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Steal This Post

Abbie and Jack ages 8 and 5On the top row of one of my bookshelves, next to various academic volumes on intellectual property, rests a book by the late political activist Abbie Hoffman, Steal This Book.  I'm not by any means either a socialist or a thief, depending on your perspective, but society needs radical voices to remind us of our sometimes too-comfortable assumptions.  And besides, the title makes me smile.

Next to Steal This Book now stands another book, Run, Run, Run, this one written about Abbie by his brother, Jack Hoffman, and inscribed to me personally.  How did I happen to meet Jack?  The story starts with fake handbags.

Earlier this year Jack Hoffman pled guilty in federal court to one count of trafficking in counterfeit goods.  He had offered the logoed designer handbags in question for sale at a flea market near his Massachusetts home, and he had also stored the back stock at his house.  Thus far, standard issue trademark infringement case.   

The Boston Globe, however, reported that Jack thought he was complying with the law because he tucked a card inside each handbag making it clear that the bag was a designer replica, not the real thing.  After all, the standard for infringement is "likelihood of consumer confusion," so it would stand to reason that if the consumer isn't confused, there's no violation, right? 

Wrong.  I regularly receive questions about this common legal misperception; in fact, I've heard a distinguished IP lawyer make the same error -- and argue about it when I attempted to correct him.  As I'm sure many Counterfeit Chic readers know by now, however, trademark law does not distinguish between point-of-sale confusion and post-sale confusion.  Thus if a consumer knowingly buys a fake but others who see it later might mistake it for the real thing, there's a violation.

Still, Jack seemed to have given a great deal of thought to the treacherous waters of trademark from the perspective of fairness and justice, so when he got in touch I was immediately intrigued.  Much later, when I asked him whether the newspaper article was correct, he told me that not only was there a card disavowing authenticity tucked inside each handbag, but each purchaser also received a copy of the card with her receipt.  Unlike some retailers on eBay or other unscrupulous con artists, Jack never intended to trick his customers or to be on the wrong side of the law.  As he told me, "I've never even shoplifted!"

Now, it's also true that counterfeiting of all sorts of products is a big business that can harm both consumers and companies to the tune of many millions of dollars, a point that I've noted in other fora.  As the problem is increasing, so is public awareness -- thanks in part to the efforts of law enforcement.  Several years ago, however, when Jack was selling "replica" handbags at a flea market, the issue had not yet received significant public attention.  In other words, Jack strikes me as essentially an honest individual who made a common mistake as to trademark law and got caught. 

And my guess is that being Abbie Hoffman's brother didn't help matters much for Jack, but that's just speculation.

Jack's sentencing is scheduled for tomorrow in Boston before Judge Reginald Lindsay.  And while many of you know that I have great sympathy for designers who are harmed by copying, I hope that in this case it's only the road to probation that is paved with good (or at least would-be legal) intentions.  (I can't be there, but I'll let you know how it goes.)

And for the rest of you, let me repeat:  Unless you spray-paint the word "FAKE" permanently across both sides of a counterfeit handbag, or similarly eliminate any possibility of consumer confusion at any point in the life of the trademarked object, selling the fake is a violation of the law.  Please proceed accordingly. 

SENTENCING UPDATE:  3 years of probation, the first 5 months of which will be in home detention with electronic monitoring.  Not anybody's favorite style ankle bracelet, but there you have it.