Getting the Legal System to Work for You When it Comes to IP Enforcement

Pursue a civil or criminal remedy depending on the nature of the product being counterfeited.  Typically products that can put the public’s well-being in danger (pharmaceuticals, food, tobacco, medical devices, auto parts, airplane parts) grab the attention of the District Attorneys, U.S. Attorneys & Law Enforcement Agencies (FBI, DEA, ICE).

In most cases, law enforcement and the courts want as much information on the product being sold and people or company behind it.  They want to know where counterfeited products are being sold, how test purchases were made and shipped, who was selling the product, the size and scope of the counterfeiter’s operation, all locations under the control of the counterfeiter, and general background information on the operation and the principals. The main culprits will be further examined to see if there were any prior run in’s with the law and arrests or cases where they were involved in the sale and or distribution of counterfeit goods.

4 Thing to Consider When Enforcing Your IP Rights against a Counterfeiter via Raid or Ex Parte Seizure Order.

1)   What is the end goal?  Shut down the operation?  Obtain intelligence on how and where the subject is getting the counterfeit goods from?  Obtain an injunction?  Obtain a judgment and collect or seize assets?

2)   What kind of information will be available at the time of the raid or seizure?  Product, trucks, equipment, computers, servers, laptops, external storage devices, labels, printing materials, & shipping records are most typical.

3)   What type of threat is the infringer to your team? Is there a chance for retaliation or harm?  Do they possess drugs or weapons?

4)   How will you seize and inventory all infringing products? The devil is in the details if you want to keep the court on your side and get what your client wants.  Be prepared to provide any and all items included in the order.  Document entry and exit on video to protect from liability.  Complete a detailed inventory list to include product, documents, and digital evidence authorized for seizure.  Also, be prepared for the unexpected and have your locksmith, digital forensic team and additional trucks ready on a moments notice.

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