Confusing Alleged Trademark/Copyright Infringement - Contacted by a US Law Firm

[JPMiddleton]

I'll summarise this to avoid complicate matters in the first post, but we received a summons and copyright infringement case from an Illinois based law firm. At first the email looked incredibly spammy (it also landed in spam) and I almost disregarded it completely.

After a little bit of light research (the email included a case number and what appear to be legitimate documents) I believe it to be genuine, and they're experienced in this field. However... a few things don't add up at all.

1. They claim that we have infringed the copyright/trademark of a US based artist, who I until I read this email - I have never heard of. We sell primarily dice, cards and puzzles and we've never sold 'art' as such, and we certainly have never used art from anyone else for anything.

2. They contacted us on an email that is only provided to one place, and that is our Amazon.com USA account, to the best of my knowledge we have never made that email available publicly. So they have (probably) got it from Amazon, somehow.

3. I have checked and double checked our Amazon listings to ensure that none of our listings have been doctored by unknown sellers (which has happened to us before, but didn't result in anything more than a deleted listing). Not one listing features the artwork or name, or anything remotely close to the artists work.

4. The email received 'proof' in the form of links and screen shots, not a single link or screen shot related to our business. Not our UK website, not our Amazon USA store or any listings at all. Nothing provided showed any connection with our business at all.

5. The documents detail at length, issues with counterfeit goods from Chinese companies (we are a UK based small LTD company).

6. A link provided for the case updates by the law firm looks very suspicious and spammy. After a bit of investigation I found mention of similar opinions to me online, but it still appears to be 'legitimate' What I don't understand however is the domain says the following:

"Control of this domain has been transferred to Plaintiffs, for violation of federal trademark and counterfeiting laws of one or more trademarks identified in the complaint. This action was taken to protect our client's valuable brand and consumers from unknowingly purchasing counterfeit products."

There is also mention of what appears to be a refund portal for consumers affected by the site being taken down, but it's the law firms domain? ( I can provide links via PM)

Finally, i'm not sure how seriously to take this give all of the above but it appears to be real, email contains the following:

"Any answer or other response to the Complaint should be filed with the Clerk of the Court, United States District Court for the Northern District of Illinois, Eastern Division, Chicago, Illinois within twenty-one (21) days after service of this summons upon you. If no appearance or pleading is filed, the Court may render a judgment against the Defendants.

If you do not wish to litigate this matter in court, we can still offer you a settlement for you to get your account back and the case dismissed against you."

I absolutely despise people or companies ripping off others work (especially art), and had I found even one shred of something with a product we sell (we resell 99% of our stuff) or an Amazon listing, I would be open and transparent and get it sorted. But the whole thing has left me baffled.

Has anyone got any experience of this sort of thing? Have you been through it before? I appreciate the US system is notoriously litigious - but would it be possible to get advice from a UK firm, or do I need to actually go and get 'US counsel'?

Thanks in advance!

 

[WaveJumper]

I am pretty sure others will have a few or even experienced something like this in the mean time if you would like to DM the details of this law firm plus and court reference number if you have one I will do a little research

 

[fisicx]

I’ve had these emails before. It’s a phishing exercise. Ignore.

 

[JPMiddleton]

I’ve had these emails before. It’s a phishing exercise. Ignore.

That was my first impression, and probably my overriding thought - but the fact remains that the company, case number and details are legitimate. I just don't know why we have been contacted.

 

[fisicx]

Because they want your money. They want to scare you into accepting their offer to settle out of court.

 

[JPMiddleton]

If they are a legitimate US law firm, why would they risk their reputation with such spurious claims?

 

[WaveJumper]

Yes and looking at other case notes regarding the same practise they list around 20 plus businesses in the schedules probably hoping some will cough up.

Have they actually taken your website or internet listing downs. I can also not find any links to schedule A they keep referring too in their docs

 

[JPMiddleton]

Nope. They haven’t touched anything, our site and our Amazon stores are unaffected.

The link the provide is very odd, as it’s suggests that is our website or Amazon store and it’s been removed.

 

[japancool]

If they are a legitimate US law firm, why would they risk their reputation with such spurious claims?

How do you know the law firm actually sent the email?

How have you verified the case number is real? Have you checked it with the court in question?

It's the same scam as the one of Facebook where someone tries to phish your details by mentioning that you've violated the copyright of a legitimate US artist and that your page/site is going to be shut down.

 

[MOIC]

You can do two things…..

1. Ignore the claim.

2. Write an email to the solicitors and the court refuting the claim and quote point 4 in your opening post.

I would further write that if any action is taken on their behalf, that damages your business in any way, with no proof of infringement, you will seek compensation.

First double check with your suppliers that none of the products you purchase from them, infringe any copyright, trademark or design registrations. Get this in writing from them.

Don’t lose any sleep over it.

 

[eteb3]

If they are a legitimate US law firm, why would they risk their reputation with such spurious claims?

That's a touching display of faith in the legal profession.

If "ignore" really isn't the right response, I'd be checking the Illinois register of solicitors, getting their contacts off the register, and using those to confirm whether the claim is genuine. Also check to see if their file is marked or any restrictions on practice.

If it is a genuine claim, then assuming Illinois has the equivalent of SRA rules on spurious claims, offer to report them for abuse of their position as officers of the court.

 

[Fagin2021]

The hallmarks of these types of scam are…

• They make vague, unsubstantiated allegations, often wrapped in legal jargon.
• If they detect you are concerned they will try to drive you further and further down the rabbit hole.
• They try to panic you into action by attaching tight deadlines that, if you miss them, will result in dire consequences.

Unless one of the legal eagles on here says different I would simple respond with an email thus…

“You claim that we have infringed your client’s copyright. Please provide full details of your client and the alleged infringement. Vague allegations and generalisations will not suffice. We await your response.”

Don’t get into a debate with them (rabbit hole).

 

[JPMiddleton]

That's a touching display of faith in the legal profession.

That definitely brought a wry smile.

I appreciate all time and responses to the thread. Thanks everyone.

First double check with your suppliers that none of the products you purchase from them, infringe any copyright, trademark or design registrations. Get this in writing from them.

I would do this if it was realistic. We stock many handmade or limited items - many of whom make these items in their spare time, so we're looking at 150 or so 'suppliers' each making 1-5 products.

If "ignore" really isn't the right response, I'd be checking the Illinois register of solicitors, getting their contacts off the register, and using those to confirm whether the claim is genuine. Also check to see if their file is marked or any restrictions on practice.

If it is a genuine claim, then assuming Illinois has the equivalent of SRA rules on spurious claims, offer to report them for abuse of their position as officers of the court.

Yes, I did find them on https://www.iardc.org/Lawyer. Registered since 1991. They appear genuine and legitimate.

However, I have since found mention of rather suspect practises coming from Chicago specifically, a lot of the details of this article ring true for us. Aside from the fact that we didn't actually do anything.

‘The Northern District of Illinois v. the Internet’: How Chicago Became the Center of Schedule A Trademark Infringement Litigation | National Law Journal

“There’s this geopolitical-style battle taking place in the rights owner community: Are we still gonna play by the old rules or is there a new shiny option that allows us to solve all our problems and make some money along the way?” said Eric Goldman, associate dean for research and professor at...

www.law.com

I've also found mention of this 'law firm' on various sites and platforms, including the forum on copyrightaid.co.uk and more. It seems this lawyer has been at this for years and is using loopholes in state law to go after foreign ecommerce businesses in the hope that they bite.

What I am still struggling to understand is how we got caught up in this, but I guess i'll never know.

I'm probably leaning towards ignoring. Thanks again.

 

[fisicx]

They just picked you at random. Probably some tool identifies likely target.

 

[JPMiddleton]

They just picked you at random. Probably some tool identifies likely target.

I would agree with you if they hadn't contacted on an email that only Amazon employees or us have ever seen.

 

[fisicx]

All sorts of ways to find email addresses. You can buy lists on the dark web for pennies.

 

[JEREMY HAWKE]

I have had one for a US machine design patent
I dont think we have ever built a machine

 

[WaveJumper]

As mentioned before they seem to have a mission to take down as many Chinese suppliers as possible in fact when you get through all the legal claptrap there's a lovely paragraph starting with the "defendant prays for judgment" he must be on a holy mission. One court paper had around 28 Chinese suppliers listed.

Just hoping someone will reply, interesting when you look at the law firm involved there's no mention or photo of him on the website. He probably works in the donut shop on the ground floor.

 

[JPMiddleton]

As mentioned before they seem to have a mission to take down as many Chinese suppliers as possible in fact when you get through all the legal claptrap there's a lovely paragraph starting with the "defendant prays for judgment" he must be on a holy mission. One court paper had around 28 Chinese suppliers listed.

Just hoping someone will reply, interesting when you look at the law firm involved there's no mention or photo of him on the website. He probably works in the donut shop on the ground floor.

I did find a bunch of interesting dubious links about him though.

 

[CorneliusIrwin]

Dealing with alleged trademark/copyright infringement can be a real puzzle, especially with a law firm on a "take down Chinese suppliers" mission. That "defendant prays for judgment" paragraph sounds intense!

 

[JPMiddleton]

After ignoring this for the most part, we have been receiving updates via email with the minutes of the hearings, which I can confirm appears legitimate.

Then rather bizarrely we received another 'update' today. Confirming that it is our Amazon USA account that they claimed had listings that infringed IP. The rather basic email below also included seller details which are from Amazon USA only. With no reasoning or explanation they just simply said the account has been released, even though it was never suspended.

I've found numerous links since where this firm has been using legitimate loopholes in Ohio state law to go after non-US ecommerce businesses (or at least try) and it seems that we were caught up somehow in it....

--

Dear Sir:

Please be advised, our office has contacted Amazon to release your account, as it pertains to the above referenced subject matter.

It typically take 2-3 business days for the release. Should your account not be released by mid next week, please let us know.

Thank you,
Patricia

 

[HFE Signs]

We've had similar emails, they are most likely trying to scam you, best to not engage and they will eventually give up.

 

[JPMiddleton]

We've had similar emails, they are most likely trying to scam you, best to not engage and they will eventually give up.

I've no doubt, but the court case itself and the law firm are both legitimate. All very odd. All in the past now anyway.

 

[fisicx]

I've no doubt, but the court case itself and the law firm are both legitimate.

How do you know the court case was legitimate?

 

[The Resolver]

One big question is whether the Illinois court procedure permits service by email. and also whether , if it does, any judgment is enforeable in the UK. On the latter the US are currently applying to join the Hague Convention of 2019 which allows for enforcment of court rulings in member countries, primarily European. We dropped out on mutual enforcement as a lesser known result of Brexit but are currently g.oing through a ratification process that will see us as members in 2025 but not before.

I have a number of US lawyer friends I can check with if you wish (including one who used to head the association whose members are all the State courts and another who has written a leading book on online processes in the courts ). PM me the correspondence.