I MAY HAVE A CASE FOR LAW ENFORCEMENT:
What Do I Need to Know and What Do They Need to Know?
Assistant Special Agent in Charge at Homeland Security Investigations (HSI) Houston and former Unit Chief
Global Outreach and Training, National IPR Coordination Center
Does this sound familiar? You have invested and built your brand. You have designed, manufactured, marketed, sold and distributed your product. You have registered and recorded your intellectual property (IP) with various government entities including Customs and Border Protection (CBP). You have also fielded complaints from customers and have identified who is stealing your IP. But now you are at a crossroads: do you proceed with a civil action or do you present the case to law enforcement as a criminal complaint? And if you do present the case to law enforcement, how do you do so and what are issues do you need to consider?
Deciding whether to bring a civil action or present the case to law enforcement is a business decision that only you, the rights holder, can make. But if you do bring your IP theft case to law enforcement, there are some considerations that will affect the success of your case.
PRIORITIZING THE CASE
Law enforcement, at all levels, must constantly evaluate complaints and prioritize its resources to maximize efficiency. Even where you have a specialized law enforcement unit that focuses on IP theft, it must still prioritize its leads and cases (see BPP December, 2017 “Crime Prevention & Brand Protection: A Formula for Success (E+E=Enth)”).
Let’s look at how law enforcement may decide which cases to prioritize:
TRANSITIONING THE CASE
Another issue to consider is how to successfully transition the complaint to law enforcement. (see BPP, September 2016 “How to Be a Good Victim”). To be clear, I’m not talking about sending an email to a detective or meeting with an agent and discussing the lead. I am talking about investigative work by the rights holder before referral. Even if the rights holder or its private investigator makes test purchases, at some point law enforcement must conduct its own investigation, which may include their own evidence purchases or undercover negotiations. There are several reasons for this, but the primary one is the need to ultimately prove that the suspects knew they were committing a crime and trafficking in counterfeit or pirated goods.
Many times when taking over an investigation, law enforcement will ask rights holder how do we get an undercover meeting with the target? This is when law enforcement learns if the rights holder’s investigator has left the cover story open to insertion of a law enforcement officer, or if the cover story was so detailed or specific that bringing an officer into the scenario would be unrealistic. If the cover story was too detailed, law enforcement would have to start from the beginning to establish the necessary elements of the crime. This happens more often than we would like and can adversely affect the ability of law enforcement to pursue the case. The best advice is to always leave the story, used in the rights holder’s investigation, “open” and talk to your law enforcement partners about various scenarios that have worked in the past to ensure this happens. Remember, the more you tell a suspect, the more you own the story and have to prove. Hence, from the law enforcement perspective “less is best”.
The final consideration is the importance of supporting the case from beginning to end. Rights holders and law enforcement both need a clear understanding and reasonable expectations about the level of support being provided during the investigation and prosecution. Discussion between the two should include how and what information can be exchanged, availability of experts to testify at trial, product identification support, disclosure of any previous or pending civil actions or licensing/business agreements, and media availability.
Both sides must know the ground rules prior to getting too far into the case and finding problematic issues in an investigation or prosecution. The ability for rights holders and law enforcement to have an open and frank conversation helps build the trust and relationships that are needed to tackle IP theft (see BPP, March 2017 “Moving IP Crime Out of the Shadows”).
* The views expressed in this article are exclusively those of the author and do not necessarily represent the views of the U.S. Department of Homeland Security, its components, or the United States.
THE BRAND PROTECTION PROFESSIONAL | JUNE 2018 | VOLUME 3 NUMBER 2
2018 COPYRIGHT MICHIGAN STATE UNIVERSITY BOARD OF TRUSTEES