If your product (jewelry, toys, books, etc.) is tangible and sold at retail, the good news is that enforcing your copyright and trademark rights is more straightforward than with downloadable products. With downloadable goods – like music, movies, and photographs – it’s often difficult to determine even the continent on which the infringer is located. With merchandise that can be located at a physical location in the U.S., an investigator can visit, purchase, and provide a report.
With an affidavit version of the report and photographs of the infringing goods in hand, starting a lawsuit and making a motion for immediate injunctive relief (a “temporary restraining order” or “T.R.O.”) is relatively simple. The advantage of brick and mortar warehouses or storefronts is that the plaintiff can do things the old fashioned way: with a court-ordered injunction and seizure, to be enforced by the U.S. Marshal’s office.
Making the motion appropriate in scope is a challenge. In the enthusiasm to prevent any and all additional infringing conduct, attorneys might seek relief that is rather open-ended. For example, it’s tempting to seek an order shutting down not only the sale of the infringing goods, but the whole store and website that advertises the counterfeit goods, and all the books and records. Judges sometimes frown upon such broad relief, and even if they grant what’s been requested, only at the cost of a sizable bond to protect the defendant from the court’s inadvertent error in granting the T.R.O. It’s sometimes more prudent to be more tailored.
Even when you know where the infringer is located, the investigator needs to confirm where the infringing goods are located. (Think: Kevin Costner’s portrayal of Elliot Ness in The Untouchables, staging an FBI raid and wielding an ax only to break open a crate of imported umbrellas rather than whiskey. That’s an image we’d rather not experience in real life – and you don’t want to be held liable for the Marshal’s damaging unrelated, non-infringing goods.)
So, a key element of getting a seizure of infringing goods is a thorough investigation. We’ve worked with private investigators who have demonstrated that tenacity, creativity, and patience can pay off. Confirming that a website has a physical address in a local neighborhood is one thing; figuring out the pretense under which the investigator can visit that address is another. “Pretense” suggests another danger – potential counterclaims for fraud. To avoid such counterclaims, work with an investigator who is licensed. The plaintiff shouldn’t pretend, for example, to be a young mother who needs to buy not just one, but an armful of infringing children’s books for a 2-year old’s party – leave that to a professional. Also, an investigator’s affidavit is more objective and credible than one coming from an employee of a justifiably angry plaintiff.
If they’ve got the goods… go get ‘em.