Confronting Trademark Counterfeiting: What s A Brandowner To Do?

Transcription

1 Confronting Trademark Counterfeiting: What s A Brandowner To Do? Brian W. Brokate Gibney, Anthony & Flaherty, LLP Intellectual Property Owner s Association 2010 Annual Meeting September 12-14, 2010 Atlanta, GA

2 Options Available Today s Premise When in Doubt Evaluate Your Target Cease and Desist Letters Civil Action Obtaining the Civil Seizure Order Update: Tiffany v. ebay Criminal Action

3 Today s Premise The target is manufacturing or distributing a product bearing a mark that is identical to or substantially indistinguishable from your registered trademark as defined by 15 U.S.C (d)(i)(b) What are your options?

4 Do Nothing Imitation is the sincerest form of flattery Prepare for the consequences

5 Evaluate Your Target Brick and mortar Website Street peddler

6 Cease and Desist Letters What Requests voluntary surrender of counterfeit merchandise How Should be delivered in a manner to evidence receipt by target Why Cost effective Effective for certain targets Provides notice Establishes willfulness

7 Civil Action A person who uses a counterfeit mark shall be liable in a civil action 15 U.S.C (i) Civil action without a seizure order can be used against targets who are not candidates for a civil seizure

8 Obtaining the Civil Seizure Order

9 Obtaining the Civil Seizure Order Proceed with Caution Must meticulously follow each and every step required by 15 U.S.C The court MAY grant an ex parte order providing for Seizure of goods and counterfeit marks Means of making such marks Records documenting manufacture, sale or receipt of such goods.

10 Obtaining the Civil Seizure Order To grant a seizure order, court must find: Reasonable notice to the United States Attorney

11 Obtaining the Civil Seizure Order Sufficient bond posted

12 Obtaining the Civil Seizure Order Order other than ex parte seizure order is not adequate

13 Obtaining the Civil Seizure Order No publicity

14 Obtaining the Civil Seizure Order Use of a counterfeit mark

15 Obtaining the Civil Seizure Order Immediate and irreparable injury

16 Obtaining the Civil Seizure Order Matter to be seized will be there

17 Obtaining the Civil Seizure Order Balance of harms

18 Obtaining the Civil Seizure Order If notice received, the person who is target of the seizure order would destroy, move or hide the goods You can t find my stuff. I got notice. Na, na, na, na, na, na!

19 Obtaining the Civil Seizure Order Wrongful Seizure counterclaim

20 Update: Tiffany v. ebay 1. The Second Circuit Holding No direct trademark infringement affirmed No contributory trademark infringement- affirmed No dilution affirmed False advertising remand for further proceedings, but just yesterday, Judge Sullivan dismissed the claim.

21 Update: Tiffany v. ebay 2. No Contributory Trademark Infringement The focus of the Second Circuit opinion was the issue of contributory infringement

22 Update: Tiffany v. ebay 3. The Inwood Test The Court applied the test for contributory infringement set forth in the Supreme Court Inwood case: Inwood Laboratories Inc. v. Ives Laboratories Inc., 456 U.S. 844, 214 (1982)

23 Update: Tiffany v. ebay 4. The Second Circuit View a service provider must have more than general knowledge The Court pointed to ebay s constantly evolving strategies to counter fraud on its site.

24 Update: Tiffany v. ebay 5. The Second Circuit s Conclusion General knowledge that some of the goods listed on its website might be counterfeit did not subject ebay to liability. 6. Tiffany has petitioned the Supreme Court to accept certiorari (August 27, 2010), ebay has elected not to respond.

25 Criminal Enforcement Counterfeiters are organized criminals who hide their activities and assets well Call the Feds

26 Criminal Enforcement Federal law enforcement ICE CBP FBI CCIPS IPR Center US Attorney s Office 18 U.S.C and consider tax fraud, money laundering, smuggling, RICO, etc.

27 Confronting Trademark Counterfeiting: What s A Brandowner To Do? Brian W. Brokate Gibney, Anthony & Flaherty, LLP Intellectual Property Owner s Association 2010 Annual Meeting September 12-14, 2010 Atlanta, GA