creativesolutionsfor combatingonline( counterfeiting · 2014-10-03 · casestudy:beachbody •...
TRANSCRIPT
Creative Solutions for Combating Online Counterfeiting Elizabeth Lai Featherman Mandelbaum Salsburg P.C.
Counterfeit Goods
Counterfeit Goods
Traditional Path for Counterfeit Goods to Reach the Consumer
New Path for Counterfeit Goods to Reach the Consumer
Case Study: Beachbody
• Product – Focus T25 Fitness Kit • MSRP – $119.95 + $19.95 S/H • Available at • Beachbody.com website • Beachbody Coaches • Beachbody Amazon.com web store • 800# from TV Infomercial
Case Study: Beachbody
Fake Site – http://www.FocusT25torrent.com/
https://www.facebook.com/InsanityWorkoutSale
https://www.facebook.com/InsanityWorkoutSale
Combat Tool #1 – Register Your Intellectual Property
• Register your trademark, copyright and/or file your patent applicaVon.
Combat Tool #2 – Record IPR with Customs
• U.S. Trademark RegistraVons and Copyright RegistraVons can be recorded at U.S. Customs and Border ProtecVon (“CBP”)
Combat Tool #2 – Record IPR with Customs
• Chinese Trademark RegistraVons and Copyright RegistraVons can be recorded with the General AdministraVon of Customs in China (GACC).
Combat Tool #2 – Record IPR with Customs
GACC Enforcement of Rights (2 Channels): 1. If rights holder knows an infringing shipment is passing
through a Chinese port, he can noVfy GACC to seize the goods; or
2. Without noVficaVon by the rights holder, GACC may recognize the recorded mark and seize a suspicious shipment.
Combat Tool #2 – Record IPR with Customs
Procedural Treatment once the goods are detained: 1. GACC noVfies the rights holder of the detainment and asks
for posVng of a bond (no less than value of the goods or no more than 100,000 RMB).
2. GACC will conduct an invesVgaVon, and a. If no infringement is found, goods will be released and bond
will be refunded. b. If infringement is found, rights holder is asked to pay a storage
fee and disposal fee. c. If infringement cannot be determined, rights holder has an
opVon to file a suit to have the court to decide, and the rights holder must pay a storage fee.
Customs Recordation of FOCUS T25 http://iprs.cbp.gov/
Combat Tool #2 – Record IPR with Customs
• Work with Customs officials • Review seizure noVces and/or samples of goods quickly • Provide one-‐page informaVonal sheet for Customs’ records • Bring awareness of the commonly spoded features in the counterfeit products
Beachbody: • We rouVnely visit the customs officers at major airports and seaports
• Provide color copies of informaVonal sheets and show comparison of the genuine and counterfeit products.
Combat Tool #3 – Monitor Your Brand Online • New domain registraVons • New websites, aucVon sites and e-‐commerce sites • Social media sites • Online adverVsement, sponsored links and online contents
Combat Tool #4 – Enforce Your Brand
• Cease and Desist Leder to Site Operator
• Take-‐down NoVficaVon to ISP, Social Media Sites and/or
Marketplace Sites
• Leder to Payment Processors
• UDRP to recover domain names
Many popular online-‐retailers and marketplace sites have online tools for reporting infringement.
• Alibaba's AliProtect hdp://legal.alibaba.com/index.htm?site_type=internaVonal&language_id=english&tracelog=newschp_help_ipr
Amazon only offers remedies for copyright holders only.
eBay’s VeriWied Rights Owner (VeRO)
TaoBao’s Small and Medium-‐Sized Enterprises Site – Portal in English
Fake Site – http://www.FocusT25torrent.com/
https://www.facebook.com/InsanityWorkoutSale
Combat Tool #5 – Other Preventive Measures
• Secure the supply chain – Screen vendors!
• Change product design regularly
• Incorporate anV-‐copying mechanism/tags in the product
Questions?
Contact InformaVon
Elizabeth Lai Featherman Mandelbaum Salsburg, P.C.
155 Prospect Ave. West Orange, NJ 07052