A trademark dispute over guitar amplifiers is quietly reshaping how courts view some of the fashion industry’s most aggressive anti-counterfeiting tactics. Earlier this month, a federal court dismissed a trademark infringement case brought by Marshall Amplification PLC against a long list of online sellers operating anonymous storefronts, which the British amp-maker whittled down to a single defendant. The dismissal was imposed as a sanction, with the court concluding that Marshall had engaged in an abuse of the judicial process by repeatedly filing, amending, and refiling multi-defendant “Schedule A” lawsuits in a manner that amounted to improper forum shopping.
While the case centered on counterfeit guitar amplifiers, its impact is being felt far beyond the music industry. On January 12, the same day as the Marshall ruling, counsel for both Marc Jacobs and Supreme voluntarily dismissed Schedule A counterfeiting actions pending before the same judge in the Northern District of Illinois. In both cases, the dismissals – lodged by counsel at Greer, Burns & Crain – came after the court ordered the plaintiffs to show cause why their litigation strategy does not constitute an abuse of process.
Schedule A Under the Microscope
Schedule A cases – which originated in the Northern District of Illinois and now dominate its trademark docket – allow rights holders to sue dozens or even hundreds of e-commerce sellers in a single action, often under seal and on an ex parte basis. The structure is designed to enable swift asset freezes, domain seizures, and marketplace takedowns before the defendants receive notice. Brands ranging from those in fashion and luxury to sports and entertainment rely heavily on the approach as counterfeiters migrate to fast-moving, platform-based storefronts that can disappear overnight.
But courts have increasingly questioned whether the efficiencies of Schedule A litigation come at the expense of the Federal Rules of Civil Procedure and basic due process protections. In particular, some judges have scrutinized whether mass joinder satisfies Rule 20’s requirements for joining multiple parties in one lawsuit and whether plaintiffs are improperly manipulating filings to secure favorable judicial assignments.
Those concerns came to a head in the Marshall Amplification case. In a sharply worded order, Judge John Robert Blakey concluded that repeatedly naming the same defendants across multiple lawsuits – only to amend complaints after assignment and refile claims elsewhere – crossed the line from aggressive enforcement into sanctionable conduct. The court dismissed the case with prejudice, citing forum shopping and the waste of judicial resources.
That ruling appears to have set off a chain reaction.
The Ripple Effects Begin
In the Marc Jacobs matter, the brand initially filed suit against more than a dozen defendants before amending its complaint to proceed against a single seller identified by the username “zhenhong666.” According to the court, that same defendant had already been named by Marc Jacobs in three prior Schedule A cases in the same district. In each instance, the brand grouped the seller with dozens of others, only to narrow the case once a judge was assigned.
Judge Blakey issued an order to show cause in December, warning that repeatedly naming the same defendants until a case lands before a “hospitable” judge suggests a lack of good-faith joinder and constitutes an abuse of process. LVMH-owned Marc Jacobs responded by defending its joinder theory, arguing that coordinated online counterfeiting represents a single series of occurrences and that its amendment strategy was a good-faith response to differing case-management approaches among judges. But before the court ruled on that response, the brand voluntarily dismissed the case.
Supreme followed the same pattern. After responding to a similar order to show cause in its own Schedule A case, the streetwear brand dismissed its claims on January 12 – not long after Judge Blakey issued sanctions in the Marshall matter.
These were not isolated events. There have been “multiple cases where Judge Blakey ordered plaintiffs (represented by [the same] firm) to show cause as to why amending down and refiling doesn’t constitute an abuse of process,” according to Chicago-Kent College of Law professor Sarah Fackrell.
THE TAKEAWAY: For brands in retail and beyond, the message is not that Schedule A litigation is no longer viable. Courts continue to acknowledge the real difficulties of policing online counterfeiting, particularly where sellers operate anonymously and shift storefronts with ease. But the growing discomfort among judges suggests that strategies that were once viewed as aggressive but permissible may now be treated as procedurally improper. As Judge Blakey’s ruling makes clear, there is no right to judge-friendly enforcement strategies – and no exemption from due process – even in the uphill battle against counterfeiting in the modern market.
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