Beyond the Brick-and-Mortar Paradigm:

The Legal and Procedural Foundations of Schedule A Litigation in Combating Online Counterfeiting as Distinct from Traditional Trademark Enforcement

Kari Kammel, Jessica Boeve

ABSTRACT

This Article analyzes the emergence and evolution of Schedule A litigation as a procedural mechanism for combating online trademark counterfeiting. In response to the proliferation of anonymous infringers operating through third-party e-commerce platforms, plaintiffs have increasingly relied on expedited judicial remedies—including ex parte temporary restraining orders, asset freezes, and electronic service—to enforce intellectual property rights. The authors examine the doctrinal foundations of these cases, focusing on joinder under Rule 20, personal jurisdiction over foreign defendants, and the equitable basis for broad injunctive relief. Drawing on historical interpretations of the Federal Rules of Civil Procedure and recent district court decisions, the Article argues that Schedule A litigation represents a legitimate and scalable adaptation of existing procedural tools to meet the challenges posed by law-disruptive technologies. It further considers the implications of this litigation model for due process, judicial economy, and the future of transnational IP enforcement.

This research was conducted independently by the Center for Anti-Counterfeiting and Product Protection (A-CAPP) in part through a research gift from Greer, Burns and Crain.

This paper has been accepted for publication in Fordham Intellectual Property, Media & Entertainment Law Journal, Volume XXXVI. To cite this research: Kammel, Kari, Boeve, Jessica, Beyond the Brick-and-Mortar Paradigm: The Legal and Procedural Foundations of Schedule A Litigation in Combating Online Counterfeiting as Distinct from Traditional Trademark Enforcement (September 19, 2025). Available at SSRN: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=5508098

EXECUTIVE SUMMARY

Understanding Schedule A Litigation

Overview

Online counterfeiting has evolved into a global threat: it undermines consumer safety, brand reputation, and legitimate commerce. Traditional enforcement mechanisms—designed for physical storefronts—are ill-equipped to handle the scale and anonymity of digital counterfeit operations. Schedule A litigation offers a modern legal remedy, allowing rights holders to enforce their rights against numerous anonymous online sellers through a single federal action. This approach leverages procedural efficiencies and equitable relief to disrupt counterfeit networks swiftly and effectively.

Legal Foundations

Schedule A litigation is grounded in several key legal provisions:

The Lanham Act provides civil remedies for trademark infringement and counterfeiting
The Federal Rules of Civil Procedure (FRCP) play a pivotal role:

Rule 20 allows for the joinder of defendants engaged in similar conduct,
Rule 4(f)(3) permits electronic service of process—especially critical for foreign defendants
Rule 65 authorizes temporary restraining orders (TROs) and preliminary injunctions to preserve assets and halt infringing sales

Together, these tools form a robust framework for tackling online counterfeiting.

Data, Strategy & Industry Implications

Counterfeiting by the Numbers

The scale of online counterfeiting is staggering. According to OECD estimates, counterfeit goods account for approximately $467 billion in global trade. The A-CAPP Center’s consumer survey reveals that 71% of U.S. consumers have unknowingly purchased counterfeit products online, and 22% report experiencing harm as a result. The rapid growth of online third-party seller marketplaces—such as Amazon, whose revenue from these sellers surged from $11.75 billion in 2014 to $156.15 billion in 2024—has created fertile ground for counterfeiters to operate with minimal oversight.

Core Components of Schedule A Cases

Schedule A litigation relies on several procedural innovations:

Sealed complaints prevent defendants from hiding assets or altering product listings before court intervention.
Screenshot evidence substitutes for the physical counterfeit goods, allowing plaintiffs to demonstrate infringement efficiently.
Asset restraints freeze funds held by platforms or payment processors, ensuring that financial remedies remain viable.
Electronic service of process ensures timely notification to foreign defendants.
Joinder of multiple sellers promotes judicial economy by consolidating similar claims into a single action.

Challenges & Critiques

While Schedule A litigation is effective, it faces criticism from some scholars and there is inconsistent treatment across jurisdictions. Critics argue it may be unfair to defendants or burdensome to courts. However, the research shows that:

Platforms often limit access to seller data, making pre-litigation investigation difficult.
Judicial interpretations of joinder and asset freezes vary across districts, creating uncertainty for plaintiffs.
Legislative efforts such as the INFORM Consumers Act have introduced transparency requirements, but enforcement remains weak.
The SHOP SAFE Bill—designed to impose liability on platforms—has yet to pass, leaving a regulatory gap in online brand protection.

Strategic Takeaways for Industry

For brand owners and legal teams, Schedule A litigation offers a useful strategy to combat online counterfeiting. Success depends on rigorous documentation, including screenshots, platform data, and evidence of consumer harm. Engaging legal counsel with experience in cross-border enforcement is essential. Industry stakeholders should also advocate for stronger platform accountability and legislative reform to support more consistent and effective enforcement.

This research was conducted independently by the Center for Anti-Counterfeiting and Product Protection (A-CAPP) in part through a research gift from Greer, Burns and Crain.

ESSENTIAL INSIGHTS

OVERVIEW FOR INDUSTRY STAKEHOLDERS

Online counterfeiting is a growing threat to brands, consumers, and global commerce. Traditional legal tools—designed for brick-and-mortar infringement—are struggling to keep up with the scale and speed of counterfeit sales on e-commerce platforms and social media.

This research explains how Schedule A litigation has emerged as a powerful and efficient legal strategy to combat online counterfeiting, especially when dealing with large numbers of anonymous sellers.

WHAT IS SCHEDULE A LITIGATION?

Schedule A litigation refers to a legal approach where trademark owners file lawsuits against multiple anonymous online sellers—often foreign-based—who are selling counterfeit goods. These sellers are typically identified only by their online store names, domain names, or seller aliases.

This method allows brand owners to:

Freeze assets quickly
Remove infringing listings
Serve defendants electronically
Seek damages and injunctive relief

WHY IT’S NEEDED

Online counterfeiting is exploding: In 2025, global trade in counterfeit goods was estimated at $467 billion, or 2.3% of world trade.
Consumers are harmed: A 2023 A-CAPP survey found that 71% of U.S. consumers had purchased counterfeit goods online, and 22% reported injury or harm.
Platforms lack transparency: Many e-commerce sites allow sellers to operate anonymously, making enforcement difficult without court intervention.
Traditional litigation is too slow: Counterfeiters often move assets or change store names before they can be caught.

KEY LEGAL TOOLS IN SCHEDULE A CASES

Temporary Restraining Order (TRO): Courts can issue TROs without notifying defendants to prevent them from hiding assets or deleting listings.
Asset Seizure: Courts can freeze financial accounts linked to counterfeit sales, even if the seller is overseas.
Electronic Service: Courts allow service via email or other digital means when traditional service is impractical.
Joinder of Defendants: Multiple sellers can be sued together if they are engaged in similar infringing behavior, saving time and resources.

WHY IT MATTERS FOR BRANDS

Efficient enforcement: Schedule A cases allow brands to act quickly and decisively against counterfeiters.
Financial recovery: Brands can recover profits from counterfeit sales through asset freezes and court orders.
Consumer protection: Removing dangerous or deceptive products from online marketplaces helps protect customers and brand reputation.
Legal precedent: Courts have consistently upheld the use of Schedule A litigation as a valid and equitable remedy.

CHALLENGES AND OPPORTUNITIES

Courts have discretion to allow joinder and electronic service.
The Federal Rules of Civil Procedure support efficient and just outcomes.
Legislative updates like the INFORM Consumers Act are beginning to address platform accountability—but enforcement is still limited.

CONCLUSION

Schedule A litigation is a critical tool for modern brand protection. It adapts traditional legal remedies to the realities of online commerce, allowing trademark owners to respond to counterfeit threats swiftly and effectively. As counterfeiters continue to exploit digital platforms, courts and policymakers must support and refine this approach to safeguard consumers and uphold brand integrity.

This research was conducted independently by the Center for Anti-Counterfeiting and Product Protection (A-CAPP) in part through a research gift from Greer, Burns and Crain.