On December 2, 2010, in The North Face Apparel Corp. et al. v. Fujian Sharing Import & Export Ltd. Co. et al., (Case No. 10-1630) federal judge Alvin K. Hellerstein of the Southern District of New York issued a contempt Order against defendant Chinese counterfeiters who refused to cease activity in spite of the Court’s injunction. The Order gave plaintiffs Polo Ralph Lauren and The North Face Apparel Corp. sweeping powers to swiftly take down websites selling counterfeit goods, transfer the domains and seize the proceeds of sale. Interestingly, the defendants never appeared in Court, and were continuing to operate in the face of a default judgment and $78 million damage award.
The Order is unique, empowering plaintiffs to respond quickly to new domains selling fakes. For example, the Order contains streamlined procedures for effecting takedowns through domain registrars. Plaintiffs have additionally gained the ability to seek payment from third parties, such as Paypal, to intercept payments in connection with counterfeit sales. Since issuance of the Order, plaintiffs proceeded to take down or transfer over nine hundred additional websites connected to the defendants, within a span of twenty days.
The rapid response time has significantly leveled the enforcement playing field and garnered the attention of IP enforcement specialists. In the future there will no doubt be additional brand owners seeking this sort of fast-track relief. Stay tuned for future developments, or contact Chris Passarelli at cpassarelli@lgpatlaw.com for more information as applied to your specific domain enforcement situation.