Please Wait

Complete the registration form.

Then you will be brought back to your Cart to buy yours book(s).

Register

New Users
 
Current LJP Subscribers
 
To add books to your Shopping Cart, please Sign-in...
 

                        

  

Cancel
 
book image Protecting the Brand: Counterfeiting and Gray Markets
free chapter


Have a question about purchasing options for
this product? Email Us or call 1.877.807.8076.


The file format of ALM eBooks is EPUB 2.0.
See our Help/FAQ section for technical details.
Annual Subscription with Automatic Renewal

Author Name Peter Hlavnicka
Anthony Keats
Ryan Drimalla
 
Published date 2016
ISBN no. 978-1-58852-339-6
eBook ISBN no. 978-1-58852-209-2
Condition New
 
To purchase this book, you must first complete the registration or login.
     
Title
Dedication
Acknowledgments
About the Authors
Preface
Chapter 1: What Is Brand and Why Protect It?
§ 1.01 Brand Protection—What Is It and Why Is It So Important?
§ 1.02 The Effects of the Internet and Globalization on Brand Protection
§ 1.03 The Gray Market
[1] What Is the Gray Market?
[2] Secondary Markets Distinguished from Gray Market
[3] Ignore Gray Goods at Your Own Peril
[4] How, Why, and When Do Products Enter the Gray Market?
[a] Currency Differential
[b] Varying Cost Structures
[c] Price Discrimination
[d] Differences in Government Regulations
[e] Consumer Preferences
[f] Dumping
[g] Fraud
[5] Materially Different Standard
[6] Differences Found to Be Material
[a] Altered or Obliterated Serial Numbers
[b] Foreign Language Decals and Manuals
[c] Lack of Standard Domestic Warranty at a Substantially Reduced Price
[d] Product Composition or Physical Differences or Both
[e] Example Involving Several Material Factors
§ 1.04 What Is the Black Market?
Chapter 2: Problems Caused by Counterfeit and Gray Market Goods
§ 2.01 Degradation of Brand and Loss of Good Will
[1] Customer Confusion and Dissatisfaction
[2] Dangers Caused by Gray and Counterfeit Goods
[3] Bundling with Legitimate Products
§ 2.02 Channel Partner Dissatisfaction
§ 2.03 Effect on Quality Control
§ 2.04 Service and Warranty Abuse
§ 2.05 Free Rider
§ 2.06 Impact on Economy and Society
Chapter 3: Incidents of Counterfeiting and Gray Marketing in Various Industries
§ 3.01 Introduction
§ 3.02 Gray Market and Counterfeit Goods
[1] Fashion and Luxury Goods
[2] IT
[3] Transportation (Automotive, Aviation)
[4] Pharmaceuticals
[5] Personal Hygiene Products, Cosmetics
[6] Cameras
[7] Watches and Textbooks
[8] Toys
[9] Cigarettes
[10] Candy and Soft Drinks
[11] Humanitarian Sales to Third World Countries
Chapter 4: Proactive Internal Procedures to Combat Counterfeiting and the Gray Market
§ 4.01 Overview
§ 4.02 Licensing and Distribution Agreements
[1] Scope and Grant of Rights
[2] Purchasing and Resale Constraints
[3] Audits
[4] Software License Agreements
[5] Warranty
§ 4.03 Pre-Sale Due Diligence
§ 4.04 Partner Screening and Contracting
[1] Selecting Partners: Screening and Certification
[a] Credit History and Overall Financial Strength
[b] Business Hierarchy
[c] Credit Assurance or Security Deposit
[2] Contracting with Partners to Prevent Gray and Counterfeit Goods from Coming into the Supply Chain Through Partners
[a] Scope and Grant of Rights
[b] Definitions
[c] Relationship
[3] Right to Audit
[4] Incentives
[5] Penalties
[6] Record Keeping and Audit
[7] Under-Reporting Sales
[8] Consent to Injunctive Relief
[9] Limitation of Liabilities and Damages
[10] Patents and Copyrights
[11] Indemnity
[12] Arbitration
[13] Jurisdiction and Venue
§ 4.05 Identifying the Perpetrators
[1] Warning Signs of Gray Market and Counterfeiting Activity
[a] Pricing Anomalies and Requests for Special Discounts
[b] Changes in Ordering Habits
[c] Changes in Delivery
[d] Spike in Returns or Warranty Requests
[2] Monitoring
[a] Internet
[b] Stings and Active “on the Street” Investigations
[c] Tradeshow Canvassing
[3] Monitoring Sales Trends and Channel and Supplier Audits
[a] Auditing Sales Activity: Ensuring Volume Discounts Going to Proper Place
[b] Product Tracking
§ 4.06 Discounting Programs
§ 4.07 Improving Warranty and Service Process
§ 4.08 Global vs. Regional Price and Control
§ 4.09 Building Corporate Awareness
[1] Sales Force Education and Due Diligence: Training Salespersons to Spot Red Flags
[2] Educate Dealer Network Regarding Differences and Steps Taken to Stop Gray Marketing
[3] Tools and Processes to Enforce the Strategy
§ 4.10 Public Relations: Inform Public and Customers Regarding Differences and Dangers of Gray/Counterfeit Goods
[1] Website Disclaimer: Detailing Above and That No Service on or Return of Gray/Counterfeit Goods
[2] Website with Policy, Processes, Tools and Examples of Actions Taken (Communication Hub)
§ 4.11 Engineering and Supply Chain Process Controls
[1] Shipping Controls
[2] Tracking
[3] Safeguarding Products and Serial Numbers
[4] Product Enhancements
[5] Authentication Technologies
§ 4.12 Government and Law Enforcement Agencies and Organizations
[1] Overview of a Basic Public Policy Program
[2] Establishing a Basic Public Policy Program
[3] Federal Bureau of Investigation (“FBI”)
[4] Internal Revenue Service (“IRS”)
[5] Immigration and Customs Enforcement (“ICE”)
[6] National Intellectual Property Rights Coordination Center
§ 4.13 Industry Cooperation
§ 4.14 Disciplining Channel Partners
[1] Probation
[2] Suspension
[3] Monetary Penalties or Reduction in Allotment
Chapter 5: Using the Lanham Act to Combat Gray and Counterfeit Goods
§ 5.01 What Is the Lanham Act?
[1] Section 32: Infringement of a Registered Mark
[2] Section 43(a): False Designation of Origin and Unfair Competition
[3] Section 43(c): Dilution
§ 5.02 Gray Market Goods vs. Counterfeit Goods
§ 5.03 History of the Lanham Act
§ 5.04 Jurisdictional Issues Related to the Lanham Act
[1] When to Use Which Section
[a] Section 32: Infringement of a Registered Mark
[b] Section 43(a): False Designation of Origin and Unfair Competition
[c] Section 43(c): Dilution
[2] Standing to Bring a Claim
[a] Section 32: Infringement of a Registered Mark
[b] Section 43(a): False Designation of Origin and Unfair Competition
[c] Section 43(c): Dilution
[3] Concurrent Action Under the Lanham Act and the ITC
[4] Common Element: Material Difference Test
Chapter 6: The Material Difference: Sections 32, 43(a) and 42 of the Lanham Act and Section 526 of the Tariff Act
§ 6.01 Introduction
§ 6.02 The Material Difference: the Presumption of Consumer Confusion
§ 6.03 Examples of Material Differences
[1] Use of Packaging or Composition of Product Different from That of the Domestic Market
[2] Altered Product Unique Identification (Serial Numbers)
[3] Sale Without Standard Warranty and at Significantly Lower Pricing
[4] Foreign Language Labels, Markings, and Other Product Documents
Chapter 7: Trademark Infringement: Diminishing the Value of Brand Identification
§ 7.01 Elements of Trademark Infringement
[1] Registered Mark
[2] U.S. Intent to Use Requirement
[3] Tacking
[4] Use Without Consent of Owner of Mark
§ 7.02 Use in Commerce
§ 7.03 Sale of Goods or Services
§ 7.04 Reproduction, Counterfeit, Copy, or Colorable Imitation
§ 7.05 Likelihood of Confusion: Balance of Factors
[1] Strength of Marks
[2] Degree of Similarity
[3] Proximity of Products and Likelihood of Bridging the Gap
[4] Evidence of Actual Confusion
[5] Intent to Copy/Infringe
[6] Quality of Infringing Product
[7] Sophistication of Buyer
[8] Initial Interest, Post-Sale and Reverse Confusion
§ 7.06 Trademark Dilution
[1] Nature of the Tarnishment
[2] Defenses to Dilution Under the TDRA
§ 7.07 Impact of New Technology on Trademark Protection: 3-Dimensional Printing
Chapter 8: The Legal Framework for Protection from Copyright Piracy
§8.01 Digital Space Creates Need for Significant Revisions to U.S. and European Copyright Laws
§ 8.01A Scope of Copyright Piracy: Software, Film, Music, Books
§ 8.02 Jurisdiction
§ 8.03 Registration
§ 8.04 Rights Protected by the Copyright Act
§ 8.05 International Treaties and Their Impact on Infringement
§ 8.06 Elements of the Prima Facie Case of Infringement
§ 8.07 The First Sale Doctrine: a Defense to Piracy?
[1] Lessons in Software and Music
[2] Counterfeit Items
[3] The Gray Market
§ 8.08 Fair Use
[1] Fair Use and the Internet
[2] De Minimis Use
§ 8.09 Online Piracy
[1] Contributory Liability
[2] Vicarious Liability
[3] Inducement
[4] Notice and Takedown Under the DMCA
[5] Scraping
§ 8.10 New Media: Videogames and Virtual Worlds
§ 8.11 Technologies Challenging the Boundaries of Copyright Law
[1] Relevant Law
[2] Positions of the Litigants
[3] Does Aereo Perform?
[4] Is the Performance Public?
[5] Infringement?
[6] General Comments
§ 8.12 Impact of New Technology: 3-Dimensional Printing
Chapter 9: State Civil and Criminal Anti-Counterfeiting Statutes
§ 9.01 A Parallel System of Trademark Anti-Counterfeiting Statutes
§ 9.02 Why Is the Parallel System of Trademarks Important or of Value?
§ 9.03 State Statutes and Common Law Relating to Counterfeiting
§ 9.04 Chart of State Criminal Counterfeiting Statutes
Chapter 10: International Trade Commission and U.S. Customs and Border Protection, the Lanham Act and the Tariff Act
§ 10.01 The International Trade Commission
§ 10.02 Advantages of Using the ITC
§ 10.03 Disadvantage of Using the ITC vs. a Federal Lanham Act Action
§ 10.04 Complaint Before the ITC
§ 10.05 Responding to a Complaint
§ 10.06 Prima Facie Case
[1] Unfair Acts
[2] Importation
[3] Domestic Market
[4] Substantial Injury
§ 10.07 The Proceedings
[1] Pre-Hearing
[2] Hearing
[3] Appeals
§ 10.08 Remedies
§ 10.09 U.S. Customs and Border Protection (“Customs”) Standards
§ 10.10 Recordation of Mark/Name with Customs
§ 10.11 Recording Assignment and/or Renewal of a Mark with Customs
§ 10.12 Counterfeit vs. Gray Market
§ 10.13 Exceptions to the Restricted Mark Standard
[1] Authorized Use and Common Control or Ownership
[2] Exception to the Exception: Physical and Non-Physical Material Difference Between the Authorized Product and the Unauthorized Product
[3] Obtaining Lever Protection from Customs
[4] Gaining Entry Despite the Existence of a Material Difference Between a Gray Market Product and a Domestic Product
Chapter 11: Federal Criminal Law
§ 11.01 Background to the 1984 Trademark Counterfeiting Act
[1] Need for Deterrence
[2] Criminal and Civil Actions
§ 11.02 Evolution of the Trademark Counterfeiting Act
[1] Elements of 18 U.S.C. § 2320(a)(1)
[2] Elements of 18 U.S.C. § 2320(a)(2)
[3] Elements of 18 U.S.C. § 2320(a)(3)
[4] Elements of 18 U.S.C. § 2320(a)(4)
[5] Amendments to the Trademark Counterfeiting Act
[6] Legislative Intent, Case Law, and Legislative Changes to the Elements of the Trademark Counterfeiting Act
[a] Defendant Trafficked in Goods or Services or in Labels, Patches, Stickers, Wrappers, Badges, Emblems, Medallions, Charms, Boxes, Containers, Cans, Cases, Hangtags, Documentation, or Packaging of Any Type or Nature
[i] Definition of “Trafficking”
[ii] “Goods or Services”
[b] Defendant Intended to Traffic in Goods or Services
[c] Defendant Used a “Counterfeit Mark” on or in Connection with the Goods and Services
[i] Definition of Counterfeit Mark
[ii] Counterfeit Mark Must Be Identical to or Substantially Indistinguishable from a Genuine Mark
[iii] Genuine Mark Must Be Federally Registered on the USPTO Principal Register
[iv] The Prosecution Must Prove That the Genuine Mark Was in Use During the Counterfeiting
[v] Use of Counterfeit Mark on or in Connection with Goods and Services
[vi] Counterfeit Mark Must Have Been Used for Same Type of Goods and Services for Which the Infringed Mark Is Registered with the Principal Register at the USPTO
[vii] Counterfeit Mark Must Create Likelihood of Confusion, Mistake, or Deception
[d] Defendant Knowingly Used the Mark and Knew the Mark Used Was Counterfeit
§ 11.03 List of Defenses and Affirmative Defenses to the Trademark Counterfeiting Act
[1] Improper Venue
[2] Jurisdiction
[a] Subject Matter Jurisdiction
[b] Personal Jurisdiction: Civil Case Law, the Internet, Extraterritorial Effects
[3] Statute of Limitations
[4] Authorized-Use Defense: Overrun Goods
[5] Authorized-Use Defense: Gray Market Goods
[6] Repackaging Genuine Goods
[7] Ineffective Assistance of Counsel
[8] Laches
[9] Unconstitutional Vagueness
[10] Traditional Lanham Act Affirmative Defenses and Other Defenses
[a] Estoppel
[b] Acquiescence
[11] Other Defenses
§ 11.04 Penalties and Sentencing
[1] Mandatory Maximum Criminal Fines and Imprisonment Under the Trademark Counterfeiting Act
[a] Punishment for a Single Violation of the Trademark Counterfeiting Act
[b] Punishment for Repeat Offenders and Those Who Cause Bodily Harm
[2] General Rules for Sentencing in Federal Court
[3] Sentencing Trademark Counterfeiters
[4] Immigration Consequences for Convicted Trademark Counterfeiters
[5] Relief for Victim: Restitution for Trademark Owners
[a] Mandatory Victims Restitution Act
[b] Victim and Witness Protection Act of 1982
§ 11.05 Procedure and Practicalities of Prosecution
[1] Federal Law Enforcement Policies
[2] Private Assistance to Prosecutors and Ethical Issues
[3] Rights of Crime Victims
[4] Criminal Procedure and Evidence Issues in Trademark Counterfeiting
[a] Motion for Judgment of Acquittal Because of Insufficient Evidence to Sustain a Conviction
[b] Motion to Suppress Evidence
[c] Sixth Amendment Confrontation Clause Issues
[5] Forfeiture Proceedings and Destruction of Counterfeit Goods
§ 11.06 Related Statutes: Amendments to Lanham Act
[1] Ex Parte Seizures
[2] Treble Damages
§ 11.07 Other Related Statutes for Federal Criminal Prosecution
[1] Criminal Conspiracy: 18 U.S.C. § 371
[2] Racketeer Influenced and Corrupt Organizations Act (“RICO”): 18 U.S.C. §§ 1961 et seq.
[3] Mail Fraud: 18 U.S.C. § 1341
[4] Money Laundering: 18 U.S.C. § 1956
[5] Wire Fraud: 15 U.S.C. § 1343
[6] Trafficking in Counterfeit Labels
§ 11.08 Foreign Enforcement of Criminal Trademark Counterfeiting
[1] Customs Duties in the United States
[a] Customs and Border Protection
[2] Multilateral Treaties for Enforcement and Trade Agreements
[a] Agreement on Trade-Related Aspects of International Property Rights
[b] Anti-Counterfeiting Trade Agreement
§ 11.09 Solutions to Insufficient Enforcement Against Foreign Infringing Websites and Other Potential Legislative Additions to Section 2320
Chapter 12: Issues Relating to Websites
§ 12.01 Overview
§ 12.02 Increase in Online Infringement
§ 12.03 Internet Monitoring
§ 12.04 Raising Awareness About Online Counterfeit Trade
§ 12.05 Enforcement Against Online Infringers
Chapter 13: Cybersquatting
§ 13.01 What Is Cybersquatting and How Does It Affect Business?
§ 13.02 Responding to Cybersquatting
[1] Arbitration for Domain Name Disputes
[2] U.S. Anti-Cybersquatting Legislation
[a] Personal Jurisdiction with ACPA Claim
[b] In Rem Jurisdiction for ACPA Claim
§ 13.03 State Anti-Cybersquatting Legislation
§ 13.04 Protecting Your Domain Name
§ 13.05 Beyond Traditional Domain Names: Social Media Usernames
Chapter 14: International Remedies
§ 14.01 World Customs Organization (“WCO”)
§ 14.02 International Treaties
[1] North American Free Trade Agreement (“NAFTA”)
[2] Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”)
[3] World Intellectual Property Organization Copyright Treaty (“WIPO Copyright Treaty”)
[4] Patent Law Treaty (“PLT”)
[5] Convention on Cybercrime
[6] Dominican Republic-Central America Free Trade Agreement (“DR-CAFTA”)
[7] Anti-Counterfeiting Trade Agreement (“ACTA”)
[8] Republic of Korea-United States Free Trade Agreement (“KORUS FTA”)
[9] U.S.-Panama Trade Promotion Agreement
[10] U.S.-Colombia Free Trade Agreement
§ 14.03 Europe
[1] European Union
[2] REACT (The European Anti-Counterfeiting Network)
§ 14.04 Asia
[1] China
[2] India
[3] Indonesia
[4] Pakistan
[5] Thailand
§ 14.05 Middle East
[1] United Arab Emirates
[2] Egypt
[3] Kuwait
[4] Israel
§ 14.06 Central and South America
[1] Brazil
[2] Argentina
[3] Colombia
[4] Peru
[5] Guatemala
[6] Trade Treaties in South and Central America
[a] Comunidad Andina
[b] Mercosur
[c] Amazon Cooperation Treaty Organization (“ACTO”)
[d] CARICOM
[e] Central American Integration
§ 14.07 Africa
[1] Kenya
[2] South Africa
[3] Angola
[4] Nigeria
[5] Algeria
§ 14.08 Canada
[1] Remedies
[2] Anton Piller Orders
[3] Enforcement Efforts/Counterfeiting Cases
[4] Criminal Remedies: Criminal Enforcement Protocol
[a] Copyright Criminal Provisions
[b] Trademark Criminal Provisions
Index
 
Subscriptions to books are auto-renewed to avoid disruptions in service. Print editions must be returned within 30 days in resalable condition for refund. For downloadable eBook products, a refund will be granted if the eBook has not been downloaded. eBook Details: We recommend you download the free sample chapter of this product (available on the product page) before purchasing to ensure compatibility with your device and eBook reader. The file format of ALM eBooks is EPUB 2.0, which is an eBook standard that can be read using a variety of devices and readers including, but not limited to, Apple iPad or iPhone, SONY Reader, Barnes & Noble NOOK and Adobe Digital Editions. See our Help/FAQ section for more technical details and support