Legal Law

Anti-Counterfeit Tag Team # 2

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A few months ago I wrote about an interesting anti-counterfeiting collaboration between Amazon and Ferragamo aimed at stopping the sale of counterfeit Ferragamo belts on the world’s largest online retail platform. In my column, which referred to this joint effort as “turbo-charged”, it was pointed out that dealing with fake activity is no longer the sole responsibility of the brand owner, but now also includes the “major online retail platforms like Amazon”. We can now add leading social media sites like Facebook and its subsidiary Instagram to the list of motivated anti-counterfeiting companies, as they have given us another example of legal collaboration between luxury brands and online platforms for discussion.

Last week’s news, picked up by a variety of media outlets, each serving a different financial and fashion readership, announced a joint anti-counterfeiting campaign involving Facebook and Gucci, an unwavering Italian luxury good. Facebook and Gucci, modeled at least in part on the Amazon Ferragamo approach, jointly filed a lawsuit in California against a Russia-based forger who had bypassed both the technological barriers of Facebook and Instagram by continuously opening accounts, drove the social media users on these platforms to websites selling counterfeit Gucci products. Importantly, it was announced that filing a joint lawsuit would be a unique move for both Gucci and Facebook, even if the lawsuit builds on each company’s solid efforts to stop counterfeiting activity online.

For a company like Gucci, of course, publicly adopting a multi-strategy anti-counterfeiting approach is a must, if only to protect the company’s brand equity as a luxury supplier. To that end, in connection with the announcement of the joint lawsuit with Facebook, Gucci sought to demonstrate how robust its anti-counterfeiting efforts are. According to CNBC, “In 2020 alone, the actions of Gucci’s internal intellectual property team resulted in the deletion of four million online product lists for counterfeit products, 4.1 million counterfeit products confiscated, and 45,000 websites, including social media accounts, were confiscated. to be disabled. “While these impressive numbers are evidence of Gucci’s tenacious determination to protect his brand and customers online, the same numbers also show just how big the problem of online counterfeiting activity already is. Take the counterfeiter who is the target of Gucci’s application for membership Even based in Russia, it has been able to reach consumers worldwide through Facebook and Instagram, a reach that shows that the threat posed by online counterfeiting to luxury brands exceeds that of traditional counterfeit bastions like Chinatown’s leather delivery stores.

As the threat of online counterfeiting is more resilient for brand owners, ensuring that the online platforms on which the counterfeiting activities take place work together is a must. At the same time, dealing with counterfeiting on different platforms requires different approaches tailored to the activities on a particular platform. At Amazon, for example, this can mean looking for new offers that offer counterfeit goods for sale. In contrast, the challenge for brand owners is to distinguish between innocent (and welcome) presentation of products by consumers to their followers and more nefarious activity, since Facebook and Instagram are not actually used for direct purchases – especially from strangers – instructing unsuspecting users to fake products to buy from seedy websites. In other words, a brand like Gucci wants a legitimate customer to show off their new pair of slippers or handbag to be prospectively jealous and likely buy Gucci themselves – family and former classmates. However, Gucci does not want the same viewers to buy fakes of what the customer presents on or any other unauthorized website linked in a post.

There’s a fair question we can ask ourselves if Facebook-Gucci adopts the anti-counterfeit tag team approach first advocated by Amazon-Ferragamo. What does switching off a forger – no matter how productive or evasive – really do? The simple answer, of course, is that making an example out of someone is of great benefit, especially when you’re trying to discourage others from being attracted to criminal activity. But the benefits of the joint effort, even when directed against a single goal, go deeper. First, acting together increases media attention to the maneuver, if only by encouraging a broad group of outlets to position the story for their respective readers. Second, a joint action sends a clear message to the counterfeiters that there is no room between the online platforms and the brand owners when it comes to stopping fake activity. This helps to force counterfeiters from the legitimate internet into the nefarious dark web, a place where enlightened and responsible people dare not venture out. This at least reduces the reach of the counterfeiters.

Ultimately, both online platforms – whether e-commerce or social media-oriented – and brand owners like Gucci benefit from important steps such as filing federal lawsuits against counterfeiters. Joint actions of this kind send the message that counterfeiting will not be tolerated on online platforms – and that there are two motivated eyes for any counterfeiting activity that is currently attempted. In addition, whenever a legal collaboration with two well-known companies is announced, the public will be reminded of the scope of counterfeiting activity and why it needs to be stopped as much as possible. We can therefore assume that further teams for fake tags will be formed in the future.

Please send me comments or questions at [email protected] or via Twitter: @gkroub. Suggestions or thoughts on topics are very welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading patent consultancy to the investment community. Gaston’s practice focuses on intellectual property litigation and related advice, with an emphasis on patent issues. You can reach him at [email protected] or follow him on Twitter: @gkroub.

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