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(Photo: Courtesy Nite Ize)

Nite Ize Knocks Down Counterfeits in Court

The International Trade Commission passed a restriction on the import of products that infringe upon patents for Nite Ize's popular Steelie family of dashboard electronics mounts

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(Photo: Courtesy Nite Ize)

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Nite Ize with the International Trade Commission earlier this week. After a two-year investigation, the commission, which advises the executive branch and passes rulings on matters of trade and foreign patent, copyright, and trademark infringement, that protects Nite Ize鈥檚聽signature Steelie phone and tablet mounts from copy-catting聽by companies in foreign countries.

Colorado-based Nite Ize makes a variety of outdoor accessories, from lights to carabiners to pet gear.聽Nite Ize launchd its Steelie line in 2013, after it acquired the trademark and patents from inventor Frank Vogel. It sold its products in brick-and-mortar stores聽as well as on Amazon, where counterfeit and knockoff聽items began to appear almost immediately.

The copycat products retailed for as little as a third of the price of legitimate Steelies, thanks largely to an old , which allows packages to be shipped to the U.S. from foreign countries, including China, for just over $1. Some were perfect copies, including design and trademark. Others looked slightly different, but their mechanics were identical to those specified in Nite Ize鈥檚聽utility patents.

According to Clint Todd, Nite Ize鈥檚 chief legal officer, direct counterfeits are relatively easy to combat, since Amazon will take down listings if provided with proper trademark and design-patent papers. But utility-patent infringement鈥攑roducts that look different but are mechanically identical鈥攁re more difficult. For those, Amazon requires a court order.

Nite Ize had counted hundreds of infringing listings. It would take a lifetime and a fortune to go after each one individually in court. So in October 2016, the company聽appealed to聽the ITC to grant a general exclusionary order, a sweeping restriction that requires U.S. Customs to block the import of聽products that infringe聽on the specific patents in question.聽

According to Robert Ziemian, Nite Ize鈥檚 attourney, the rise of e-commerce is largely to blame for the explosion of knockoff and counterfeit goods being imported to the U.S. In the past, counterfeiters had to sell their items through big-box stores like Walmart or Target. They had to establish a presence in the country聽and create direct relationships with the stores they were selling into. 鈥淓-commerce changed the game,鈥 says Ziemian. 鈥淚t allowed foreign companies to identify popular gear that was easy to knock off, stay in their country of origin, and list, house, and distribute said product in a foreign country without overhead.鈥

In its appeal to the ITC, Nite Ize called out 40 foreign companies鈥斺淥ne of the largest collections of foreign companies brought to the ITC,鈥 Ziemian says鈥攖hough in reality, those companies represented just a fraction of the聽offending listing Nite Ize found across various e-commerce sites.聽On February 22, the ITC passed the general exclusionary order. After a 60-day presidential review period, which closed earlier this week, the order became final.聽

Why is this such a big deal? Because the order isn鈥檛 limited to specific companies, which can reorganize and rename themselves to get around targeted cease-and-desist orders. The general exclusionary order applies to all companies, past, present, and future.

There is precedent for this kind of case. In 2011, the ITC a general exclusionary order banning the import of certain foam footwear in violation of their design patents. Yeti coolers also has a pending with the ITC over copyright, trademark, and patent infringement of some of its聽drinkware. The case, which was initiated in November 2017, names 13 companies, mostly in China, and requests聽a limited exclusion order and cease-and-desist orders.

鈥淕eneral exclusionary orders are becoming more of a popular option鈥 for companies facing widespread trademark and patent infringement from foreign manufacturers, says Todd. Though, he says, they鈥檙e certainly not an easy route. Nite Ize made multiple trips to D.C., where they presented briefs and testified the way one would in a regular court. Then there was a lot of waiting.

Still, Todd wants to get out the word that general exclusion orders are perhaps the best shot companies have of combating foreign infringement on patents and trademarks in the age of e-commerce. 鈥淭here鈥檚 been a shift in the amount of knockoffs and counterfeits that are available to U.S. consumers,鈥 he says. 鈥淐onsumers have no idea who invented the product or who owns the intellectual property, and they won鈥檛 unless companies take action.鈥

Lead Photo: Courtesy Nite Ize

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