Counterfeit and trademark infringement issues are a legitimate concern in our industry. Unfortunately there is no easy way to counteract this- protecting all of your information and images is expensive and time consuming, and going after 3rd party marketplace sellers that pop up and disappear constantly can feel like a futile whack-a-mole exercise (and truly- there really is no time and cost-effective way to combat this type of infringement). There are solutions to larger counterfeit issues though. We sat down with Intellectual Property Litigation lawyer Bill Dunnegan to talk about how these issues can be handled from a legal perspective.
Q. What right do we have to prevent companies from selling counterfeits of our products on the Internet?
A. If the companies are using a counterfeit of the trademark of your company, regardless of whether or not that trademark is registered, you can probably stop them and recover damages. You are in the strongest position if the counterfeiters are selling on e-commerce platforms that are subject to the jurisdiction of the US courts, like Amazon.com or Walmart.com. If they are, we can buy a sample product, file a lawsuit, and seek a court order freezing the funds of the counterfeiter that the e-commerce platform or at a payment service, like PayPal, Is holding. Once the funds are frozen, you have substantial leverage to negotiate or to continue the lawsuit.
If companies are using your photographs, or other copyrighted works, you have the right to stop them and recover damages, provided that your copyright was already registered with the US Copyright Office before the infringement occurred. It is also possible to register the work after the infringement began and still sue, although your ability to recover damages will be limited.
Q. Have you done this before?
A. Yes. Please visit our website at http://www.dunnegan.com for more about the intellectual property litigation that we do.
Q. What does all of this cost?
A. In a case involving trademark counterfeiting, or infringement of registered copyright, we will usually agree to take our fees out of the amounts that we recover in the litigation. In those types of cases, you would ordinarily be responsible only for the out-of-pocket disbursements. For a typical case, these out-of-pocket disbursements would be under $1,500.
Q. What would a member need to do to start the process?
A. After deciding to proceed, we would need you to provide evidence of your trademarks or copyrights, identify the counterfeit products for sale on the Internet, confirm the products we buy are counterfeit and review and sign affidavits we will prepare.
Here is our contact information.
Bill Dunnegan and Laura Scileppi
Dunnegan & Scileppi LLC
350 Fifth Avenue, 76th Floor
New York, New York 10118
(212) 332-8303 (direct)
Prior results do not guaranty a similar outcome.