Nike Goes After Man For Ordering One Pair Of Counterfeit Shoes

If there’s one thing we’ve learned from either the war on drugs or the RIAA’s fight against music piracy, the most effective way to fight crime is to punish the end user. That must be why Nike is using a similar strategy in the UK to combat counterfeit footwear.

Last year, a shipment of faux Nikes was stopped at the UK border, prompting the company to take legal action against all the individuals who had ordered the shoes. Under UK law, it is a trademark violation to import products that infringe on an existing trademark.

All but one of the people involved put up no defense. The one stalwart claimed, “I ordered training shoes over the internet believing them to be authentic. I had no idea they were counterfeit. I have never received any goods and will not be ordering any more.”

But the judge wasn’t buying it:

Whether or not the defendant believed the goods were authentic is irrelevant to the question of trade mark infringement. Whether the goods are infringing goods or counterfeit goods is an objective question. The Defendant’s state of mind does not matter. Equally the Defendant’s state of mind is irrelevant to the question of importation.

After the man asked for the case to be moved from the patent court to a local county court, Nike asked for a summary judgment. The judge agreed, stating that the “Defendant has no real prospect of defending the claim.”

But while the judge sided with Nike, he did question the harshness of their actions:

It may be questioned whether the sledge hammer of these proceedings is necessary in order to crack this nut of this magnitude but Nike’s representative Mr Elmslie explained, and I accept, that brand owners in this situation have no realistic alternative to enforcing their rights this way. Accordingly although this appears to be the smallest of cases, nevertheless the Claimant is entitled to bring proceedings.

In the end, the man only had to promise, which he’d actually done in his original defense, that he wouldn’t do any more infringing Nike’s trademark.

What do you think: Is this the best way for Nike to deter people from buying counterfeit shoes?

Nike Gets Personal Over Counterfeit Shoes [IP Osgoode via TechDirt]
Copy of Summary Judgment

Comments

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  1. friendlynerd says:

    I think it’s a great way to make people stop buying Nikes. Nobody likes a bully.

  2. Larraque eats babies says:

    Unsure, but this is the best way for Nike to deter people from buying nike shoes.

  3. oldwiz65 says:

    Excellent way to make sure people don’t buy Nike shoes, real or counterfeit.

  4. Cheap Sniveler: Sponsored by JustAnswer.comâ„¢ says:

    Just plain stupidity on both Nike and the court’s part.

  5. ubermex says:

    If I was in the UK, I’d avoid buying name brand shoes from ANYONE if this can happen further up the supply chain and be declared your fault.

  6. shotgun_shenanigans says:

    Good thing this happened in Britain, where he only had to promise to not infringe Nike’s trademark. Had it been the US, he would probably have to pay around $4mil (note: I made up that number).

    • GMurnane says:

      If it had happened in the US, I think a court would be less likely to convict someone of “importing” counterfeit goods due to a single purchase of shoes. You are however spot-on about Draconian copyright infringement settlements

  7. Loias supports harsher punishments against corporations says:

    Unknowingly ordering counterfeit goods is automatically a crime regardless the intent or state of mind. UK needs to change this law.

    • obits3 says:

      This.

      I don’t see how that can be the law. That is not just or right.

    • Coyote says:

      False advertising apparently isn’t. Also it sounds like the judge is only exacerbating the problem by letting Nike get away with lazy trademark enforcement. Funny that they don’t want to spend the time and money on international criminals that they know will take excessive amount of effort to get but are the sole reason for most of these crimes. Instead targeting their own citizens and creating basically a new vice-tax.

  8. eirrom says:

    Unless he bought a $200 pair of shoes for $20, how would he know if they are counterfeit? This seems strange.

    Are we not all at the mercy of any online retailer to be purchasing authentic goods to sell us? I must be missing something here.

    • The cake is a lie! says:

      Even if they were $200 for $20, it could have just been stolen merchandise someone was trying to unload. It is so hard to detect replica goods these days by price or merchant alone. It can be assumed something shady is going on, so I guess that would make the buyer somewhat guilty of something, even if they don’t know what it is.

      • abz_zeus says:

        In clothing manufacture there is a thing known as cabbage – you are given material to make 50 units but by careful cutting you can make 53. you now have 3 “spare” units which you sell on for more profit.
        So they are made in the factory to the same specs – basically they are real but not part of the normal number produced

    • GuyGuidoEyesSteveDaveâ„¢ says:

      That’s not really a good example. I once bought a Lodge Cast-iron double burner griddle on eBay for $7.99 + $3.99 S&H. (They retail for about $50 on places like Amazon and $70 on Lodge’s site) Trust me that it was not a counterfeit, just a great deal. So good, in fact, that I bought another one when the first arrived from the same seller, and gave it out as a gift to my then neighbors.

  9. brianisthegreatest says:

    I wonder how this would work in the US. I would just let the media take care of it for me.

  10. DeadFlorist says:

    Strict liability on this issue seems an awfully harsh legal standard. The entire point of legal enforcement of trademarks, at least theoretically, is so inferior goods cannot be passed off on unwary consumers. To punish the consumer seems to me a bit like punishing a fraud victim.

    Either that or trademark law is completely off the rails and is now just to be used for any corportation to enforce social brand cache by inflicting legal penalty on anyone it sees fit.

    • obits3 says:

      Exactly.

      “I ordered training shoes over the internet believing them to be authentic.” = I am claiming that I have been the victim of a fraud.

    • LandruBek says:

      I don’t understand what “enforce social brand cache” means.

  11. kylere1 says:

    Whenever I think the US has cornered the market on judicial stupidity and being clearly owned by corporations i see a story like this and realize it is the same everywhere.

    Nike and their third-world-child-labor trash have not seen a penny from me in years due to the overall poor quality of their shoes. I mean, come on, they are lacking fit and finish and wear out entirely too soon compared to decent manufacturers like Rockport. Besides which, the sack of shizzle named Vick still gets a check from Nike.

    • JennQPublic says:

      I did not realize that. I will definitely not be buying Nikes in the future. I don’t buy any NFL merchandise anymore, either.

      Sack of shizzle is right. >:-|

  12. StevePierce says:

    Not to self, don’t buy any Nike products in future.

    That way I don’t have to worry about infringing on their trademark.

    • kujospam says:

      I wouldn’t be buying any shoes at all. What happens if you ordered new balance, and the shipper sent you fake nikes? You would still be in trouble.

  13. Aeirlys says:

    If I lived in the UK, this would be a great way to stop me buying Nike products altogether.

  14. c!tizen says:

    King George would be proud.

  15. Bativac says:

    I guess Nike doesn’t want people buying cheaply-manufactured junk, made in China by underpaid workers, with the Nike logo on it.

    OH, WAIT—!

    • XTC46 says:

      Regardless of the cost to the company, any pair of NIke’s I have ever owned have been of good quality.I have to atleast give them that. The quality is good. I no longer buy NIke shoes becasue I dont like the styles they offer. I am now much more of a Doc Martins, Lugz, or Timberlands kind of guy. All of which are also well made.

      • El-Brucio says:

        I’ve had the opposite experience – after a boom in popularity in the 80’s when they were really good, any Nike shoes I bought in the early 90’s were utter crap that fell apart after a few months.

        Maybe they wised up and tightened their quality control, but after being stung several years in a row I just stopped buying them.

    • crunchberries says:

      Nope, Nike likes to get its slave labor from Honduras for free. You’re spot on with everything else, though.

    • MB17 says:

      Say what you want, but Nike doesn’t make junk shoes. There’s a reason they’re favored by athletes.

      • Noadi says:

        Of course there is it’s called endorsements deals, not just the ones for famous athletes to make commercials but often smaller deals just to have their shoes worn in games.

    • tiatrack says:

      And you know this based on……? My sister is a designer for Nike and has spent a lot of time at their factories overseas. Their workers are some of the best paid factory workers, and the conditions are quite good. Sure, they aren’t American standards, but they are very high by Asian factory standards.

      • ghostberry says:

        Sure, they aren’t American standards, but they are very high by Asian factory standards.

        Well as long as they are being treated as well as the finest american slaves, i dont see any moral dilemma.

      • JustLurking says:

        We’ve sold our soul as a nation to either get a better deal or to “maximize return on investment for shareholders.”

        We’d rather have a better price than put our neighbors to work.

        I don’t give a rat’s backside what the economists tell us about outsourcing being good for us (note their track record in recent years, anyway). The very best treatment and the very best salaries of Chinese manufacturing employees simply would not be acceptable in the United States, so why do we put up with it as China (and Vietnam and Taiwan and Malaysia and Mexico)?

        It’s simply disgusting that no one seems to care.

        • UCLAri: Allergy Sufferer says:

          You’re right. Those people would be much happier with no wages. That way they can go back to being subsistence-level dirt farmers.

        • AnthonyC says:

          As for the merits of putting our neighbors to work, I have so far simply been unable to come up with a good argument for why I should care more about the total stranger in the next town over than I do about the total stranger the next continent over. Especially when the stranger in the next town has access to educational and other resources that, while always limited, vastly exceed what is available to the stranger on another continent.

          And while I agree that workers in other countries need better conditions, I think we need to accept that *for them* the factory job is a step up from their previous station. Also, that as living standards continue to rise in these places, workers will demand better treatment- just like they have in every other industrialized country. And PS, when that starts to happen, some of those manufacturing jobs will migrate back to the US (or maybe Africa first, who knows), since it will no longer be so cheap to outsource.

    • tbiscuit360 says:

      Have you ever had Nike Vomeros?
      I guess not!

  16. luftmenschPhil says:

    One way Nike could’ve gotten their point across while garnering an smidgen of positive publicity would have been to give the poor bloke an authentic pair of Nikes, highlighting the differences between the genuine article and the fake.

  17. bdcw says:

    How can I know I won’t be arrested if I buy a pair of Nikes? I will never buy Nikes again.

  18. Hi_Hello says:

    i bought nike once. didn’t like it. and too overpriced. I like NB. I thought the N meant N at first and didn’t want to give them a try. NB are awesome!!

    I do like nike’s commercial, but I don’t buy their product.

    last I heard, they sell cartoon looking sneakers now that people apy a lot for but can’t wear or it will mess up the sneaker…. this is the stupidiest thinggie I ever heard…

    • obits3 says:

      I got New Balance way before they became cool. I still have the same pair 9 years later! Other brands tend to wear out over a year or two, but these guys just keep going.

      • SonarTech52 says:

        I never knew NB were cool, but I did know they cost alot…. I still have a pair of NB from basic training(1998) though, and they are still holding up.

        • mrstu says:

          Exactly, they’re worth the cost… I got a pair pretty cheap actually, about $50 at the local outlet mall… and that was in 2002. I still wear them every day now, so that comes out to, what, 6.25 a year? Not bad imo.

    • MB17 says:

      You don’t like Nikes because they overpriced, but you prefer New Balance? NB has some of the most expensive running shoes on the market.

      • coren says:

        Depends on what you get them for. I got two pairs for about 60 bucks at Xmas two years ago, neither pair has worn out yet. (admittedly it was a buy one get one half off sale, but even so, 80 for 2 pair isn’t bad either). I’ve had other brands of shoes that don’t last more than a year, but my New Balance ones easily last me three, and I don’t go easy on them. Paying 20 for a pair of shoes I’m replacing every 12-15 months v one I get at least 3 years out of sounds like the NB are the deal.

      • UCLAri: Allergy Sufferer says:

        My NBs may have been expensive, but they’re the only shoe that doesn’t make me get shin splints from distance running.

        Worth every penny. Unless of course you’re from Consumerist, where the response would usually be something like, “Well, then stop running and just save $20 on shoes! Duh!”

        • MB17 says:

          I can’t argue with you. New Balance makes a fine shoe. But to say I don’t like Nikes because they’re overpriced, and then say you wear New Balances, makes little sense.

  19. Thyme for an edit button says:

    Nike cannot deter people from unknowingly buying counterfeit shoes. They might deter people from buying their shoes though because people will fear being sued for something outside their control.

  20. Tim says:

    In the U.S. we have this great thing called “mens rea.” The UK should try it out.

    • Daemon Xar says:

      They actually tried it first.

      Some things are strict liability. In this case, it shouldn’t be. But that doesn’t mean they don’t use more logical standards for most things. Much like the U.S., IP laws in the U.K. are more or less written by IP owners.

  21. JollyJumjuck says:

    Nike is okay with forced labor in Malaysia (er, sorry, they’re taking it VERY SERIOUSLY) but DON’T YOU DARE infringe on their trademark!

  22. agent 47 says:

    Justice in the UK is a joke. Even more so than here in the US.

  23. dulcinea47 says:

    So, according to that logic, nobody should ever order anything, b/c you don’t know for certain if it’s counterfeit, and if it is, it’s your fault.

    ?????

  24. daemonaquila says:

    Well, that’s the best way to make sure I and many others will never buy Nikes. Unless, of course, I’m in NYC and can pay cash to a street vendor selling counterfeits – then it’s worth it just to cheese off Nike.

  25. Mr Grey says:

    Stay Classy Nike.

  26. geekpoet says:

    Well, this would make me not want to buy Nike at all, so I guess it is effective.

  27. Cheap Sniveler: Sponsored by JustAnswer.comâ„¢ says:

    My sneakers were $7.99 clearance at Kmart. In fact I bought 2 pair at that price. They’re just fine – no sneakers are worth $200.

    God, I am such a tightwad.

    • MB17 says:

      Yes and no. For most people, those 8 dollar shoes are fine, but for your over-achieving marathon types, ponying up for 100 dollar shoes is mandatory. I’d rather dole out for the shoes than wind up with tendonitis.

  28. Geekybiker says:

    If you’re ordering online how the heck are you supposed to know if you’re getting counterfeit merchandise? Many times the price on counterfeit stuff is just the price you’d pay on a clearance sale or something. Its not like Nike is a luxury item where the price difference would be really obvious to anyone. (Like a Rolex for $200….)

    IIRC We have similar laws in the US, but I don’t know if they require knowledge of counterfeit. Oddly enough its okay to *own* counterfeit stuff, but not sell it, or import it.

  29. Skid Malfoy says:

    Nike knowing or believing the shoes to be counterfeit should be subject to the same “state of mind” argument. Bullshit.

  30. baristabrawl says:

    I have those shoes!

  31. LenVesper says:

    What in the … this guy had no idea if it was counterfeit or not and nike went after /them/ for ordering… positively ludicrous.

    Well, I guess I’m +1 to the list of people that aren’t going to buy nike anymore. The pair on my feet will be the last 60 bucks they made off of me. That’s just epic level /stupid/ of them to do.

  32. gman863 says:

    The UK is going after buyers of products, even if there is no evidence the buyer knew the item was fake? With the money wasted on enforcing a law like this, no wonder they have such a high income tax rate!

    Even Microsoft (likely the biggest single victim of piracy in the world) cuts unwitting buyers of counterfit Windows some slack. Although they could technically neuter use of bootleg Windows when activation or Genuine Windows Validation is attempted, they don’t. At worst, the bootleg user can’t get all the updates making it more prone to viruses and malware. At best, if the customer received a bootleg hologram license sticker, they can send it to Microsoft (along with the name of the seller) and receive a free Genuine copy in exchange for ratting out the seller.

    I moonlight doing PC repair and upgrades. If Microsoft offered a bounty for finding and turning in bootleg sellers in the Houston area (and I wasn’t too worried about physical revenge from some of the larger sellers) I’d make a small fortune.

    Reply

  33. DovS says:

    Since it’s impossible to know whether the shoes are counterfeit or not, since counterfeit sellers rarely advertise their products as counterfeit, the safest course would be no one in the UK to ever buy anything claiming to be a Nike product.

  34. anduin says:

    Guess its time for him to go back to Adidas….

  35. HalOfBorg says:

    Do I understand it right —- if I went into a legitimate store there and bought something that turned out out be fake then I have committed a violation?

  36. Keter says:

    Nike just earned my hate, not that I was ever a customer. I never bought any of their stuff because it was too expensive and had too much tasteless hype associated with it. I generally buy blatantly offbrand stuff from Big Lots (clearance) – most of which is as good or better than the name brand stuff at full-price retailers.

  37. Mcshonky says:

    WOW NIKE, be a fracking human corporation.

  38. mcgyver210 says:

    Well lets see I already quit buying hardly any music due to that industry becoming Stupid & now I will not but anything with a NIKE logo on it even though I am in the USA. Corporation Bullies need to learn we don’t need them they need us to buy their stuff.

  39. madtube says:

    Asshats, all of ‘em.

  40. Dan T. says:

    When trademark laws were first devised, many decades ago, they were intended as a consumer protection law to stop buyers from being deceived into buying inferior fake stuff, believing it to be from a reputable manufacturer. Now they’ve gone so far from their origin that the victims can be prosecuted.

  41. KyBash says:

    There was an IP case here recently — a store bought merchandise from a supposedly reputable wholesaler, six the items were found to be counterfeit. A year later the court dismissed the case because it was obvious the merchant had no way of knowing they were fakes.

    It cost them their business (complete inventory confiscated as evidence, store padlocked, etc. for a year), but at least they were found not guilty!

  42. blag says:

    Crap. I asked for that Nike iPod thingamajigee for Christmas and now I don’t want one anymore.

  43. sopmodm14 says:

    wtf !?

    if you buy an item, you presumably believe its authenticious (The Town)

    maybe he should sue nike for giving counterfeiters something to copy

    or better yet, sue nike for treason b/c they’re from the USA, but doesnt support the country by outsourcing manufacturering……we consumers love buying shoes for 1000x markup

  44. Jasen says:

    Wow.
    I hope someone from Nike’s marketing department reads these comments. Being heavy-handed does not win you customers. Add me and my family to the list of “not buying Nike’s again.”

  45. Everett says:

    I’m going to prevent myself from ever making this mistake. Since I can’t tell real Nike shoes from counterfeits, I won’t buy anything with a Nike logo on it. Then, I will have no reason to worry about Nike hauling me into court.

  46. coren says:

    If I buy a nice vase or dresser or chest or some other item in which storage is possible – if I buy that from someone and they stashed a baggie of drugs inside that I am unaware of, am I responsible for having bought them too? That’s what it sounds like this “law” is.

  47. usernameandp says:

    Blacklist Nike!

  48. skakh says:

    Yes, just another reason not to buy any Nike crap. Asics all the way!

  49. TampaShooters says:

    Holy crap… I’m screwed. I’m going into hiding, bye folks. Some judges just don’t know how to use sound judgement. penalize the company selling the item, not the consumer, because maybe the consumer is being duped too… Alot of the stuff on ebay lately is counterfeit, but the seller says it’s authentic, how do I know until I receive it?

  50. yesohyes22 says:

    i kinda hate Nike now.

  51. Fjord says:

    I grew up in a communist country and there is no way you could afford a pair of legit Nikes. It would cost about $2000 to get a pair if we compare standarts. I have had numerous pairs called Mike, Reebck, Adibas, Redbook.

  52. e065702 says:

    In order to better support poor ol’ Nike not only am I going to boycott on-line purchase of Nike shoes I am going to boycott buying Nike at BAM stores. As I see it, by me possibly purchasing knock-offs I am encouraging future purchases of knock-offs by the store.
    GOT YER BACK NIKE!!!!

  53. DashTheHand says:

    How is harassing your end users good for your brand name? You think if you take people to court and threaten them that it will make them super happy and eager to buy your product? If anything I’d be more determined to get a counterfeit just so no more money would go to that company after the way I was treated.