Facebook, Inc., and Gucci America, Inc. v. Kokhtenko

1 KILPATRICK TOWNSEND & STOCKTON LLP
DENNIS L. WILSON (Bar No. 155407)

2 [email protected]
CAROLINE Y. BARBEE (Bar No. 239343)
3 [email protected]
1801 Century Park East, Suite 2300
4 Los Angeles CA 90067
Telephone:310-248-3830
5 Facsimile: 310-860-0363
6
Attorneys for Plaintiffs
7 FACEBOOK, INC. and GUCCI AMERICA, INC.
8
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
9 JOHN P. MARGIOTTA (pro hac vice application to be filed)
10 [email protected]
NICOLE LIEBERMAN (pro hac vice application to be filed)
12 151 W. 42nd Street, 17th Floor
New York, NY 10036
13 Telephone: 212-813-5900
14 Fax: 212-813-5901
15 Attorneys for Plaintiff

16 GUCCI AMERICA, INC.
17
UNITED STATES DISTRICT COURT
18
NORTHERN DISTRICT OF CALIFORNIA
19
SAN FRANCISCO DIVISION
20
FACEBOOK, INC., a Delaware CASE NO.: XXXXX
21 corporation, and GUCCI AMERICA,
22 INC., New York corporation COMPLAINT; DEMAND FOR JURY
TRIAL
23 Plaintiffs,
24 v.
25 Natalia Kokhtenko,
26
Defendant.
27
28
{F3912342.1 }
CASENUMBERHERE
COMPLAINT; DEMAND FOR JURY TRIAL
1 Plaintiffs Facebook, Inc. (“Facebook”) and Gucci America, Inc. (“Gucci”) assert
2 the following:
3 INTRODUCTION
4 1. Facebook and Gucci jointly bring this action in response to Defendant’s
5 unlawful use of Facebook and Instagram to perpetuate an online counterfeiting
6 business that sells, among other imitated brands, fake Gucci products. Since at least
7 April 2020 and continuing until at least April 26, 2021, Defendant Natalia Kokhtenko
8 has operated an international online business, trafficking in illegal counterfeit goods.
9 Defendant used Facebook and Instagram to promote her websites selling counterfeit
10 products, including counterfeit Gucci-branded handbags, shoes, clothing, and
11 accessories, in violation of Facebook and Instagram’s terms and policies. Facebook
12 has previously disabled Defendant’s accounts and removed posts for promoting the
13 sale of counterfeit goods in violation of Facebook’s and Instagram’s terms and
14 policies, which prohibit violating the intellectual property rights of others. Despite
15 Facebook’s enforcement efforts, Defendant continued to use Facebook and Instagram
16 to promote the sale of Gucci-branded counterfeit goods and the unauthorized use of
17 several of Gucci’s registered trademarks, including its house mark GUCCI, a number
18 of Gucci’s stylized Gucci and GG marks, and Gucci’s Green/Red/Green Signature
19 Webbing.
20 2. Facebook brings this action to stop Defendant’s ongoing violation of
21 Facebook’s and Instagram’s terms and policies. Gucci brings this action to stop
22 Defendant’s continuing trademark infringement and counterfeiting under Section
23 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); unfair competition under Section 43(a)
24 of the Lanham Act, 15 U.S.C. § 1125(a); unfair competition under California State
25 Law, Cal. Bus. & Prof. Code §§ 17200 et seq; and unfair competition under California
26 common law.
27 ///
28 ///
1 CASENUMBERHERE
1 PARTIES
2 3. Plaintiff Facebook, Inc. is a Delaware corporation with its principal place
3 of business in Menlo Park, California. Facebook products include the Facebook and
4 Instagram apps.
5 4. Plaintiff Gucci America, Inc. is a New York corporation with its
6 principal place of business in New York, New York.
7 5. Defendant Natalia Kokhtenko is a citizen and resident of Moscow,
8 Russia. Defendant used multiple aliases and online monikers, including
9 “AgentRomanova,” “Brends-MSK,” “gucci_sumo4kina_,” “Luxprime,” “Luxprimer,”
10 “Luxprimes,” “luxprime_gucci,” “Natalia Sumochkina,” “Natalya Romanova,”
11 “Romanova,” “Sumo4kina,” and “sumo4kina_shop1.”
12 6. Defendant used multiple Facebook and Instagram accounts to promote
13 her online stores available at brends-msk.ru, luxprimer.ru1, and agentromanova.ru
14 (collectively, “Defendant Websites”), where she operated an international business
15 that sold counterfeit goods, including counterfeit Gucci-branded products, in violation
16 of Facebook and Instagram’s terms and policies. Defendant’s Websites specifically
17 promoted “luxury copies,” “fashion from pirates,” “high-precision copies of branded
18 clothing,” and copies that are “difficult . . . to distinguish [Defendant’s] copies from
19 the originals” for various brands, including Gucci. Exhibit 1. The Defendant Website
20 brends-msk.ru referred to Defendant as the “founder, ideological inspirer, and
21 director” of her counterfeit business. Exhibit 2.
22 JURISDICTION AND VENUE
23 7. The Court has federal question jurisdiction over the federal causes of
24 action alleged in this Complaint pursuant to 15 U.S.C. § 1121, 28 U.S.C. § 1331, and
25 28 U.S.C. § 1338(a).
26 ///
27
28 1
As of April 14, 2021, each of the domains luxprime.ru, lux-prime.ru, luxprimes.ru,
and lux-prime.ru re-direct to the domain luxprimer.ru.
2 CASENUMBERHERE
1 8. The Court has supplemental jurisdiction over the state law causes of
2 action alleged in this Complaint pursuant to 28 U.S.C. § 1367 because these claims
3 arise out of the same nucleus of operative fact as the federal claims.
4 9. The Court also has jurisdiction over all the causes of action alleged in
5 this Complaint pursuant to 28 U.S.C. § 1332 because complete diversity between the
6 Plaintiffs and Defendant exists, and because the amount in controversy exceeds
7 $75,000.
8 10. Defendant had multiple Facebook accounts and thereby agreed to
9 Facebook’s Terms of Service (“TOS”) and Commercial Terms. The Court has
10 personal jurisdiction over Defendant because Facebook’s TOS and Commercial
11 Terms both contain a forum selection clause that requires this complaint be resolved
12 by this Court, and that Defendant submit to the personal jurisdiction of this Court.
13 11. Defendant also agreed to the Instagram Terms of Use (“TOU”)
14 (collectively with the Facebook TOS, the “Terms”). The Instagram TOU contain a
15 forum selection clause that requires this complaint be resolved by this Court, and that
16 Defendant submit to the personal jurisdiction of this Court.
17 12. In addition, the Court has personal jurisdiction over Defendant because
18 she knowingly directed and targeted her actions at California and at Facebook, which
19 has its principal place of business in California. Defendant transacted business and
20 engaged in commerce in California by, among other things, accepting payment via a
21 California-based payment service and hosting the Defendant Websites on a California-
22 based hosting provider. Defendant promoted her ability to ship counterfeit goods to
23 the United States and shipped counterfeit goods to California.
24 13. Venue is proper in this Judicial District pursuant to 28 U.S.C. §
25 1391(b)(2) because a substantial part of the events giving rise to the claims alleged
26 occurred in this District. Venue is proper pursuant to 28 U.S.C. § 1391(b)(3) because
27 Defendant is subject to the Court’s personal jurisdiction. Venue is also proper with
28 ///
3 CASENUMBERHERE
1 respect to Defendant pursuant to 28 U.S.C. §1391(c)(3) because no defendant resides
2 in the United States.
3 14. Pursuant to Civil L.R. 3-2(c), this case may be assigned to either the San
4 Francisco or Oakland division because Facebook is located in San Mateo County.
5 FACTUAL ALLEGATIONS
6 A. Background on Facebook and Instagram
7 15. Facebook offers a social networking website and mobile application that
8 enables its users to create their own personal profiles and connect with each other on
9 their personal computers and mobile devices. As of December 2020, Facebook daily
10 active users averaged 1.84 billion and monthly active users averaged 2.80 billion,
11 worldwide. Facebook has several products, including Instagram.
12 16. Instagram is a photo and video sharing service, mobile application, and
13 social network. Instagram is owned and operated by Facebook, Inc. Since April 2018,
14 the Instagram TOU have stated that Instagram is a Facebook product and that the
15 TOU constitute an agreement between Instagram users and Facebook.
16 17. Instagram users can post photos and videos to their profile. They can also
17 view, comment on, and like posts shared by others on Instagram. As of 2020,
18 Instagram had over one billion active accounts worldwide.
19 B. Facebook’s and Instagram’s Terms and Policies (the “Terms”)
20 18. All Facebook users agree to Facebook’s TOS (available at
21 https://www.facebook.com/terms/php) and other rules that govern access to and use of
22 Facebook, which also include the Facebook Commercial Terms. Facebook
23 Commercial Terms apply to access and use of Facebook, Instagram, and other
24 Facebook Products for any business or commercial purpose.
25 19. All Instagram users agree to Instagram’s TOU (available at
26 https://help.instagram.com/478745558852511/?helpref=hc_fnav) and to other rules
27 that govern access to and use of Instagram.
28 ///
4 CASENUMBERHERE
1 20. Section 3.1 of the Facebook TOS requires users to “[c]reate only one
2 account ([their] own)” and use that account “for personal purposes,” and prohibits
3 users from using Facebook if Facebook “previously disabled [a user’s] account for
4 violations of [the TOS] or [Facebook] Policies.”
5 21. Section 3.2.1 of the Facebook TOS prohibits users from: (a) doing
6 anything “unlawful, misleading, [] or fraudulent”; (b) doing anything that “infringes
7 or violates someone else’s rights, including their intellectual property rights”; and (c)
8 “breach[ing] [the Facebook TOS], [Facebook] Community Standards, and other
9 Terms and Policies that apply to [a user’s] use of Facebook.”
10 22. Section 3.2.3 of the Facebook TOS prohibits users from “access[ing] or
11 collect[ing] data from [Facebook] Products using automated means (without
12 [Facebook’s] prior permission).”
13 23. Section 3.2 of the Facebook TOS authorizes Facebook to remove content
14 of users who “seriously or repeatedly violate the[] [TOS]” without giving the user an
15 opportunity to “request [] review.”
16 24. Section 2 of the Facebook Commercial Terms requires users to
17 “represent and warrant” that “access or use of Facebook Products for business or
18 commercial purposes complies with all applicable laws, rules, and regulations.”
19 25. Instagram’s TOU also prohibit users from (a) “do[ing] anything
20 unlawful, misleading, or fraudulent or for an illegal or unauthorized purpose”; (b)
21 “do[ing] anything that violates someone else’s rights, including intellectual property”;
22 (c) “attempt[ing] to create accounts or access or collect information in unauthorized
23 ways,” “includ[ing] creating accounts or collecting information in an automated way
24 without our express permission”; (d) “violat[ing] . . . [Instagram] Terms or
25 [Instagram] policies”; and (e) using Instagram if Facebook “previously disabled your
26 account for violation of law or any of [Instagram’s] policies.”
27 ///
28 ///
5 CASENUMBERHERE
1 C. Facebook’s Measures to Protect Intellectual Property Rights
2 26. Facebook prohibits Facebook and Instagram users from posting content
3 that infringes third parties’ intellectual property rights, including copyright
4 infringement, trademark infringement, and the promotion, sale, or advertisement of
5 counterfeit goods. Facebook TOS, Section 3.2.1; Instagram TOU (“How You Can’t
6 Use Instagram”). Facebook has a variety of measures and tools in place to help people
7 and organizations protect their intellectual property rights across its products and
8 services and to combat infringements, including counterfeits, on its products and
9 services.
10 27. Facebook operates a global notice-and-takedown program that provides
11 dedicated communication channels for rights holders to report posts or other user-
12 generated content they believe to be infringing, including content on Facebook and
13 Instagram that promotes, advertises, or sells counterfeit goods. Facebook makes
14 available publicly-accessible reporting forms to streamline and expedite the reporting
15 of intellectual property violations, including a form for reporting counterfeits
16 specifically (available at https://www.facebook.com/help/contact/628238764025713).
17 28. Facebook employs a global team to review these reports. If a report is
18 complete and valid, Facebook promptly removes the reported content (e.g., disables a
19 violating account or removes a violating post). In addition, Facebook notifies both the
20 rights holder and the violating user of the fact of and reason for the removal. In the
21 first half of 2020, Facebook and Instagram removed more than one million posts or
22 other user-generated content based on reports of counterfeit goods.
23 29. Even where a report identifies a single post (for example, a photograph
24 on a Facebook or Instagram account), typically Facebook reviews the entire account.
25 If there is evidence of widespread infringement, rather than remove only the reported
26 post, Facebook disables the account. Likewise, Facebook disables the accounts of
27 Facebook and Instagram users who repeatedly violate the Terms prohibiting violations
28 of the intellectual property rights of others. This “repeat infringer” policy applies to
6 CASENUMBERHERE
1 numerous surfaces, including Facebook accounts, Pages, groups, ad accounts, and
2 Instagram accounts. When a repeat infringer’s account is disabled, Facebook informs
3 the user that they are no longer permitted to use its service.
4 D. Gucci’s Rights and Anti-Counterfeiting Efforts
5 30. The Gucci brand, originally founded in 1921 in Florence, Italy, is one of
6 the best-known and most valuable global brands.
7 31. The Gucci brand, which is celebrating its 100th anniversary this year, is
8 one of the most renowned and inﬂuential fashion and luxury brands in the world, a
9 genuine global reference for fashion and accessories, sustainability, and inclusion and
10 a benchmark for a modern, innovative business.
11 32. Gucci is renowned for eclectic and contemporary creations that represent
12 the pinnacle of Italian craftsmanship and are unsurpassed in quality, attention to detail,
13 and imaginative design.
14 33. Gucci first used the GUCCI name and mark in the United States in 1953,
15 when it introduced Americans to Italian fashions by opening its pioneering New York
16 City flagship store. Today, Gucci distributes leather goods, clothing, accessories,
17 eyewear, footwear, home decor, lifestyle products, jewelry, and watches, among many
18 other products, in the United States under the GUCCI mark and related iconic design
19 marks, including the stylized GUCCI marks, Gucci’s stylized GG designs and
20 Green/Red/Green Signature Webbing shown below (collective with the mark GUCCI,
21 the “Gucci Marks”):
22
23
24
25
26
27
28
7 CASENUMBERHERE
1
2
3
4
5
6 34. Today, Gucci owns/operates nearly 100 GUCCI-branded retail boutiques
7 throughout the United States where it sells its products branded with the Gucci Marks.
8 Gucci also sells its products through its official website, www.gucci.com/us/, and
9 through select high end department stores, such as Saks Fifth Avenue, Nordstrom, and
10 Bloomingdale’s.
11 35. Each year, Gucci spends millions of dollars on advertising to promote the
12 goods and services offered under the Gucci Marks in the United States. As a result of
13 Gucci’s efforts and the appeal of the GUCCI brand, Gucci sells high quantities of
14 consumer goods annually in the United States.
15 36. By virtue of extensive sales, advertising, and promotion, the Gucci Marks
16 have become instantly recognizable to the public as exclusively denoting Gucci as the
17 source of products bearing, and sold under, the Gucci Marks and signaling the high
18 quality of such products. Having acquired substantial goodwill and strong secondary
19 meaning, the world-famous Gucci Marks are enormously valuable assets of Gucci.
20 37. Along with its robust common law rights in the famous Gucci Marks,
21 Gucci also owns numerous federal registrations for the Gucci Marks, including:
22
Mark Reg’n No. Reg’n Date Class and Goods/Services
23 GUCCI 876,292 09/09/1969 IC 6: Vacuum bottles, vanity cases sold
24 empty
25 IC 18: Pocketbooks, wallets, travel and
duffel bags, attache cases, toilet cases sold
26 empty and shoe bags
27 IC 25: Shoes and boots
28
8 CASENUMBERHERE
1 Mark Reg’n No. Reg’n Date Class and Goods/Services
2 GUCCI 1,168,477 09/08/1981 IC 25: Neckties; scarves; belts; footwear;
shirts; sweaters; coats; suits; dressing gowns;
3
hats; socks; dresses and bathing Suits
4 GUCCI 4,563,132 07/08/2014 IC 18: Handbags, shoulder bags, clutch bags,
5 tote bags, briefcases, business card cases,
credit card cases, backpacks, key cases,
6 passport cases, cosmetic cases sold empty,
7 valises, suitcases, luggage, all the foregoing
being made in whole or in part of leather; pet
8 accessories, namely, carriers, collars and
9 leashes; pet collar accessories, namely,
charms
10
GUCCI 4,407,149 09/24/2013 IC 9: Sunglasses and cases for sunglasses
11 GUCCI 5,535,081 08/07/2018 IC 3: Incense sticks
12 IC 4 : Candles
13 IC 20: Throw pillows, cushions, chairs,
armchairs, folding floor screens and tables
14 IC 21: Incense burners, mugs, cups, trays for
15 household purposes
IC 27: Wallpaper
16
5,921,104 11/26/2019 IC 9: Cases and covers for mobile phones
17 IC 18: Handbags; shoulder bags; messenger
18 bags; tote bags; clutch bags; backpacks;
duffle bags; wallets; business card cases;
19 leather credit card cases and holders;
20 pouches of leather
IC 25: Clothing, namely, tops as clothing,
21
scarves, footwear, headwear; children's and
22 infants' cloth bibs
23
24
25
26
27
28
9 CASENUMBERHERE
2 5,921,105 11/26/2019 IC 9: Cases and covers for mobile phones
3 IC 14: Keyrings
IC 18: Handbags; shoulder bags; messenger
4 bags; tote bags; clutch bags; backpacks;
5 duffle bags; wallets; business card cases;
leather credit card cases and holders;
6 pouches of leather
7 IC 25: Clothing, namely, tops as clothing,
scarves, footwear, headwear; children's and
8 infants' cloth bibs
9 6,073,427 06/09/2020 IC 3: Fragrances, incense, cosmetics, nail
10 polish
IC 4: Candles
11
IC 9: Sunglasses, eyeglasses, cases for
12 sunglasses, cases for eyeglasses, mobile
phone cases, cases for computers, cases for
13
tablet computers, computer application
14 software for all mobile devices, namely,
downloadable software for providing
15
information in the field of fashion, the arts
16 and lifestyle
17 IC 14: Jewelry, watches, key rings, cuff
links, tie bars
18 IC 18: Pocketbooks, handbags, shoulder
19 bags, clutches, wristlet bags, coin purses,
wallets, credit card cases, business card
20 cases, tote bags, backpacks, diaper bags,
21 cosmetic bags sold empty, luggage
IC 20: Throw pillows, cushions, chairs,
22
armchairs, folding floor screens and tables
23 IC 21: Incense burners, mugs, cups, trays for
24 household purposes, porcelain pots and
vases, dishes, sugar bowls, creamer pitchers,
25 chargers being dinnerware, non-electric
26 coffee pots, non-electric tea pots
IC 25: Tops as clothing, bottoms as clothing,
27 coats, jackets, suits, dresses, jumpsuits,
28 bathing suits, scarves, ties as clothing, belts,
10 CASENUMBERHERE
2 gloves, headwear, footwear, tights, socks,
stockings
3
IC 27: Wallpaper
4 IC 35: Retail store services for clothing,
5 footwear, fashion accessories, jewelry,
watches, handbags, sunglasses, fragrances,
6 home furnishings and accessories; online
7 retail store services for clothing, footwear,
fashion accessories, jewelry, watches,
8 handbags, sunglasses, fragrances, home
9 furnishings and accessories
IC 41: Providing entertainment news and
10 information in the fields of fine art, film,
11 music, theater, and dance through an Internet
website portal and social media sites
12 entertainment services, namely, organizing
13 sporting and cultural events
IC 45: Providing news and information in the
14
fields of fashion and personal lifestyles
15 through an Internet website
16 1,158,170 06/23/1981 IC 25: Clothing-Namely, Neckties, Scarves,
Belts, Footwear, Shirts, Coats, Hats, Dresses,
17 and Bathing Suits
18 1,464,522 11/10/1987 IC 14: watches, cufflinks, made or coated
19 with precious metal, bracelets, pendants,
earrings, made or coated with precious
20 metals, rings, and necklaces
21 3,376,129 01/29/2008 IC 18: Wallets, purses, handbags, shoulder
bags, tote bags, business card cases, credit
22 card cases, partly and wholly of leather,
23 suitcases and duffles
24
25
26
27
28
11 CASENUMBERHERE
2 4,567,107 07/15/2014 IC 9: Protective covers and cases for mobile
electronic communications devices and
3
computers; cell phone straps
4 IC 18: Shoulder bags, clutch bags,
5 backpacks, document cases, cosmetic cases
sold empty, briefcases, suitcases, general
6 purpose trolley bags, laptop carrying cases,
7 luggage, duffle bags, tote bags, all of the
foregoing being made in whole or in part of
8 leather
9 3,470,140 07/22/2008 IC 6: metal key rings
10 IC 14: Jewelry, namely, earrings, pendants,
rings, necklaces and watches; key rings of
11 precious metal
12 IC 25: Apparel, namely, neckties, scarves,
shirts, sweaters, coats, hats, dresses, bathing
13 suits, and gloves
14 3,039,629 01/10/2006 IC 25: footwear and belts
15
16 5,073,022 11/01/2016 IC 18: handbags and wallets
IC 25: belts and footwear
17
4,220,947 Oct. 09, Class 14: Jewelry
18 2012 Class 18: Wallets, purses, handbags,
19 shoulder bags, clutch bags, tote bags,
business card cases, credit card cases partly
20 and wholly of leather, key cases, cosmetic
21 cases sold empty, briefcases, attaché cases,
valises, suitcases and duffel bags
22 Class 25: Neckties, scarves, belts, footwear
23 and gloves
24
25
26
27
28
12 CASENUMBERHERE
2 4,583,258 08/12/2014 IC 9: Protective covers and cases for mobile
electronic communications devices and
3
computers; computer cases made of leather
4 IC 14: Watches
5 IC 18: Backpacks, general purpose trolley
bags; baby bags, namely, bags for carrying
6 babies' accessories
7 IC 25: Clothing, namely, shirts and jackets
8 4,229,081 10/23/2012 IC 14: Jewelry
IC 18: Wallets, purses, handbags, shoulder
9 bags, clutch bags, tote bags, business card
10 cases, credit card cases partly and wholly of
leather, key cases, cosmetic cases sold
11 empty, briefcases, attaché cases, valises,
12 suitcases and duffel bags
IC 25: Neckties, scarves, belts, footwear and
13
gloves
14 3,072,549 03/28/2006 IC 18: Wallets, purses, handbags, shoulder
15 bags, clutch bags, tote bags, business card
cases, credit card cases, partly and wholly of
16 leather, key cases, cosmetic cases sold
17 empty, briefcases, attaché cases, valises,
suitcases and duffles
18
3,072,547 03/28/2006 IC 25: neckties, scarves, belts, footwear and
19 gloves
20
5,421,749 03/18/2013 IC 18: Backpacks; briefcases and messenger
21 bags
22
23
4,567,112 07/16/2015 IC 9: Eyeglasses and sunglasses; protective
24 covers and cases for mobile electronic
25 communication devices and computers; cell
phone straps; computer carrying cases
26 IC 14: Jewelry and key rings of precious
27 metal
IC 18: Cosmetic cases sold empty, luggage,
28
duffle bags
13 CASENUMBERHERE
2 4,379,039 08/06/2013 IC 25: Shorts, pants, jeans, leggings, t-shirts,
polo shirts, shirts, sweaters, sweatshirts,
3
dresses, skirts, swimwear, one piece
4 garments for infants and toddlers, cloth bibs,
scarves, ties, hats, gloves, belts
5
6 38. Printouts detailing the registration information for the above marks are
7 attached hereto as Exhibit 3. The above-referenced registrations are valid, well-
8 known, subsisting, and in full force, and serve as prima facie evidence of Gucci’s
9 exclusive rights in and to the Gucci Marks. Additionally, several of the registrations
10 referenced have become incontestable under Section 15 of the Lanham Act, 15 U.S.C.
11 § 1065, and thus constitute conclusive evidence of Gucci’s exclusive right to use these
12 marks on the goods specified in the registrations pursuant to Sections 7 and 33 of the
13 Lanham Act, 15 U.S.C. §§ 1057, 1115(b).
14 39. Gucci is committed to protecting and safeguarding its intellectual
15 property rights and assets in order to ensure that Gucci’s unique and valuable
16 creativity and heritage is preserved, safeguarded, and enforced. Gucci invests
17 substantial time and resources to intellectual property enforcement programs and
18 strategies that protect consumers and clients from counterfeit and infringing products
19 sold online and offline.
20 40. Gucci values intellectual property rights and maintains a strong and
21 consistent approach which combats counterfeiting at the manufacturing, distribution,
22 promotion, and selling levels and across channels and platforms. Gucci actively
23 cooperates and collaborates with Customs and other law enforcement agencies in the
24 US and around the world to identify and combat counterfeiting and it routinely
25 pursues legal action to stop online counterfeiting operations, networks, and clusters.
26 41. Gucci regularly monitors websites, including social media, online
27 marketplaces, and physical stores to detect and stop infringements. Among its many
28 enforcement partnerships, Gucci works cooperatively with platforms such as
14 CASENUMBERHERE
1 Facebook and Instagram, as well as retailers, to identify and remove counterfeit
2 goods.
3 42. Through the efforts of a dedicated and skilled in-house team and through
4 significant investments, Gucci has implemented a best-in-class approach to its
5 trademark enforcement, and continues to innovate in this field.
6 43. Gucci, along with its affiliates, successfully seizes millions of units’
7 worth of counterfeit products each year, and disables countless online accounts and
8 infringing online listings as part of its enforcement efforts.
9 44. Partnering with Facebook, Gucci is bringing this action to deter the
10 repeated counterfeiting of Defendant, who is running a sophisticated counterfeiting
11 scheme to sell replica GUCCI goods at high price points for counterfeits.
12 E. Overview of Defendant’s Counterfeiting Business
13 45. Since at least April 2020, Defendant has used a web of Facebook and
14 Instagram accounts to promote her business and direct traffic to her Websites in
15 violation of the Terms. On her Websites, Defendant sold “high-precision copies of
16 branded clothing . . . at mass market prices,” “luxury copies,” and “pirate[d]”
17 fashions. Exhibit 1.
18 46. As of October 2020, the Defendant Websites listed dozens of counterfeit
19 products for sale organized by designer brand name, including Gucci. Exhibit 4. On
20 her Websites, as well as on Facebook and Instagram, Defendant has used spurious
21 marks that are identical to, or substantially indistinguishable from, or are otherwise
22 confusingly similar to the Gucci Marks, without Gucci’s authorization. Defendant has
23 used these spurious marks in connection with a wide array of products, including
24 jackets, shirts, sweaters, sweatshirts, skirts, scarves, belts, footwear, hats, face masks,
25 handbags, backpacks, watches, sunglasses and bedding.
26 47. Defendant offered and sold Gucci-branded goods that were not genuine
27 products of Gucci and that were materially different from Gucci’s genuine products.
28 ///
15 CASENUMBERHERE
1 Further, Defendant was not an authorized reseller of authentic Gucci goods.
2 Defendant’s actions were not approved by Gucci.
3 F. Defendant Accepted the Facebook and Instagram Terms
4 48. Between at least April 2011 and April 26, 2021, Defendant accepted and
5 was bound by the Terms. Defendant created and used multiple Facebook accounts,
6 Facebook Pages, and Instagram accounts and agreed to the Facebook TOS and
7 Commercial Terms, and the Instagram TOU. In total, Defendant operated more than
8 five Facebook accounts and more than 150 Instagram accounts across multiple
9 devices. Several of these Instagram accounts included the word “Gucci” in the
10 username, including “luxprime_gucci” and “gucci_sumo4kina_.”
11 G. Defendant Promoted the Sale of Counterfeit Goods in Violation of
12 the Terms
13 49. Between at least April 2020 and April 26, 2021, Defendant used her web
14 of Facebook and Instagram accounts to advance her counterfeit business and publish
15 posts promoting counterfeit goods offered for sale on the Defendant Websites.
16 Defendant used Gucci-branded products in these promotional posts.
17 50. For example, on December 7, 2018, Defendant and her counterfeit
18 business created an Instagram account with the username “luxprime_gucci,” which
19 Defendant used to promote the Defendant Website www.lux-prime.ru. Figure 1 is a
20 screenshot of the account bio including a link to Defendant’s Website, contact
21 information for the Defendant, and a Gucci-branded handbag in the profile picture. On
22 April 21, 2021, Facebook disabled the “luxprime_gucci” account for violating
23 Instagram’s TOU against violating third parties’ intellectual property rights.
24 ///
25 ///
26 ///
27 ///
28 ///
16 CASENUMBERHERE
1 Figure 1: Defendant’s Counterfeit Gucci Handbag and Instagram Account Bio2
2
3
4
5
6
7
8
9
10 51. On November 6, 2019, Defendant and her counterfeit business created an
11 Instagram account with the username “gucci_sumo4kina_.” Between May 21, 2020
12 and September 5, 2020, this account published posts promoting Gucci-branded
13 bedding, t-shirts, and sneakers offered for sale on Defendant’s Website www.brends-
14 msk.ru. Figure 2 is a screenshot of a May 21, 2020 post including a link to the
15 Defendant Website, contact information for the Defendant, and Gucci-branded
16 bedding. On January 26, 2021, Facebook disabled the “gucci_sumo4kina_” account
17 for violating Instagram’s TOU against violating third parties’ intellectual property
18 rights based on a report.
19 ///
20 ///
21 ///
22 ///
23 ///
24 ///
25 ///
26 ///
27
28 2
Exhibit Nos. 1-2, 4, and 5 and Figures 1-2 reflect machine translations using open source tooling to
convert Russian text to English. Telephone numbers have been redacted from Figure 2.
17 CASENUMBERHERE
1 Figure 2: Defendant’s Counterfeit Gucci Bedding
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18 52. In December 2020, Gucci purchased a counterfeit handbag from
19 Defendant’s Website brends-msk.ru. Specifically, on December 11, 2020, Defendant
20 sold Gucci’s agent a counterfeit Gucci handbag through the Defendant Website
21 brends-msk.ru and which had been promoted on Instagram. Exhibits 5-6. On January
22 6, 2021, Gucci’s agent received the handbag from Defendant in San Francisco,
23 California. Gucci examined the handbag and confirmed that it is counterfeit. Figure 3
24 includes photographs of the counterfeit handbag Gucci purchased from the Defendant
25 Website brends-msk.ru.
26 ///
27 ///
28 ///
18 CASENUMBERHERE
1 Figure 3: Photographs of Defendant’s Counterfeit Handbag Purchased by Gucci
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23 53. Between December 14 and 16, 2020, Gucci’s agent purchased additional
24 counterfeit goods from another of Defendant’s Websites, luxprimer.ru, which Gucci’s
25 agent received in California. Defendant or a representative of her counterfeit business
26 assured Gucci’s agent over text message of the quality of the counterfeits, including a
27 Gucci-branded t-shirt, handbag, and scarf offered on the Defendant Website
28 luxprimer.ru. Exhibits 7-8. Thereafter, Defendant sold Gucci’s agent the t-shirt,
19 CASENUMBERHERE
1 handbag, and scarf. Exhibit 9. On February 8, 2021, Gucci’s agent received the
2 purchased products from Defendant in San, Francisco, California. Gucci has examined
3 the products and confirmed that they are all counterfeit.
4 G. Facebook’s Enforcement Efforts
5 54. Since 2015, to protect Facebook and Instagram users and in response to
6 several reports by Gucci and other brands, Facebook has taken multiple enforcement
7 actions against Defendant for violating the Terms, including as recently as April 26,
8 2021. These include disabling her accounts on Facebook and Instagram, removing
9 posts that promoted counterfeit products, and sending various notices to Defendant
10 about her violations of the Terms.
11 55. Nonetheless, Defendant continued to access and use Facebook and
12 Instagram without permission and used deceptive tactics to avoid detection and further
13 enforcement. For example, after Facebook disabled several accounts controlled by
14 Defendant, Defendant used automation software that allowed her to create user
15 accounts in bulk, while misrepresenting how she was accessing Facebook computers,
16 to circumvent Facebook technological measures. Defendant used the new accounts
17 she created to promote her counterfeit business.
18 56. On April 21 and 26, 2021, Facebook disabled additional Facebook and
19 Instagram accounts and Pages controlled by Defendant. In total, Facebook has
20 removed more than 125 posts from accounts used by Defendant, and disabled more
21 than 160 Facebook and Instagram accounts and Facebook Pages for violations of the
22 Terms, including promoting counterfeit goods and using unauthorized automation
23 software and other detection evasion techniques.
24 FIRST CAUSE OF ACTION
25 COUNTERFEITING (15 U.S.C. § 1114(1))
26 (By Gucci against Defendant)
27 57. Gucci repeats incorporates all other paragraphs as if fully set forth herein.
28 ///
20 CASENUMBERHERE
1 58. Defendant’s unauthorized use of the Gucci Marks for goods identical in
2 type to those provided by Gucci under the Gucci Marks and for which the Gucci
3 Marks are registered is likely to cause confusion or to cause mistake or to deceive
4 Defendant’s customers or potential consumers and the public as to the source or
5 sponsorship of Defendant’s goods. Consumers are likely to be misled into believing
6 that Defendant’s products are manufactured by, licensed by, sponsored by, approved
7 by or otherwise associated with Gucci.
8 59. Because Defendant’s products incorporate the registered Gucci Marks
9 without Gucci’s consent, and the marks are used on and in connection with goods
10 identical in type to those provided and registered by Gucci under the Gucci Marks,
11 Defendant’s GUCCI-branded products are counterfeit products under 34 U.S.C. §
12 1116(d).
13 60. Upon information and belief, Defendant was on both actual and
14 constructive notice of Gucci’s exclusive rights in the registered Gucci Marks prior to
15 Defendant’s own use of the Gucci Marks. Defendant’s use of Gucci Marks is willful,
16 in bad faith, and with full knowledge of the goodwill and reputation associated with
17 the Gucci Marks, and with full knowledge that Defendant has no right, license, or
18 authority to use the Gucci Marks or any other mark confusingly similar thereto.
19 61. Defendant’s acts are intended to reap the benefit of the goodwill that
20 Gucci has created in its Gucci Marks and constitutes counterfeiting in violation of
21 Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
22 62. Defendant’s conduct has caused and is causing immediate and irreparable
23 injury to Gucci and, unless enjoined by this Court, will continue to both damage
24 Gucci and deceive the public. Gucci has no adequate remedy at law.
25 ///
26 ///
27 ///
28 ///
21 CASENUMBERHERE
1 SECOND CAUSE OF ACTION
2 TRADEMARK INFRINGEMENT (15 U.S.C. § 1114(1))
4 63. Gucci repeats and incorporates all other paragraphs as if fully set forth
5 herein.
7 type to those provided by Gucci under the Gucci Marks is likely to cause confusion or
8 to cause mistake or to deceive Defendant’s customers or potential consumers and the
9 public as to the source or sponsorship of Defendant’s goods. Consumers are likely to
10 be misled into believing that Defendant’s products are manufactured by, licensed by,
11 sponsored by, approved by, or otherwise associated with Gucci.
12 65. Upon information and belief, Defendant was on both actual and
13 constructive notice of Gucci’s exclusive rights in the registered Gucci Marks prior to
14 Defendant’s own use of the Gucci Marks. Defendant’s use of Gucci Marks is willful,
15 in bad faith, and with full knowledge of the goodwill and reputation associated with
16 the Gucci Marks, and with full knowledge that Defendant has no right, license or
17 authority to use the Gucci Marks or any other mark confusingly similar thereto.
18 66. Defendant’s acts are intended to reap the benefit of the goodwill that
19 Gucci has created in its Gucci Marks and constitutes infringement of Plaintiff’s
20 federally registered trademark in violation of Section 32(1) of the Lanham Act, 15
21 U.S.C. § 1114(1).
23 injury to Gucci and, unless enjoined by this Court, will continue to both damage
24 Gucci and deceive the public. Gucci has no adequate remedy at law.
25 ///
26 ///
27 ///
28 ///
22 CASENUMBERHERE
1 THIRD CAUSE OF ACTION
2 FEDERAL UNFAIR COMPETITION (15 U.S.C. § 1125(a))
5 herein.
6 69. Defendant’s use of the Gucci Marks constitutes false designation of
7 origin and false representation with respect to the origin of Defendant’s goods.
8 Defendant’s use of the Gucci Marks is likely to cause confusion, mistake, or deception
9 as to the source of Defendant’s goods and is likely to create the false impression that
10 Defendant is affiliated with Gucci or that her goods are authorized, sponsored,
11 endorsed, licensed by, or affiliated with Gucci. Defendant’s actions constitute unfair
12 competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
13 70. Defendant’s use of the Gucci Marks in connection with her own products
14 destroys the value, exclusivity and reputation of the Gucci Marks.
16 injury to Gucci and will continue both to damage Gucci and to deceive the public
17 unless enjoined by this Court. Gucci has no adequate remedy at law.
18 FOURTH CAUSE OF ACTION
19 UNFAIR COMPETITION IN VIOLATION OF
20 CAL. BUS. & PROF. CODE §§ 17200 ET SEQ.
23 herein.
24 73. Defendant’s aforesaid conduct constitutes unfair competition with Gucci
25 in violation of Cal. Bus. & Prof. Code §§ 17200 et seq.
23 CASENUMBERHERE
1 FIFTH CAUSE OF ACTION
2 COMMON LAW UNFAIR COMPETITION
5 herein.
6 76. Defendant is (i) promoting, advertising, distributing, selling, and/or
7 offering for sale goods bearing marks which are virtually identical, both visually and
8 phonetically, to the Gucci Marks, and (ii) creating and maintaining an illegal, ongoing
9 marketplace enterprise operating in parallel to the legitimate marketplace in which
10 Gucci sells its genuine goods, in violation of California’s common law of unfair
11 competition.
13 type to those provided by Gucci under the Gucci Marks is likely to cause confusion or
14 to cause mistake or to deceive Defendant’s customers or potential consumers and the
15 public as to the source or sponsorship of Defendant’s goods. Consumers are likely to
16 be misled into believing that Defendant’s products are manufactured by, licensed by,
17 sponsored by, approved by or otherwise associated with Gucci.
21 SIXTH CAUSE OF ACTION
22 BREACH OF CONTRACT UNDER CALIFORNIA LAW
23 (By Facebook against Defendant)
24 79. Facebook repeats and incorporates all other paragraphs as if fully set
25 forth herein.
26 80. Defendant created and used Facebook and Instagram accounts, and
27 agreed to the Facebook TOS, Commercial Terms, and Instagram TOU.
28 ///
24 CASENUMBERHERE
1 81. Defendant used various accounts for commercial purposes; namely, to
2 promote her business and the Defendant Websites, where she sold counterfeit goods.
3 82. Defendant breached Section 3.2.1 of the Facebook TOS, Section 2 of the
4 Facebook Commercial Terms, and the Instagram TOU by taking the actions described
5 above, including by using her Facebook and Instagram accounts to promote
6 counterfeit Gucci goods for sale on the Defendant Websites.
7 83. Defendant breached Section 3.1 of the Facebook TOS by creating
8 multiple Facebook accounts, using the accounts for commercial purposes, and by
9 using Facebook after Facebook previously disabled her accounts for violating the
10 Facebook TOS.
11 84. Defendant breached Section 3.2.3 of the Facebook TOS and the
12 Instagram TOU by accessing Facebook and Instagram using automated means.
13 Defendant did not have Facebook’s permission to do so.
14 85. Defendant breached the Instagram TOU by continuing to use Instagram
15 after Facebook previously disabled her account for violating the Instagram TOU.
16 86. Facebook has performed all conditions, covenants, and promises required
17 of it in accordance with their agreements with Defendant.
18 87. Defendant’s many breaches have caused Facebook to incur damages in
19 the amount of at least $75,000, in addition to an amount to be determined at trial.
20 88. Facebook is entitled to an injunction against Defendant as set forth in the
21 Prayer for Relief below to stop Defendant’s persistent violations.
22 REQUEST FOR RELIEF
23 WHEREFORE, Plaintiffs request judgment against Defendant as follows:
24 1. That the Court enter judgment against Defendant that Defendant has:
25 a. Breached Defendant’s contracts with Facebook in violation of
26 California law;
27 ///
28 ///
25 CASENUMBERHERE
1 b. Used the Gucci Marks in a manner that constitutes counterfeiting
2 in violation of Section 32(1) of the Lanham Act, 15 U.S.C. §
3 1114(1);
4 c. Infringed the Gucci Marks in violation of Section 32(1) of the
5 Lanham Act, 15 U.S.C. § 1114(1);
6 d. Unfairly competed with Gucci in violation of Section 43(a) of the
7 Lanham Act, 15 U.S.C. § 1125(a);
8 e. Unfairly competed with Gucci in violation of Cal. Bus. & Prof.
9 Code §§ 17200 et seq.;
10 f. Unfairly competed with Gucci in violation of the common law of
11 the state of California.
12 2. That the Court enter a permanent injunction enjoining and restraining
13 Defendant and her agents, servants, employees, successors, and assigns,
14 and all other persons acting in concert with or conspiracy with any of
15 them or who are affiliated with Defendant from:
16 a. Accessing or attempting to access Facebook’s services, platforms,
17 and computer systems, including Instagram;
18 b. Creating or maintaining any Facebook or Instagram accounts in
19 violation of the Terms, including the Facebook TOS, Commercial
20 Terms, and Instagram TOU;
21 c. Engaging in any activity, or facilitating others to do the same, that
22 violates the Terms, including the Facebook TOS, Commercial
23 Terms, and Instagram TOU, or other related policy referenced
24 herein;
25 d. Using any reproduction, counterfeit, copy, or colorable imitation
26 of the Gucci Marks, or any mark confusingly similar thereto (the
27 “Prohibited Marks”) for or in connection with any goods or
28 services not authorized by Gucci.
26 CASENUMBERHERE
1 e. Engaging in any course of conduct likely to cause confusion,
2 deception, or to injure Gucci’s business reputation or the
3 Prohibited Marks;
4 f. Using any false description or representation, including words or
5 other symbols falsely to describe or represent Defendant’s
6 unauthorized goods or services as Gucci’s, or sponsored or
7 associated with Gucci, and from offering such goods or services
8 into commerce;
9 g. Manufacturing, producing, distributing, circulating, selling,
10 marketing, offering for sale, advertising, promoting, renting,
11 displaying or otherwise disposing of any products or packaging
12 not authorized by Gucci that bear any simulation, reproduction,
13 counterfeit copy, or colorable imitation of the Prohibited Marks;
14 h. Making any statement or representation whatsoever, or using any
15 false designation of origin or false description, or performing any
16 act, which is or may be likely to lead the trade or public, or
17 individual members thereof, to believe that any products
18 manufactured, distributed, or sold by Defendant are in any
19 manner associated or connected with Gucci, or are sold,
20 manufactured, licensed, sponsored, approved, or authorized by
21 Gucci;
22 i. Secreting, destroying, altering, removing, or otherwise disposing
23 of any products that infringe the Prohibited Marks, or any books
24 or records that contain any information relating to the importing,
25 manufacturing, producing, distributing, circulating, selling,
26 marketing, offering for sale, advertising, promoting, renting, or
27 displaying of such products;
28 ///
27 CASENUMBERHERE
1 j. Effecting assignments or transfers forming new entities or
2 associations or utilizing any other device for the purpose of
3 circumventing or otherwise avoiding the prohibitions set forth in
4 this Order, or any subsequent order or final judgment in this
5 action;
6 k. Using, linking, transferring, selling, or otherwise owning the
7 domain names for the Defendant Websites, any social media or
8 chat platforms or related apps, or any other domain name that
9 incorporates, in whole or in part, any of the Prohibited Marks, or
10 any domain name that is used in connection with any website that
11 offers for sale or sells counterfeit Gucci merchandise;
12 l. Creating, operating, owning, overseeing, or otherwise exercising
13 control over any websites, social media, chat platforms or related
14 apps in connection with selling, offering to sell, promoting,
15 advertising, or otherwise depicting any counterfeit Gucci
16 products;
17 m. Creating, operating, owning, overseeing, or otherwise exercising
18 control over any websites, social media, chat platforms or related
19 apps in connection that embed, incorporate, include, or otherwise
20 display any of the Prohibited Marks; and
21 n. Processing any payments for or otherwise providing any online
22 services related to the sale of counterfeit products featuring the
23 Prohibited Marks, or any confusingly similar marks;
24 3. Directing that Defendant turn over to Gucci for impoundment and
25 eventual destruction, without compensation to Defendant, all materials in
26 her possession or control that contain or refer to the Prohibited Marks,
27 along with all articles by means of which such unauthorized copies may
28 be reproduced.
28 CASENUMBERHERE
1 4. Directing that Defendant, pursuant to 15 U.S.C. § 1116(a), file with the
2 Court and serve upon Plaintiffs, within thirty (30) days of the entry of
3 injunction prayed for herein, a written report under oath or affirmed
4 under penalty of perjury setting forth in detail the form and manner in
5 which she has complied with the permanent injunction.
6 5. That Defendant account for and pay over to Gucci profits realized by
7 Defendant by reason of Defendant’s unlawful acts herein alleged and,
8 that the amount of damages for infringement of the Gucci Marks be
9 increased by a sum not exceeding three times the amount thereof as
10 provided by law.
11 6. In the alternative, that Gucci be awarded statutory damages of
12 $2,000,000 for each and every of the Prohibited Marks counterfeited by
13 the Defendant.
14 7. That Plaintiffs be awarded their costs, reasonable attorneys’ fees and
15 investigators’ fees incurred in this action, as permitted by law.
16 8. That Plaintiffs be awarded pre-judgment interest on their judgment.
17 9. That Plaintiffs be awarded such other and further relief as the Court may
18 deem just and proper.
19
20 Dated: April 26, 2021 KILPATRICK TOWNSEND &
21 STOCKTON LLP
22
By: /s/ Caroline Y. Barbee
23 Dennis L. Wilson
24 Caroline Y. Barbee
25 FACEBOOK, INC. and GUCCI
26 AMERICA, INC.
27 Platform Enforcement and
28 Litigation
Facebook, Inc.
29 CASENUMBERHERE
1 Jessica Romero
2 Tyler Smith
Bridget Anne Freeman
3
4 -and-

6 GUCCI AMERICA, INC.
7 John P. Margiotta (pro hac vice application to be filed)

8 Nicole Lieberman (pro hac vice application to be filed)
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
10 New York, NY 10036
Tel: (212) 813-5900; Fax: (212) 813-5901
11 Email: [email protected]
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
30 CASENUMBERHERE
1 DEMAND FOR JURY TRIAL
2 Plaintiffs hereby demand a trial by jury on all issues triable to a jury.
3
4 Dated: April 26, 2021 KILPATRICK TOWNSEND &
STOCKTON LLP
5
6
By: /s/ Caroline Y. Barbee
7 Dennis L. Wilson
Caroline Y. Barbee
8
9 FACEBOOK, INC. and GUCCI
AMERICA, INC.
10
11 Platform Enforcement and
Litigation
12 Facebook, Inc.
13 Jessica Romero
Tyler Smith
14 Bridget Anne Freeman
15
-and-
16
GUCCI AMERICA, INC.
18
19 John P. Margiotta (pro hac vice application to be filed)
Nicole Lieberman (pro hac vice application to be filed)
20 FROSS ZELNICK LEHRMAN & ZISSU, P.C.
New York, NY 10036
22 Tel: (212) 813-5900; Fax: (212) 813-5901
23 Email: [email protected]
[email protected]
24
25
26
27
28
31 CASENUMBERHERE

Facebook, Inc., and Gucci America, Inc. v. Kokhtenko

Uploaded by

Copyright:

Facebook, Inc., and Gucci America, Inc. v. Kokhtenko

Uploaded by

Document Information

Original Description:

Copyright

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Facebook, Inc., and Gucci America, Inc. v. Kokhtenko

Uploaded by

Copyright:

1 KILPATRICK TOWNSEND & STOCKTON LLP

DENNIS L. WILSON (Bar No. 155407)

15 Attorneys for Plaintiff

5 Attorneys for Plaintiff

7 John P. Margiotta (pro hac vice application to be filed)

You might also like