One of the main problems with counterfeiting is the sheer number of online merchants selling unauthorized or infringing products. It would be inefficient and cost prohibitive if IP holders were forced to file a separate lawsuit against each individual defendant. Fortunately, Plaintiffs are often able to bring a single lawsuit against multiple defendants.

However, bringing a number of different infringers in one lawsuit (the permissive joinder of multiple defendants) is one of the procedural challenges that Plaintiffs have to overcome. While the majority approach in the Northern District of Illinois is to allow the permissive joinder of multiple defendants, some judges require a Plaintiff to show more than simultaneous infringement of the same IP.

A minority of judges often raise the issue of permissive joinder. In response, our team has filed briefs and supplemental memorandum, addressing the issue of joinder of the defendants, which many of these judges have accepted, allowing us to proceed with multiple named defendants in one lawsuit thereby saving our clients thousands of dollars.

tinyBuild, LLC v. The Partnerships, Case No. 1:21-cv-02308, August 12, 2021 [Docket No. 18] (187 defendants)

Queen “B” Productions, Inc. v. The Partnerships, Case No. 1:22-cv-01749, June 14, 2022 [Docket No. 14] (325 defendants)

Counterfeiters use a variety of tactics in order to evade trademark and copyright infringement lawsuits. One of those tactics includes patrolling numerous IP Litigation websites. These websites list the plaintiff as soon as a lawsuit is filed, and advises those selling counterfeit products to remove any funds in their accounts, which drastically reduces the effect of bringing an IP infringement lawsuit, as the defendants are effectively out of reach at that point.

In response, we were one of the first law firms to file cases under a pseudonym, “XYZ Corporation,” which shielded the identity of the Plaintiff, until the proper relief could be obtained. Additionally, while other law firms did request similar relief, our team was the first to file a substantive memorandum in support of our Motion to Proceed Anonymously.

In the Northern District of Illinois, our Motions to Proceed Anonymously have been granted at a success rate of over 80% and have been granted by twenty-five judges [1]. Additionally, as a result of our Memorandum in Support of our Motion to Proceed Anonymously, we have been successful in persuading judges[2] who did not allow other plaintiffs to proceed anonymously.[3]

[1] Gavin Evans, an Individual v. The Partnerships, Case No. 1:21-cv-03563 [Docket No. 9], July 7, 2021(Hon. Rebecca R. Pallmeyer).

[2] Sunderland Association Football Club v. The Partnerships, Case No. 1:21-cv-02322 (NDIL) [Docket No. 8] May 2, 2021 (Hon. Matthew F. Kennelly). (“Plaintiff's motion for leave to proceed anonymously is granted, exceptional circumstances having been shown.”)

[3] Tha Lights Global, Inc. v. Does 1-392, As Identified in Exhibit 2, Case No. 1:20-cv-07211 (NDIL) [Docket No. 12] (Hon. Matthew F. Kennelly) Dec. 13, 2020. (“The plaintiff in this case has moved for entry of an ex parte temporary restraining order, has moved for leave to file its complaint and other materials under seal, and has identified itself anonymously in the complaint and asks to keep it that way for the time being. The last of these requests is not sufficiently justified in the current motion to file under seal. In particular, plaintiff has not adequately explained how mere public identification of its name and the fact that it is suing dozens of as-yet-unidentified Internet sellers would risk destruction of evidence, transferring of tainted assets, or other harm.”)

Our team was able to overcome numerous objections raised by a judge in a trademark lawsuit involving a well-known fictional character from a prominent author. During a hearing on a Motion for Temporary Restraining Order, the Judge sua sponte raised numerous questions and objections regarding: consumer confusion, fair use, descriptive use, secondary meaning, and the public domain. In response, we filed a supplemental brief, presenting Plaintiff’s position, and successfully persuaded the Judge to grant the Temporary Restraining Order, accepting Plaintiff’s arguments and legal support, finding that Plaintiff had a strong likelihood of succeeding on its claim that the defendants’ use of the trademark constituted trademark infringement and counterfeiting and false designation of origin. In our brief, we presented legal authority to establish our position, alongside of examples and rationale as to why the use, and manner of use, of the trademark by the defendants constituted an infringement.

Conan Doyle Estate, Ltd. v. The Partnerships, Case No. 1:21-cv-05067 (N.D. Ill.) Judge Wood, October 13, 2021 [Docket No. 18]