Guiding Law Enforcement, Prosecutors, and IP Rights Holders in Europe with John Zacharia
John Zacharia is an attorney with extensive experience in IP investigations and prosecutions. He previously worked at the U.S. Department of Justice, where he served as the Assistant Deputy Chief for Litigation of the Computer Crime and Intellectual Property Section (CCIPS). Now in private practice, John counsels clients on addressing intellectual property violations, cyber threats, and represents them in domestic and international commercial litigation and administrative law actions. John is also a member of The Brand Protection Professional Editorial Board.
Readers will recall that we spoke to John previously, in the 24th edition of the Brand Protection Professional, on Understanding Artificial Intelligence and Enforcement of Rights following the work he did on co-authoring the European Union Intellectual Property Office (EUIPO) study on the “Impact of Artificial Intelligence on the Infringement and Enforcement of Copyright Designs” issued in March of 2022. We also spoke with John in the 20th edition of The BPP, on Deep Dive into International Cooperation Tools for Brand Protection following the work he did on co-authoring the EUIPO study on the “International Judicial Cooperation in Intellectual Property Cases” issued in March of 2021.
Now, we will talk to him about two additional publications he has worked on for the EUIPO; both guides, “The IP Crime Investigation Handbook” (Handbook) and an IP rights holders guide, focused on criminal referrals. Though the first guide is intended for law enforcement only, covering trademark counterfeiting and copyright infringement, and not for public viewing, he will walk us through some of the aspects covered in the guide. We will also provide information to our law enforcement readership on how to access the guide through required credentials; for the second guide, he will provide a preview as this guide is intended to publish in the first quarter of 2024. This will be publicly accessible and help guide brand owners on how to best prepare a criminal referral of trademark counterfeiting, copyright infringement, and trade secret theft cases to law enforcement.
Welcome again John! Nice to have you back talking about your work on some additional publications for EUIPO. Both are timely and instructive guides given that in March of 2021 the EU identified IP crime as a major criminal threat to the European Union.
First off, thank you Leah for the kind introduction and for having me back again to talk about my work in Europe. I was honored to join another amazing United Nations Interregional Crime and Justice Research Institute (UNICRI) team to produce and author the handbook and the forthcoming guide. And I’m excited to talk with you about them since this edition of the BPP will focus on the prosecution of IP crimes.
Yes, so for the period of January 2022 to December 2025, the EU, through the European Multidisciplinary Platform Against Criminal Threats (“EMPACT”) process carried out every four years, identified IP crime as a priority in the following way: “IP crime, counterfeiting of goods and currencies – To combat and disrupt criminal networks and criminal individual entrepreneurs involved in IP crime and in the production, sale or distribution (physical and online) of counterfeit goods or currencies, with a specific focus on goods harmful to consumers’ health and safety, to the environment and to the EU economy.” So this became a priority in Europe.
The Handbook on investigations of IP crimes is restricted to law enforcement, and other national authorities, but are there a few things you can discuss with our wider BPP audience?
Yes, I’d be happy to.
First, what is the aim of the investigator’s Handbook?
The intent is to develop a practical tool for use by law enforcement and other national authorities to investigate, prosecute and adjudicate IP crimes.
Who were the participants who helped develop the concept of the Handbook?
EUIPO was the “operational leader”, with EUROPOL as the co-leader , and other EU institutions such as EUROJUST, CEPOL and the EUROPEAN ANTI-FRAUD OFFICE (OLAF) contributed to the Handbook’s development too. Currently EU members supporting and participating in the Handbook’s development include: Belgium, Bulgaria, Cyprus, Denmark, Germany, Greece, Hungary, Ireland, Malta, Netherlands, Portugal, Romania, Spain, and Sweden. Also, non-EU “third-country” participants include Albania, Moldova, North Macedonia, Serbia, Switzerland, and United Kingdom. It is expected that the United States, through the US Department of Justice, will join as a participant too.
The team putting together the actual Handbook included EUIPO, the UNICRI team I was a member of, as well as valuable input received from IP enforcement experts and cyber experts.
What methodology was employed in developing the Handbook?
For this first version of “The IP Crime Investigation Handbook”, we developed hypothetical but realistic modus operandi (MO) in two broad categories: production and marketing of IP-infringing goods, and infringement of copyright-protected digital content. Within each MO, we walked through the source of the IP-infringing goods or digital content, the physical and/or digital infrastructure used by the IP criminals, how they marketed to would-be customers, delivered the IP infringing goods or content, what type of revenue or reputation-based gain the IP criminals sought, and how they used anonymity to make their illegal efforts resilient to enforcement efforts. Using this MO-focused approach is an innovative and scenario-based way to guide IP crime investigators on how to investigate various types of trademark counterfeiting and online copyright crimes.
Were there best practices that were developed as a result of the conclusions reached?
We identified several — some of which are well established. Among these would be to follow the goods, follow the money, follow the person, and follow the pixel. Another best practice would be for investigators to use digital forensics in all IP cases — even hard goods counterfeit cases — because virtually every crime today involves the use of a computer, a smartphone, or other small electronic device. Investigators should initiate upstream investigations to identify the source of infringing goods and content and to identify high impact targets. Investigators should also look for other crimes — such as cybercrimes and money laundering — that often go hand-in-hand with IP crimes.
I’m intrigued by “follow the pixel”. Can you explain that to our audience?
Following the pixel can manifest itself in many ways. For example, investigators could look at the source code of an ad-based website selling counterfeit goods and identify a property number or tracking code that could be used to identify who is receiving payments for advertisements on the website. The person receiving such payments will often be the same person selling counterfeit goods on that site and other websites as well that use the same property or tracking code.
Can you talk about the IP crime case steps?
Sure. Although there are many ways one could do it, we identified six broad steps. The first step is initiating an investigation. Sometimes the government initiates its own investigation ex officio, such as when a criminal investigation starts after customs seizes containers of counterfeit goods. However, as our readers know well, most cases start with a complaint from the brand owner or rights holder. The second step is to decide upon an investigative strategy — and that’s when the follow the goods, follow the money, etc. approach would come into play. The third step would be the preliminary investigation that is largely conducted before the target of the investigation is aware of the IP crime investigation. The fourth step would be the “action day.” That would be the day when investigators and prosecutors would coordinate the execution of search warrants, arrests, and/or mutual legal assistance requests for evidence residing overseas. Once the evidence has been assembled as a result of the “action day,” then law enforcement and prosecutors analyze and organize this investigation during the next step — the main investigation — to obtain an indictment or other criminal charging document. The final step is the judicial step of pursuing and obtaining a conviction, sentence, and the final disposition of the counterfeiting or infringing items.
Can you walk us through some of the investigative techniques, methods & tools?
As you can imagine, the Handbook devotes a lot of space to the types of
investigative techniques. It covers the basic investigative methods and counterfeit good-specific investigative methods one might expect. In addition, the Handbook covers special investigative techniques for online investigation, as well as network and device forensics.
What do you anticipate future iterations of the Handbook will include?
It is expected that we will add sections on cyberfraud related to IP infringement, registration invoice fraud, fraud with copyright in nonfungible tokens (NFTs) and on trade secret theft using the same MO approach that we used for the counterfeit goods and copyright infringement sections of the Handbook.
You will also be working on the IP rights holders guide expected to come out in 2024. This guide will be publicly available. What countries will be covered, and what organizations and entities will be involved?
We expect his guide will also be part of the EMPACT priority covering IP crime, and the EUIPO will also be the operational leader.
So starting where we did with investigator’s guide, what is the aim of the IP rights holders guide?
The main goal is to help IP owners put together criminal referrals that will maximize the likelihood that they will be considered and accepted by law enforcement.
And who are the participants in putting together this guide?
I am fortunate to be joining another great UNICRI team to produce and author this guide, and the participants are largely expected to be the same as with “The IP Crime Investigation Handbook”.
I know it’s early in the process so things such as methodology and best practices have not been decided on, developed, or discovered but in thinking beyond the aim of this guide, what are your hopes in what it can provide and achieve?
Personally, I hope it will demystify the criminal referral process — especially for IP owners who are victims of IP crimes but are less experienced in referring these crimes to law enforcement. And I hope it will help more IP owners who have more experience referring to IP crimes understand better how to “fine tune” and improve how they put together their criminal referral packages.
Any closing thoughts?
I hope that “The IP Crime Investigation Handbook” and the forthcoming rights holders guide complement each other. Specifically, I hope that the rights holders guide will make criminal referrals easier for rights holders to present to law enforcement, and I hope it makes it easier for law enforcement to accept these referrals for investigation. By the same token, I hope that “The IP Crime Investigation Handbook” moves the needle for investigators to make their investigation of the criminal referrals that they do accept more effective and more impactful.
Well once again thank you John for sharing “insider” insights with our BPP readership on two important publications.
THE BRAND PROTECTION PROFESSIONAL | JUNE 2023 | VOLUME 8 NUMBER 2
2023 COPYRIGHT MICHIGAN STATE UNIVERSITY BOARD OF TRUSTEES
- Next…