Amazon Teams Up With Canon, Yeti on Joint Counterfeit Suits

By Tiffany Hu

Law360 (June 7, 2023, 6:49 PM EDT) — Amazon has launched joint lawsuits with camera maker Canon and cooler maker Yeti against counterfeiters on the marketplace, but it’s hardly the first time the e-commerce giant has teamed up with a big-name player to crack down on fake goods.

As Amazon’s case with Canon and its suit with Yeti take off, Law360 looks at those and other notable cases.

Last month, Amazon — through its Counterfeit Crimes Unit, which was formed in 2020 and comprises former federal prosecutors, experienced investigators and data analysts — initiated a suit alongside Canon that accuses certain sellers of offering counterfeit camera batteries and chargers on the platform, misusing Canon’s trademarks and breaching its contract with Amazon. Though Amazon has already blocked 29 accounts operated by the sellers, the companies seek injunctive relief, damages and attorney fees.

Weeks later, Amazon partnered with Yeti Coolers to fire off three suits accusing various sellers of marketing counterfeit mugs and other products that infringed Yeti’s trademarks. Amazon has similarly blocked the sellers’ accounts, but still requests an injunction against them. The companies previously teamed up in 2020 to sue a different set of sellers.

Amazon doesn’t really need the courts to issue an injunction to stop sellers from promoting counterfeits on its own marketplace — it has the ability to do that itself, attorneys say. Yet the joint suits seem to be aimed at deterring sellers from hiding behind the platform, which has historically been seen as taking a blind eye to supposed bad actors, says David Gold, a partner at Cole Schotz PC.

“These rogue sellers rely on Amazon’s inability to effectively police its marketplace, leaving it largely up to trademark holders and authorized sellers to navigate a somewhat clunky, one-size-fits-all enforcement structure that doesn’t work for many small to midsize companies,” Gold told Law360. “The more Amazon can change that perception, the better for the company and the consumer.”

Monica Riva Talley, a partner at Sterne Kessler Goldstein & Fox, notes that the suits may also help “avoid further calls for legislation that would make platforms liable for counterfeits sold on their sites,” or possibly require them to “self-police for counterfeit goods sold on their sites.”

All the recent joint lawsuits have been lodged in the Western District of Washington, where Amazon’s Seattle headquarters is located. While most are still pending, one of the earliest cases — filed alongside Italian luxury brand Valentino — has since settled.

In a statement to Law360, Kebharu Smith, the director of Amazon’s Counterfeit Crimes Unit, said these types of lawsuits represent the company’s efforts to “protect customers, brands and our store from counterfeit products.”

“While counterfeiting is illegal in most countries, for too long counterfeiters have not been held accountable enough for their crimes,” Smith said. “We will continue to work with brands and law enforcement to take action to stop these bad actors.”

The Canon case is Amazon.com Inc. et al. v. aalitood et al., case number 2:23-cv-00679, in the U.S. District Court for the Western District of Washington. The Yeti cases are Amazon.com Inc. et al. v. Fine Time Beauty LLC et al., case number 2:23-cv-00747, Amazon.com Inc et al. v. Minago et al., case number 2:23-cv-00748, and Amazon.com Inc. et al. v. Acar et al., case number 2:23-cv-00749, in the U.S. District Court for the Western District of Washington.

Amazon and Valentino

In June 2020, Amazon and Italian shoe designer Valentino SpA filed suit against a company called Kaitlyn Pan Group LLC, accusing it of selling shoes that ripped off the Rockstud design, which features metallic, pyramid-shaped studs on different styles of shoes.

The case claimed that Kaitlyn Pan Group was violating Amazon’s rules for sellers while infringing patents and trademarks related to Valentino’s Rockstud shoes, and further broke the terms of its contract with Amazon, which bars the sale of bootleg or counterfeit products.

In December 2020, the parties announced that they’d reached a settlement, and the case against Kaitlin Pan Group was later dismissed with prejudice.

The case is Amazon.com Inc. et al. v. Kaitlyn Pan Group LLC et al., case number 2:20-cv-00934, in the U.S. District Court for the Western District of Washington.

Amazon and Cartier

Amazon and luxury jewelry brand Cartier launched a pair of suits in June 2022 that accused individuals behind social media accounts using the handle “Phym9y3v” and multiple Amazon stores of running a scheme to sell cheap counterfeit Cartier jewelry that rips off Cartier’s established trademarks, including its well-known gold “LOVE” bracelets.

The companies asked the court to bar the unidentified individuals behind social media accounts using the handle “Phym9y3v” and multiple Amazon stores from selling and attempting to sell the products and to order the organizers to shut down their Instagram, Linktree and all other social media accounts that sell the counterfeit jewelry.

In May, the companies filed an amended complaint terminating certain parties as defendants, while adding other individuals like Zhu Jian, who allegedly confessed to selling the counterfeit jewelry after the defendant’s home was raided by the Shanghai Public Security Bureau.

The cases are Amazon.com Inc. et al. v. An individual dba Phmn9y3v et al., case number 2:22-cv-00840, and Amazon.com Inc. et al. v. YFXF et al., case number 2:22-cv-00841, both in the U.S. District Court for the Western District of Washington.

Amazon and Procter & Gamble

In November, Amazon and P&G’s personal care unit The Gillette Co. LLC filed a suit alleging that counterfeit Oral-B replacement toothbrush heads that infringe Gillette’s trademarks were being sold on the marketplace. The suit sought to block Dzmitry and Maryia Kitsenka, as well as the unidentified individuals behind various Amazon storefronts, from selling products, opening any seller accounts on the platform, or otherwise infringing Gillette’s intellectual property.

In February, the court entered default against the Kitsenkas, and Amazon and Gillette have since asked for more time to serve the complaint to the other defendants. The case is ongoing.

The case is Amazon.com Inc. et al. v. Kitsenka et al., case number 2:22-cv-01574, in the U.S. District Court for the Western District of Washington.

Amazon and 3M

In July 2022, Amazon and consumer products giant 3M Corp. filed a pair of suits accusing an anonymous group of sellers of illegally marketing and selling counterfeit 3M stethoscopes to medical experts. Similar to the other lawsuits, the companies are seeking an injunction barring the sellers from offering products or creating accounts on the platform, or developing products that infringe 3M’s brand or trademarks. The cases were later consolidated, filings show.

In late March, a district judge instructed Amazon and 3M either to file an amended complaint and serve all defendants or move for alternative service within 120 days. If the companies are unable to do so, they must justify why the case should not be dismissed for a failure to prosecute, the order states.

The cases are Amazon.com Inc. et al. v. Aivaeso Redicol et al., case number 2:22-cv-01020, and Amazon.com Inc et al. v. Abeytube et al., case number 2:22-cv-01019, both in the U.S. District Court for the Western District of Washington.

Other Cases

Amazon and WWE: In August of last year, Amazon and World Wrestling Entertainment sued several sellers, accusing them of offering counterfeit brand replica championship title belts on the Amazon platform and saying that the products infringe WWE’s copyright registrations on its championship belt designs and packaging, as well as trademarks for the wrestling brand. The case is ongoing.

The case is Amazon.com Inc. et al. v. Grato International et al., case number 2:22-cv-01205, in the U.S. District Court for the Western District of Washington.

Amazon and General Electric: That same month, Amazon and GE accused 16 online retailers of using the e-commerce site to sell counterfeit GE-branded water filters that infringed GE’s trademarks and broke Amazon’s policies. Once Amazon confirmed the unlawful sale of counterfeit products, the defendants’ selling accounts were blocked, it said. The case is ongoing.

The case is Amazon.com Inc. et al. v. Kexlewaterfilters et al., case number 2:22-cv-01120, in the U.S. District Court for the Western District of Washington.

Amazon and Salvatore Ferragamo: Amazon and Italian luxury goods company Salvatore Ferragamo in February 2021 jointly filed two suits accusing various sellers of offering counterfeit Ferragamo belts that infringe Ferragamo trademarks and undertaking purposeful methods to evade Amazon’s brand protection algorithm. The companies sought an injunction against the sellers, as well as damages and attorney fees. The cases, which have since been consolidated, are ongoing.

The cases are Amazon.com Inc. et al. v. Yong et al., case number 2:21-cv-00170, and Amazon.com Inc. et al. v. Jun et al., case number 2:21-cv-00171, both in the U.S. District Court for the Western District of Washington.

–Editing by Robert Rudinger.