or associated with the defendants in connection with the sale of counterfeit and infringing goods using the FEAR OF GOD trademarks.” 

The case is Fear of God, LLC v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, 1:21-cv-03894 (N.D. Ill.)