Michael Bennett answers:

Countering that advantage requires a holistic approach based on four fundamental principles of counter-deception. One, know yourself – recognize that the problem exists and understand your own vulnerabilities. Two, know your adversary – focus on the means that the counterfeiter has at his disposal such as doctrine, training, personnel, experience, and technology. Three, know your situation – counterfeiting has become endemic and ubiquitous so be aware that counterfeiting will be a factor in nearly any commercial situation you encounter. Four, know your channels – Consumers, live by the old adage “consider the source”: what seems too good to be true probably is. Brand owners, more effectively control your supply chain, including your production facilities, to lower the likelihood that unauthorized products are produced or distributed.

David Walter answers: Whatever the cause of the crisis, there is a basic approach which can prove highly effective towards minimising its impact on your brand's integrity.

The first is to get back to basics with the “3 Rs” – Regret, Reassurance and Remedy

• Express Regret – This concept does not imply accepting any responsibility but shows that the company is sympathetic and caring towards the victims of counterfeiters.
• Provide Reassurance – It is imperative that your consumers know how they can find or discern the genuine product.
• Present a Remedy – Show the market that your enterprise is making an effort to combat fraud by integrating anti-counterfeiting technologies and methodologies into the process, from prototype to the end-point of the distribution chain.

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David Freer answers: As practiced is in the UK, I will make reference to the main type of IP cover available here. IPRI policies provide coverage of legal expenses for enforcement of the owner's IP should another firm infringe upon it.  The insurance will pay all of the legal expenses incurred in defending the patent up to the insured limit. It is important to note that coverage is paid to the IP owner whether the matter is settled in or out of court.  In the event that the policy holder should lose the dispute, the insurance will cover the legal costs and damages of the other party, to which the policy holder may be liable.  On the flip side, the insurance policy also covers legal costs in the defence stance. Such costs may have been sustained during legal action taken against the policy holder if a product or process of the firm may have infringed upon another party’s IP.

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USPTO says: A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.

Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phono records of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine.

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

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Roland Meylan, co-founder and Corporate Communications Manager of AlpVision, answers: FDA 21 CFR Part 11 requires that, in their use of technology, drug makers, medical device manufacturers, biotech companies, biologics developers, and other FDA-regulated industries adhere to certain standards and specific criteria in ensuring that their electronic records and electronic signatures are trustworthy, reliable and equivalent to paper records.

Part 11 demands that they implement controls, including audits, validation systems, and documentation for software and systems involved in processing many forms of data as part of business operations and product development.

In anticipation of major deployments which will bring covert protection to over a billion products worldwide by the first quarter of 2008, AlpVision Krypsos has achieved compliance with the FDA 21 CFR Part 11 requirements for Electronic Records and Electronic Signatures (ERES) issued by the Department of Health and Human Services of the US Food and Drug Administration (FDA). This means Krypsos meets FDA regulation’s requirements by providing the following functionalities:

·         Audit trail documentation

·         Electronic records

·         Advanced security controls and password protection

·         Event reporting and notification, including times, actions, users and more

·         Central data storage in a single SQL database

The Computer Systems Validation (CSV) was performed in compliance with the V-Model, which defines the relevant project documentation under the supervision of either the customer or AlpVision.

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David Mirchin answers: Central to Viacom’s claim is how the court will interpret provisions of the Digital Millennium Copyright Act.  The DMCA is a 1998 statute that balances the needs of content owners, such as Viacom, with those of internet service providers, including sites such as YouTube, which host content uploaded by users.  The DMCA is supposed to provide immunity from claims of monetary damages to service providers who engage in “passive”, “automatic” actions initiated by users. The DMCA provides that internet service providers do not need to monitor their sites for infringing material. Rather, it established a notice-and-takedown procedure:  in the event a copyright owner complains about an alleged infringement, the site enjoys a “safe harbor” from monetary damages if it takes down the infringing material and complies with the other requirements of the statute.

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Laurent Clemot answers: If you classify "pirates" and put them in a four-tier pyramid (T4, T3, T2, T1), you'll find that the pirates found in the bottom tier (T4) number in the millions. They tend to be guilt-ridden "consumers" of pirated content who justify their actions by saying…if the publisher really didn't want me to do this they would have put some type of protection on the game. Fear of viruses, law enforcement, as well as inconvenience may prevent a member of this group from actively seeking pirated content.

T3 pirates, numbering in the hundreds of thousands, are a bit bolder and more technically advanced and will attempt to look for the crack in a Peer-to-Peer (P2P) network. But ultimately these pirates are not able to or will not follow a “cookbook” which is a book of small code segments that the reader can use to crack software programs. They will be likely deterred from disruptions in the P2P chatrooms and forums. In addition, if a pirated copy of the software is not easily accessible within one month of the official launch of the game, this pirate will most likely simply go and buy a legal copy of the game.

The thousands of pirates in T2 are more avid technophiles. These pirates are very enthusiastic about finding pirated content, but are not as capable as T1 pirates. With persistence, the T2 pirate will search FTP sites and scan P2P boards for cookbooks developed by T1 pirates. They will quality test the cookbooks and complain on the same P2P boards or FTP sites if the cookbook doesn't work. With all the time and effort invested in finding and downloading illegal content, this class of pirates is unlikely to purchase the content, even if it is readily available.

The pirates found in T1 are fewer than any other group.  With approximately 30 people, these pirates are highly skilled at breaking down new security measures and inventing new techniques. These are the pirates that "write" the cookbooks for T2, yet they rarely bother to test a "cracked version" of the content. Their profile is quite different from the other groups, as their motive is to seek money and notoriety. As a matter of principle, they will not join the legal purchasing community.

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James Butcher answers: Mass-serialization is the technique by which each individual item is given a unique number or "license plate," which can be human-readable, a barcode and/or RFID.  This unique code can be used to track and trace the item, and if the code itself is a cryptographically generated non-sequential code such as a CounterFight Security Code, it provides a layer of security against counterfeiting and product diversion.

So why use mass serialization versus other technologies? The answer lies in the fact that there is no one "silver bullet" to combat counterfeit activities; the techniques employed must be appropriate to the products and packaging. And often, a solution combines multiple techniques. Where the existing date/lot coding equipment can be used to add the security code to existing lot coding information, mass-serialization solutions provide an extremely cost-effective option, enabling verification (authentication) without special equipment.

Furthermore, mass-serialization can be combined with other brand protection techniques.  For example, if the security code is printed across a tamper-evident label and the label is later removed, the code will also be destroyed and cannot be copied or duplicated.

CounterFight has also recently launched a new product – Secure Product Profile (SPP) – which provides secure Internet authentication whereby the user is prompted to confirm certain characteristics such as color, format or even the content of a hologram, related to the product, batch and (optionally) the security code.

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Rachel Zedeck answers: Two things need to happen to adequately address the problem of identity fraud. First, banks need to take responsibility and step up efforts. Next, they need to adopt new technologies – including multi-layered protection – to identify and resolve these risks. Lastly, they need to conduct regular due diligence to know who to do business with and on what basis. They need to identify potential representatives, agents and business partners, and carry out due diligence checks on individuals, organizations and projects to make sure that claims made about them match reality.

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Emily Burns and Grant P. Fondo provide these hot hints for counterfeit litigators for PLI  (Practicing Law Institute), as featured in I/P Updates:

·         Conduct your preliminary investigation quickly, quietly and accurately

·         Notify the U.S. Attorney or relevant authority in your country (for ex parte authority)

·         Consider involving other governmental agencies (e.g., Postal Service, Homeland Security or Customs Enforcement)

·         Ensure all your evidence is properly presented before the court

·         Know the local bond requirements (in case the goods turn out to be real) and

·         Coordinate with the U.S. Marshals

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Lisa Lovell answers:
Essentially what you are trying to establish is the identity of the main players in the anti-counterfeiting arena, including the manufacturers, importers, exporters, suppliers, consignees, distributors as well as retailers of counterfeit products. Other intelligence which is helpful is the suspected countries of origin and the expected movements of suspected goods. Although this can sometimes be a difficult task, it is helpful to provide details of your authorised traders and licensees to prevent any disruption of legitimate trade. Also, other helpful information includes information on which distribution mediums are involved (i.e. car boot sales, markets, discount retailers, wholesalers and importers). The next question is, what can be done to reduce the risk of being a target for counterfeit products? If you don’t already, you should be considering how easy or difficult it is to manufacture the goods and if it is too easy you should be looking at using some sort of security labelling on your products. If you already have such a system in place, you should have a review procedure in place to monitor as and when your security measures could be improved. Ideally, such security measures should be difficult for counterfeiters to reproduce, and if it is able to be reproduced, will at least act as an added cost to counterfeiters. Further, you should be looking at how widespread the problem is and in which jurisdictions and consequently tightening up your supply chain. Any potential problems with parallel imports or factory over-runs should also be investigated. These items are nearly impossible to distinguish from the genuine article and so as much as intelligence as possible The bottom line is this. If you are losing valuable profits or market share to an infringer you need to do something about it. And fast.  

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Lisa Lovell answers: Those of us charged with increasing consumer awareness of counterfeit consumption must remember the following:

·         Understand that convenience and lower costs are the most common motivating factors for purchasing fake goods.

·         Crafting your message is key. Know that while consumers are aware that counterfeit goods result in a loss of legitimate sales and therefore has an adverse impact upon the public purse and on local businesses and jobs, the economic loss argument will remain ineffective in changing consumer attitudes if they see no direct and personal impact. Stress consumer safety, product integrity and the like.

·         Publicize the added benefits that come with a genuine and legitimate product, including the aura and value associated with owning the ‘‘real thing’’ as well as the ‘‘extras’’ inherent in them (such as special offers, product guarantees, etc.).

·         Avoid ‘‘holier-than-thou" implications’ and do not portray counterfeit consumers as deviant or criminal.

·         Target marketing messages to specific market sectors for maximum impact. For example, linking counterfeiting and organized crime – or counterfeiting and terrorism – goes a long way in changing attitudes toward purchasing fake goods.

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View the response here.

David Vise, author of The Google Story, answers a student's question regarding the potential contradictions in Google's patent policies and litigation strategies as they relate to Google's expressed ideal of organizing the world's information.

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Click here to see and hear Google CEO Eric Schmidt speak about intellectual property. 

Google CEO Schmidt discusses the importance of intellectual property rights, arguing that they are both fundamental to Google's very existence as a company and to its success as a for-profit organization. 

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Lisa Lovell answers: Law enforcement officials are an extremely valuable and cost-effective resource in the anti-counterfeiting war. Brand owners can adopt a four-pronged plan will help them fight this insidious crime:

·         Provide a clear point of contact - This will encourage officials to get in touch with the right person about any suspicious products they might come across bearing a brand name. This may seem like really obvious advice – but well worth giving as many brand owners don't make the effort to take this basic step.

·         Develop enforcement guidance - Provide officials with enough knowledge, by way of product identification guidance, so that they can make an informed decision about whether a product is counterfeit or not. This should typically include the types of products involved, the typical places of sale, and the usual prices that the products are sold for.

·         Share knowledge and educate – We always hear about the need to increase awareness, but quite frankly, all there ever seems to be is a lot of talk – but no action, not even on the Internet. In fact, only one industry has really made an effort to tackle the awareness issue, and that’s the film industry, with many of their advertisements raising awareness of DVD piracy and illegal downloading.

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Lisa Lovell answers:  
They don’t. Unless you tell them. You will need to provide information on how to recognise “counterfeit” products as well as how to distinguish them from “genuine” products. It may be helpful to provide a product catalogue as well as a dossier of information on the main counterfeit elements of the most popular targeted products. Something to bear in mind is that whilst it is all good and well to be educating law enforcement officers on the plague of counterfeit products, this information should also be relayed to your own workforce.

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Lisa Lovell answers: The only way you can do this is by putting intellectual property rights applications in place with the proper authorties in your country. This effectively prohibits entry into and export/re-exports of infringing products. 
Is it possible then to control the circulation of goods once they are inside the border? 
Yes. In the UK for example, you can utilise the services of Trading Standards. However, due to increasing lack of resources and manpower, and with over 205 Local Authorities throughout the UK, this task can be difficult. But it doesn’t have to be. Once a relationship has been established with a dedicated anti-counterfeiting representative, and an effective programme has been put in place, many Trading Standards Officers are usually very keen and more than happy to assist. In this way many infringements can be controlled. You can control any intellectual property right that you own. This will normally include the trade marks that are most likely to be infringed. Not only will you have to state which trademarks the law enforcement officers are to look out for, but also which goods are the most likely to be targeted by counterfeiters.

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View her response here.

The Inventor Lady discusses the importance of employing the correct intellectual property strategy for inventions, and the costs and benefits between design and utility patents. 

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Lisa Lovell answers: An IP audit involves a thorough investigation of a companies intellectual property rights. Such an audit confirms what rights the company owns and reveals any flaws in the title of such rights. As well as this, an IP audit should identify what steps can be taken to rectify these flaws. It is vital that companies should understand what a standard IP audits entail. Most executives I believe know – more or less, what is involved in a general IP audit. It typically involves the identification of rights in registerable intellectual property assets including trademarks, patents, trade dress and copyright. Such audits are carried out either before a company sells or purchases IP or before a merger or an acquisition takes place. The information for such an audit is usually obtained from a variety of sources including in depth interviews with management and technical staff. The result is that a value is then be assigned to the intangible assets that the company owns.

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US Copyright Office: For copyright purposes, visual arts are original pictorial, graphic, and sculptural works, which include two-dimensional and three-dimensional works of fine, graphic, and applied art. Examples of visual arts works include: advertisements, commercial prints, labels; bumper stickers, decals, stickers; cartoons, comic strips; drawings, paintings, murals; greeting cards, postcards, stationery; holograms, computer and laser artwork; jewelry designs, mosaics and puzzles; needlework, craft kits and sewing patterns; photographs, sculptures, stained glass designs and more. Check the US Copyright website for a complete list.

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Rafael Tzur, Esq., answers: No, because market share information could be skewed if one does not consider these three illicit trade factors that often affect the numbers:

1.       Genuine Products' Outflow refers to the efflux of domestic goods to undesignated markets. In other words, goods produced or aimed for the "domestic" market find their way to other markets (i.e., other countries) mainly by way of contraband activity. It must be noted that there could also be a legitimate outflow of products, wherein citizens of a country and/or international tourists purchase local products, travel and consume those products outside the country of origin. Although such goods are not necessarily consumed in that particular country, they are registered under "import" and/or "manufacturing shipments".

2.       Genuine Non-Domestic products (GND) refer to products that are smuggled into the country and not recorded as "imports" at all, since such goods do not enter the country via official channels. As with the Genuine Products Outflow, there are also GND products which are not regarded as smuggled goods, having entered the country via tourists and/or returning citizens.

3.       Counterfeit Products (referred to as "Number 2 Products") can be 1) produced and consumed inside a country, 2) produced outside the country and then smuggled into the country, and 3) produced in the country and then smuggled outside of the country. Once again, those products do not appear as part of the traditional market share "equation".

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Ian Lancaster answers: It is accepted today that layering authentication is the best approach, and that the combination of secure tracking and human-examinable authenticators is how authentication technology is evolving. So of course, combination devices are one future route for holograms. But serialization and tracking can also be achieved with holograms alone. Combining holograms with other devices is not necessarily the solution unless the reading infrastructure requires non-optical technologies..

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Francois Andlau answers: The best measures against these scams are preventative education and a rapid response team at a call center. For example, educate users of your online services about these scams by putting up a notice on the login screen of your website. Explain to them what type of scams are out there, how they can protect themselves, and what to do if they are victimized.

You can also provide a toll-free emergency number that clients can contact if they believe they have become a victim of one of these scams.

Another tactic is to send out regular e-mails to your clients regarding any new scams out there and post anonymous case studies of these scams on discussion groups on the Internet, where people can view and read it.

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