Author: David Bonilla, J.D Candidate, Class of 2014, Benjamin N. Cardozo School of Law
Counterfeiters continue to find creative and inventive ways to knock off goods and place those knockoffs in the marketplace. One need only take a brisk walk through Times Square in order to come across tables laden with counterfeited fare, from not-so-red-bottomed Louboutin shoes to DVDs of movies not yet in theaters. The increasing prevalence of counterfeit goods in the marketplace has caused law firms and in-house legal departments to attempt numerous methods, beyond traditional civil litigation, to thwart counterfeiters. Cardozo’s Intellectual Property Law Society brought a panel together on November 15 to discuss the practices currently employed by law firms and in-house legal departments in their seemingly endless struggle to combat counterfeiters. Danielle Gorman, Co-Acquisitions Editor of the Cardozo Arts & Entertainment Law Journal (“AELJ”), and Francesca Montalvo, an AELJ staffer, moderated the panel discussion.
The direct result of counterfeiting is displacement of sales. However, it is unlikely that consumers of luxury goods will purchase suspiciously cheap alternatives, restricting this damage to manufacturers of lower-priced items. Secondary dilution, on the other hand, affects manufacturers of luxury goods and is typically unquantifiable. “If someone purchases a fake Coach handbag . . . and it looks awful, and they give it away or just carry it around, a potential consumer will see the handbag and say ‘wow, Coach has really gone downhill,’ and this tarnishes our reputation,” said panelist Ethan Yat Fai Lau, in-house counsel for Coach, Inc. Other effects of counterfeiting include “funneling money into terrorist organizations, as well as child labor issues and tax issues—counterfeiters don’t pay taxes,” added Mr. Lau.
Thus, “one of the main things that [companies] spend their time doing is finding counterfeits,” said panelist Giselle C.W. Huron, an associate in Fross Zelnick Lehrman & Zissu, P.C.’s litigation practice group. This can be accomplished in a number of ways including searching online marketplaces such as Ebay.com, using brand agents who go out into the field to collect evidence and make undercover purchases, coordinating with U.S. Customs and Border Protection, and reviewing consumer complaints.
(Click here to read the rest.)
The views expressed here are exclusively of the author and do not represent agreement or endorsement by the Cardozo Arts & Entertainment Law Journal, Benjamin N. Cardozo School of Law, or Yeshiva University.
