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Dealing with Counterfeit at Retail Dave Simpson, Director of Security Nike, Inc. Richard Nessary, Senior Intellectual Property Counsel, e-Bay Brian Brokate,

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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:

1 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

2 Counterfeits at Retail

3 Retail Venues Street seller, van car trunk Low end flea market Organized market Mall Kiosk Low end brick and Mortar Established retail Legitimate accounts

4 Obtaining the intelligence Your sales force Retail partners Consumers services process Internal Customer Service Law Enforcement Customs

5 Now what do I do Civil v. Criminal –Elements similar –Make buy –Establish the product is counterfeit –Establish knowledge –Serve Cease & Desist

6 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

7 Challenge opportunities Licensees Product identification What are your trademark and are they current Providing certified copies Do you need a state registration

8 Investigators Develop good investigator network Training investigators Proper evidence handling Proper report writing

9 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

10

11 Brought to you by: Sponsored by: KNOCK IT OFF! Brands and the Counterfeiting Quandary November 14, 2006 Cornerstone Sponsor:

12 Knock It Off! Brands and the Counterfeiting Quandary Tuesday, November 14, 2006 Fashion Institute of Technology New York City

13 The Role of Outside Counsel Brian W. Brokate Gibney, Anthony & Flaherty, LLP

14 What is a Trademark?: A Refresher Course

15 A Trademark... Is a Source Identifier Represents Quality Represents Investment Is a Word, Design, Symbol

16 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

17 Counterfeiting is narrower than infringement. What is Trademark Counterfeiting?

18 A counterfeit mark is “spurious”, meaning “identical to or substantially indistinguishable from...” What is Trademark Counterfeiting?

19 A mark that is registered in the USPTO for such goods GENUINE COUNTERFEIT What is Trademark Counterfeiting?

20 What is Not a Counterfeit Mark? Manufacturer was authorized to use the mark. Overruns or Irregulars Gray Market Goods

21 Where are Counterfeit Goods Sold?

22 Street Vendors

23 Retail Stores

24 Flea Markets

25 House Parties

26 Internet

27 Players on the Team

28 Corporate Executive Awareness Make Company Resources Available

29 In-House Counsel Coordinate Strategize Manage

30 Outside Counsel Quarterback Advice

31 Private Investigator

32 Investigator Must Be Experienced & Credible The Investigator

33 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

34 Tailors the Investigation Act as intermediaries The Investigator

35 Arrows in the Quiver: The Tools

36 Arrows in The Quiver: A Summary Register Your Trademark and Copyrights Record Your Trademarks with US Customs Civil Enforcement Criminal Enforcement Internet Enforcement Legislation

37 Register Your Trademarks and Copyrights

38 Record Your Trademarks With US Customs

39 Civil Enforcement Cease and Desist Letters Civil Action Ex Parte Temporary Restraining and Seizure Orders Third Party Liability

40 Civil Enforcement Cease and Desist Letters May Stop Problem; Significant Notice Purpose

41 Civil Enforcement Civil Action Who to Sue Vendors Fixed Retail Websites Landlords

42 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.

43 Obtained without notice to a defendant. Specific findings before a seizure order can be granted.

44 Make the following showing to the Court on your papers alone.

45 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

46 Criminal Enforcement Federal, State and Local Law Enforcement

47 Internet Enforcement Websites Auction and Listing Sites Tiffany v. eBay craigslist

48 Legislation

49 Conclusion Overall, use your outside counsel as your confidante, counselor and compass. Realistic with advice Willing to disagree or caution on a step Willing to tell you when not to sue.

50 The Role of Outside Counsel Brian W. Brokate Gibney, Anthony & Flaherty, LLP


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