In October 2018, Nite Ize was tipped off about a shipment at the port of entry in Portland, Oregon. U.S. Customs and Border Protection had seized the import of 300 counterfeit Steelie car-phone mounts, one of Nite Ize's most popular products.
After investigation, Nite Ize learned that the products were being sent to Amazon distribution centers throughout the U.S. and Canada, according to Clint Todd, the Boulder-based brand's chief legal officer. He reached out to Amazon for support.
"The third-party marketplaces lend themselves to this kind of abuse because the whole experience is supposed to be frictionless for sellers and buyers," Todd said. "The whole idea is anybody can sell something to anyone else."
But Amazon agreed to help Nite Ize fight back. Last Wednesday, the two companies filed a joint lawsuit in federal court in Seattle, going after multiple importers and sellers in three countries under store names like Snakey, Discount Always, and Zacksales.
Definitions: Counterfeits are imitation products using a brand's logos and packaging. Knockoffs are copies of a product under a different name.
In a statement, Amazon said that it "continues to invest and fight counterfeiters on all fronts—from developing technology to proactively prevent counterfeits, to working with brands, leaders in the public sector and law enforcement to hold bad actors accountable. Counterfeit has no place in our store and we will leverage every tool available to protect brands like Nite Ize, our customers, and our store."
This is the second high-profile legal engagement by Nite Ize against counterfeits and knockoffs of the Steelie product line. The brand in April 2018 won a two-year battle before the International Trade Commission (ITC) against Chinese manufacturers.
In this most recent case, Nite Ize's legal team test-bought products to track down the violators. Customers had posted reviews and Nite Ize had received returns of malfunctioning products.
Nite Ize also uses software to track when products are drastically underpriced. And on top of that, Amazon in 2017 introduced tools for brands to detect fakers and intellectual property violators. Its most recent tool is called Project Zero, which ultimately helps brands remove counterfeiters.
"These new tools that Amazon and other companies are implementing are going to be so critical moving forward," Todd said. "Hopefully, they'll really allow companies to control their brand and product presence in away that hasn't been possible up until now...At a certain point, brands will be able to spot and stop counterfeits in real time."