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BACKGROUND

In Amazon.com, Inc. and Nintendo of America, Inc. v. Jing et al., Nintendo and Amazon teamed up to protect their intellectual property and consumers from counterfeiters selling fake Nintendo products online. The dispute centers on the popular amiibo toy line, collectible figurines that connect wirelessly to Nintendo consoles such as the Nintendo Switch. These figurines allow players to unlock new characters, abilities, and other in-game features.

Nintendo owns and enforces the intellectual property associated with amiibo, including registered trademarks. Between March 2021 and April 2023, defendants allegedly used nine separate Amazon seller accounts to advertise, market, and sell counterfeit amiibo products that unlawfully bore Nintendo's trademarks. By doing so, they deceived consumers into believing they were purchasing genuine Nintendo merchandise.

To mask their conduct, defendants submitted falsified invoices to Amazon. These fake invoices made the counterfeit items appear legitimate. Both Amazon and Nintendo discovered the falsifications during their enforcement efforts, prompting Amazon to block the sellers and remove the infringing listings.

BRAND PROTECTION EFFORT 

Amazon highlighted its commitment to brand protection through its various anti-counterfeiting programs, including:

• Brand Registry, which uses machine learning to identify potential trademark infringement.

• Transparency, which applies unique product codes to verify authenticity.

• Project Zero, which allows verified brands to directly remove counterfeit listings.

Nintendo likewise invests heavily in monitoring and enforcement, both internally and through external partners, to combat counterfeit distribution and protect the integrity of its products and reputation.

LEGAL ISSUES 

The plaintiffs raised several causes of action, including trademark infringement, false designation of origin, violation of Washington's Consumer Protection Act, and a request for a permanent injunction.

1. Trademark Infringement
   To prove infringement, plaintiffs must establish (1) ownership of a valid trademark, and (2) that defendants' unauthorized use of that mark is likely to cause consumer confusion. Federal registration provides prima facie evidence of validity and enforceability. See Levi Strauss & Co. v. Blue Bell, Inc., and Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc.

   Nintendo provided evidence of 27 registered trademarks, as well as product samples confirming that the defendants' amiibo figurines were counterfeit.

2. False Designation of Origin
   Under the Lanham Act, plaintiffs must show that defendants used a false designation or misleading description likely to confuse consumers about a product's origin. See Freecycle Network, Inc. v. Oey. The defendants' use of Nintendo's marks to market fakes constituted clear misrepresentation.

3. Violation of the Washington Consumer Protection Act
   Plaintiffs demonstrated that the sale of counterfeit goods was an unfair or deceptive act in commerce, affected the public interest, and caused injury to business reputation. See Panag v. Farmers Ins. Co. of Washington.

4. Permanent Injunction
   Plaintiffs must show that (1) they suffered irreparable injury, (2) monetary damages are inadequate, (3) the balance of hardships favors equitable relief, and (4) the public interest would not be harmed. See eBay Inc. v. MercExchange.

   The court found all these factors satisfied and agreed that an injunction was warranted to protect consumers and Nintendo's brand reputation.

JURISDICTION

The defendants were foreign sellers, so the court examined whether it had personal jurisdiction. It found that jurisdiction was proper because:

1. The defendants agreed to Amazon's Business Solutions Agreement, which includes consent to jurisdiction in cases involving IP misuse.

2. They purposefully directed their commercial activities at the United States by using Amazon's U.S. platform and targeting American buyers.

3. The plaintiffs' injuries arose directly from those forum-related activities.

Citing the Ninth Circuit's three-part test in Schwarzenegger v. Fred Martin Motor Co. and the Calder v. Jones “effects test,” the court held that the defendants' online conduct was expressly aimed at the United States and caused foreseeable harm here.

DEFAULT JUDGEMENT AND THE EITEL FACTORS

Since the defendants failed to appear, the court analyzed the Eitel factors to determine whether default judgment was appropriate. It found each factor favored Nintendo and Amazon.

1. Prejudice to Plaintiffs
   Without default judgment, plaintiffs would have no means to obtain relief.

2. Merits of the Claims and Sufficiency of the Complaint
   Plaintiffs' allegations and supporting evidence proved the validity of their claims.

3. Amount at Stake
   Defendants sold over 2.3 million dollars in counterfeit amiibo products. Given the scale of their operation, significant damages were appropriate.

4. Dispute of Material Facts and Excusable Neglect
   None existed because the defendants failed to respond.

5. Policy Favoring Decision on the Merits
   Although courts prefer decisions on the merits, that policy was outweighed by defendants' complete inaction.

DAMAGES AND INJUNCTIVE RELIEFS 

Nintendo sought statutory damages under the Lanham Act, ranging from one thousand to two million dollars per infringed mark, totaling up to fifty-four million dollars for 27 trademarks. They requested an award of 7,030,158 dollars, roughly triple the total sales of counterfeit goods, to ensure adequate compensation and deterrence.

The court found this amount reasonable, noting that the defendants' conduct was deliberate and deceptive, and that such damages were necessary to discourage future counterfeit activity.

A permanent injunction was granted to stop the defendants from manufacturing, marketing, or selling counterfeit Nintendo products, whether directly or through third-party platforms.

BROADER IMPLICATIONS

This case highlights several important points for brand owners and online sellers:

1. Online marketplaces can establish personal jurisdiction over foreign sellers when counterfeit goods are aimed at U.S. consumers.

2. Anti-counterfeiting programs such as Brand Registry and Transparency are essential tools but not foolproof.

3. Companies must continue monitoring third-party marketplaces and enforcing their IP rights proactively.

4. Courts are willing to impose substantial statutory damages to punish willful infringers and protect the public.

5. Ignoring a U.S. lawsuit can result in significant financial exposure and permanent injunctions.

CONTACT A TRADEMARK INFRINGEMENT ATTORNEY

Since 2004, Vondran Legal has been a national leader in trademark and copyright enforcement. Our firm has handled over one thousand infringement matters, including counterfeit enforcement, Amazon and eCommerce disputes, DMCA takedowns, and federal court litigation.

If your business or brand is facing trademark misuse, counterfeit sales, or unfair competition, contact Vondran Legal for a no-cost initial consultation at (877) 276-5084 or visit www.VondranLegal.com.