The National Basketball Association, Major League Baseball and National Hockey League have filed a joint suit against a counterfeiting collective that has allegedly sold knockoff jerseys and caps online to Illinois customers.
Joining the professional sporting leagues in the lawsuit are the Collegiate Licensing Company LLC, the Board of Trustees of the University of Alabama and the Board of Regents of the University of Oklahoma.
The sports organizations filed suit Oct. 7 in Chicago’s federal court and are seeking all profits from the sale of counterfeit goods and the amount of damages for infringement of their respective trademarks be increased by a sum not exceeding three times the amount thereof as provided by law.
Alternately, they are asking the judge to award them statutory damages in the amount of $2 million for each illicit use of its trademark and $100,000 per domain name on the fake websites.
The sports organizations assert that the counterfeiters are based in foreign countries – most likely China – and operate websites that offer replica sporting apparel, according to the suit.
Despite the efforts of the Coalition to Advance the Protection of Sports logos (CAPS), which has created an extensive anti-counterfeiting program on behalf of the professional sports organizations, the suit states the counterfeiters have continued to “promote, advertise, distribute, sell and/or offer for sale counterfeit products in order to generate massive profits.”
The illicit foreign organizations sell the counterfeit products through internet stores designed to look like legitimate online retailers, outlet stores or wholesalers selling products bearing trademarked sports logos.
“The Defendant Internet Stores look sophisticated and accept payment in U.S. dollars, even though they are based offshore,” the suit states. “Numerous Defendant Domain Names also incorporate one or more of Plaintiff’s Trademarks into the domain name to make it very difficult for consumers to distinguish the counterfeit Defendant Internet Stores from a legitimate retailer selling Plaintiffs’ Genuine Products.”
The counterfeiters are also accused of using illegal search engine optimization tactics to increase their websites’ rank and go to great lengths to conceal their identities, often using several fictitious names and addresses to register and operate their network of stores.
“Many of the Defendants’ names and addresses used to register the Defendant Domain Names are incomplete, contain randomly typed letters, or fail to include cities or states,” the suit states. “Other Defendant Domain names use a privacy service that conceals the owner’s identity and contact information.”
The sports organizations are suing for trademark infringement, false designation of origin, violation of the Illinois Uniform Deceptive Trade Practices Act and a claim for injunctive relief under the Anticybersquatting Consumer Protection Act.
The latter provides a cause of action for registering, trafficking in, or using a domain name that is similar to or dilutive of a trademark.
They are asking the court to force anyone involved in the counterfeiting ring to stop selling fake products, and that online marketplaces, social media platforms and web hosts disable accounts and cease providing service to the counterfeiters.
The sports organizations are represented by Kevin W. Guynn, Amy C. Ziegler and Justin R. Gaudio of the Greer, Burns & Crain Ltd. in Chicago.
The firm also represents luxury leather goods company Coach and rap music mogul Dr. Dre in similar lawsuits.