Our clients invest significant resources in developing strong, distinctive, enduring brands. It is essential that they be protected, nurtured, and grown. Arnold & Porter's brand enforcement practice understands that our clients' brand names and goodwill are among their most valuable assets, and has assembled a team of highly experienced lawyers to protect them.
Many of the world's leading companies turn to us for help in dealing with both the routine and the most complex issues that arise regarding the protection and enforcement of their critical intellectual property (IP) rights. With offices in strategic locations, and the experience of having enforced our clients' IP rights in many countries, we are able to serve clients in industries—including luxury goods, pharmaceuticals, music, film, and software—where counterfeiting and piracy proliferate. Our brand enforcement credentials are especially strong in Washington, DC, New York, Los Angeles, and London, where we have worked on behalf of some of the most prestigious luxury brands in the world. Our capabilities are not just limited to litigation, where we have had many successes—we also lead domestic and international investigations, work with law enforcement and border patrol personnel, and audit our clients' supply chains for evidence of both counterfeit and diverted authentic goods. We are truly a full-service operation when it comes to enforcing our clients' brand rights on a global basis.
Anti-Counterfeiting and Brand Enforcement
A counterfeit product is one that is knowingly made with the intention of deceiving a recipient or buyer as to its true identity, content, or origin, and is branded with another's registered trademark. Counterfeits are found in many industries, including fashion, jewelry, auto parts, software, and pharmaceuticals. A counterfeit product is often indistinguishable from a product protected by a registered mark, but is usually of lower quality and almost always costs less to manufacture.
Counterfeiting today is widespread and even rampant. Its effects are pernicious. Counterfeit products deprive legitimate businesses of revenue, and undermine consumer confidence. Even more seriously, counterfeiting may put human safety and lives in jeopardy. Fake drugs, for example, threaten public health. The World Health Organization estimates that unauthorized drugs account for over 10 percent of all pharmaceutical products worldwide. An individual who inadvertently consumes a counterfeit drug is at obvious and immediate risk, with severe injury and even death a possible outcome.
Arnold & Porter attorneys are well-equipped to assist our clients in combating a worldwide counterfeiting problem. Our attorneys have won a number of leading decisions holding the suppliers and retailers of counterfeit products accountable for their conduct, and have recovered multimillion dollar settlements and judgments for clients in these matters, establishing new law in many instances.
Counterfeiting and Supply Chain Security
As difficult as the challenges posed by counterfeiting are, there is one important area over which businesses can exert a large measure of control: the security of their own supply chain. This is not to minimize the difficulties posed. Globalization and the Internet have made it easier for counterfeiters to infiltrate a company's supply chain, allowing for the distribution and availability of non-authentic goods around the globe. Still, by identifying and addressing weaknesses in the supply chain, a business can vastly curtail a counterfeiter's harm.
Secondary markets are a good place to start. By developing much tighter contracts with secondary market retailers, a brand owner can regain and enforce a large measure of control. This might entail, for example, requiring that all unsold merchandise be returned, or being more selective about secondary buyers to whom the merchandise can be resold. Strong supply chain oversight yields yet another important result: it can discourage counterfeiters from undertaking illegal activity at the start.
Arnold & Porter attorneys can help a business audit its supply chain, so that it can identify and close supply chain gaps. Additionally, we have experience working with and building relationships with law enforcement. We can assemble and bring evidence to the attention of the authorities for the prosecution of counterfeiters who may have breached the supply chain.
Counterfeiting, Police, and Customs
Working with law enforcement officials is an important component in any drive to curb or end counterfeiting. One aspect of this is to ensure that details of IP rights are registered with border controls and that local, federal, and foreign law enforcement officials are adequately trained to recognize and positively identify counterfeits. Another involves aggressively investigating all supply chain incidents, and gathering sufficient evidence so that authorities can act on it. Arnold & Porter attorneys can drive these efforts home with cease and desist orders that put counterfeiters on notice and help gain quick resolution in court.
Grey market goods (or "parallel imported" goods) are goods originally intended by their manufacturer to be sold in certain countries that have been diverted to other countries where the manufacturer never intended to have them sold. Typically, the goods are diverted to a country area where the client's authorized goods sell at a price higher than the party importing the diverted goods will charge. The manufacturer's control over prices is thus diminished, as is the brand's image, cachet, and value. Arnold & Porter lawyers can identify and implement strategies to avoid contractual problems in the supply chain and to enforce trademarks against unauthorized imports. This may be of particular importance to our clients, for in many circumstances, parallel importation and repackaging of goods is permitted in the US and the EU.