It’s Not Gucci: Facebook, Gucci Sue Over Alleged Online Counterfeiting

On Monday, Facebook Inc. and Gucci America Inc. filed a complaint in the Northern District of California against counterfeiter Natalia Kokhtenko for purportedly offering counterfeit Gucci goods, among other imitated goods and brands, on Facebook and Instagram.

According to the complaint, since at least April 2020 through at least April 26, 2021, the defendant “has operated an international online business, trafficking in illegal counterfeit goods.” The plaintiffs claimed that Kokhtenko “used Facebook and Instagram to promote her websites selling counterfeit products, including counterfeit Gucci-branded handbags, shoes, clothing, and accessories, in violation of Facebook and Instagram’s terms and policies.” Facebook noted that it previously disabled the defendant’s account and removed various posts promoting the sale of counterfeit goods because they violated Facebook and Instagram’s terms and policies (despite agreeing to them), which bans users from “doing anything ‘unlawful, misleading, … or fraudulent’”; infringing or violating the intellectual property rights of others; or breaching its terms of service, community standards or other terms and policies. Facebook added that it offers various measures to protect intellectual property rights.

Despite Facebook’s efforts, Kohktenko allegedly has continued to use Facebook and Instagram to promote the sale of counterfeit Gucci goods with the “unauthorized use of several of Gucci’s registered trademarks, including its house mark GUCCI, a number of Gucci’s stylized Gucci and GG marks, and Gucci’s Green/Red/Green Signature Webbing.” Reportedly, the defendant uses various Facebook and Instagram accounts to promote her online stores available at various websites. In particular, the complaint noted that the defendant’s websites “specifically promoted ‘luxury copies,’ ‘fashion from pirates,’ ‘high-precision copies of branded clothing,’ and copies that are ‘difficult … to distinguish (the defendant’s) copies from the originals’ for various brands, including Gucci.”

Luxury fashion brand Gucci stated that it is “renowned for eclectic and contemporary creations that represent the pinnacle of Italian craftsmanship and are unsurpassed in quality, attention to detail, and imaginative design.” According to Gucci, it “first used the GUCCI name and mark in the United States in 1953.” Gucci claimed that, today, it “distributes leather goods, clothing, accessories, eyewear, footwear, home decor, lifestyle products, jewelry, and watches, among many other products,” under its various registered marks. Gucci’s marks are shown below:

Gucci’s trademarks at issue, from the complaint.

Gucci asserted that it spends millions of dollars promoting its goods and services under its marks, thus there is a high level of consumer recognition and consumers recognize Gucci as the source of these products, claiming that its marks are “famous.” Gucci noted that it purchased goods from Kokhtenko and, after examining them, confirmed that they were counterfeit.

According to the complaint, the defendant used “spurious marks that are identical to, or substantially indistinguishable from, or are otherwise confusingly similar to the Gucci Marks, without Gucci’s authorization.” The defendant purportedly has “used these spurious marks in connection with a wide array of products, including jackets, shirts, sweaters, sweatshirts, skirts, scarves, belts, footwear, hats, face masks, handbags, backpacks, watches, sunglasses and bedding.” However, these were not genuine Gucci products, according to the plaintiffs. An example of an infringing product is shown below:

An image of counterfeit goods from the complaint.

The causes of action are counterfeiting, trademark infringement, federal unfair competition, unfair competition in violation of California Business and Professional Code, common law unfair competition, and breach of contract under California law.

Facebook seeks to stop the defendant from continuing to violate Facebook and Instagram’s terms and policies, and Gucci seeks to stop the defendant from continuing to infringe its trademarks and from selling counterfeit goods. The plaintiffs request declaratory judgment in their favor, a permanent injunction, the impoundment and destruction of the counterfeit goods, an award for damages, costs and fees, and other relief.

The plaintiffs are represented by Kilpatrick Townsend & Stockton LLP. Gucci additionally is represented by Fross Zelnick Lehrman & Zissu P.C.

This lawsuit comes as Amazon and other luxury fashion brands such as Ferragamo and Valentino have made efforts to crack down on counterfeit goods.