The 4 E’s: Evidence
A successful counterfeit investigation can yield a few desirable potential outcomes. One route is criminal prosecution and conviction of offenders. Criminal convictions not only take counterfeiters out of business but also send a strong message to deter would-be offenders that your brand is serious about protecting its intellectual property. The second is civil enforcement, wherein a brand sues counterfeiters for lost profits, product forfeitures, unjust enrichment, injunctions against future production/sales and, in some cases, large civil penalties. Depending on the facts of the case and brand owner’s objectives, there also are a myriad of variations in between.
The key to success in any case is the acquisition and preservation of evidence. Typically, this happens through extensive covert operations. The undercover nature of these investigations is paramount – otherwise counterfeiters will do everything in their power to attempt to evade arrest and/or civil service of process. The evidence gathering process may include the following:
For professionals who do not practice IP investigations every day, it may be easy to underestimate the sophistication of counterfeiters. It is important to remember, however, that the people knocking off major brands don’t pop up overnight. Some spend years building manufacturing, distribution, and sales operations that rival that of the underlying brand. Others are borne of large organized crime rings. Consequently, they spend significant time and resources in detecting and evading those who wish to stop them.
IP Investigators have planned for this. They will make purchases using undercover names, credit cards, addresses, and phone numbers. Products are shipped to locations far removed from our office or our clients’ places of business. In short, the purchases are made in a manner that disguises the fact that the seller is under investigation. Importantly, IP Investigators already have the infrastructure in place to make these covert buys quickly and cost effectively.
One of the most important factors in making an evidentiary purchase is documenting the entire process – from details on the initial online order and transaction receipt, to the shipping method used and procedure once the evidence is delivered. Without a detailed chain of custody for each counterfeit item obtained, those items may not be viable as evidence to support the potential criminal or civil action.
This sort of documentation preservation is not limited to evidentiary purchases, however. In all phases of the investigation, we take painstaking steps to maintain well-documented investigation records.
Whenever possible, we communicate with the suspected offenders in writing. Oral communications are preserved with extensive notes or, when the law of the jurisdiction allows, appropriate recordings. Surveillance records are detailed, factual, and often supported with photographic evidence. Of course, surveillance does not only refer to following a suspect’s vehicle or sitting outside someone’s house in a parked car. In this technological age, surveillance also includes tracking online activities across sales platforms and social media. Regardless whether physical or digital surveillance, our focus is always on preserving evidence to support the facts of the case and for use as/if needed in criminal or civil proceedings.
Whether the client’s goal is criminal prosecution, issuance of an ex parte seizure order or something in-between, a key ingredient in reaching the desired goal is through proper evidence gathering and preservation. You don’t want to put that critical task in the hands of someone less experienced.
Significantly, IP Investigators also have the experience and training that allows us to testify as to the veracity of the evidence at trial. It’s one thing to gather the evidence, but if an expert can’t explain to a judge or jury exactly how they obtained and preserved it, it can put the entire case at risk.
We’ve been called upon to testify in this capacity numerous times throughout the years. Consequently, we don’t get tripped up by clever cross-examination techniques. We’re not intimidated by judges or trial lawyers. We also know the importance of speaking to juries in a manner they will understand. In short, our experience increases the chance that relevant evidence will be admitted and appropriately weighed by the fact-finder.