Infringement of intellectual property (IP) poses significant losses to U.S. companies each year. As technology advances, infringers capitalize on new methods of misappropriating trade secrets and infringing upon both copyrights and trademarks. While intellectual property encompasses a broad range of rights including trademarks, copyrights, trade secrets, patents, domain names, and other proprietary rights, this article focuses primarily on trademark and copyright infringement occurring either on the Internet or through physical products (e.g, counterfeiting).
IP enforcement programs are typically aimed at either a small group of infringers, where the infringement is concentrated, or situations where the infringement is widely dispersed across several infringers. This article discusses enforcement programs aimed at widely dispersed infringement situations. Litigation is frequently the best option when there are a few, concentrated infringers.
The following provides 8 steps to follow when setting up an IP enforcement program. Each step drives the program’s effectiveness and efficiency.
1. Determine the harm being suffered.
The first step is to determine what harm is being suffered. This is a critical aspect of the cost-benefit analysis. One significant harm suffered by IP owners comes from the lost sales due to imitation products. This occurs in a number of industries such as the software, luxury brands, and video equipment industries. On the Internet, harm may include diverted leads, increased pay-per-click costs, confused purchasers (returns, complaints on social media sites), and injury to trademark rights and goodwill. Whatever the harm, the more it can be monetized for analysis, the more exact the analysis will be in designing an enforcement program.
2. Set goals for the program – begin by defining the “win.”
Programs are generally more successful if the IP owner defines the “win” upfront and sets measurable and objective standards by which the program’s success can be measured. Standards can include reducing the frequency of counterfeit product sales or reducing the presence of infringing trademark usage in search results or paid advertising. Such use of objective standards eliminates both subjectivity and provides tangible feedback on the program’s performance.
3. Determine benefits and costs.
As with any business decision, whether to engage in an enforcement program should start with weighing the costs of the program against the possible benefits. If the program fails to provide more benefits than costs, it likely will not be successful. The benefits of an IP enforcement program can include direct monetary recoveries via settlements and judgments as well as indirect monetary benefits such as ending infringement and its consequent indirect sales loss. Some programs may focus only on stopping infringing activity altogether. All of the monetary benefits, however, from ceasing such infringing activity may be hard to monetize.
The costs, on the other hand, may include the initial time needed to develop the program (such as initial document gathering), ongoing support with investigations, and litigation support if/when the lawsuit is filed to enforce the IP. Often, the largest expense or cost may be the actual legal fees themselves. As such, different billing types can be used – such as hourly, flat fee, contingent fee, and hybrid. In my experience, we’ve employed all of these billing arrangements and prefer a flat fee coupled with some type of success-related fee based on performance. Until a number of investigations have been completed, it may be difficult to estimate a flat fee cost. As such, you may want to run a trial period of 5-10 investigations, stop to analyze the costs, and then re-adjust the billing arrangement.
4. Identify and register the IP.
I included this step due to the mistakes I’ve seen in my fifteen years of handling IP litigation. Due diligence and care should always be taken to trace the chain of title from the initial owner of the trademark or copyright to the company that is now asserting the rights to ensure that the chain is complete. This may require verifying the original owner and then ensuring that any needed assignments are executed and recorded correctly with the U.S. Patent and Trademark Office (PTO) or U.S. Copyright Office.
In addition to verifying ownership of the IP, the company should consider obtaining a federal (preferably) or state trademark registration before beginning its program. Federal registration grants the trademark owner several advantages, such as presumption of ownership, nationwide rights, and constructive dates of use, which usually justifies the cost of registration.
For copyrights, a registration is needed or at least applied for before a lawsuit may be filed. Moreover, in many jurisdictions, a registration is required pre-infringement to recover attorney’s fees and statutory damages.
5. Ensure the program is staffed correctly.
IP enforcement programs typically run linearly – (a) initial investigation, (b) commencement of engagement against the infringer, and (c) ending the process with a settlement, lawsuit, UDRP (for domain names), or a letter setting up willful infringement. Because of its linear nature, IP enforcement programs lend themselves to being systemized to increase resolution speed and efficiency. The law firm or company should have a system set up that manages these three stages. Personally, we have found integrating our IP enforcement program with a database, an operations manual, and a forms library to be especially effective measures.
Once the overall system is set up, the next challenge is assigning the right staff to the various responsibilities. Ideally, you want a detail-oriented person to manage the day-to-day operations, a lawyer that is people-oriented to engage with the infringers, and a third person that is the systems architect. All three personality-types are needed for a great system to work.
6. Monitor, analyze, and improve the program.
Having established goals and defined the “win” at the outset of the program, the system should report on those standards periodically. We have found monthly or quarterly to be effective monitoring intervals to run reports and analyze them. You can then use this analysis to determine whether the program should be modified. For example, if one of the metrics is the average time to close an investigation, and that time period begins to become unreasonable, you should analyze why that time has increased and see where the breakdown has occurred. Some solutions could be as simple as shortening the time frame to send the initial demand letter or adding an automatic second step such as sending a reminder letter shortly thereafter.
7. Look for new forms of infringement.
As technology progresses, so do infringers. This is sometimes referred to as the “whack-a-mole problem.” It seems like you have stopped one form of infringement when another crops up. History shows that infringing activity on the Internet comes in waves as new technology emerges – it began with domain name squatting (cybersquatting) and typosquatting; then came website copy and meta tags; next, there was source code, title tags, and header tags; then there was search engine directories and pay-per-click advertising; and now it has evolved to social media and username squatting. For copyrights, copying has evolved from simple digital copies to file sharing and bit torrent copies.
The paradox of having an effective IP enforcement program is that success may drive infringers to develop new types of infringement. As such, vigilance is always required in order to react and help your IP enforcement program grow.
8. Leverage successes.
In a dispersed infringement scenario, it can be difficult to pursue each infringer or would-be infringer due to their sheer numbers and associated costs. Therefore, a significant advantage can be gained by publicizing the IP program’s enforcement success through public relations, the Internet, and other similar channels. This may deter infringers and lead them to move onto what they believe to be easier targets. The cost of publicizing such wins is usually markedly less expensive than the legal fees required to pursue these same infringers.
Lastly, another more aggressive tactic is to select a small group of strategically-attractive infringers to sue for injunctive relief. This injunction can then be used to demonstrate both an IP owner’s willingness to enforce its rights as well as the strength of that particular trademark or copyright.
The key to an effective IP enforcement program is executing on the above 8 steps. Once all are in place, focus should be given to improving the weakest performing steps.