Judge’s ‘Schedule A’ Rebuke Reignites Anti-Counterfeiting Debate

A Chicago-based federal judge amplified criticism of a common mass-litigation practice against counterfeiters when he rebuked colleagues—and himself—for rubber-stamping tactics he said likely eviscerate due process protections.

Combating widespread infringement on marketplace platforms such as Amazon is a worthy end that doesn’t justify the means regularly deployed in what’s called “Schedule A” litigation, Judge John F. Kness said in an August ruling. The cases feature an often-sealed list of dozens of defendants who routinely don’t know they’ve been sued until a restraining order has already frozen assets.

A party “facing a secretly-imposed asset restraint starts the game backed up against their own end zone,” the judge wrote, denying a restraining order over counterfeit motorcycle apparel. The case was dropped Tuesday.

Kness’ broadside sets a blueprint for others leery of Schedule A lawsuits, which are largely concentrated in the US District Court for the Northern District of Illinois. While not binding, the opinion could embolden other skeptical judges to pump the brakes on a practice cobbled together to fight global counterfeiting schemes that the US government says illicitly generate trillions of dollars annually. So far this year, more than 1,800 suits have been filed nationally—on pace to shatter 2024’s record 1,919.

Persuasive district court decisions like Kness’ “can have a lot of influence,” IP professor Sarah Fackrell of Chicago-Kent College of Law said.

“It’s extraordinary on every level for a judge to conduct this kind of review and say, ‘I think we’re doing this wrong,’ and change course,” said Fackrell, who’s written extensively on Schedule A cases.

Brian Brokate of Gibney Anthony & Flaherty LLP, who regularly handles counterfeiting suits, noted Schedule A cases’ success in securing difficult-to-obtain relief. But he’s never used the tactic—he says judges in his New York district are wary of it—and called Kness’ analysis “right on the mark.”

“I’m not criticizing the Schedule A cases,” he said. “But I did sense that there would come a time where somebody was going to recognize these things for what they are: an end around to get ultimate relief.”

‘Alice in Wonderland’

Law firm Greer, Burns & Crain Ltd. has led the way on lawsuits against “The Associations and Partnerships Listed on Schedule A,” filing more than 3,000 since 2013. The approach was designed to address legions of storefronts selling infringing merchandise on online platforms.

Judges routinely allow plaintiffs to move forward without notifying defendants, accepting their claims that listed parties are related, can’t be properly served, and will move US assets once notified.

Greer partner Justin Gaudio called his firm’s tactics “necessary and effective.”

“Before Schedule A cases, brand owners were forced to spend significant resources playing an endless game of whack-a-mole where platforms institute complicated procedures and online counterfeiters operate without any real consequences,” he wrote in an email.

Early successes in Chicago brought more plaintiffs to the district, leading one judge to declare, “It has become the Northern District of Illinois vs. The Internet.” The US Court of Appeals for the Seventh Circuit in 2022 cemented the tactic’s viability in the district, finding one online test purchase enough for jurisdiction.

University of Santa Clara IP law professor Eric Goldman described the wave of Schedule A cases as an “Alice in Wonderland problem,” where “everything’s not normal, but somehow everyone’s treating it as normal.”

“It makes no sense,” Goldman said. “When it’s just the judge and plaintiff conspiring with each other to solve the plaintiff’s problems, the rules just don’t matter as much anymore.”

Some judges have begun to push back. In Illinois’ Northern District, judges have rejected a 2020 opinion’s reasoning for letting Bose Corp. join defendants because an “attack by a swarm” seemed coordinated “from the plaintiff’s perspective.” In October 2023, Kness began routinely noting that “several judges” questioned the tactic, and in March he began staying cases as he reevaluated his approach.

Goldman called his recent opinion “a gut check for Judge Kness’ colleagues.”

‘Tea Cup,’ ‘Fire Hose’

Greer’s Gaudio said court rules allow joinder of defendants when claims arise from the same “series of occurrences.” Circuit courts have said defendants acting independently can be joined, but that infringing the same IP alone isn’t enough.

Schedule A cases are sealed for only 14 days until the temporary restraining orders expire, Gaudio added, and defendant sellers get “prompt notice” at the email address tied to their accounts.

“By definition counterfeiters are nefarious actors,” Gaudio said, adding that defendants moving assets to China has been well documented.

But the “frustratingly opaque” nature of the cases makes it difficult to assess how often defendants are truly related, foreign, and willfully infringing, Fackrell said.

“I’m sitting with a tea cup and it’s a fire hose,” she said. “It’s a big dragnet. I’m not sure how it’s filtered or checked.”

That’s led to overreach at times. Fackrell noted a Florida mom who returned home from a hospital stay to learn she owed country singer Luke Combs a $250,000 default judgment over $360 made selling tumblers. Court-authorized email service to all defendants went to her spam folder, she said. Combs apologized and promised financial help.

But Eleanor M. Lackman of Mitchell Silberberg & Knupp LLP characterized such cases as outliers. She said most targets are organized, prolific counterfeiters and she’s found platforms slow to react to postings off which they still profit. Brand owners, she said, need a tool beyond piecemeal lawsuits that chase “shadows.”

Brokate said while he’s found platforms fairly responsive, a legislative fix is needed given Schedule A cases’ legal vulnerabilities Kness pointed to.

Gaudio agreed Congress should act, but said unless it does consumers will pay the price if the legal system doesn’t use “the full array of tools at its disposal.”

“We will keep pursuing enforcement, readjusting our strategies as needed to address the courts’ concerns while ensuring that the fundamental rights of IP owners and consumers are protected,” he said.

The case is: Eicher Motors Limited v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A, N.D. Ill., Docket No. 1:25-cv-02937.