The LA Times recently published an article titled, “America’s most popular doll is being counterfeited. L.A toymaker MGA wants to know who’s doing it.”
The article details a number of steps MGA Entertainment, (a toy company in California) has taken in their aggressive pursuit of the counterfeiters. The article serves as an insightful case study of the investigative and legal challenges in getting to the criminal source of the counterfeits.
Here are a few highlights quoted from the article:
- “…attorney Jennifer Marrow visited TomTop.com, an online marketplace, to buy one of the most popular toys in America. But Marrow wasn’t buying a gift. She was ordering evidence.”
- “Counterfeiters send their products through in multiple shipments, sometimes filling a container with both legitimate and counterfeit products.”
- “The real surprise would come later, when MGA filed a lawsuit in March in U.S. District Court in Los Angeles, arguing that TomTop knowingly sold the bogus dolls to unsuspecting customers.”
- “MGA’s case against TomTop includes one element that counterfeit and intellectual property cases often don’t have: Unlike most China-based websites, TomTop has a warehouse in the United States.”
- “In March, a private investigator hired by MGA went to TomTop’s Industry office, and while there, took photographs of a TomTop employee seated next to an L.O.L. Surprise! box. MGA hoped this would be enough to prove that TomTop had counterfeit L.O.L. Surprise! dolls at its Industry warehouse.”
- “The box photographed at TomTop’s warehouse does appear to be an accused product,” the judge wrote. “However, the presence of a single box at a warehouse that processes returns for another company is insufficient evidence that TomTop is selling infringing products.”
Finally, “Benjamin Jonson, an attorney at MGA, said the company is on a mission to find out who is making the dolls.“If it’s not TomTop themselves manufacturing, we can find out who it is, and hopefully rip the snake’s head off at the source,” he said.”
A FEW NOTES
MGA’s determination to locate the source of the counterfeits reminds me of the determination exhibited by Living Essentials Marketing LLC., the makers of 5-Hour Energy drinks. In their pursuit of the counterfeiters, Living Essentials committed $3.5 million in attorney and private investigator fees to track and identify the counterfeit manufacturer in the U.S. which resulted in a conviction and seven-year prison sentence for the counterfeiter.
The attorney that represented Living Essentials is quoted in a Corporate Counsel website article titled, “Tracking Down a Counterfeiter, Bottle by Bottle, and Finding Justice,” as saying, “Using private investigators…from one bottle they were able to track down a store, then a distributor, then more stores and more distributors. Each time they were able to go to court ex parte, and with their evidence were able to obtain an order of seizure. Then they went to law enforcement to seize the counterfeit products and any documentation.”
(Additional details are noted in my May 5, 2017 blog post titled, “Big Victory for One Brand’s Zero Tolerance Counterfeit Policy.” https://ip-pi-blog.com/2017/05/15/tracking-down-a-counterfeiter-bottle-by-bottle-and-finding-justice/)
Now to the challenge in identifying a counterfeit manufacturer in China. In my January 22, 2017 blog post titled, “French IP Attorney Details Her Pursuit of Counterfeit Manufacturers in China,” I presented the steps the French IP attorney has used to identify Chinese counterfeit manufacturers and the follow-up action taken after the Chinese manufacturer is identified.
Here is her objective: “ ‘Finding the source of the counterfeits is key for us.’ She explained that filing lawsuits in multiple countries in pursuit of counterfeits are time-consuming and expensive. Their experience confirms that pursuing the manufacturers and the importers is a much more effective strategy.’ ”
I applaud MGA Entertainment for its vigorous pursuit of the counterfeit manufacturer in China. It is not just about the financial losses incurred by MGA Entertainment as valid as that it. It’s also about the health and safety of children. The counterfeiting of a child’s toy that customarily has substandard, unregulated components, is just as dangerous as consuming an energy drink with contaminants.