How to Make Your Infringement Evidence Standup in Court?

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All too often, a company uncovers the fact that their intellectual property is being misused and they make rash decisions. Their first call to us is, “Hey, someone is selling my products and they are clearly counterfeit.  Can you contact law enforcement and get them arrested?”

Counterfeiting is an intent-based crime and in order for criminal prosecution to be an option, the counterfeiter must be aware and have knowledge that the products they are selling or distributing are in fact counterfeit.

The best course of action is to secure legal assistance and evidence before you play private investigator and potentially hurt your case. With expert counsel, you can collect the evidence that will standup in your court case against the infringer.

The 3 Steps to Proving Counterfeiting Intent

Step 1: Qualified Evidentiary Buy (undercover) – Your experienced, licensed, undercover investigator will purchase the counterfeited items and include all of the necessary documentation to withstand legal scrutiny (Buy Report / Chain of Custody). Additionally they will obtain photos/video and secure statements from the subject to support enforcement actions.  Once the counterfeited item is secure, it can be inspected to verify if it counterfeit or genuine.  It is important to have someone who is trained properly authenticate the product(s) as counterfeit.

Step 2: Cease & Desist Letter -A brand owner can put an individual or company on notice by sending them a Cease & Desist Notice.  Once the C&D Notice is sent a follow-up investigation should be conducted to determine if the infringer is or is not in compliance.

Step 3: Follow-up discreet inspection to to determine if subject is in compliance following C&D.  A second qualified evidentiary buy (undercover) from an alternate front company might be required.

Recommended Reading:

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Infringement Monitoring: Protecting Your Brand from Predators

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Many companies are in such a hurry to get to market with their company launch or latest new product that they overlook a very critical step. Protecting the intellectual property (IP) of the company and enforcing the use of it.  Experts agree that if you don’t protect your IP it can fall prey to those who capitalize on all your hard work and investment. In addition, the courts may not support legal action if you delay in a response to someone using your IP.

The first step in enforcing your brand is to actively conduct searches for potential infringement of your mark.  The common searches include federal and state trademark registrations, domain name registrations and common law uses (Corporate Filings/Fictitious Business Names/DBA’s) of your mark(s).  Many use a commercial search provider like CT Corsearch or Thomson Compumark to handle these types of monitoring services.

How Can We Tell if We Have an Infringement Problem?

Often times, companies are tipped off about infringers or unauthorized resellers by their sales representatives, authorized distributors and/or Google alert-type notifications.

Once potential infringers are uncovered, a business owner will often contact their IP Counsel and discuss the situation.  Your attorney will likely conduct some sort of an investigation prior to preparing and sending a Cease & Desist letter.  Counsel will need to take diligent steps to verify that the product being sold by the alleged infringer is in fact counterfeit or grey market.

The best way to verify the infringement is to engage an investigation firm with experience in IP cases. Specifically, you want to work an experienced firm with front companies used  to make purchases discreetly at the wholesale or retail level.  This will also aid counsel in understanding where the counterfeiter is located and provide additional information (phone, fax, email, products, date of first use, sales, scope, distribution warehouses, etc.).

Avoid Pre-Date Landmines

Attorneys will also need to verify that their client’s use in commerce pre-dates the alleged infringer. In other words, don’t poke the bear until you have well-documented, stand-up-in-court evidence that you were the first to market.

One of the worst things that can happen is that an infringer receives a Cease & Desist letter from a major brand or large company which triggers them to pursue or counter-sue. The major brand or large company may be on the losing side of the argument on the basis that alleged infringer’s use pre-dates the use of the notifying party.

Diligence Pays Off in the End

If infringements are dealt with quickly and effectively a brand owner can restore faith with their resellers, distributors, consumers and brand representatives.  Additionally, infringers that are approached and treated seriously are less likely to continue to infringe on those brands that are enforcing their IP rights.

Recommended Reading:

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Catch All of the Crooks: The Tools You Can Use to Find Infringement Sources

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Once you determine that your products are being infringed upon (counterfeited),  it is time to take action.  Determine how far down the supply chain the products have made it (wholesale, retail, online, eBay, Amazon, Alibaba, etc.) and document all of those outlets.

Once the scope and scale of the issue is determined, it is time to plan your legal strategy with an investigator and legal counsel. The source of the infringing product, which could be a rogue company or just an individual in the supply chain, needs to be isolated and examined when we are talking about diverted/gray market goods.

The most common source of infringing goods is found on the Internet.  Online resellers can quickly and cost-effectively set-up an online presence, market their products and transact business anywhere, any time.  They can also take steps to privatize their domain registration (WHOIS), so as to not disclose the owners name and their office/warehouse location. They will even make up fake names and information in the ‘About ’ portions of their Websites to further mislead buyers and those trying to protect their IP.

6 ways to uncover the source?

  1. Piercing privatized domain registrations via established methods and resources.
  2. Undercover buy and trace.
  3. Search of historical domain name ownership records.
  4. Discreet calls and emails to the infringer
  5. Advanced database research (commercial databases that only investigators have access to)
  6. PIERS (import/export records) searches

 

Recommended Reading:

 

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Social Media Backgrounds- Who Cares?

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According to an article by Buffer, social media is changing and growing every second.  “Every second 2 new members join LinkedIn…Social Media has overtaken porn as the #1 activity on the web.”  The fact of the matter is that social media sites can be a treasure chest of useful information.

A savvy social media investigator can use a variety of tools to find out everything from where people work, to who their friends are, and what they do in their spare time.  The digital footprint left by people on social media can also be useful in tracking their whereabouts, which is extremely useful for investigators that conduct surveillance, asset research and serve legal documents.

Not only is it important to know how to locate information on the web and social media sites, it is necessary that an investigator knows how to obtain all information contained in a profile and be able to preserve it.

Top Uses of Social Media:

Family Law- Preserving and documenting activities of a soon to be ex-spouse

Insurance Claims- Post accident/claim, pre-litigation, prior to surveillance (photographs & activities), & prior to settlement

Non-Profit Organization- Screening board members, donors, & volunteers

Asset Management Protection- Prior to investing in alternative finance offerings (hedge funds, angel investors, etc.)

Threat Assessment Teams- Threat response evaluation, threats to executives, prior to board meetings, prior to meeting with prospective partners (distributors, rep, supplier)

Brand Tarnishment & Threats- respond to and address concerns regarding problems with products including (defects, customer service, counterfeits)

Service of Legal Documents (Service of Process)– develop profile and photos to determine best method and time for service

University & School Threat Assessment Teams- students, faculty & visitors that could pose threats or harm reputation

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Claimant Background Profiles (10-Point Investigation Plan)

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It is often times difficult to accurately assess whether that candidate or claimant is being truthful with their employment background or insurance claim.  When facts are needed to support hiring, or lack of hiring decision as well as prove or disprove whether a claimant is truthfully disclosing their accident or alleged injury.

Either way, an error in judgment and a bad decision based on incomplete information can cost you and your company. (lost revenue, lawsuits and fines)

We dig into the information so you don’t have to and you can feel secure with making a better, informed decision. Here’s what is included in our 10-Point Investigation Plan

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  1. Prior Claims
  2. Driving Record
  3. Professional Networking Sites (LinkedIn, ZoomInfo, Plaxo, Craigslist)
  4. Social Networking Sites (Facebook, Twitter, Google+, MySpace, Pinterest)
  5. Business Filings (Corporations / Fictitious Business Names / DBAs)
  6. Business Phone Listings
  7. Website Ownership
  8. Professional Licenses
  9. Civil and Criminal Case Search
  10. Bankruptcy & Judgments

We can help you locate, verify and preserve information that can be altered or destroyed by an employee or claimant.  Often times we are asked to preserve social media profiles before claimants delete them after they meet with their attorney or have their deposition taken.

This product is offered on a national basis and is a great snapshot at the onset of litigation, when suspicions of fraudulent claims arise and prior to surveillance / subrosa investigations.

Get the Whole Picture of Every Claimant with Background Profiles–Exclusively from Santoni Investigations.

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When product disappears…

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Businesses are evaluated by their ability to deliver products and services to their customers or clients in a timely fashion while maintaining a high level of service and remaining profitable.

The key components of businesses that allow them to deliver on these promises are their supply chains and business processes.  Any disruption to the supply chain or business processes can cause a variety of issues (delays in material deliveries, delayed shipments, increased expenses, unhappy customers).

The Problem:

Unknown male is breaking into the yard of a client and is stealing precious metals at all hours of the night and early morning.  The aluminum that is being stolen has significant value and is costing the company thousands of dollars each week.  Additionally the ongoing theft is causing the employees to be concerned about their safety.

Implications:

Cash flow is impacted, as additional metal must be purchased to meet production goals.  The loss may have to be reported to an insurance carrier, which could cause a spike in premiums.  Employee’s time will be spent viewing security camera footage and possibly being interviewed, which decreases production.  The possibility of the theft being internal or coordinated by a vendor or partner must be addressed and investigated.  Time and resources must be devoted to investigate and stop the theft.

Process:

  • Review and preserve security camera footage
  • Interview neighboring business and request to review security camera footage
  • Stationary surveillance to identify suspect(s)
  • Conduct research of vehicle ownership records to positively identify the suspect
  • Notify law enforcement
  • Background investigation conducted on suspect to determine if he/she has a criminal history
  • Provide statements and turnover evidence to law enforcement (photos, video, research)
  • Training/Consultation on best practices to mitigate future theft

Results:

  • Arrest/Conviction of suspects
  • Secure facility
  • Restore employee’s faith in the company and overall personal safety
  • Bottom line is strengthened because supplies are being utilized to the fullest

The Facts:

According to an insurance research organization metal theft claims have risen by 36 percent since January of 2010.

In an article found in the Insurance Journal, according the NICB, “The damage caused by these thefts is often several times the value of the metal stolen, leaving the victims with hefty repair costs which are often passed on to insurance companies.”

The U.S. Department of Energy has estimated that metal theft costs U.S. Businesses around $1 billion a year.

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Would you gamble on your next case?

As your trial date approaches you begin to review the evidence.  Deposition transcripts are carefully picked apart and the credibility of witnesses is weighed.  The legal aspects of the case are discussed with the client and the strategic elements of the case are laid out.  All parties involved are looking at best and worst case scenarios.

When it comes to selecting your trial team do you consider the history of the team?  Do you consider the track record of the team?  Has your team been involved in a trial before? Have they been been successful in previous trials?  How do you go about picking your team to insure the best possible results for your client?

One thing to keep in mind that under the extreme pressures of litigation those that have been there before know what to expect and will be considerably more comfortable and relaxed when the trial gets underway.

Litigation:

If you have been through litigation before and understand the stress, complexities and uncertainty you know what to expect.

When you pick your team of paralegals, investigators, experts and consultants as you contemplate and or engage in litigation it makes sense to pick a team that has been there before and won’t be overwhelmed with the nuances and stress of litigation.

At Santoni we have been supporting clients in all areas of litigation in a variety of settings for over 35 years. We have worked on and have testified in cases before the following courts

When you talk with your trial team don’t be afraid to ask questions that will help you determine if their experience and results will help or hinder you and your client in the event that the case goes to trial.  Specifically ask which courts they have testified in, what type of reports/declarations have they drafted to support motions and or seizures/court orders.

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Surveillance…for what?

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The use of surveillance as a strategy is something that attorneys, insurance companies, brand owners and businesses are utilizing to develop crucial evidence & information.

Here are some example of how you might utilize surveillance:

  • Insurance Fraud / Workers’ Compensation (Determine employee’s activity level)
  • Premises Liability (Buildings, Offices, Construction Sites)
  • Asset Searches / Judgment Recovery (Employment, Businesses, Banks)
  • Job Site Monitoring (Misstatement of Time/Labor, Materials theft, Accidents)
  • Trade Secrets Theft
  • Non-Compete Violations
  • Competitive Intelligence (Raw Material Shipments, Finished Product, Staffing, Operations)
  • Political Intelligence (Discreet meetings, Alliances, Background)
  • Improper use of company time (FMLA, Workers’ Compensation)
  • Environmental Issues
  • Auto Accidents (Cross-walks, Lighting, Traffic Light Timing)
  • Threat Detection / Mitigation
  • Improper use of residential or commercial property
  • Trademark Infringement / Counterfeiting

In order to obtain the information and evidence that you need engage with a licensed and experienced private investigator who conducts surveillance on regular basis.  A trusted investigator will maintain current equipment, utilize a discreet surveillance vehicle and be able to conduct the surveillance investigation without being made or burned.  We also suggest that any invoices, reports, case notes or communications regarding your surveillance investigations should be directed toward your attorney to keep the information privileged and confidential.

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Grey Market-Diverted Goods (Parallel Imports)- “What, its not counterfeit?”

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In a world where all the buzz is about counterfeit goods; the real question is how many of the suspected counterfeit goods are really “grey market/diverted goods.”  The Alliance for Grey Market and Counterfeit Abatement reports that $40 billion of tech products are sold on the grey market each year.

According to Wikipedia a parallel import is a non-counterfeit product imported from another country without the permission of the intellectual property owner. Parallel imports are often referred to as grey product, and are implicated in issues of international trade, and intellectual property.

Brand owners are always watching or monitoring their Intellectual Property (Trademarks, Domain Names, Patents, Copyrights) and when they come up with leads that they believe are possibly counterfeit they take action.  They will get advice from an attorney and then conduct some sort of investigation, whether it is internal or they enlist that help of a third party investigation firm specializing in the intellectual property investigations (trademark infringement, online protection, anti-counterfeiting & undercover buys).

When the products purchased end up with the brand expert for review after a formal buy report and investigation report have been drafted and the chain of custody has been properly signed there comes a moment of truth.

First, can the brand expert determine first if the product is in fact counterfeit?

Second, if the product turns out to be genuine how did it end up in the hands of an unauthorized retailer or distributor within their supply chain?

In the ever changing and ultra-competitive business environment supply chains can be become very complex as companies try to maximize distribution channels and optimize revenues and profits.  As companies grow it is become increasingly important that to thoroughly screen, track and audit contract manufacturers and partners that help them execute on their business plans.

Companies can use a trusted investigation firm to handle due diligence background checks on vendors and partners.  Employment background checks on their new employees.  Trademark and domain name monitoring to see who is registering marks that could be infringing and who is registering and using domain names that contain their marks or brands and are selling their products.  Undercover investigations on contract manufactures to insure that business agreements are being kept and that product is not being sold out the backdoor.  Companies should also be mindful of the ways they can mitigate risk in their operations.  Keeping their employees safe, mitigating accidents that can cause business stoppage and investigating claims and theft can mitigate insurance costs.

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Trademark Investigation- What’s That?

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Why would an investigator be needed to assist in getting a trademark cleared and registered?  How could an investigator assist in monitoring and identifying commercial exploitation (infringement/counterfeiting)?

In the United States the United States Patent and Trademark Office (USPTO) has the duty of accepting trademark filings and having them reviewed (examined), rendering opinions, handling the opposition process and eventually registering and maintaining them.  Because the United States is a first to USE country and not a first to FILE country trademark investigations are often a key element in the Life Cycle of a Trademark.

CREATION – SCREENING – INVESTIGATION – FILING/REGISTRATION – PROTECTION – MAINTENANCE – COMMERCIAL EXPLOITATION

We often get involved following a full trademark or advanced Internet search to determine if common law rights exist for someone that used a mark in commerce, but has not obtained a Federal or State Registration. Common Law uses can often be found by searching Corporate Filings, Fictitious Business Names (FBN) or DBA’s, Phone Directories, Professional License Databases and many other business directories.

Our clients often call on us to answer the following questions;

  • When was the mark first used in commerce?
  • Can you identify the person or entity using this mark?
  • When did the mark appear on the subject’s website?
  • When did the subject cease use of the mark in commerce?
  • What types of goods and services are being sold bearing the mark?
  • Where are the goods and services being sold? (Statewide, Online, National, Global)
  • Determine channels of trade (Retail, Wholesale, Distributors)
  • Who are we tangling with? (Revenue, Size, Scope, Litigation History, Assets)
  • If the mark is no longer in use can you buy it and the accompanying domain name?
  • Can you make an undercover, evidentiary-trap buy, of the goods bearing the mark(s)?

We receive these inquiries on a daily basis and investigate cases throughout the world that give our clients answers to these important questions.  The investigation portion of the trademark life cycle is a key piece in giving the client the information that they need to make an important business decision.

The next question that we often get is, “This sounds great…but how do you do this?”  That is a tricky question because all cases have different aspects (pre-C&D Letter, pre-litigation, litigation, etc.).  The short answer is that we have been investigating these types of cases for well over 20 years and have trained investigators that know where to look for the information and how to frame questions in the proper context to verify pertinent information when interviewing sources.

We also have a network of “front companies” throughout the United States that allow us to obtain detailed information in a very discreet manner that does not jeopardize the integrity of the case (see picture above).  Additionally, our front companies allow us to secure undercover purchases of infringing or counterfeiting goods in the venue of choice based on where the goods are purchased and shipped.

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