Presentation on theme: "Dealing with Counterfeit at Retail Dave Simpson, Director of Security Nike, Inc. Richard Nessary, Senior Intellectual Property Counsel, e-Bay Brian Brokate,"— Presentation transcript:
Dealing with Counterfeit at Retail Dave Simpson, Director of Security Nike, Inc. Richard Nessary, Senior Intellectual Property Counsel, e-Bay Brian Brokate, Partner, IPR Group Gibney Anthony & Flaherty
Retail Venues Street seller, van car trunk Low end flea market Organized market Mall Kiosk Low end brick and Mortar Established retail Legitimate accounts
Obtaining the intelligence Your sales force Retail partners Consumers services process Internal Customer Service Law Enforcement Customs
Now what do I do Civil v. Criminal –Elements similar –Make buy –Establish the product is counterfeit –Establish knowledge –Serve Cease & Desist
Criminal process Make buy Establish the item is counterfeit Prepare an affidavit Handle evidence properly Establish knowledge (via C & D) Be willing to travel to testify at no cost to the state. Support investigative process –Trucks, Storage, bag & tag
Challenge opportunities Licensees Product identification What are your trademark and are they current Providing certified copies Do you need a state registration
Investigators Develop good investigator network Training investigators Proper evidence handling Proper report writing
Working with Law Enforcement Training Law Enforcement Establishing the criteria for prosecution Making sure you have local law Seeking support of the prosecutor Cost sharing issues Witness
A Trademark... Is a Source Identifier Represents Quality Represents Investment Is a Word, Design, Symbol
What is Trademark Counterfeiting? Manufacturing or distributing a product bearing a mark that is identical to or substantially indistinguishable from a registered trademark. Trademark counterfeiting is the grossest form of the theft of intellectual property. Crime of the 21 st century
Counterfeiting is narrower than infringement. What is Trademark Counterfeiting?
A counterfeit mark is “spurious”, meaning “identical to or substantially indistinguishable from...” What is Trademark Counterfeiting?
A mark that is registered in the USPTO for such goods GENUINE COUNTERFEIT What is Trademark Counterfeiting?
What is Not a Counterfeit Mark? Manufacturer was authorized to use the mark. Overruns or Irregulars Gray Market Goods
Investigator Must Be Experienced & Credible The Investigator
Counterfeit goods are sold on the street, in retail stores, in flea markets, at house parties, and on the Internet, both in the form of auction sites, such as Ebay, Yahoo!, craigslist, etc., and on stand alone sites. Investigator must have access to all
Tailors the Investigation Act as intermediaries The Investigator
Civil Enforcement Cease and Desist Letters Civil Action Ex Parte Temporary Restraining and Seizure Orders Third Party Liability
Civil Enforcement Cease and Desist Letters May Stop Problem; Significant Notice Purpose
Civil Enforcement Civil Action Who to Sue Vendors Fixed Retail Websites Landlords
Civil Enforcement Ex Parte Temporary Restraining and Seizure Orders An order providing for the seizure of goods and counterfeit marks “involved in the use of a counterfeit mark” in connection with the sale, offering for sale, or distribution of goods and services.
Obtained without notice to a defendant. Specific findings before a seizure order can be granted.
Make the following showing to the Court on your papers alone.
Civil Enforcement Third Party Liability New York City Landlords NY Real Prop. § 231 Contributory or Vicarious Infringers 1. Flea Market Owners 2. ISPs 3. Auction Sites
Criminal Enforcement Federal, State and Local Law Enforcement
Internet Enforcement Websites Auction and Listing Sites Tiffany v. eBay craigslist