Brian Brokate to Speak on Digital Fashion and Brand Protection

Brian Brokate, Chair of Gibney’s Intellectual Property Group, will be a panelist at the Strafford webinar “Digital Fashion and Brand Protection: Leveraging Copyright, Trademark, and Trade Dress; NFTs; Ownership Challenges” on Tuesday, June 21, 2022 from 1:30 – 2:30 pm EDT.

This CLE webinar will guide IP counsel on protecting fashion intellectual property in the metaverse. The panel will discuss the various forms of IP that can protect fashion in the digital world of virtual reality and gaming and with respect to non-fungible tokens (NFTs) and the challenges of enforcement. They will review past case law decisions and pending cases and developments which will establish new precedent for future protection and enforcement of fashion intellectual property in the metaverse. The panel will also discuss the risks of failing to protect the brands and offer best practices for protecting brands in digital fashion.

Topics include:

  • Protecting digital fashion with IP laws
  • Copyright: What can you protect?
  • Trademark and trade dress in the metaverse
  • Domain names in the metaverse
  • Design patents
  • Best practices to enforce IP rights in the metaverse
  • Hurdles to protecting brands in the digital world and what strategies can be employed to enhance protection

For more information, visit the event page.

 

Automated IP Enforcement: Moving Towards Better Results

Last year in our article “What Will Post Pandemic IP Enforcement Look Like,” we looked at the future of enforcement and what strategies may emerge and take root post-pandemic. As it appears we are moving to an endemic stage, it may be a good time to revisit some key ideas.

Over the course of the last two decades, online brand protection has changed tremendously. I recall the days when we received monthly reports of violative goods on a single platform on which we then took action. Today, we monitor a multitude of platforms on a daily basis for a variety of clients. At various times, our clients have asked us to utilize specialized software or services to assist in the effort. We have had the opportunity to sample the full gamut of providers.

As these monitoring services have improved over the years, they have performed better. However, even with various iterations and implementations of artificial intelligence, none we have utilized are able to fully meet the enforcement challenge. Absent the presence of human intervention, the net cast is often too broad and cannot fully discern the subtleties of identification. Previously, we discussed the importance of data. However, if the volume or content of that data impedes the enforcement process, additional steps must be taken.

I am all for automating as much of the process as possible with the caveat that the results are able to be acted upon immediately and not encumber the takedowns. Unfortunately, a fully automated process seems to routinely produce many false positives. Our experience is that trained personnel are needed to cull the results and better identify actionable content. This is done to avoid possibly costly mistakes by removing genuine or even unrelated product.  While technology and the data it can produce represent a significant step forward in the battle against counterfeit goods, do not underestimate the need for a review process that ultimately helps the software perform better. That review process may also help a brand better define the scope of the problem. If initial results appear to indicate 10,000 violative items on a platform, further review may reveal the number is actually in the low hundreds.

Working with your software provider and highlighting the issues you may be having certainly does have an impact.  Algorithms can be changed and parameters altered to create a better and more refined user experience. Many of the software vendors will work closely with you to understand the issues and implement necessary changes. Again, it is up to the brand representative to monitor and provide ongoing feedback. Each brand has different needs and strategies that cannot be accommodated by one size fits all products. Luckily, we have reached a point where suggestions and considerations can be incorporated quickly in pulling actionable results.

In the end, the data and utility of the correct (for your brand) enforcement platform can act as force multipliers for your efforts which may have been impacted by headcount or budget reductions. However, be an active user, willing to review and push for the best results. Technology is only as good as your knowledge and insight can push it to be.

Brian Brokate and Angelo Mazza to Speak at PLI’s Intellectual Property Rights Enforcement 2022

Intellectual Property Partners Brian Brokate and Angelo Mazza will speak at the Practising Law Institute’s Intellectual Property Rights Enforcement 2022 on January 7, 2022. The program provides developments on recent copyright and trademark cases and anticounterfeiting trends.

Brian will deliver the opening remarks and will speak on the “Anti-Counterfeiting Update” panel. Topics include direct liability, seizures and ex parte remedies, Recent trends and the checklist that should be followed when applying for a seizure order, contributory liability and noteworthy decisions in cases involving online marketplaces and on-demand printers, and a look at the most innovative and cost-effective enforcement strategies used by brands.

Angelo will speak on the panel “Current Government IP Enforcement Programs.” Topics will include DOJ-prosecuted IP crime, IP protection in light of technological advances, the impact of major cases on enforcement, developing trends and looming issues, Made in the USA claims for Covid-19 related products and Covid-related scams facing consumers and businesses.

Learn more and register.

Gibney Participates in InnovateNordics Summit 2021 for Emerging Businesses

Gibney is partnering with the Swedish American Chamber of Commerce for the InnovateNordics Summit 2021 & U.S. Acceleration Program on October 15, 2021.

InnovateNordics showcases top innovators focused on tackling today’s most pressing challenges while creating business and growth within the areas of clean- and foodtech from the collective Nordics including Sweden, Norway, Denmark, Finland and Iceland. The program is a deep dive into the tools and tricks for effective U.S. establishment and growth.

Gibney will discuss U.S. legal issues for emerging businesses. Attorney speakers include:

  • David Johnson – Immigration
  • Kristen Smith – Corporate
  • Maja Szumarska – Intellectual Property
  • Robert Tracy – Employment

Learn more.

Angelo Mazza Speaks on Tools of the Italian System for Intellectual Property Protection and Combatting Anticounterfeiting in the US

Gibney IP Partner Angelo Mazza recently spoke the webinar entitled “The Tools of the Italian System for the Protection of Intellectual Property and the Fight Against Anticounterfeiting in the US”. The webinar covered the many brand protection options, public and private, that exist under the American system. Angelo directed his comments, in Italian, to the importance of law enforcement training as part of an overall approach to brand protection.

Sponsored by the Embassy of Italy in Washington, the Italian Trade Agency and the Guardia di Finanza and conducted in English and Italian, the webinar was aimed at Italian brands interested in entering the US market for the first time and the use of laws to protect their products and intellectual property. Other speakers represented National IPR Center, Guardia di Finanza, the IACC and the Italian Trade Agency.

Intellectual property is a cornerstone for the US and other world economies. Understanding issues and procedures is important to secure success and to avoid the pitfalls and impact of counterfeit goods on a brand. Gibney’s IP team offers a comprehensive approach to brand protection which includes trademark registration, Customs recordation, online enforcement, law enforcement training and civil action. Mr. Mazza’s practice includes Customs issues, law enforcement training and cooperation and online monitoring and enforcement. He is fluent in Italian

Gibney Attorneys Recognized in New York Super Lawyers 2021

Gibney attorneys were recognized in New York Super Lawyers 2021. Super Lawyers recognizes lawyers from more than 70 practice areas who have attained a high-degree of peer recognition and professional achievement. The selection process includes independent research, peer nominations and peer evaluations.

Gibney attorneys recognized in 2021 include:

  • Brian Brokate, IP Litigation
  • Beth Frenchman – IP
  • Kristen Heckman, Immigration Rising Stars
  • Lee Kinnally, Business Litigation
  • Tao Li, Immigration Rising Stars
  • Stephen Maltby – Immigration
  • Jake Paul Minster, Immigration Rising Stars
  • Adam Sgro – IP Rising Stars
  • Zarina Syed, Immigration Rising Stars
  • Maja Szumarska, IP

Brian Brokate to Speak at PLI on Trademark Developments in Anticounterfeiting

Brian W. Brokate will speak at the Practising Law Institute’s Intellectual Property Law Institute 2021 event on September 28, 2021 on the “Trademark” panel.

He will focus on developments in anti-counterfeiting and combatting counterfeiters during an unprecedented era. Other topics will include:

  • Direct liability: An overview of the groundbreaking decisions from the past year including the recent trial court decision in Romag Fasteners, Inc. v Fossil, Inc.
  • Seizures and ex parte remedies: Recent trends and the checklist that should be followed when applying for a seizure order
  • Contributory liability
  • An update on the Ongoing Battle Against Online Printers: A discussion about the recent decisions in Atari Interactive, Inc. v Redbubble, Inc., LTTB LLC v. Redbubble, Inc. and Ohio State University v. Redbubble, Inc.
  • Landlord liability: A Review of the Second Circuit’s decision in Omega SA v. 375 Canal, LLC
  • Hot trends: A Look at Cases Brought by Online Marketplaces and Social Media Platforms against Counterfeiters
  • The rise of counterfeiting during the COVID-19 pandemic: What you need to know to protect your brand

For more information and to register visit the PLI website.

Protecting Your Brand: Five Cost-Effective Customs & Border Protection Tools to Stop Counterfeit Goods at the Border

With the ever-evolving world of brand protection, it may be easy to overlook some of the strongest tools available for protecting a brand. We are often drawn to the latest software or technology to stop counterfeits from making their way into the US. However, these may be part of a broader strategy that includes the tools Customs & Border Protection (CBP) makes available. If you are protecting a brand and have a tight budget, please take a look at some lower cost opportunities.

  1. Recordation
    Fundamental to any effort is the registration of your trademarks with PTO. Once you are registered, your brand protection journey has only just begun. Take a look on iprs.cbp.gov to determine if you have any recorded trademarks (or copyrights). If you do not, begin the CBP e-recordation process immediately. For a small fee ($190 per mark, per class), you can record you mark with CBP. This affords additional protection at the border and violative goods stand a better chance of detention and eventual seizure.
  2. Product Guides
    Recordation alone is not enough. Be prepared to develop training materials that CBP Officers and Import Specialists may use to become aware of your product and learn some quick ID tips that can be applied in the field. Training materials need to contain the trademarks and recordations along with contact information and key details on your products. The guides may be provided to CBP for online distribution or directly to personnel during live training events.
  3. Training
    To get your brand to remain visible and in the minds of CBP personnel throughout US ports, it is important to conduct training whether virtual or live. While the current pandemic has paused much of the in-person training, there are virtual sessions available directly with CBP or through organizations like the IACC (International Anti-Counterfeiting Coalition). Training is a way to keep CBP updated and aware of brand developments. In the right circumstances, it also provides a chance to make one-on-one connections and to learn and understand what is happening day to day at the port level.
  4. Seizures
    Now that you have created a guide and trained, what happens next? You may begin to receive inquiries from the ports requesting assistance in determining if particular imported goods are indeed counterfeit during the detention stage. CBP may provide you with images and some basic information when they reach out to you during the detention stage. Please answer these inquiries as quickly as possible; within 24 hours. In order to perfect the seizure, they often rely on brand representatives to point out three key inconsistencies in the images provided. Your answers will assist them in their determination. It is CBP that makes the ultimate decision as to the violative nature of the goods at issue.
  5. Notice Letters
    If all goes well and your assistance has allowed CBP to determine it will seize the goods, a few days to several months later, you will receive a seizure notice electronically or in the mail which lays out significantly more information than you were provided at the detention stage. What you do with the details in the letter is a function of personnel and budget. Having importer and recipient information along with quantity may allow you to locate large sources or recipients of goods for possible criminal or civil action. You may wish to go a step further and send cease and desist letters to all importers to put them on notice. In all cases you should maintain the key information in a data base.

Working to thwart the importation and sale of counterfeit goods is never an easy task.  These steps provide ways to work with CBP to support their efforts and improve your success at brand protection. Take advantage of recordation and training as affordable and proven ways to take your enforcement budget further.

For questions about this process, email Angelo E.P. Mazza at aepmazza@gibney.com.

IP Partner Angelo Mazza Participates in IACC Enforcement Training for US Customs and Border Protection

Gibney IP Partner Angelo Mazza recently participated on behalf of several clients in the International Anticounterfeiting Coalition (IACC) sponsored virtual training for U.S. Customs and Border Protection (CBP) personnel at the Port of Newark.  The training bought together over 40 brands and 100 CBP personnel from Newark and around the country. CBP Officers, Import Specialists and FP&F personnel had the ability to watch presentations by brands based on type of commodity and set to run at specific times during the 3-day event.

Angelo has been involved in training programs for law enforcement at all levels for several decades. Not only is he a participant, but he is also a volunteer at the IACC, who coordinates the trainings, works on scheduling and has developed materials to allow better enforcement of IP laws. Over the years, Angelo has trained over 70,000 law enforcement personnel throughout the United States. Recognizing the importance of education as a way to develop enforcement skills, he has lectured on IP issues and developed the original IACC Training CD and then led the shift to an online and app based training tools.

Angelo Mazza assists clients with their online and offline enforcement needs and developing strategies that take a calibrated approach rather than relying one size fits all strategy.  At the core of the strategy is providing law enforcement with the necessary educational tools.

For more information about the IACC’s training programs, visit iacc.org. The next virtual IP training for CBP is scheduled for late September. For information about developing a training program or best practices in IP enforcement, please contact Angelo Mazza.

Angelo Mazza to Speak at IACC Panel on Brand Protection Basics

Intellectual Property Partner Angelo E.P. Mazza will speak at the International Anticounterfeiting Coalition (IACC) webinar on August 19, 2021 from 1:00pm – 2:00pm ET. The program is titled “Brand Protection Basics – Practical Tips for Protecting Your Rights at the U.S. Border.”

About the Program

U.S. Customs and Border Protection (CBP) is often described as the first line of defense against counterfeits in the U.S. With approximately 800 million shipments valued at over $2.4 trillion entering the U.S. market through over 300 ports each year, CBP faces the monumental task of identifying and interdicting illicit goods and keeping them out of the hands of American consumers, while ensuring the efficient flow of legitimate trade. This informative program will provide an opportunity to hear first-hand from brand representatives who will share practical tips and advice drawn from years of experience partnering with CBP.

Topics include:
• IP recordation;
• Best practices for training;
• What to expect in interacting with your government counterparts; and
• How you can leverage government resources to make your own efforts more cost-effective and budget-friendly.

This hour-long session will equip you with tools and guidance to effectively partner with CBP to protect your brand at the border.

Other speakers include Mandy McCarthy, Director / Infringement Administrator at The Lumistella Company. The panel will be moderated by Travis Johnson, Vice President – Legislative Affairs, Sr. Counsel, IACC.

Learn more and register on the IACC website.