Fake Goods, Real Harms: A Proposition to Include Public Health and Consumer Safety Harms to the Presumption Against Extraterritoriality’s Lanham Act Application
The reasoning of the majority, requiring a domestic use in commerce of the mark, will curtail extraterritorial reach of the Lanham Act, if not completely eliminate it. … Thus, even if the majority’s treatment of Steele was disingenuous, it will have considerable consequences in the field of trademark law and likely beyond.[1]
I. Introduction
The United States is in a state of “dupe mania.”[2] Affordable duplicates of luxury items are fondly referred to as “dupes” on social media; these consumer goods are not new to the marketplace.[3] Despite pop culture coining the seemingly harmless goods as “dupes,” the term is often interchangeably referenced to or conflated with the more well-known—and somewhat scarier—word “counterfeits.”[4] When juxtaposed with counterfeits, dupes sit in a legal gray area as they “are affordable alternatives to high-end products that imitate their style, design, functionality, or features;” while the latter “are deliberately deceptive imitations of authentic goods...[by using trademarks,] logos, and branding to mislead consumers into thinking they are purchasing the real thing or to offer a cheap replica.”[5] Over the past five years, Google Trend’s “Interest over time” data for the search term “dupe” increased from a value of 17 to 100; thus, demonstrating the trending popularity of dupes for consumers.[6] Notably, the United States, a top contender in the “Interest by region” category, ranked fourth globally for the search term “dupe.”[7] These statistics implore an inquiry into the effects these goods have on the consumers.
Because of inflation and the rising cost of name brand products, the uncertainties within the United States’ current economic landscape contribute to an increasing demand for the aforementioned goods.[8] The public’s “unwavering appetite” for cheaper goods is bigger than economics.[9] Rather, it involves a mix of company trademarks, a brand’s goodwill, and consumer health and safety.[10] However, trademark infringing goods range across makeup, cosmetics, food, prescription drugs, airbags, helmets, apparel, and electronics.[11] Unfortunately, even the most careful of consumers may fall victim to dangerous dupes. Dupes can be particularly dangerous because—unlike name brand products, which have gone through various regulatory processes, safety testing, legal scrutiny, and marketing—dupes often utilize the cheapest ingredients to create knock-off products, potentially harming unknowing consumers.[12] For the past several years, many consumers have come online to disclose their pain and suffering from the counterfeit and dupe beauty trade.
In 2016, Sarah Tanya, a Los Angeles-based beauty vlogger, endured a severe eye infection after using a $6 counterfeit Ky Shadow Palette imitating Kylie Cosmetics.[13] Tanya bought counterfeit eye makeup online, from her home in California; yet, its manufacturing occurred extraterritorially—where there are not as many regulations, legal guarantees, or remedies.[14] Kylie Cosmetics is name brand, trademark registered, and tested to meet safety standards. The same cannot be said for counterfeit products seeking to emulate Kylie Cosmetics. Instead, a trademark guarantees product quality, source, and a brand’s assurances.[15]
Trademarks are regulated through the Lanham Act—a statute that promises trademark protection. However, in its current state, the Lanham Act does not provide adequate extraterritorial protections for registered trademark right holders; thus, jeopardizing public health and consumer safety. Intellectual property law is extremely important for extraterritorial collaboration and competition maintenance.[16] The rapidly digitizing marketplace, in conjunction with rising interest in and purchases of counterfeit products, indicates shortcomings in the Lanham Act’s protections.[17] Various provisions in the Lanham Act and international treaties are written with the goal of harmonizing global intellectual property laws, regulations, and frameworks; however, none address the unforeseen rise in foreign counterfeit production in E-commerce and related technologies.[18] Recently, the Supreme Court ended the Lanham Act’s extraterritorial reach in Abitron AMBH v. Hetronic.[19] The Lanham Act promises trademark protections; yet, it incentivizes companies to enforce their rights through other statutes to protect their brands. If the Supreme Court reapplies the Lanham Act’s extraterritoriality to foreign dupes, counterfeits, and spurious goods, it will better enhance the enforcement of intellectual property rights and better address the distinct human health and safety harms resulting from the trademark infringing products.
In the wake of rampant E-commerce trademark infringement and counterfeit production, infringers can exploit the current legal landscape. The presumption against extraterritoriality disregards consumer safety harms by solely considering commercial harm. By failing to distinguish between the two types of harm that arise from trademark infringement, the Supreme Court forgoes a more equitable and normative approach to the presumption against extraterritoriality and develops a canon purely for economic harms—effectively disregarding public health and consumer safety harms.
This Note implores readers to question how reconstructing statutory interpretation on the presumption against extraterritoriality will improve consumer health and safety by allowing trademark registrants to bring lawsuits against foreign companies who use infringing marks on counterfeits, dupes, and spurious goods. Part II details statutory construction and the basic functionality of the Lanham Act. Part III guides readers down a timeline of the legal landscape and development of the modern presumption against extraterritoriality. Part IV elucidates some shortcomings in the current legal framework. Part V concludes with a reflection on how clarifying the Lanham Act to address harms beyond commerce will improve consumer health and safety.
II. Background
Before diving into analysis, it is important to understand the legal frameworks the Lanham Act provides. The Lanham Act is housed under 15 U.S.C. §§ 1051-1141.[20] Registered trademark owners seeking legal recourse against infringers typically bring actions under Sections 1114 and 1125.[21] “Marks” are protected under the Lanham Act; these include trademarks, service marks, collective marks, or certification marks.[22] Suits against trademark infringers are brought through the Lanham Act civilly or criminally under anti-counterfeiting statutes by prosecutors.[23] For purposes of this article, trademarks will be the focal point.
A. Definitions
Trademarks are “any word, name, symbol, or device, or any combination thereof—used by a person, . . . in commerce . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”[24] Using a trademark in commerce indicates that the mark is
placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce and on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.[25]
“Four distinct trademark functions are (1) identifying and distinguishing goods and services; (2) signaling the source of goods and services; (3) signifying equal levels of quality for goods and services; and (4) advertising goods and services.”[26]
B. Statutes to Bring Actions
It is important to note that the Lanham Act provides a means for civil relief. As mentioned, § 1114 prohibits the unpermitted reproduction, counterfeit, copy, or colorable imitation of a registered trademark for use in commerce in a manner which causes confusion, mistake, or deception.[27] Those who engage in the preceding activity may be found liable in civil action brought forth by the trademark registrant.[28] Likewise, § 1125 bars trademark usage of “any person who, on or in connection with any goods . . . uses in commerce any false or misleading description of fact, or false or misleading representation of fact, which . . . in commercial advertising or promotion, misrepresents the nature, characteristic, qualities, or geographic origin of his or her or another person’s goods.”[29]
In contrast, the criminal statutes in the Lanham Act regarding trademark infringement manifest against counterfeiting. Under 18 U.S.C. § 2320, using counterfeit marks, or spurious marks, can be prosecuted to the fullest extent of federal law.[30] Spurious marks include marks that are “identical with, or substantially indistinguishable from, a mark registered on the principal register in the United States Patent and Trademark Office, (USPTO). Spurious marks can be prosecuted for trademark infringement whether or not the defendant knew such a mark was so registered.”[31] Additionally, spurious marks can be those which are “applied to or used in connection with goods or services from the United States Patent and Trademark Office used in a manner that “is likely to cause confusion, to cause mistake, or to deceive . . . .”[32] However, statutes criminalizing counterfeits and their production is only half of the battle. Criminal statutes only provide redress when a prosecutor exercises his or her discretion to go after counterfeiters.[33]
Despite the increasing passage of statutes criminalizing trademark counterfeiting, evidence of prosecutions remains low.[34] The disparities between counterfeit trademark criminalization and prosecutions may result from low prosecutor retention and limited or inadequate prosecutorial resources.[35] Given the preceding considerations, it is understandable why criminal actions regarding trademark infringement on counterfeit goods may be far and few between. Still, while trademark registrants may believe the Lanham Act provides a civil way to hold both infringers and counterfeiters liable, they are sequestered by jurisdictional requirements.[36] Extending the Lanham Act’s reach will provide better redress opportunities for civil litigants.
III. Legal Landscape On The Presumption Against Extraterritoriality
The journey to understanding the current legal landscape of the Lanham Act’s extraterritorial absence continues with understanding canons and precedent. “[C]anons form an important part of . . . the ‘law of statutory interpretation.’”[37] The presumption against extraterritoriality (the Presumption) canon has substantially changed over time.[38]
Beginning in the nineteenth century,[39] this note concentrates on the Presumption’s twenty-first century application. The evolution of extraterritorial applications of the Lanham Act illustrates a diminution in the Act’s extraterritorial strength. Starting with the earliest application of extraterritoriality, the Lanham Act previously applied to companies that were not based in the United States but had economic harms on U.S. companies. “Now the analysis will focus on whether the mark was used in commerce domestically.”[40] Starting with Steele, Courts of Appeals splintered on how to apply its decision.[41] Many disagreed on what two or three factors were pertinent for deciding “use in commerce, thus creating more confusion.[42] More notably, the doctrine established in Morrison v. National Australian Bank Ltd. and refined in RJR Nabisco, Inc. v. European Cmty., solidified economic harm as a basis for the Presumption.[43] In 2023, the Presumption changed in Abitron Austria GmbH v. Hetronic International Inc., shrinking the ability for trademark registrants to act against Lanham Act violators.[44] “Implicit in the [Abitron] majority’s decision is that two key factors in Steele, the citizenship of the defendant and the need for some level of effect on US commerce, are both gone.”
A. Pre-Steele Approach to the Presumption Against Extraterritoriality
The federal presumption against extraterritoriality that courts apply to federal statutes began in the nineteenth century.[45] It originated as an application of the Charming Betsy canon which required statutes be construed in a manner that avoided international law violations.[46] As international law developed, the Supreme Court articulated new parameters for the presumption against extraterritoriality.[47] The early twentieth century presumption against extraterritoriality, referred to as the American Banana version, hinged upon where the conduct occurred.[48] Federal courts found the American Banana presumption was applied inconsistently; thus, the Supreme Court took an opportunity to tailor it more with subsequent cases.[49]
B. Established Legal Foundations from Steele.
In Steele v. Bulova Watch Co., an American watch company brought an action against the petitioner, a citizen domiciled in Texas, from using its trademark in Mexico; the company’s mark was placed on watches assembled with Swiss parts in Mexico.[50] The Court interpreted the Lanham Act as a statutory scheme that conferred broad jurisdictional powers upon the United States’ courts[51] and therefore a Texas federal district court had jurisdiction to adjudicate the case.[52] The Steele Court emphasized that Congress’s legislation “will not extend beyond the boundaries of the United States unless a contrary legislative intent appears.”[53] The United States is not precluded by “any rule of international law from governing . . . [its citizens conduct] upon the high seas or even in foreign countries when the rights of other nations or their nationals are not infringed.”[54] The Court developed a preceding rule by looking at the effect of the infringer’s conduct. Here, the infringer engaged in economic activities whose effects transcended the “territorial limits” of Mexico.[55] In Steele, petitioner contributed to spurious Bulova watches entering the United States from Mexico—adversely impacting the profits and reputation Bulova worked to cultivate in both national and international markets.[56]
Steele’s 1952 approach centered on commercial gains and losses. Because petitioner engaged in “an unlawful scheme” that affected the economic course of business transactions in the United States, for an American company, the Court found it immaterial that the spurious watches were created in Mexico City; the infringer did not have sanctuary privileges to “evade the thrusts of the laws of the United States.”[57] Above all, the Steele Court’s reasoning generated economic harm evaluations when extraterritoriality questions arise.
C. Moving into Modernity with Morrison and RJR Nabisco
Since 2010, a two-step test derived from Morrison and RJR Nabisco determines when United States legislation and acts have extraterritorial reach.[58] First, the Court must determine whether Congress gave a “clear, affirmative indication that it applies extraterritorially.”[59] Next, if Congress affirmed the act’s extraterritorial application, the court considers its limitations.[60] Due to this, courts analyze Congress’s intent by ratifying such legislation. The 2010 rule for applying the Presumption differs from Steele’s 1952 approach: yet, both center on commercial gains and losses.
Morrison v. National Australia Bank Ltd. shifted the court’s approach to the Presumption.[61] In Morrison, foreign investors alleged securities fraud claims against an Australian banking corporation.[62] The Supreme Court held that whenever parties seek to give any federal legislation an extraterritorial effect, the “canon or presumption that federal law is not meant to have [an] extraterritorial effect is applicable in all cases . . . .”[63] The Court construed the Securities Exchange Act’s language like “interstate commerce,” “trade, commerce, transportation,” and “communication between any foreign country and State” as insufficient to rebut the Presumption. The majority abrogated Schoenbaum v. Firstbrook and in doing so cemented the Securities Exchange Act’s application to “only transactions in securities listed on domestic exchanges and domestic transaction in other securities in which § 10(b)” relates.[64] Unlike trademark law, Morrison involved the Presumption’s application to strictly financial causes of action brought under the Securities Exchange Act.
RJR Nabisco v. European Community takes the Morrison holding and further clarifies the nexus of federal law and the presumption against extraterritoriality.[65] Similar to Morrison, the cause of action was not grounded in the Lanham Act, rather, the Racketeer Influenced and Corrupt Organizations Act (RICO).[66] In RJR Nabisco, the Court adhered to Morrison by applying the Presumption despite clear and expressed congressional intent to the contrary—construing federal law to only have domestic application.[67] The RJR Nabisco Court determined that RICO was not impermissibly applied extraterritorially. However, plaintiff was not successful because the Court decided, irrespective of any extraterritoriality Congress imbued RICO with, private RICO plaintiffs must allege and prove domestic racketeering activity with sufficient ties to United States commerce.[68] The Court emphasized “the important limitation that foreign conduct must violate ‘a predicate statute that manifests an unmistakable congressional intent to apply extraterritorially.’”[69] Additionally, it linked determining extraterritorial “predicates” to the two-step framework.[70]
Unlike the Steele Court, Morrison and RJR Nabisco adjudicate cases unrelated to trademarks. Appropriately, it is worth questioning whether the two-step framework is adequate for causes of action that involve trademarks and non-economic consumer harms. If “focus” is a valued prong, does Congress not have a duty to focus on the health and safety of its constituents?
Morrison and RJR Nabisco both indicate a change in canon with the two-step framework. First, a presiding court determines if “the statute gives clear, affirmative indication that it applies extraterritorially.”[71] The RJR Nabisco Court emphasized the Steele Court’s holding that the Lanham Act’s “use in commerce” language—implicating economic concerns, in conjunction with their broad jurisdictional construction of commerce—indicate Congress’s intention for the Act’s extraterritorial application.[72] Second, if an extraterritorial intention is found, presiding courts will consider limitations “Congress has or has not imposed on the statute’s foreign application.”[73] By directing the Lanham Act apply to all the commercial and economic activities which Congress regulates, an additional inquiry is required. The Lanham Act applies extraterritorially if:
(1) “the alleged violations… create some effect on American foreign commerce”; (2) “the effect [is] sufficiently great to present a cognizable injury to the plaintiffs under the Lanham Act”; and (3) “the interests of and links to American foreign commerce [are] sufficiently strong in relation to those of other nations to justify an assertion of extraterritorial authority.”[74]
The Morrison and RJR Nabisco test centers itself on economic harm; the commercial focus of the two-step test permeated the Presumption’s application and complicated determinations in lower federal courts.
D. Trader Joe’s v. Hallatt as a Case Study
The Ninth Circuit Court of Appeals followed RJR Nabisco’s reasoning when deciding Trader Joe’s Co. v. Hallatt. Trader Joe’s, the appellant, an American grocery store chain brought an action against the appellee, a Canadian retailer under the Lanham Act and Washington state law.[75] Appellant alleged trademark infringement, unfair competition, false endorsement, false designation of origin, false advertising, trademark dilution, and deceptive business practices.[76] The Circuit Court noted that the viability of the appellant’s argument in Trader Joe’s was contingent upon whether the Lanham Act’s extraterritorial application was warranted.[77] The Circuit Court utilized the two-step test developed in RJR Nabisco to determine if Congress allowed for extraterritorial application of the Lanham Act.[78]
The court in Trader Joe’s distinguished itself from Steele—where spurious watches passed through the Mexican border into America—in that the Trader Joe’s branded products being resold in Canada were not trickling back into the United States in a manner that confused American consumers engaging in commerce.[79] Rather, Trader Joe’s identified that foreign conduct with “‘some effect’ on American commerce” is enough. Appellee met that bar because his “poor quality control practices could impact American commerce if consumers who purchase Trader Joe’s-brand products that have been transported to Canada become ill and news of such illness travels across the border.” Consequently, the foreign conduct harmed Trader Joe’s Company reputation, reduced its trademark value, and caused a loss of sales.[80] The consumers suffered foodborne illnesses.[81] Despite acknowledging the public safety harm, the Circuit Court ultimately reasoned the trademark infringement’s economic impact on Trader Joe’s Company granted extraterritorial reach. These considerations led the court in Trader Joe’s to find the Lanham Act’s extraterritorial application was proper.[82] The Trader Joe’s company hung its hat on economic harms and commercial impacts to yield a successful result, turning a blind eye to other equally significant harms like public health and consumer safety.
E. Abitron’s new approach to the Presumption in trademarks
The final stop on the timeline caps a major shift in what the Lanham Act can do extraterritorially. In 2023, the Supreme Court prohibited the extraterritorial application of the Lanham Act—halting the Act’s 71-year extraterritorial evolution and limiting the Presumption’s inquiry to economic harms. The Court in Abitron Austria GmbH v. Hetronic International, Inc. barred the extraterritorial application of the Lanham Act and effectively formalized a presumption against extraterritoriality.[83] The Court used Abitron as an opportunity to address the “unsettled state of affairs.”[84] The majority opinion further developed the two-step extraterritoriality framework “by dividing it into two different considerations: identifying the focus of the state and identifying the location of the conduct relevant to the focus.”[85] By declining to identify “the focus of the statutory provisions at issue,” the Court further narrowed relevant conduct to domestic use in commerce.[86] The majority then remanded the case back to lower courts with little guidance.[87] Nevertheless, rejecting the argument that “‘commerce’ encompasses foreign transactions” still focuses on economic harms and ignores consumer safety harms resulting from trademark infringement with spurious goods, dupes, and counterfeits.[88]
By holding that “use in commerce” means economic transactions must occur in the United States for trademark infringement to be actionable, Justice Alito questioned “what domestic activity was necessary for the [Lanham] Act to apply.”[89] The Justices all agreed the new “focus questions” distill activities that “matter[] for the statute’s application from that that does not.”[90] Nevertheless, the Court failed to distinguish pure economic harm from harms to consumer public safety. The decision from Abitron bars the possibility of holding extraterritorial infringers liable not just for economic harms, but for public safety harms too—undermining the four functions of a trademark.[91]
IV. Shortcomings in the Current Framework
To provide better consumer protections, the presumption against extraterritoriality should contemplate on both pure economic and consumer safety harms. Given the history of the Presumption’s modern doctrinal evolution, pure economic harms continue to outweigh consumer safety harms.
In 2003, global public health lawyer Michele Forzley and the International Intellectual Property Institute (the IIPI), with support from the USPTO, released a report serving as the first study to systematically review the public health and safety consequences of counterfeiting.[92] Forzley noted the intellectual property legal system extensively documented the economic and financial consequences of counterfeiting; yet, at the time, the media reports and industry anecdotes asserting public health and safety consequences remained unsupported by quantitative or qualitative measures.[93] Forzley contends counterfeit goods can operate as disease mechanisms.[94]
A. Other Noteworthy Concerns
To this day, Americans face many harms at the hands of counterfeit trademarked goods.[95] The cheap prices many consumers seek cost them health and safety.[96] Various federal government agencies work to prevent the entry and distributions of both pirated and counterfeit goods in the United States; yet these harmful products still make it into the country.[97] While an anecdote regarding beauty products started the discussion, counterfeit products that violate trademark law impact various industries.[98] Recently, many counterfeit versions of popular pharmaceuticals, like Botox®, Ozempic®, and Muro 128®, have been found in multiple states.[99] These counterfeits are a point of great concern because using fake pharmaceutical products can result in serious health complications.
While the Customs and Border Protection (CBP) agency is responsible for seizing imported goods that violate federal laws, counterfeit goods continue to enter the country in part due to the “large volumes of low-value, small packages” imported into the country as a product of E-commerce sales.[100] CBP reported that over 90% of all counterfeit seizures occur in international mail and express environments.[101] Despite the small size, compared to large and containerized shipments, E-commerce packages containing trademark-violating, counterfeit goods “pose the same health, safety, and economic security risks . . . .”[102] What is at risk for Congress and America is greater than commerce; rather, the lives of constituents are jeopardized by the presence of these harmful products.[103]
B. Counterfeits, Dupes, and Spurious Goods in Social Media
The Court should consider consumer safety harms when applying the presumption against extraterritoriality.[104] It can do so by either relaxing the Presumption when consumer safety outweighs economic harm or effectively split the emphasis on economic harm by redefining “use in commerce” to include commercial transactions that impact consumer safety and public health. Currently, social media significantly impacts consumers’ perceptions about fake goods.[105] While preexisting platforms, like TikTok, offer users ways to report trademark infringing goods and services, not all requests result in enforcement.[106]
On TikTok, users harness the platform’s power to issue trademark requests for product removals, arguably achieving what law cannot right now.[107] TikTok users and TikTok Shop account holders can issue reports which may result in the removal of reported content, LIVE session closures, and/or account suspension.[108] Over the past few years, TikTok’s Transparency Center reported a steady increase in the number of requests for trademark removals:
- 6,379 requests from July to December 2021;
- 12,392 requests from January to June 2022;
- 19,239 from July to December 2022;
- 26,633 requests from January to June 2023; and
- 29,188 requests from July to December 2023.[109]
While creators, shop owners, and influencers alike may issue reports and warn consumers about health risks to counterfeits, dupes, and spurious goods, roughly 63% of the trademark requests lead to TikTok removing the products from the platform.[110] Given that current precedent overlooks consumer safety and public health harms, the social media court of public opinion stepped in to deter and counteract the trademark infringement occurring on counterfeit, dupes, and spurious goods.[111] Despite the ingenuity of social media self-enforcement, it is neither binding nor the strongest solution.[112]
A lexicon shift around counterfeit goods can also reform the way consumers perceive counterfeit, spurious, and duped goods. Those types of goods have often been referred to by a “variety of terms such as [dupes], ‘fakes’, ‘knock-offs’ and ‘replicas.’”[113] As discussed in this note’s introduction, those terms are synonymous with “counterfeit”—resulting in consumers using the terms interchangeably to describe and distinguish between products.[114]
As described in a recent report issued by the American Apparel and Footwear Association, ‘dupe influencers’ have become an essential component of counterfeiting schemes that market and sell ‘designer dupes’ or ‘reps.’ The terms ‘dupe’ and rep’ are shorthand for duplicate and replica and are often used by social media users when discussing counterfeit products.[115]
Additionally, a tried-and-true method is reforming the Act. The legislative branch can work to amend the Lanham Act to permit extraterritorial reach when consumer safety and public health harms exists. In doing so, Congress can realign the Act to achieve its original four functions of identifying and distinguishing goods and services; signaling the source of goods and services; signifying equal levels of quality for goods and services; and advertising goods and services.[116] While commercial harms are included in the preceding functionalities of the Lanham Act, consumer health and safety harms are too. Congress should use its authority to allow the Lanham Act to rebut Presumption against extraterritoriality. Only after reforming the Lanham Act can federal courts permit an extraterritorial reach of the Act, thus, halting trademark infringement that jeopardizes the public health and consumer safety of countless Americans.
V. Conclusion
By sequestering the Presumption’s analysis only to economic harms, the Supreme Court diminished the Lanham Act, allowing extraterritorial trademark infringement to fester. Accordingly, trademark-violating counterfeits, dupes, and spurious goods—that pose real harms to public health and consumer safety—infiltrated the United States marketplace. Restructuring the inquiries made when applying the presumption against extraterritoriality serve as the primary solution for taking a more holistic approach to trademark infringement. Ultimately, these proposed legal adaptations allow the Lanham Act to evolve and meet the unique challenges presented by trademark infringement on social media platforms and in E-commerce landscapes.
[1] Timothy R. Holbrook, Ignoring Precedent: Abitron and Trademark Extraterritoriality, Emory L. News Ctr. (July 19, 2023), https://law.emory.edu/news-and-events/releases/2023/07/holbrook-scotus-2023-abitron.html.
[2] Julie Zerbo, If Consumers Love Logos, What is Driving the Demand for Dupes?, The Fashion L. (Feb. 5, 2025),https://www.thefashionlaw.com/if-consumers-love-logos-what-is-driving-demand-for-dupes/.
[3] Dupes are “products that replicate the look of higher priced goods . . . [and] any legally protectable elements” of a consumer good. Id.
[4] Id.
[5] Celina Ozcan, The Difference Between Dupes and Counterfeits: What Consumers and IP Rights Owners Need to Know, Kilburn & Strode (Nov. 29, 2024), https://www.kilburnstrode.com/knowledge/european-ip/the-difference-between-dupes-and-counterfeits.
[6] Dupe, GoogleTrends, https://trends.google.com/trends/explore?date=today%205-y&q=dupe&hl=en (last visited Apr. 18, 2025). Interest over time chart and data represent search interest relative to the highest point on the chart for the given region and time. A value of 100 is the peak popularity for the term. A value of 50 means that the term is half as popular. A score of 0 means there was not enough data for this term. The value 17 refers to the March 29 to April 4, 2020, time period. The value 100 refers to the December 22 to December 28, 2024, time period.
[7] Id.
[8] Zerbo, supra note 2.
[9] Id.; see Jessica Dickler & Ana Teresa Solá, Designer ‘Dupes’ Go Mainstream as Shoppers Choose Affordability Over Luxury.‘It Just Makes More Financial Sense,’ Expert Says, CNBC (Aug. 14, 2014), https://www.cnbc.com/2024/08/14/designer-dupe-demand-soars-a-sign-of-the-economic-times.html.
[10] Zerbo, supra note 2; The Truth Behind Counterfeits, U.S. Customs & Border Prot. [hereinafter CBP: The Truth Behind Counterfeits], https://www.cbp.gov/trade/fakegoodsrealdangers; Counterfeit Goods: A Danger to Public Safety, U.S. Immigr. & Customs Enf’t [hereinafter ICE: Counterfeit Goods], https://www.ice.gov/features/dangers-counterfeit-items.
[11] See generally CBP: The Truth Behind Counterfeits, supra note 10; ICE: Counterfeit Goods, supra note 10.
[12] See generally Amber Middleton, Skincare Expert’s Warning Over Cheap Dupes – ‘It Could Harm Your Skin,’ Netmums (Nov. 14, 2024), https://www.netmums.com/life/skincare-experts-warning-over-cheap-dupes-it-could-harm-your-skin; Pedro Catalá, Ph.D., Skincare Dupes and Budget Swaps; A Formulator’s Perspective, Ayla Beauty (2025), https://aylabeauty.com/blogs/article/skincare-dupes-and-budget-swaps-a-formulators-perspective?; Geoff Abraham, Why Furniture Dupes Might Be Harming Your Health (And What to Watch Out For), Spoken (Oct. 25, 2024), https://www.spoken.io/blog/why-furniture-dupes-might-be-harming-your-health-and-what-to-watch-out-for.
[13] Lexy Lebsack, Shady: Why Fake Kylie Jenner Lip Kits Could Be Dangerous, Refinery29 (Aug. 14, 2017), https://www.refinery29.com/en-us/2017/08/165109/fake-makeup-trend-mac-kylie-cosmetics.
[14] The Tribe of Lion, $6 Kylie Jenner Kyshadow Palette | Real vs Fake | I Almost Lost My Eye!, YouTube (Sep. 22, 2016), https://www.youtube.com/watch?v=Qjxtharf_AA.
[15] Resources: For Consumers, Int’l Trademark Ass’n (accessed at https://www.inta.org/resources/for-consumers/).
[16] Lisa Jorgenson & Carsten Fink, WIPO’S Contributions to International Cooperation on Intellectual Property, 26 J. Int’l Econ. L. 30, 30-34 (2023); see also The Impact Of Globalization On Intellectual Property Law, Laws. of Distinction (Sep. 23, 2024), https://www.lawyersofdistinction.com/the-impact-of-globalization-on-intellectual-property-law/.
[17] Treasury Practice Group, Rise of the digital marketplace, Treasury Today (July 2024), https://treasurytoday.com/treasury-practice/rise-of-the-digital-marketplace/; Reibus International, How Digitization and Online Marketplaces are Transforming the Future of Commerce, Reibus, https://reibus.com/blog/digitalization-and-online-marketplaces-are-transforming-commerce/.
[18] GPIC Admin, Globalized Harmonization of Intellectual Property Right (IPR) Laws in IPR Regime World Becomes More Interconnected Versus Differentiation, Glob. Intellectual Prop. Convention (Jun. 28, 2023), https://www.globalipconvention.com/blog/globalized-harmonization-of-intellectual-property-right-ipr-laws-in-ipr-regime-world-becomes-more-interconnected-versus-differentiation; see also Randy L. Campbell, Global Patent Law Harmonization: Benefits and Implementation, 13 Ind. Int’l & Comp. L. Rev. 605, 638 (2003); Lavanya Anand, Harmonization of IP Laws, 9 Pramana Rsch. J. 197, 197-201 (2019).
[19] Cooley News Alert, US Supreme Court Ruling Limits Extraterritorial Reach of Lanham Act, Cooley LLP (July 3, 2023), https://www.cooley.com/news/insight/2023/2023-07-03-us-supreme-court-ruling-limits-extraterritorial-reach-of-lanham-act; Holbrook, supra note 1.
[20] The Lanham Act. 15 U.S.C. §§ 1051-1141.
[21] Trader Joe’s Co. v. Hallatt, 835 F.3d 960, 960 (2016); Client Alert, Cromwell LLP (Aug. 10, 2023), https://www.crowell.com/en/insights/client-alerts/the-unanimous-.
[22] 15 U.S.C. § 1127.
[23] See e.g., 15 U.S.C.; 18 U.S.C § 2320.
[24] 15 U.S.C. § 1127.
[25] 15 U.S.C. §§ 1127(1)(A)–(B), (2).
[26] Office of Legal Education Executive Office for United States Attorneys, Prosecuting Intellectual Property Crimes 1, 92-94, U.S. Dep’t of Just. (4th ed. 2013) [hereinafter DOJ: Prosecuting IP Crimes], https://www.justice.gov/d9/criminal-ccips/legacy/2015/03/26/prosecuting_ip_crimes_manual_2013_002.pdf.
[27] 15 U.S.C. § 1114 (1)(a)–(b).
[28] Id.
[29] 15 U.S.C. § 1125(a)(1); see also Elizabeth Williams, Cause of Action Under Lanham Act § 43(a), 57 Causes of Action 665 (2d ed. 2013).
[30] 18 U.S.C. § 2320.
[31] 18 U.S.C. § 2320(f)(1)(A)(ii).
[32] 18 U.S.C. § 2320(f)(1)(A)(iv).
[33] Samuel Strom, What Is Prosecutorial Discretion?, FindLaw (Jan. 31, 2024), https://www.findlaw.com/criminal/criminal-procedure/what-is-prosecutorial-discretion-.html; see also Standard 3-1.1: Criminal Justice Standards for the Prosecution Functions, A.B.A., https://www.americanbar.org/groups/criminal_justice/resources/standards/prosecution-function/?login.
[34] See Kari Kammel, Brandon A. Sullivan & Lorryn P. Young, The Crime of Product Counterfeiting: A Legal Analysis of the Usage of State-Level Statutes, 18 Chi.-Kent J. Intell. Prop. 125 (2019). Two law students, under the direction of Kari Kammel, Michigan State University’s Assistant Director of Education and Outreach in the Center for Anti-Counterfeiting and Protection, authored an article questioning why counterfeiting is criminalized if prosecutions rarely occur. Chandler Wirostek, Lillie Patterson & Kari Kammel, Why Criminalize Counterfeiting If You’re Not Going To Prosecute?, 7 The Brand Prot. Prof. 1 (Mar. 2022), https://bpp.msu.edu/magazine/why-criminalize-counterfeiting-if-no-prosecutions-march2022/.
[35] See generally Daniel S. Lawrence et al., Prosecutor Priorities, Challenges, and Solutions, RAND Corporation 1, 3 (2019), https://www.rand.org/content/dam/rand/pubs/research_reports/RR2800/RR2892/RAND_RR2892.pdf; Christi Metcalfe et al., Coping With Limited Prosecutorial Resources: An assessment of the Case Processing and Community Impact From the Perspective of Prosecutors and Staff in a Southeastern County, 34 Crim. Just. Pol’y Rev. 337, 337–60 (Mar. 22, 2023), https://journals.sagepub.com/doi/10.1177/08874034231163070; Prosecutor Recruitment & Retention News, Nat’l Dist. Atty’s Ass’n, https://ndaa.org/programs/prosecutor-recruitment-retention-news/; Bryan Hay, New Study Reveals Low Staffing, Burnout in the Nation’s Largest Prosecutors’ Offices, Lafayette Coll. News (Nov. 17, 2021), https://news.lafayette.edu/2021/11/17/new-study-reveals-low-staffing-burnout-in-the-nations-largest-prosecutors-offices/.
[36] Holbrook, supra note 1.
[37] William Dodge, The New Presumption Against Extraterritoriality, 133 Harv. L. Rev. 1582, 1583 (2020).
[38] Id. at 1584.
[39] Id.
[40] Holbrook, supra note 1.
[41] Timothy R. Holbrook, Is There a New Extraterritoriality in Intellectual Property?, 44 Colum. J. L. & Arts 457, 458–60 (2021).
[42] Holbrook, supra note 1.
[43] Paul B. Stephan, Two New Supreme Court Decisions on the Presumption Against Extraterritoriality, Transnational Litig. Blog (July 6, 2023), https://tlblog.org/two-new-supreme-court-decisions-on-the-application-of-the-presumption-against-extraterritoriality/.
[44] See Steele v. Bulova Watch Co., 344 U.S. 280 (1952); Morrison v. Nat’l Australia Bank Ltd., 561 U.S. 247 (2010); RJR Nabisco v. European Comm’y, 579 U.S. 325 (2016); Trader Joe’s Co., 835 F.3d 960 (9th Cir. 2016); Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412 (2023).
[45] Dodge, supra note 29, at 1584.
[46] Id. at 1584–85. (“The presumption began in the nineteenth century as an application of the Charming Betsy canon, requiring that statutes be construed to avoid violations of international law. Id., at 1584 (citing Murray v. Shooner Charming Betsy, 6 U.S. 64, 118 (1804) (“[A]n act of Congress ought never be construed to violate the law of nations if any other possible construction remains . . . .”)).
[47] Id. at 1585.
[48] See Am. Banana Co. v. United Fruit Co., 213 U.S. 347, 356 (1909) (stating that to apply the law of a place other than the place of the act “would be an interference with the authority of another sovereign, contrary to the comity of nations”). “[T]he character of an act as lawful or unlawful must be determined wholly by the law of the country where the act is done.” Id. at n.8.
[49] Dodge, supra note 38 (referring to EEOC v. Arabian American Oil Co., 499 U.S. 244 (1991) [hereinafter Aramco]). After over 40 years of disuse, Aramco’s rule to the Presumption relied entirely on the location of the violative conduct. Id.; see also Aramco, 499 U.S. at 258 (commenting on Congress’s “need to make a clear statement that a statute applies overseas”).
[50] Steele v. Bulova Watch Co., 344 U.S. 280, 281–82 (1952).
[51] Id. at 283 (1952); see also James C. Gracey, Thou Shall Not Steele: Reexamining the Extraterritorial Reach of the Lanham Act, 21 Vanderbilt J. of Ent. & Tech. L. 823, 836–37 (2020).
[52] Steele, 344 U.S. at 283.
[53] Id. at 285.
[54] Id. at 285–86.
[55] Id. at 286.
[56] Id. at 286.
[57] Id. at 287.
[58] See generally Morrison v. National Australian Bank Ltd., 561 U.S. 247, 249 (2010); RJR Nabisco, Inc. v. European Cmty., 579 U.S. 325, 337 (2016).
[59] Trader Joe’s Co. v. Hallatt, 835 F.3d 960, 966 (9th Cir. 2016) (citing RJR Nabisco, Inc., 579 U.S. at 337).
[60] Id.; see also Kari Kammel et. al., Trademark Counterfeiting Enforcement Beyond Borders: The Complexities of Enforcing Trademark Rights Extraterritorially in a Global Marketplace with Territorial-Based Enforcement, 33 Fordham Intell. Prop. Media Ent. L.J. 595, 613 n. 111 (2023) (stating that “[h]owever, this articulation by the Ninth Circuit has been criticized as ‘simply Incorrect’ and congressional limits should be assessed at step one”); Holbrook, supra note 42, at 489 (2021). While this does not change the end result, it does add ‘unneeded confusion into the case law.’ Id.
[61] Morrison, 561 U.S. at 247.
[62] Id.
[63] Id.
[64] Id. (abrogating Schoenbaum v. Firstbrook, 405 F.2d 200; In re CP Shipts Ltd. Securities Litigation, 578 F.3d 1306; Gruenenthal GmbH v. Hotz, 712 F.2d 421; Kauthar SDN BHD v. Sternberg, 149 F.3d 659).
[65] RJR Nabisco, Inc. v. European Community, 579 U.S. 325, 337 (2016).
[66] 18 U.S.C. §§ 19611968.
[67] RJR Nabisco, 579 U.S. at 326 (citing Morrison, 561 U.S. at 255).
[68] Id. at 327.
[69] Id. at 339.
[70] Id.
[71] RJR Nabisco, 579 U.S. at 337.
[72] See Steele v. Bulova Watch Co., 344 U.S. 280, 286 (1952); see also RJR Nabisco, 579 U.S. at 325.
[73] RJR Nabisco, 579 U.S. at 337–38.
[74] Love v. Associated Newspapers, Ltd., 611 F.3d 601, 613 (9th Cir. 2010) (finding that the appellant, Love, did not present sufficient evidence that appellee, a Great Britain news organization, caused him monetary injury in the United States). Because the trademark confusion occurred overseas, the alleged Lanham Act violations did not affect United States commerce in any way. Id.
[75] Trader Joe’s Co. v. Hallatt, 835 F.3d 960, 960 (9th Cir. 2016).
[76] Id. at 960.
[77] Id. at 981.
[78] Id. at 960.
[79] Id. at 970.
[80] Id. at 970–71.
[81] Id.
[82] Id.
[83] Holbrook, supra note 1.
[84] Id.
[85] Id.
[86] Id.
[87] Id.
[88] Stephan, supra note 45.
[89] Id.
[90] Id.
[91] See DOJ: Prosecuting IP Crimes, supra note 26, at 92–94.
[92] Michele Forzley, Counterfeit Goods and the Public's Health and Safety, Int’l Intell. Prop. Instit., i, ii (2003), https://www.researchgate.net/publication/228171939_Counterfeit_Goods_and_the_Public%27s_Health_and_Safety.
[93] Id.
[94] Id.
[95] Fake Imports Entering the US, Int’l Trade Admin., https://www.stopfakes.gov/Fake-Imports-Entering-the-US.
[96] Hannah McVey, The Dangers in Dupes: Cheap Prices in Exchange for Health, Spartan Shield (Dec. 5, 2023) https://spartanshield.org/42612/opinion/the-dangers-in-dupes-cheap-prices-in-exchange-for-health/.
[97] The agencies alluded to are as follows: U.S. Food and Drug Administration; Office of Intellectual Property Rights of the U.S. Department of Commerce International Trade Administration; U.S. International Trade Commission; Federal Bureau of Investigation; U.S. Customs and Border Protection; and National Intellectual Property Rights Coordination Center. Id.
[98] Pharmaceuticals, consumer electronics, cigarettes, automotives, personal care, sunglasses, perfumes, batteries, and firearms are listed as the top health and safety counterfeit products seized at the United States border in 2023. CBP: The Truth Behind Counterfeits, supra note 10.
[99] Counterfeit Medicine: Counterfeit Medicine May Be Harmful, U.S. Food & Drug Admin., https://www.fda.gov/drugs/buying-using-medicine-safely/counterfeit-medicine; Counterfeit Versions of Botox Found in Multiple States, U.S. Food & Drug Admin. (May 1, 2024), https://www.fda.gov/drugs/drug-safety-and-availability/counterfeitversion-botox-found-multiple-states.
[100] Id.
[101] These are channels that small, e-commerce packages destined for the U.S. travel through. Id.
[102] Id.
[103] Id.
[104] Jay Kennedy, Mae O’Dell, & Lucy Ching, The Sociotechnical Evolution of Product Counterfeiting: How Social Media, Social Networks, and Social Commerce are “E-Socializing” Product Counterfeiting, Mich. St. Univ. Ctr. Anti-Counterfeiting & Prod. Prot. (A-CAPP Paper Series, 2021) [hereinafter Kennedy, O’Dell, Ching], https://a-capp.msu.edu/article/the-sociotechnical-evolution-of-product-counterfeiting-how-social-media-social-networks-and-social-commerce-are-e-socializing-product-counterfeiting/.
[105] Id.
[106] TikTok Safety Center, Counterfeiting, TikTok (Dec. 12, 2024), https://www.tiktok.com/safety/en/counterfeiting.
[107] TikTok Transparency Center, Intellectual Property Removal Requests, TikTok (Dec. 18, 2024), https://www.tiktok.com/transparency/en-us/intellectual-property-removal-requests-2024-1.
[108] Id.
[109] Id.
[110] TikTok provides downloadable data that I cleaned and averaged to find the percentage across the time ranges given. TikTok Transparency Center, supra note 108 (download the 2024 data at https://sf16-va.tiktokcdn.com/obj/eden-va2/zayvwlY_fjulyhwzuhy[/ljhwZthlaukjlkulzlp/2024H1_IP/2024H1_raw_data_ip_English.csv). I averaged the “Percentage of trademark requests resulting in removal” from July 2021 to June 2024. Id. Mathematically, 0.6393 was calculated by adding 0.645, 0.842, 0.604, 0.56, 0.574, and 0.611 and dividing the sum by 6.
[111] @uvasun_, Why You Should Always Buy Tanning Lotion from Salon and Not Online, TikTok (Jan. 9, 2023), https://www.tiktok.com/@uvasun_/video/7186829895488556334?_r=1&_t=ZP-8tS594pjuc3 (explaining that counterfeit tanning lotion bottles use the same trademark, yet contain fraudulent and unsafe formulas); @hoshi_gato, Please Do Not But [sic] These Clones, They are Dangerous, TikTok (Dec. 17, 2024), https://www.tiktok.com/@hoshi_gato/video/7449382364100185390?_r=1&_t=ZP-8tS2egESRrS; @lilykatemakes, #LivingstoneVest is now 4 years old!, Instagram (Oct. 31, 2024), https://www.instagram.com/reel/DByfdiwi2Jy/?igsh=ZjFwMWR0ZzV2NHdm; @irisjadesmith, The Dark Side of Dupes, TikTok (Nov. 15, 2024), https://www.tiktok.com/@irisjadesmit/video/7437414870972239111?_r=1&_t=ZP-8tS4vHfgUgQ.
[112] Kennedy, O’Dell, Ching, supra note 106.
[113] Id.
[114] Id.
[115] Id.; see also Dupe Influencers: The Concerning Trend of Promoting Counterfeit Apparel, Footwear, and Accessories on Social Media, American Apparel & Footwear Association (May 2021), https://www.aafaglobal.org/AAFA/Solutions_Pages/Dupe_Influencers_The_Concerning_Trend_of_Promoting_Counterfeits.aspx.
[116] See DOJ: Prosecuting IP Crimes, supra note 26, at 92–94.