Posts Tagged: "counterfeiting"

In early May, the online creator advocacy group Content Creators Coalition (c3) published a digital ad calling on Congress to hold hearings to look into various illegal activities which have been enabled by abuse of online platforms maintained by Google. This push for Congressional oversight of Google comes after Facebook CEO Mark Zuckerberg appeared in hearings before the U.S. Senate and the U.S. House of Representatives in early April. Various matters concerning Capitol Hill’s policymakers during those hearings are only more pronounced with regard to Google, c3 argues.

Counterfeit products are an enormous problem for businesses all over the world. Counterfeiters rip off name brand products, making cheap knock-offs, easily (and conservatively) costing many hundreds of billions of dollars each year… For example, according to RedPoints, an online piracy and brand abuse monitoring company, during 2015 Facebook accounted for only 2.2% of counterfeits sales of football jerseys for the clubs they were monitoring. That number grew to 46.3% by 2017. With the infringements on Facebook typically being smaller in scale, RedPoints comes to the conclusion that counterfeiters have not merely left one channel for another, but instead are using multiple sales channels and diversifying their efforts.

the U.S. Customs and Border Protection (CBP) announced that it, along with U.S. Immigration and Customs Enforcement (ICE), had seized a record number of counterfeit and pirated products which violated intellectual property rights last year. Collectively, CBP and ICE seized a total of 34,143 shipments of goods during 2017’s fiscal year, an increase of 8 percent over the total number of counterfeit shipments seized during 2016. About 90 percent of the shipments seized were in the express carrier and international mail environments. According to the law enforcement agencies, the total estimated manufacturers’ suggested retail price (MSRP) for the genuine versions of those good reached $1.2 billion.

ACTION for Trade asks Lighthizer to consider advocating for strong IP protections and robust enforcement to benefit a diverse group of industries, including digital content producers and distributors, biopharmaceutical firms and software developers… Along with strong patent policy, ACTION for Trade calls for the establishment of regulatory data protection (RDP) provisions which are consistent with U.S. law, especially where medical innovations are concerned. The letter to USTR Lighthizer notes that U.S. law recognizes a 12-year period of RDP for biologic treatments and a 5-year period of RDP for small molecule treatments. Such provisions would allow the original innovators of novel medicines to submit data on the safety and efficacy of medicines while shielding that data from others who might produce generics based on the data.

According to the Office of the United States Trade Representative, imports of counterfeit and pirated physical products are valued at about half a trillion dollars, or about 2.5 percent of all imports around the globe… The recent review of notorious markets by the USTR identifies 43 such markets offering counterfeit or pirated goods either through physical stores or online channels. A total of 25 notorious markets identified in the report operate in the online space as websites either facilitating infringing conduct or lacking consumer privacy safeguards, some of which even enable the installation of malware on consumer computers. This malware can include remote access Trojans (RATs) which can steal sensitive personal information, like bank account information, or gain control of computer hardware.

The issues I will be watching in 2018 other than Oil States are as follows: (1) What does the new Director of the USPTO do with respect to reforming the PTAB? (2) Will the USPTO adopt a code of judicial ethics for PTAB judges? (3) Will the U.S. drop out of the top 10 countries for patent protection in the annual U.S. Chamber IP Index? (4) How will the Federal Circuit resolve Eleventh Amendment sovereign immunity and the assertion of sovereign immunity by Indian Tribes? (5) Will the Federal Circuit continue its unprecedented disposition of cases without an opinion by relying on Rule 36 summary affirmance? (6) Will Conservative groups become even more vocal advocates of a strong patent system?

Without a comprehensive trademark policing regime in place, which continually checks quality, authorized users, and is keeping a close eye on counterfeits, the trademark can become significantly damaged.

Not all trademarks are created equal. While every state allows you to obtain a trademark registration, a federal trademark registration provides the greatest rights. This is because when you obtain a United States federal trademark your rights will exist throughout the country, and not just in one particular geographic locality. With a state trademark you obtain rights to your immediate geographical area only, not the entire state, which is an important consideration… This does not, however, mean that state trademarks are useless. It does mean that you should not only obtain a state trademark.

At issue in the trademark infringement suit is Amazon’s sale of counterfeit wheel center caps bearing distinctive Mercedes-Benz trademarks… Daimler argues that Amazon “facilitates the sale of an exorbitant number of counterfeit and infringing goods” through its platform, counterfeit activity which has increased since 2015 when the company began inducing Chinese manufacturers to list on its U.S. and European e-commerce platforms. Daimler notes that lawsuits over counterfeit products have been filed against Amazon by well-known consumer brands including a February 2017 suit filed by French luxury goods brand Chanel against the American e-commerce giant.

Branded apparel companies face many challenges in protecting their IP assets, including the unavailability of copyright protection for fashion designs, the length of time necessary to secure a design patent, the challenge of securing secondary meaning required for a trade dress claim before the market is flooded with knock-offs, and the geographic and practical impediments to pursuing counterfeiters, who are often foreign-based and/or judgment proof.  Perhaps mindful of the limited statutory protections for IP assets and the significant damages being incurred at the hands of infringers, various courts, particularly in the Second and Ninth Circuits, have in recent years taken steps to enhance the alternatives available to apparel companies confronted by the scourge of knockoffs.  Specifically, such court decisions have (1) expanded the scope of potential contributorily liable actors, and (2) broadened the means of freezing and attaching assets of foreign counterfeiters.

Many states have statutes that make counterfeiting a state crime, but often only if the trademark is registered in that state. According to Lo Cicero, state registrations give local prosecutors and law enforcement officers jurisdiction – and they may be more able and willing to tackle local counterfeiters than are busy federal prosecutors. Thus, where budgets will allow and brand owners have significant counterfeit concerns obtaining state trademark registrations in at least several states, including California and New York, could be a worthwhile investment.

I will host a free webinar on Monday, July 10, 2017 at 12pm ET. The title of our discussion is Combating Repeat Infringers, but we will address the issue of counterfeits from top to bottom. Joining me for this webinar will be Maysa Razavi, heading of Anti-Counterfeiting for INTA, Anthony Lo Cicero, a litigator with 40 years of experience relating to trademark enforcement and brand protection, and Joan Porta the Brand Protection Manager for Red Points. We will explore the magnitude of the problem, solutions for dealing with infringers in an online environment, and how if necessary to escalate enforcement to take the fight to Customs and into the courtroom if necessary.

Mark Lopreiato, the inventor of the Forearm Forklift, recorded sales of $4 million in 2008 but since then has seen a 30% drop, which he attributes to cheap replicas available on eBay and Amazon. In point of fact, there have been a number of examples of innovative companies suffering from the sale of replicas on Amazon and other e-commerce sites. In extreme cases, global brands like Birkenstock have stopped business with Amazon and other e-commerce retailers altogether. Sustained pressure on e-commerce sites from both professional and governmental bodies have yielded some results in recent years, with almost every major site now offering some level of IP protection tool or process. This also serves the interest of bigger sites as Amazon, eBay and their Chinese counterpart Alibaba are shielded from legal liability, provided they can offer a timely takedown service for IP owners.

The most recent notorious markets report from the USTR seems to have further galvanized Alibaba into taking action to reduce the number of counterfeit products sold on its e-commerce platforms. In early January, Alibaba filed its first pair of lawsuits targeting retailers selling fake Swarovski watches on the company’s e-commerce platforms. Then in late February, Alibaba released an official corporate statement in which it blamed China’s ambiguous counterfeiting laws for contributing to the problem… Alibaba’s statement goes so far as to equate counterfeiting to drunk driving in terms of how strongly such actions should be criminalized.

The latest estimate from the International Trademark Association (INTA) notes the global impact of piracy and counterfeiting will hit $4.2 trillion (USD) by 2022… While buying a “knockoff” product may not seem to present harm on the surface, a report from the Organization for Economic Cooperation and Development warns that purchasing counterfeit or pirated goods present “a significant economic threat that undermines innovation and hampers economic growth.” … Fire, electric shock, injury and, at times, fatalities are just some of the risks in using a counterfeit product. Within the past few years, several highly publicized electrocution deaths have been linked to counterfeit iPhone adapters.