Electronic Retailer - July 2012 - 29

that the IPR Center is extremely busy and cannot generally act as a company’s primary anti-counterfeiting champion. However, when a company does get the IPR Center’s help, it often can lead to an investigation and criminal charges against those involved.) In addition to the U.S. government, it is helpful to utilize the help of foreign governments. As Beachbody has experienced, Chinese Customs will seize counterfeit goods being exported from China. This requires a company to register in China the IP it wishes to enforce. Fortunately, doing so is not complicated. Finally, in the U.S., a company can enforce its rights in federal court. If the counterfeiters are located in the United States, it is simple. However, many of these companies are offshore. That makes it much harder. However, recently some litigants have been successful stopping online counterfeiters who are offshore by going after their websites and freezing their PayPal accounts. In a 2010 case in New York titled The North Face Apparel Corp. & PRL USA Holdings, Inc. v. Fujian Sharing Import & Export, Ltd. Co. d/b/a B2BSHARING.com et al., The North Face and Polo Ralph Lauren brought a lawsuit against Chinese entities selling counterfeits. The defendants were using 6,000 domain names that resembled the domain names of legitimate websites. A default judgment was entered against them, and the court ordered them to pay $78 million. Normally, such a judgment wouldn’t be worth the paper it is printed on. In this case, however, the court froze the counterfeiters’ PayPal accounts and ordered that any funds therein be turned over to the plaintiffs. This strategy has been catching on. Deckers Outdoor Corp., the maker of Ugg foot apparel, recently won a $686 million judgment against online counterfeiters who were using 3,000 such websites. As in The North Face case, Decker was able to recoup at least some of its damages from the PayPal accounts that were associated with the infringing websites.

You don’t need to be a victim. You don’t need to put up with it. There are practical things you can and should do that will directly support your bottom line. Register your IP. Commit specific employees and competent vendors to monitoring the internet and to sending take-down notices for you. Identify and team up with other companies who also are being counterfeited. Work with ERA

to build a coalition of companies that can exchange information and file lawsuits together to save on legal fees. Use experienced legal counsel. Work with government agents. Build this into your business. Stop the shoplifting. Greg Sater is a partner and Christopher Crook is an attorney at Venable, LLP.

Discover Why

5X
Customers Engaged. Calls Monetized.

Cross-Pitching Delivers

the ROI of Traditional Upsells

SalesPortal.com | 1.800.634.3474
For more information contact Chris Schaefer at Ext. 23 or via email at chris@salesportal.com

586843_Sales.indd 1

July 2012 | electronicRETAILER

5/28/12 1:09:54 PM

Electronic Retailer - July 2012

Table of Contents for the Digital Edition of Electronic Retailer - July 2012