May 21, 2017

World Intellectual Property Review interviews Justin Pierce on combating online counterfeit goods

2 min

Venable partner Justin Pierce was interviewed in a May 21, 2017, World Intellectual Property Review article on ways luxury goods manufacturers can combat online counterfeiting. "We have seen statistics from various international organizations indicating that the import of counterfeited goods is a business worth US $500 billion a year," he explained. Counterfeit goods pose issues for the brands they imitate because their low costs dilute the value of the real products and they create unfair competition. "Unlike counterfeiters, the brands have invested significant amounts into research and development, advertising, purchase and manufacture of high-quality materials, and further investments in sales and marketing."

Pierce said counterfeiters are constantly coming up with new ways to sell their goods including with micro-shipments. "We've seen statistics showing that customs seizures of infringing goods shipped via container ships are decreasing, while it appears that micro-shipments and direct-to-consumer shipments continue to increase," he said. To combat this, "Some luxury brand owners engage in mass-defendant suits that target infringers by going after unnamed 'John Doe' defendants or various web-based vendors who are often identified only by a username or web address…The goal of these types of lawsuits is simply to remove sites, or where possible, to seize funds from e-commerce accounts that may be connected to those sites and their illegal transactions."

Pierce advised companies to rely on more than just trademark enforcement to protect their brands and suggested they look to more "unconventional" or "emerging IP" like 3D shapes or the use of trade dress. He also suggested companies look to the U.S. International Trade Commission (ITC) to block imports of infringing goods. "The ITC could be viewed as a favorable alternative to other enforcement methods—the vast majority of brand protection related claims before the ITC in the past 15 years or so have ended in default, a consent order, or settlement, meaning that the claims rarely go to trial," he said.

Pierce concluded, saying the strategies to combat counterfeit goods come with a caveat. "While a number of companies say they are concerned about counterfeits or IP challenges to their brand, few invest the resources and energy necessary to truly address the brand protection challenges they are facing."