Marc Jacobs Faces Scrutiny Over “Schedule A” Strategy

A case over counterfeit Marc Jacobs products is evolving into a broader challenge over the limits of modern anti-counterfeiting enforcement strategy. In an order this month, a federal judge in Illinois called on the LVMH-owned brand to show that it is not running afoul of federal procedural rules by filing multi-defendant “Schedule A” lawsuits in a bid to clamp down on counterfeit sales through aggressive – and potentially improper – litigation tactics.

According to the lawsuit, which was filed in the U.S. District Court for the Northern District of Illinois in November and subsequently amended, Marc Jacobs Trademarks, LLC accuses a single online seller of offering counterfeit Marc Jacobs products. In its initial complaint, the brand targeted more than a dozen defendants. However, within a week of filing, it voluntarily dismissed the bulk of them and amended its complaint to proceed a single individual identified by the “zhenhong666” username.

The problem, according to the court, is that Marc Jacobs already named that same defendant in three earlier “Schedule A” counterfeiting cases in the same district. In each of those cases, zhenhong666 was grouped with dozens of other defendants, an approach commonly used in Schedule A litigation, but once those cases were assigned to a judge, Marc Jacobs amended its complaint to drop the other defendants and proceed against only a single seller.

That pattern has drawn scrutiny from Judge John Robert Blakey of the Northern District of Illinois, who issued an order on December 4 (as exclusively reported by TFL), suggesting that Marc Jacobs may be engaging in improper litigation tactics. The judge noted that repeatedly naming the same group of defendants across multiple lawsuits – only to narrow the case after assignment – raises concerns about forum shopping and procedural manipulation.

Specifically, Judge Blakey stated that “such conduct suggests that [Marc Jacobs] lacks a good faith factual and legal basis to join the defendants in a single proceeding. And repeatedly naming the same group of defendants in new cases until a case is assigned to a judge the plaintiff believes to be hospitable to joinder constitutes an abuse of process.” 

Against that background, the court ordered Marc Jacobs to explain why the case should not be dismissed, signaling that judicial tolerance for aggressive enforcement tactics in Schedule A cases may be wearing thin.

The “Schedule A” Strategy

Schedule A litigation has become a widely-used enforcement tool for companies seeking to address online infringement at scale. Originating in the Northern District of Illinois, the model allows rights holders to name dozens – or even hundreds – of anonymous e-commerce sellers in a single lawsuit, typically under seal and on an ex parte basis. This procedural structure enables plaintiffs to obtain temporary restraining orders and asset freezes before notifying the defendants.

While the approach has gained traction for its efficiency and cost benefits (being adopted by brands across the fashion/luxury, auto, and sports industries and the Trump Organization), it has also drawn increasing judicial scrutiny. Courts have raised concerns about whether mass joinder in these cases satisfies the requirements of Federal Rule of Civil Procedure 20, and whether the use of sealed filings and ex parte relief comports with due process protections.

In a 2023 ruling, Judge Steven Seeger of the Northern District of Illinois denied a motion to seal in a Schedule A case involving over 300 defendants, characterizing the plaintiff’s approach as an attempt to “sneak up on the defendants and strike a blow … under the cover of darkness.” Other judges have similarly questioned whether the mere use of the same online platform or sale of similar goods is sufficient to support joinder. Increasingly, courts are examining not only the legal basis of these filings, but also the manner and timing in which they are structured.

The difficulties of policing online counterfeiting – where sellers can operate anonymously and swiftly shift storefronts to evade enforcement – are well established. Still, courts have emphasized that the challenges of enforcing IP rights online do not permit departures from the Federal Rules of Civil Procedure or the constitutional guarantees of due process.

>> In the Marc Jacobs case, the court’s concern seems to extend beyond the threshold question of proper joinder to whether the brand’s filing and amendment strategy amounts to judge-shopping.

Marc Jacobs’ Response

In a December 15 filing in response to the court’s order, Marc Jacobs asserts that joinder of the originally named defendants in this case was proper under Rule 20(a)(2), as their conduct constitutes a “series of … occurrences” involving coordinated online counterfeiting that “collectively caus[es] harm to [Marc Jacobs’] goodwill and reputation.” Citing other decisions from Northern District of Illinois, including Bose Corp. and Neman Bros., Marc Jacobs argues that “the injuries in the aggregate – the swarm – that is harmful” justifies joinder where related acts create a unified negative consumer impression.

Counsel for the brand further contends that the procedural approach at issue – namely, amending complaints to target one defendant and filing new cases asserting the dropped claims against the remaining defendants – was undertaken in good faith in response to “various Courts’ discretionary case management practices,” and does not amount to “an abuse of process.” They emphasize that their actions were “fully transparent,” consistent with “the Federal Rules of Civil Procedure, the Local Rules,” and necessary to fulfill their legal obligation to police the market for infringers, as required under trademark law.

THE BOTTOM LINE: Schedule A cases dominate dockets in Illinois and Florida, but growing judicial discomfort suggests the strategy may face tighter scrutiny. The Marc Jacobs matter could become a key test: a signal that what was once seen as aggressive – but acceptable – may now be viewed as a tactic in need of limits. As Judge Blakey made clear, there is no right to judge-friendly enforcement. There is, however, a right to due process – even for accused counterfeiters.

The case is Marc Jacobs Trademarks, LLC et al v. The Partnerships and Unincorporated Associations Identified on Schedule A, 1:25-cv-13948 (N.D. Ill.).