Enforcement

Many brand protection tools and technologies from third party vendors can be used and administered by a non-lawyer working in the IT, marketing, or operations department. To maximize the effectiveness of these tools it’s best that SMEs retain knowledgeable legal counsel to use the tools or provide guidance regarding their findings – one who has expertise in intellectual property rights management and enforcement. Legal counsel can help a brand client understand the difference between types of infringements, what constitutes “fair use,” what trademarks are “generic,” what is a “grey market” product, or what might be a “false positive” detection result. This specialized knowledge is important for making enforcement efforts efficient and effective.

International anti-counterfeiting and IP protection service providers not only can help you detect counterfeits and infringing goods online, but they can also help you design, develop, and implement effective anti-counterfeiting and brand protection programs. You can also undertake enforcement on your own. Here are a few recommendations.

Once you have identified the counterfeiter, whether he/she is operating a physical store or a website, you should send a “cease and desist” letter demanding that the owner of the store or website cease infringing your intellectual property rights.

Cease and desist letters do not have to be in any specific format but, at a minimum, should include the following elements:

• Identify you as the trademark or copyright holder and brand owner.
• Identify the specific IP being infringed and where it is occurring (be sure to include the URLs (domain names), or screenshots of the counterfeit items.
• A demand to immediately “cease and desist” publication or display of the counterfeit goods or infringement.
• A demand that the infringer confirm within a few days that the infringing content has been removed.

If you do not get a response from the infringer or do not see the counterfeit items removed or deleted, you may need to consult with your legal counsel on next steps to enforce your rights under the laws of your jurisdiction.

Many counterfeiters use your images/photographs of your product in their counterfeit listings. This gives you an opportunity to quickly and efficiently take these listings down on the basis of copyright infringement.

In the United States, a DMCA claim, also called a DMCA “takedown notice,” is a complaint made against an online content creator who is infringing your copyrighted work – for example using an image of your product on a website selling counterfeit products. The Digital Millennium Copyright Act (DMCA) is a set of laws in the US aimed to protect copyrighted content on all digital mediums. You can send the takedown notice to the website owner if their email address or mailing address appears on the website or alternatively, you can send the notice to the company that is hosting the website. You can find the name of the hosting service provider by looking it up in the WHOIS records (see Helpful Link above). The takedown notice should contain important information such as your information and statement of your copyright interest, the URL where the infringement is found and a description of the infringement. In the box below, we have provided a template for composing a DMCA takedown notice. After receiving a notice, a hosting services provider or content creator must remove the infringing work or else respond with a defense of the creator’s use of the copyrighted work. There are no fees to file a DMCA complaint.

To Whom It May Concern,

The following information is to assert my rights and request a removal of allegedly infringing web content under the Digital Millennium Copyright Act (DMCA). I am contacting you as the agent for the site where the infringing content currently appears. This is a Notice of Infringement as authorized in §512(c) of the U.S. Copyright Law.

I am the copyright owner of the content, and the following information is true and accurate.

1. The original work, for which I own the copyright, appears, with my permission, at the following locations online: (List the URLs where your original and work appears and is authorized)
2. I have attached copies of my original copyright work to help with your evaluation and decision-making process.
3. The allegedly infringing work can be found in the following locations online: (List the URLs where the infringing work is currently located)
4. My contact details are as follows: (List all contact details including your address, preferred phone number, and email address)
5. The contact details of the alleged infringer are: (List any contact details you were able to find on the U.S. Copyright Office website or WHOIS)
6. I have a good faith belief that the use of the above copyrighted works that appears on the website for which you are the DMCA agent is not authorized by the copyright owner, its agent, or by law.

I declare, under penalty of perjury, that this notice is true and correct and that I am the copyright owner entitled to exclusive rights which I believe are being infringed.

Signed this ________ day of ___________, 20_____ in (Your City, State, Country).

(Your Signature or eSignature)

Counterfeiters sometimes register domain names that are confusingly similar to domains you have registered for your business; for example registering a misspelled domain name “UNDERARMOR.COM” to sell Under Armour counterfeit athletic apparel. If you detect a domain name that is infringing your brand or trademark, you can file a complaint under the Uniform Dispute Resolution Policy (UDRP). Unlike filing DMCA takedown notice however which doesn’t have a fee, filing a UDRP complaint with an arbitration forum costs approximately $1500. The benefit of making the filing, however, is that if you prevail against the infringer, the domain name is transferred to you which takes the domain name out of circulation and use by another infringing party.

Many counterfeit goods are sold by unauthorized third-party sellers using popular e-commerce or social media platforms. Most major platforms have their own detailed processes for reporting sales of counterfeit goods. SMEs and brand owners must follow these processes if they wish the platform to act against the illegal seller on the company’s behalf.

Each e-commerce platform provider has its own requirements for submitting a complaint regarding infringements or counterfeits. Please make sure you satisfy all the requirements for a submission when you make a report. Failure to include all the information requested will result in the complaint being rejected or not processed properly. Make sure you keep a copy of all the information you provide, the date you submitted the complaint and any confirmation receipt you receive acknowledging your submission. Also, it’s good practice to save screenshots of the counterfeit products you find on the platform, the name of the unauthorized seller, and any associated URLs linked to the pages where the counterfeits appear.

With the information above collected and recorded, you can contact the platform and file your complaint. Below is a convenient chart with links to public reporting links.

For each enforcement action you take to protect your brand, whether it be sending a Cease-and-Desist letter or a DMCA takedown notice, you should maintain a record of your actions. Keep all of the evidence you have collected to prepare those complaints including screenshots of the counterfeit products, the URLs where they are located, the seller’s contact information or seller IDs, and other information that is useful for law enforcement purposes, legal actions, and future complaints against repeated unauthorized sellers and non-compliant ecommerce or social media platforms.

Finally, if you are selling products on ecommerce or social medial platforms, it is helpful to cultivate a personal relationship with individuals working on brand protection and anti-counterfeits issues at those companies. If you don’t know who to call or email to set up a meeting or conversation, contact IACC and ask for information on whom to reach out to share your experience, concerns, and anti-counterfeit activities. Having a good relationship with platforms may help you get expedited responses to your complaints.

Law enforcement can be categorized by jurisdiction. Each country will have local references to law enforcement, but they generally fall into three tiers: local, state, and federal or national. In the U.S., local police or sheriff’s offices cover a county, city, or town. State authorities include the state police or state attorney general. Federal authorities include the FBI, Customs and Border Protection (“CBP”), and Homeland Security Investigations (“HSI”). Some IP offenses, such as illegally importing counterfeit goods, may fall under the exclusive jurisdiction of federal authorities.

Depending on the jurisdiction and type of the illegal activity, you’ll need to meet with the appropriate agency to report the crime. Determine what the elements are of the crime you wish to report and the extent of the infringement. This is where having registered your IP early on will be useful, if not necessary. Be prepared to show relevant IP registration documents.

The authorities will assess the potential case to determine the existence or seriousness of the criminal violation, and their ability to investigate and successfully present it to a prosecutor. Some law enforcement agencies, especially at the local level may not be familiar with IP cases and you may have to provide them some basic IP education. Be prepared to demonstrate that a crime has occurred and that you (brand) are the victim. Know which law has been broken in the jurisdiction in which you’re taking action and what your IP covers. For example, if you’re contacting a state or local agency, cite the laws of that state. For Federal agencies, cite the appropriate Federal criminal code. Value thresholds for federal cases are set much higher than local or state jurisdictions. We strongly advise you to engage legal counsel and assistance with these cases.

Provide information that supports your claim; undercover purchases or “buys” you have made and any evidence you have collected.

Other factors to consider with criminal cases:

• Criminal cases work differently and can take longer.
• In a criminal case, the police and eventually the prosecutors are in control. From the initial investigation, arrest, seizure, legally sufficient authentication affidavits, arraignment, grand jury, hearings, and trial, you will need to assist law enforcement with areas such as testimony, product samples, relevant product information, etc in a timely manner. If at some point in a criminal investigation, counterfeit products are seized as evidence, some jurisdictions may require the brand to pack, transport and store the counterfeit products until the case’s ultimate adjudication and the evidence is no longer needed. Consider collaboration with other brands to share costs.
• Another factor to consider is that police and prosecutors will usually inform the public through news media about arrests, seizures, and prosecutions. Some brands would rather not publicize the counterfeiting issues associated with their products. They believe such publicity could negatively impact its sales, stock performance, erode the public’s trust in the product and increase liability. Other brands take an open, inclusive approach to brand enforcement by educating consumers in order for them to make informed purchasing decisions. 
• As with any criminal case, “discovery” could reveal your brand’s trade secrets or give counterfeiters confidential information thereby defeating your safeguards.

Law enforcement agencies around the world conduct regular operations to stop counterfeiting activities. As a business owner, you can participate in these operations. In the Appendices, several ongoing international law enforcement operations are described. To maximize the effectiveness of a company’s participation in a law enforcement operation it’s important to know and follow these key recommendations:

• Don’t leave the submissions to the last minute as they may not be processed in time
• The documentation requirement can vary wildly from operation to operation; be prepared to sign affidavits, and/or provide copies of ID and documents in support
• The law enforcement initiatives should be considered an additional support option rather than a sole or primary option as they will involve ongoing investigations which may not result in immediate action or results
• Be aware of jurisdiction – if your initiative is a EUROPOL initiative do not submit domain names that are outside of Europe as they will not be investigated
• The more information supplied the better your submission will be received by law enforcement

Also please know that law enforcement typically will not provide feedback relating to a company’s submissions, however they do provide overall figures and data relating to offline/online seizures, arrests and take downs.

• Choose a point of contact and respond in a timely manner. Some brands choose an outside investigator or consultant to be the POC.
• Cooperate with customs when information or authentication is requested.
• Create training materials to help customs identify fake and genuine products. Keep information simple and easy to remember since customs are often dealing with hundreds of brands and products.
• Engage with and train customs (and law enforcement) regularly. Training is an important component in the fight against fakes. Whether you do it on your own or participate in the IACC’s Law Enforcement Training Program, we highly recommend that you engage with and maintain relations with customs authorities. Doing so enables you to explain the latest methods of authentication, changes in manufacturing or enhanced security methods presently in use.

U.S. Customs & Border Protection
Working with Customs & Border Protection is a low cost and effective way to harness the power of CBP to stop infringing goods at the border.

• Ensure your brand’s trademark is registered and maintained with the United State Patent & Trademark Office. https://www.uspto.gov/trademarks.
• Next, ensure that you record your federally registered trademarks and copyrights with CBP through the e-Recordation program (https://iprr.cbp.gov/). CBP prioritizes its enforcement on IP rights that have been recorded with the agency.