Monday, December 5, 2011

Chanel gets TRO against 700 sites alleged to be selling counterfeited products infringing Chanel's Marks

A Federal Court judge sitting in the State of Nevada sided with Chanel when it asked to have approximately 700 domain names seized.  The sites allegedly contained counterfeit luxury goods including those of the plaintiff Chanel.  

Not only did the judge order the seizure of these domains, ha also ordered major social media sites like Google+ and Facebook and Twitter as well as search engines such as Google, Bing and Yahoo to de-index the targeted sites from their databases.

It seems that most of the investigatory work was done in house, though according to Ars-Technica, Brandon Tanori, a Nevada based private investigator, was called in to investigate a few of the sites in question.

Chanel is the owner of some 22 registered trademarks covierng a number of incarnations of is logo and company name. examples of some of the site names include:,, and

While the case has not yet gone to trial, Judge Kent Dawson granted the TRO (Temporary restraining order) requested by Chanel.  The TRO orders the domain name registrars currently in possession of the domain names in question to transfer those domains to an American registrar, who has been tasked with holding the domain names in trust for the court until conclusion of the pending action.

As mentioned above, the TRO also ordered search engines and social media sites to de-index the sites in question from their data-bases. The order makes no mention of the plaintiffs obligation to re-reimburse these 3rd party sites for the operational costs associated with the de-indexation.

While some have criticized the decision and evidence considered as being “one sided”, it should be noted that this judgement was rendered ex parte (meaning without all the parties present).  Normally, the rules of fundamental justice require that a party have the opportunity to appear and make it’s arguments known (the principle of Audi Alterem Partem).  The complaining party must at least serve notice of the action on the defendants.  

Given the nature of the case and the fact that the defendants are located around the world and that the information they provided to their respective registries may be false, the judge allowed for service by posting of a website:  Here, defendants can access PDF versions of all the court proceedings taken up to this point. This is a rather interesting new take on service by publication which many jurisdictions often use as an alternative when “personal” or “substitute” service are impossible. Service by publication usually requires leave of the court.

As pointed out by Ars Technica’s Nate Anderson (link above), decisions like this one may challenge the significance of the hotly debated Stop Online Piracy Act (SOPA). After all, the scope of the injunction in this case is incredibly broad.  

The judge is essentially commanding a host of large third parties to engage in a fair bit of work to enforce the court’s order. While the plaintiff was required to post a $20,000 bond, this sum is not slated to cover third party costs but represent a security on the damages that may be awarded the defendant should the court find them successful in arguing a wrongful injunction or restraint. If decisions like this one are to become the norm, one questions the need for strong legislation like SOPA.  

With respect, I tend to disagree in part with this view in so far as SOPA contains a number of other powerful measures such as restraining third party payment providers like PayPal or Moneybookers, and online advertising firms from supporting a given site or sites.  While the above mentioned point is well taken, it seems a little bit early to discount the eventual impact that SOPA and it’s sister the Protect IP Act will have on the legal landscape of the US, and by extentiton, the Internet as a whole.

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