Month: January 2026

Owning strong intellectual property rights is only part of the enforcement equation. As the recent Crocs decision illustrates, procedural precision and a clear understanding of available remedies can be just as decisive as the merits of the underlying claims.

 

Crocs, the company behind one of the most recognizable footwear designs on the global market, turned to the U.S. International Trade Commission (ITC) in an effort to block the importation of imitation clogs allegedly infringing its registered three-dimensional trademarks. Despite the apparent strength of its brand and design rights, Crocs ultimately saw its appeal fail – largely due to missed deadlines and statutory limits on the relief available.

 

The dispute began in 2021, when Crocs filed a complaint under Section 337 of the Tariff Act of 1930, alleging that multiple foreign manufacturers and sellers were importing clogs that unlawfully copied its protected designs.

 

As is common in ITC proceedings, the respondents fell into two distinct categories. Some actively participated in the investigation and contested the allegations, while others failed to respond and were declared in default.

 

Following its analysis, the ITC issued a divided outcome. For the active respondents, the Commission concluded that Crocs had not established trademark infringement and therefore found no violation. For the defaulting respondents, however, the ITC issued a divided outcome. For the active respondents, the Commission concluded that Crocs had not established trademark infringement and therefore found no violation. For the defaulting respondents, however, the ITC imposed limited exclusion orders, prohibiting those specific parties from importing the accused product into the United States.

 

Crocs appealed the ITC’s determination to the U.S. Court of Appeals for Federal Circuit, seeking to overturn the finding of no violation and to obtain broader trade relief. The appeal, however, encountered an immediate procedural barrier.

 

 

The Federal Circuit ruled that Crocs had missed the statutory deadline to appeal the ITC’s no-violation finding with respect to the active respondents. Crucially, the Court clarified that the appeal period begins upon issuance of the ITC’s final determination – not after the completion of the presidential review process. As a result, this portion of Crocs’ appeal was dismissed without consideration of the substantive arguments.

 

Crocs also challenged the ITC’s refusal to issue a general exclusion order, which would have barred all infringing clogs from entering the U.S. market, regardless of the importer. On this point, the Federal Circuit upheld the Commission’s decision.

 

The Court emphasized that, under the governing statutory framework, the ITC is generally limited to issuing limited exclusion orders against defaulting respondents unless strict criteria for broader relief are met. In this case, those criteria were not satisfied, and the Commission acted within its legal discretion by declining to impose market-wide import restrictions.

 

The Crocs decision sends a clear message to companies relying on intellectual property enforcement as part of their market protection strategy.

 

First, procedural compliance is non-negotiable. Even well-established brands with robust IP portfolios may lose critical rights of review if statutory deadlines are missed.

 

Second, while the ITC remains a powerful forum for combating infringing imports, its remedies are carefully circumscribed by law. Expectations regarding general exclusion orders must be grounded in a realistic assessment of statutory requirements and evidentiary burdens.

 

Ultimately, the case demonstrates that strong IP rights alone do not guarantee effective enforcement. Success at the border requires a combination of substantive protection, procedural rigor, and a clear-eyed understanding of the limits of trade-based remedies.

 

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Author: Marília de Oliveira Fogaça, Thaís de Kássia R. Almeida Penteado and Cesar Peduti Filho, Peduti Advogados.

Source: Missed Deadlines and Defaulted Defendants: Crocs Loses Appeal Over Imitation Clogs + https://www.uspatent.com/2026/01/missed-deadlines-and-defaulted-defendants-crocs-loses-appeal-over-imitation-clogs/ 

 

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

In 2024, the Brazilian Patent and Trademark Office (INPI) received more than 166,000 trademark applications and around 13,000 patent filings. This level of activity has consequences that go beyond statistics and cannot be ignored by companies operating, or intending to operate, in Brazil.

 

Trademark practice in Brazil today takes place in a markedly denser register. Clearance analyses have become more sensitive, opposition proceedings more frequent, and post-registration disputes less exceptional than they were a few years ago. In practical terms, the mere existence of a registration says little about the real margin of exclusivity, particularly in markets where similar signs tend to concentrate.

 

Foreign applicants often approach Brazil as a filing-driven jurisdiction. That approach no longer corresponds to the current reality. Monitoring, coexistence analysis and early assessment of enforcement scenarios tend to be more relevant than the filing act itself, especially when trademark portfolios are expected to support commercial expansion rather than remain defensive.

 

 

Patent filings follow a comparable pattern. Projects involving local manufacturing, regulatory approval or technology transfer routinely require Brazil to be included in the protection strategy, with attention not only to grant prospects but also to timing and enforceability. Patent rights, in this context, interact directly with regulatory and litigation considerations.

 

The data released by the INPI simply confirm what has been observed in practice: Brazil has become a more demanding IP jurisdiction, in which technical choices made at an early stage tend to determine the effectiveness of protection later on.

 

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Author: Enzo Toyoda Coppola and Cesar Peduti Filho, Peduti Advogados.

Source: https://www.conjur.com.br/2025-nov-13/inpi-registrou-166-mil-novas-marcas-e-13-mil-novas-patentes-em-2024/ 

 

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

Marc Jacobs, the iconic fashion house owned by luxury conglomerate LVMH, is now facing intense judicial scrutiny – not over its runway collections or marketing, but over its legal strategy in fighting counterfeit goods. A federal judge in the Northern District of Illinois has raised serious concerns about the way the brand is pursuing anti-counterfeiting litigation, signaling a potential turning point in how modern intellectual property enforcement is conducted in the fashion industry.

 

“Schedule A” litigation has become a popular tool for brands seeking to combat rampant online counterfeiting. Under this approach, a rights holder can file a single lawsuit listing dozens or even hundreds of anonymous defendants – often identified only by usernames or storefront IDs – on a sealed list known as “Schedule A”.

 

The strategy is designed for speed and efficiency. Once the lawsuit is filed, plaintiffs often request ex parte relief such as temporary restraining orders, which can freeze assets and disrupt counterfeit operations before sellers are even notified. It has been especially prevalent in e-commerce counterfeiting cases, where sellers may use anonymous accounts and swiftly change storefronts to evade enforcement.

 

In the case at issue, Marc Jacobs initially filed a Schedule A complaint in November 2025 that named more than a dozen online sellers allegedly offering counterfeit products. Within days, however, the brand dismissed most of those defendants and amended its complaint to focus on a single seller identified by a username.

 

According to the court’s order, that same defendant had been named in three earlier Schedule A cases brought by Marc Jacobs in the same district. In each instance, the brand grouped multiple defendants together but then pared down the list after a judge had been assigned.

 

Judge John Robert Blakey expressed concern that this pattern could reflect more than aggressive enforcement – it may amount to judge shopping and manipulation of federal procedures. In his December 4 order, he warned that repeatedly naming the same defendants across multiple cases, then narrowing the field once a favorable judge is assigned, “suggests that [Marc Jacobs] lacks a good faith factual and legal basis to join the defendants in a single proceeding”. The judge said this conduct could amount to abuse of process.

 

 

At the heart of the dispute is a tension within modern litigation: balancing the need for efficient mechanisms to fight counterfeiting with the constitutional and procedural rights of defendants. Courts have increasingly questioned whether mass joinder under Schedule A satisfies the requirements of the Federal Rules of Civil Procedure and whether rushed, sealed filings that seek ex parte relief are fully compatible with due process protections.

 

Judicial criticism of Schedule A tactics is not new. Previous rulings in the same district criticized sealed filings as an attempt to “sneak up on defendants” and highlihted the challenges courts face when anonymous online sellers are lumped together despite limited shared factual grounds for joinder.

 

In asking Marc Jacobs to justify its strategy, the Illinois court is signaling that aggressive anti-counterfeiting measures cannot bypass core procedural safeguards or tilt the litigation process toward tactical advantage. The brand must now show that its repeated use of Schedule A litigation is grounded in legitimate enforcement needs – not a procedural game to secure a sympathetic judge.

 

This development could have wider implications for how luxury brands protect their intellectual property online. Schedule A cases have been adopted widely beyond fashion, including in the automotive and sports industries. But mounting judicial skepticism could narrow the scope of acceptable practices or prompt reforms in how courts handle mass joinder and anonymous defendants in counterfeiting disputes.

 

If courts begin to rein in aggressive Schedule A tactics, brands may need to rethink how they structure their enforcement strategies – balancing speed and scale with procedural correctness and fair treatment of defendants.

 

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Author: Marília de Oliveira Fogaça, Thaís de Kassia R. Almeida Penteado and Cesar Peduti Filho, Peduti Advogados.

Source: Marc Jacobs Faces Scrutiny Over “Schedule A” Strategy + https://www.thefashionlaw.com/marc-jacobs-faces-scrutiny-over-schedule-a-strategy/ 

 

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

The fanart and other derivative works created by fans and shared on platforms such as TikTok and Instagram are becoming a significant component of digital culture. Fanart is a creation made by fans of a pre-existing work, such as series, movies, comics, games, or characters. These admirers draw on the original universe to create something new, such as an illustration, an aesthetic revamp, a modified recording, or an alternative narrative. This represents a way for fans to express their affection, going beyond passive consumption and actively engaging in the symbolic creation of content, reinterpreting and expanding it from their own perspective.

 

Although it has a creative and community-oriented character, Brazilian copyright law stipulates that any modification or adaptation of a protected work requires the authorization of the copyright holder. Therefore, all fanart is technically a derivative work that, in general, cannot be published without authorization. However, in practice, many companies and authors allow or even encourage its use, as they see the potential for engagement, loyalty, and spontaneous promotion. Fanart can function as a free marketing strategy, helping to keep characters and franchises culturally active and present in the collective consciousness.

 

However, this tolerance usually has defined limits. It is common for rights holders to act to restrict use when it begins to generate direct profit, such as in the sale of prints, personalized products, or video monetization, under the justification of unfair competition or undue economic exploitation. The focus of the debate is on differentiating between affective and cultural use, which strengthens the connection between fans and the work, and commercial use, which harms the legitimate market of the rights holder.

 

 

Unlike the more advanced discussions in American law on transformation and fair use, Brazilian legislation does not yet provide for a specific exception for fan art. For this reason, in Brazil, the solution has been developed on a case-by-case basis, taking into account the purpose of the creation, the level of originality, and its economic effect.

 

Thus, despite being socially accepted and culturally appreciated, fanart remains in an area of informal tolerance, normally seen as acceptable as long as it remains in a personal, non-profit context. The current challenge is to harmonize the protection of copyright with the participatory dynamics of digital culture, recognizing that the connection between fan and work is also a connection of collective creativity.

 

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Author: Isabela Nicolella Vendramelli, Thaís de Kássia R. Almeida Penteado and Cesar Peduti Filho, Peduti Advogados

Source: 

https://br.lexlatin.com/opiniao/memes-e-propriedade-intelectual 

https://www.planalto.gov.br/ccivil_03/leis/l9610.htmn 

 

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If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.

A São Paulo court has sided with the popular steakhouse chain Outback in a trademark dispute, ordering a restaurant in the Amazon region to stop using visual and naming elements that closely resemble the established brand.

 

The case centered on allegations that the defendant restaurant was engaging in what legal experts call “parasitic exploitation” — essentially riding on the coattails of a well-known brand’s reputation and recognition. Outback’s legal team argued that the competing establishment wasn’t just using similar branding by coincidence, but was deliberately copying the chain’s distinctive trade dress, which includes everything from logo design to the overall visual presentation that customers associate with the Outback experience.

 

When the case first went to trial, the lower court judge agreed with Outback and granted emergency injunctive relief, immediately prohibiting the copycat restaurant from continuing its practices. Unsurprisingly, the defendants weren’t ready to give up without a fight and filed an appeal, raising several procedural objections in an attempt to overturn the ruling.

 

The restaurant’s defense team tried multiple angles to challenge the decision. They first argued that the state court didn’t have proper jurisdiction over the matter, claiming that the Brazilian Patent and Trademark Office (BPTO) — Brazil’s federal trademark authority — should be involved instead. They also contended that the emergency measures weren’t justified and that the case was being heard in the wrong territorial jurisdiction.

 

 

However, Judge Tasso Duarte de Melo, who served as rapporteur for the appellate panel’s 1st Chamber, systematically dismantled each of these arguments. He clarified that state courts absolutely have the authority to hear this type of case because the lawsuit wasn’t challenging whether a trademark registration was valid in the first place — it was about enforcing existing trademark rights and addressing unfair business practices. That distinction meant BPTO’s involvement wasn’t necessary.

 

As for the territorial jurisdiction complaint, Judge Duarte de Melo pointed to Article 53 of Brazil’s Civil Procedure Code, which explicitly allows plaintiffs to file tort-based damage claims in their own jurisdiction. The legal framework was clear, and the defense’s objection didn’t hold water.

 

What really sealed the case, though, was the overwhelming evidence of imitation. The defendant restaurant hadn’t just borrowed a vague concept — they’d replicated the “Outback” name itself, complete with similar spelling and pronunciation, and even added “Steakhouse” to their branding. The visual presentation mirrored Outback’s established trade dress so closely that the court found it impossible to view this as anything other than a deliberate attempt to confuse consumers and benefit from Outback’s brand recognition.

 

Judge Duarte de Melo’s written opinion emphasized that the combination of these factors demonstrated clear intent to exploit a well-known trademark for commercial gain. The appellate panel, which also included Judges Azuma Nishi and Carlos Alberto de Salles, unanimously agreed with this assessment.

 

Interestingly, this wasn’t even the first time the restaurant in question had faced legal consequences. The court noted that a separate Federal Court decision had already suspended the establishment’s trademark registration and prohibited them from using the disputed name, further reinforcing that this wasn’t a borderline case of similarity but rather straightforward infringement.

 

The ruling serves as a strong reminder that Brazilian courts take trademark protection seriously, particularly when it comes to well-established brands, and that businesses can’t simply copy successful competitors’ identities hoping to capitalize on their reputation and customer goodwill.

 

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Author: Carlos Roberto Parra, Thaís de Kássia R. Almeida Penteado and Cesar Peduti Filho, Peduti Advogados.

 

Source: https://www.conjur.com.br/2025-out-28/tj-sp-proibe-restaurante-de-usar-elementos-de-marca-do-outback/

 

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”