The Counterfeit Sham

74 Pages Posted: 6 Feb 2024 Last revised: 24 Feb 2024

Date Written: January 28, 2024

Abstract

There’s a new front in the IP rhetoric wars. Plaintiffs in secretive “Schedule A” cases tell judges that they need to secretly seize the assets of hundreds of defendants in order to defeat the machinations of nefarious foreign “counterfeiters” — even in cases where no counterfeiting (or even plain trademark infringement) are alleged. Proponents of bills that would allow Customs & Border Patrol to seize products that might infringe design patents try to equate those products with “counterfeits,” invoking the specter of counterfeit drugs to suggest that design patent infringement threatens the health and safety of U.S. citizens. Although design patent infringers may sometimes also be counterfeiters, these two legal offenses are actually and meaningfully different. Unlike actual counterfeiting, design patent infringement does not require the use of any trademarks or any likely consumer confusion. Even if we’re discussing “counterfeiting” in the more colloquial sense, a competitor need not create a deceptively identical copy of a product — or do anything deceptive at all — in order to infringe a design patent. A product that infringes a design patent is not necessarily any more dangerous or harmful than any other product. For these reasons and others, the direct equation of design patent infringement to counterfeiting is false. And the explicit appeal to fear is fallacious. This Article argues that policymakers, judges, and other decisionmakers should not fall for this sham.

Keywords: intellectual property, patents, design patents, trademarks, counterfeiting, rhetoric

Suggested Citation

Burstein, Sarah, The Counterfeit Sham (January 28, 2024). Harvard Law Review, Vol. 138 (forthcoming), Available at SSRN: https://ssrn.com/abstract=4549909 or http://dx.doi.org/10.2139/ssrn.4549909

Sarah Burstein (Contact Author)

Suffolk University Law School

120 Tremont Street
Boston, MA 02108-4977
United States

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