A Handbag Maker Battles Counterfeits and Copyright Copycats

Shannon Green

Corporate Counsel

02-28-2013

When Julie Deane invested £600 to found The Cambridge Satchel Company Ltd. in 2008, she knew fending off counterfeits and other forms of fraud would be an unavoidable cost of doing business in the apparel and accessories industry. But she didn’t predict that so many of her IP troubles would originate so close to home.

“I expected that if the company were to be successful, there would be imitations and people setting out to copy, but I didn’t think they would come from within the U.K.,” says Deane. “I thought that they would come from Asia.”

What she found instead were many nearby entities willing to engage in counterfeiting, copyright infringement, and cybersquatting—one of them literally right under her nose.

In 2010 Deane enlisted Leicester Remedials & Sewing to help keep up with increasing demand for her company’s leather handbags. Not long after, an anonymous phone call from an employee of the manufacturer confirmed an earlier tip: “They’re using your leather to make bags with their label and hiding them in a storage unit across the road.” The counterfeit handbags used Cambridge Satchel designs with a label that said “Zatchels.”

“It was a horrible feeling of being completely violated,” says Deane. “These are people I had shared all of my ideas with,” she says. “They contacted customers that they—as my manufacturer—knew I supplied.” Last summer Cambridge Satchel reached a confidential settlement with the company for copyright infringement.

Before she started the company, the mother of two school-aged children had looked at websites all over the country for funky colored, but otherwise traditional, leather satchels. “They just weren’t around,” she said, so Deane started up her company in order to make the bags herself.

The concept quickly took off, both at home and abroad. But about a year into running the business, Deane first discovered that when she typed Cambridge Satchel into a search engine, fakes popped up too, with either exact matches or deceptively similar names. “All of a sudden Oxford Satchel would come up,” she says, “even though it was based in Yorkshire.”

The bags she saw were exact copies of the Cambridge Satchel bags—in the exact style, sizes and colors. They were of poor quality, but the websites were spot-on duplicates of Cambridge Satchel’s legitimate site.

“They’ve even got the cheek to put all of our contact details on there,” she says. Customers called the company with bogus order numbers, complaining of poor quality or missing bags. Deane hired lawyers to take down the fraudulent sites, but they’d just come back with new names.

Things got worse before they got better. Last year the company was featured in a series of promotional videos for Google Chrome, “The Web is What You Make of It.” The ad generated a lot of positive attention, but when Deane searched Facebook and Twitter, she found Cambridge Satchel accounts that had nothing do with the company.

“These weren’t fan sites,” says Deane. Brand abusers will rank higher on search engines if they have a three-dimensional web presence, she explains. “If people have bought a domain with the express intention of confusing customers, one of the first things they’ll do is set up a Facebook and Twitter presence.”

Deane notes that she’s found the United States is the biggest market for counterfeits of her products. According to a recent study by brand protection firm MarkMonitor, one in five bargain hunters in both the U.S. and Europe mistakenly shopped on e-commerce sites offering counterfeit goods while looking for online deals.

Perkins Coie’s William Rava said in an email to CorpCounsel.com, “Most consumers are not looking for counterfeit or pirated goods, but the bad guys are very good at search engine optimization, creating multiple pathways, and designing sophisticated, believable landing sites.”

Cambridge Satchel enlisted MarkMonitor to ramp up brand protection late last year. The firm detected more than 300 fake websites capitalizing on the brand’s success, says Deane. Since the company began working with MarkMonitor, it has eliminated more than 1,000 counterfeit product listings.

Instead of going after brand abusers one at a time, the firm targeted bulk distributors. “Now that we’re working in a very organized in a systematic way, the ‘re-pop-up’ rate has fallen off, thank goodness,” says Deane.

Frederick Felman, chief marketing officer of MarkMonitor, said in a press release [PDF] announcing the collaboration: “The web’s tremendous reach and economies of scale have revolutionized the way brands engage customers and drive their business. But the very qualities that make the web so attractive for business growth, can make it easy and lucrative for online brand abusers to hijack powerful brands like the Cambridge Satchel Company.”