Don’t ya just love e-commerce? Effective web monitoring programs for anti-counterfeiting

Establishing the best web monitoring program for a company is not a one-size-fits-all approach

Whack-a-mole, plugging holes in a dam, swatting flies, the zombie apocalypse. No matter the analogy, fighting online anti-counterfeiting can seem like a never-ending battle which is impossible to win. Many brand owners are so overwhelmed by the process and paralyzed by indecision that they do nothing and pretend the problem is not growing. While it is true that anti-counterfeiting can be a monumental task, doing nothing is the best way to be assured that it will get completely out of control.

Like any problem, it is much easier to make progress if broken down into component parts. In our first article of this series we talked about the threshold issue of budgeting for anti-counterfeiting. In the second, we discussed positioning a trademark portfolio for maximum effects on counterfeits. In the third article we outlined the benefits of working with U.S. Customs. In this article, we turn to online monitoring and what it takes to implement a program to take action against the onslaught of fakes readily available to customers at the click of a mouse.

Customization of a web monitoring program is dependent upon a number of factors, but a quick snapshot of a basic web monitoring program looks like this: Listings for counterfeit products are identified on various sites (eBay, Alibaba, Amazon etc) by either a live person or via a software program. A request is filed with the website operators in accordance with that site’s published procedures to remove the listings. Back and forth communication ensues between the brand owner and the website and ultimately most listings are removed. In some instances, a brand owner may follow up with requests to reveal the identity of the seller or other information. Brand owners may also communicate with sellers who may be willing to reveal sources for the products. All interactions, removals and requests are tracked for informational purposes and possible escalation for the most egregious cases. With the right system in place, hundreds to thousands of listings can be removed in a month, and after 2-3 months of consistent action, the presence of counterfeits typically begin to lessen.

For a web monitoring program to be successful, a brand owner needs the right team and the right tools. First, decide who in the company is going to be tasked with the project and whether the program will be run entirely in house or if the company will use outside help. If running in house, brand owners will need a management level person to coordinate with a lower level person who is tasked with actually crawling the web or reviewing software reports and filing removal requests on the websites at issue. If outsourcing, a person in the company with some decision making power and knowledge of the products will need to be assigned as point of contact with outside counsel.

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FURTHER READING:

Stopped at the border: How U.S. Customs and Border Protection can help protect your brand

FedEx faces arraignment for drug trafficking charges

Proposed U.S. and EU trade secret laws could create more tools to protect your valuable information

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Second, determine whether a live person will be conducting manual searches or if a software service will be purchased to produce reports of questionable listings. Generally, there is no substitute for a human eye on the process. While software is a great tool to produce reports, and some automate the removal filing part as well, having a person experienced with the concepts of intellectual property infringement filing takedowns, interacting with sellers and tracking results often provides a brand owner with a valuable perspective on the process and allows for a more focused approach to the areas where the biggest problems exist.

Companies with successful web monitoring programs are also aware of a number of common pitfalls. Proper training of web monitoring teams will help reduce the likelihood that removal requests are filed in error. First, many industries see products available online which due to pricing and quantity appear to be counterfeit. However, upon further investigation the products are actually earlier or retired models purchased through liquidators and sold at close-out prices. Second is the used product market, most prevalent on auction sites like eBay where sellers are simply cleaning out their closets and looking to make extra money. Third, is the trademark concept of fair use and nominative fair use where sellers use trademarks, not to sell counterfeits but to somehow distinguish or clarify the goods they are selling. In some instances, sellers may use a brand name to clarify compatibility or for legitimate comparative advertising purposes.

When implementing a web monitoring program and determining guidelines for the team, brand owners should consider company philosophy. For example, is the company interested in establishing or maintaining a reputation for being aggressive or would it prefer to foster an environment for amicable resolutions with sellers? Does the company have a particular devoted fan base which it risks alienating with certain actions? If yes then this could counsel for a measured approach which may result in less immediate takedowns and increased communication to that fan base.

Sometimes, even more valuable than removing counterfeit listings, a web monitoring program can provide valuable information to a company about the largest sources of the problem. Fostering communication between individual online sellers regarding their sources for product and careful tracking of the results of takedowns can often generate leads for formal investigation and possible escalated action. No web monitoring program is complete without keeping records of such information.

Establishing the best web monitoring program for a company is not a one-size-fits-all approach. It is a highly customized process which benefits from a careful review of all angles of the situation. Working with a firm with expertise in the area can often guide a company through the creation of the program, troubleshoot as necessary and parse through results to identify root causes and the truly “bad actors.” Although it can seem daunting at the outset, paying attention to online counterfeiting and establishing a cohesive program is absolutely necessary in the world of e-commerce.

Contributing Author

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Kelly Phair McCarthy

Kelly McCarthy, an intellectual property attorney at Sideman & Bancroft in San Francisco, focuses her practice on trademark, brand protection and anti-counterfeiting issues. She...

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