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Member Spotlights Header - Jan 2021

Please view this month's Member Spotlights!

We thank all of the participants for contributing and sharing their expertise with us. Member companies are randomly chosen each month to participate as a way to connect and educate our member community.

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Astrid Schonfelder

VP Business Development

AXENCIS INC

Cologne, Germany

What is your role in your company/organization?

 

My main role is consulting with new potential clients, advising on how our services can help to protect their brands. How we can enforce sustainable measures, and how to offset their brand protection budgets by securing substantial amounts of compensation for them.

 

I also specialize in actively pursuing strategic opportunities by cultivating partnerships and other commercial relationships with industry innovators, as well as identifying new markets for our competitive services.

 

What makes your company unique?

 

While most I.P.R. protection programs just focus on removing counterfeit listings from online marketplaces our technology automates counterfeit detection and is used alongside our trained investigators who manually facilitate their removal. Going deeper and taking down not only the listings themselves but targeting the actual individual behind it, sellers are held personally liable for all costs.

 

This makes us truly unique in the world of brand protection, there is never any cost to our client. We work on a contingency basis and the cost of our program is 100% covered by the assets we seize from counterfeit sellers.

 

Can you provide your top 2 best practices for protecting IP?

 

Think global! Digitalization and Globalization lead to infringements of brands and trademarks in places where national laws do not apply. Counterfeit sellers can ship their products worldwide without leaving their own (protective) country, predominantly Asia. AXENCIS uses solutions which allow us to target sellers no matter where they operate.

 

Also, efficient counterfeit detection and takedowns are not enough, it is about implementing a long term and sustainable solution. Uniquely here at AXENCIS our Legal Team leads by freezing the criminal’s assets and then by ultimately having them compensate their victims, our clients, which has proven very effective. 

 

Can you tell us something about yourself outside of your job?

 

Brand protection is International, and I am as well.

 

I grew up in Germany, studied in the UK and have lived in many different countries like Spain, Turkey, Belize, Cyprus and the United States. I speak three languages in addition to “Low German”. Low German is almost extinct and spoken only in rural areas of northern Germany. Regular German speakers are not able to understand it. I learnt it from my grandparents who spoke to us only in Low German. I am proud to keep this tradition alive, even though I know that this language will sadly, eventually die out.

 

Contact info: aschonfelder@axencis.com 

 

 
Bonnie

Bonnie E. MacNaughton

Davis Wright Tremaine LLP

Partner

Seattle, WA, USA

 

What is your role in your company/organization?

 

I am a former federal prosecutor and assistant general counsel in the Microsoft Digital Crimes Unit, and I also lead Davis Wright Tremaine’s nationally-recognized cybercrime enforcement and brand protection practice.

 

Co-chair, Women Attorneys Affinity Group. Admitted to practice in Washington and California.

 

What’s one piece of advice you can give a brand looking to enforce their IP? 

 

I believe that building multi-disciplinary teams of service providers who are able to work across regions is key to effective IP enforcement. Collaboration, not competition, between experts yields results.

 

What's the most rewarding part of your job / what is the thing that you've been most proud of in your anti-counterfeiting work?

 

I enjoy learning about my clients’ unique business and legal issues and helping them to address them as part of a collaborative team. Each clients’ needs and goals are different and require customized approaches. In the anti-counterfeiting field, I am most proud of the cases I have lead in which the defendants not only shut down their operations, but are forced to disgorge their illicit gains to my clients. I feel a sense of great satisfaction when crime doesn’t pay.

 

Who has inspired you most in life?

 

I was deeply inspired at an early age by my dad, an Episcopal minister bishop, who taught me that being someone who advocates for those in need is both a responsibility and a privilege. This guiding principle of protecting others from harm is what lead me to choose to use my legal skills in both the criminal and civil arenas to hold bad actors accountable.

 

Contact info: bonniemacnaughton@dwt.com

 
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Juan José Caselles

ELZABURU

Doctor of Laws, Lawyer

Madrid, Spain

 

What is your role in your company/organization?

 

Head Anti-Counterfeiting Dept.

 

What makes your company unique?  

 

ELZABURU is a multidisciplinary Spanish professional firm established in 1865, composed of lawyers, engineers, chemists, biotechnologists and other professionals who place all of their knowledge and efforts at the service of their clients in order to protect and defend their clients’ IP rights.                                     

 

ELZABURU is the longest-standing IP law firm in Spain; it offers a full range of services in its field (contentious, contractual, prosecution); it has the largest team of professionals with 164 full-time employees. Furthermore, it is the law firm with the most legal proceedings under way (250 on average); and proportionally it advises the largest number of top clients (70% of the top 50 Fortune 500 companies are clients of ELZABURU).

 

What's the most rewarding part of your job / what is the thing that you've been most proud of in your anti-counterfeiting work? 

 

My work has allowed me to assemble into a single focus (the protection and defense of IP) my diverse academic background, as a Doctor of Laws and Graduate in Criminology, as well as all aspects of my professional experience from a triple perspective: judicial, as a Deputy Judge; academic, as an associate professor of IP law and criminal procedure law and author of various publications; and practical, as a practicing lawyer in permanent contact with police, customs, prosecutors, courts, investigators, etc. The combination of all these pieces has provided me of a unique and complete vision of the different problems encountered in IP enforcement, hence the publishing of my doctoral thesis on IP enforcement for the general knowledge of the community.

 

How did you get into brand protection? 

 

It was by chance that in 1996 I met Alberto de Elzaburu (may he rest in peace) and accepted his proposal to join his office specialized in IP. I started my professional career as a Deputy Judge in the Courts of Alicante. Afterwards I became a consultant in technology transfer and business cooperation for a New York public body and a coordinator of a European regional development project in Valencia. In 1996, Elzaburu Law Firm decided to create its own Litigation Department and I immediately became part of it. Now it is has almost been 25 years dedicated to protecting and defending IP rights.

 

Contact info: jjc@elzaburu.es 

 

 
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Simon Baggs

Incopro

CEO

Cheltenham & London; United Kingdom

 

What is your role in your company/organization?

 

Lead a great team of people.

 

What makes your company unique?

 

Incopro tracks and prevents brand misuse for over 750 of the world’s best-known brands. We are a mission driven business, started with a clear purpose that remains our focus today – to ensure that our customers (and their consumers) are protected online. This means we deliver outcomes as well as insights. We know that in-house legal teams want to be seen to add value to their business, so we deliver global impacts that make headlines within the e-commerce and marketing teams for our customers. We also know how strong we can be together and so we drive cross-customer collaboration wherever possible.

 

How do you / your company contribute to the brand protection community? 

 

Incopro’s focus on protecting rights leads us to pursue issues that have a much wider contribution to the IP and brand protection cause. This year, Incopro spearheaded a campaign to get Google to remove links to Counterfeit items from their organic search results. Stand-alone websites offering counterfeits can often be difficult and costly to take down and Google can do much more to help at scale. We are thrilled to have seen Google change its policy. We have also established INSYNC – a community that brings brands together to share insights and to push for advances from platforms and other intermediaries.

 

How did you get into brand protection?

 

I started Incopro with my co-founder to deliver more insight and intelligence for IP owning businesses. I am a Partner in a UK law firm and I could see that technology and data could play a huge role in delivering scalable rights protection. When we were approached by a customer in 2015, our small team was delighted to build a new brand protection technology and to roll our platform out to other IP owners. We now protect over 750 brands, have staff in China, USA and Europe and continue to grow strongly.

 

 

 
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Brian D. Cairl

K2 Integrity

Senior Managing Director and Director of Investigations of the Americas

New York, USA

What is your role in your company/organization?

 

As senior managing director and director of investigations of the Americas, Brian works with clients to mitigate a wide range of fraud and corruption risks and to respond to compliance breaches and integrity incidents; he also provides extensive dispute advisory support. Directing a multidisciplinary team of researchers, cyber experts, and forensic accountants, Brian conducts sensitive and complex business intelligence assignments across multiple jurisdictions for corporations in the medical, pharmaceutical, transportation, real estate, construction, and electronics industries.

 

Can you provide your top 2 best practices for protecting IP?  

 

We have several tips in recent insights, but two key practices include:

  • Ensure proper registration of trademarks. Organizations should ensure their trademarks are properly registered and maintained. Registration can help when pursuing claims involving goods with a counterfeited mark. Aggressive enforcement can act as a deterrent to fraudsters, serving notice that the company is willing to seek financial sanctions and take legal action.
  • Monitoring and alerts. A company must have robust monitoring and alerting systems in place. A company’s brand protection department must have a wholistic view of who has access to different types of data and develop specific parameters for flagging potential issues. This can also help with proactive investigations to assist law enforcement.

How do you / your company contribute to the brand protection community? 

 

We provide brand owners with the means to address their greatest concerns – what keeps them up at night. K2 Integrity’s global reach allows us to provide anticounterfeiting and business intelligence expertise on a global basis. We help secure and protect valuable assets from both internal and external threats, leveraging the investigative acumen of practitioners with backgrounds in law enforcement, investigative journalism, and the prosecutorial and intelligence sectors, along with subject-matter expertise in data analytics, cybercrime, and forensic accounting.

 

Who has inspired you most in life?

 

My father—he had a real impact on my siblings and myself. He was the hardest working person I’ve ever known, and I like to believe that my adopting his work ethic has served me well.

 

Contact info: bcairl@k2integrity.com  

 
Zach Tocynski

Zach Toczyński

Levi Strauss & Co. 

Director, Global Brand Enforcement 

Charlotte, NC, USA

 

What is your role in your company/organization?

 

As Director of Global Brand Enforcement at Levi Strauss & Co., I oversee the creation of IP strategy and the implementation for all our global enforcement programs related to anti-counterfeiting, online monitoring/enforcement, trademark infringement, and IP policy for all LS&Co. brands (Levi's®, Dockers®, DENIZEN® and Signature by Levi Strauss & Co.™).

 

What makes your company unique?

 

Well, we invented the blue jean nearly 150 years ago! Not every company can say they invented something that is an essential wardrobe staple and Levi’s® has remained the number one selling brand jean, for both men and women, all over the world to this day. With that said, as a company we’ve never stopped continuing to evolve and progress, for example our innovating processes has made us a leader in the apparel industry for sustainability which is something very important to us. Now, I could go on and on, with pride, about my company, from our corporate principles that guide us, to how passionate we are about staying engaged and focused on our consumers, but I’m told I only have 100 words or less to answer this question. I’ll just end with saying at LS&Co. always joke that we act like 166-year-old “start-up” company, where we lead with our passion for innovation at our core and the courage to always do what is right based on our guiding principles.

 

Can you provide your top 2 best practices for protecting IP?

 

Only two? I guess I’ll say top two guiding principles in effectively protecting my brands IP are, 1- know your global business top to bottom; 2- know who your customers are and how they find you (aka- shop). If you start there, then you can build an effective brand protection program, using all the skills, tools, and resources we have at our finger tips, to focus on an IP enforcement program that delivers measurable results to your business. Knowing your business is key, from conception of design, all your products, the global supply chain, to distributors, your licensees, and everything in-between. If you know how your goods flow from conception to the hands of your customers around the world, then you’ll better be equipped to find ways to instill IP culture into many of your processes along the way.   For example, work with your designers to build in covert features into your products that can help with product identification. Or, if your role is regional, be sure you view the global picture of your company and never silo your efforts. You’ll be more effective at solving issues coming your way if you engage globally. Also, look at your products through a IP lens to see if there are any features or designs that can be trademarked, copyrighted and/or patented to better assist in protecting your products with more IP tools. And most importantly know your consumers. Like, what are the demographics? Where do they shop, online or offline? If you know the path your real consumers are taking to find your brands to make an authentic purchase, then you can ensure that path is clear of all the noise and distractions of counterfeit and/ or infringing products. Our goal is to clear the path for our consumer, so they find us to make the final sale and not be distracted by the counterfeiters along the way.

 

Can you tell us something about yourself outside of your job?

 

So, my husband and I will be celebrating our 19-year anniversary next year. We have three rescue dogs, English Pointers so you can imagine the high energy these hunting dogs have! We are very involved in the English Pointer Rescue group to ensure these amazing dogs find good homes. We are avid scuba divers, having dove all over the world, except cold water diving, I just can’t! We recently relocated to Charlotte, NC earlier this year to the home of our dreams and simply love being back on the East Coast, closer to our family and friends. And lastly, in my former life I used to be a professional stand-up comedy. Don’t try to “Google” me, I’ve sent DMCA letters to get all my old performances removed online (that’s a IP joke… a good joke? Not at all, I’ve retired and I’m rusty!). I can say, the one thing I learned from my years of doing stand-up comedy is not only how to shut down a heckler in 5 seconds or less but that humor when utilized effectively and genuinely, in the professional world, can be a power tool in breaking down barriers, resolving conflict, and build long term amazing relationships with different people from all walks of life. Humor helps us find common ground, whereas conflict emphasis differences. When we start with focus on common ground, we naturally as people, want to work together to find ways to resolve our differences. So, next time you’re sending a C&D, throw in a smile emoji or two. 😊  You never know, it could make a difference!

 

 
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Fred Dimyan  

POTOO Solutions

CEO

Westport, CT, USA

What is your role in your company/organization?

CEO

What makes your company unique?

Our brand clients. We work with the world's largest brands in nearly every product category. The feedback we get from our clients is fantastic. For example, one client recently said, "I have been doing this (Amazon) for 10 years and POTOO is the best in brand protection, no one even comes close. POTOO is the best, and we are the best, so we need to work together."

Our staff. The old business model of the biggest fish eat the smallest fish does not apply in eCommerce. It is now the fastest fish that eat the slow. We maintain our status as the fastest innovators by having the best people working with our world-class brands.

What’s one piece of advice you can give a brand looking to enforce their IP? 

An educated consumer is our best client. All of our brand clients who have tried to enforce their IP rights know the challenges and appreciate that it's a constant battle.

How did you get into brand protection?

We have always been customer-focused and market-driven. By developing a unique solution to a widespread problem for brand owners, the market came to us. We live by the standard that if we do a great job, our customers will ask for more and will take us with them on their career journey.

We understand marketplaces from a seller’s perspective which gives us a unique insight into how brands should interface with sellers.

 
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Paul J. May

USAopoly, Inc.

Vice President, Creative & Production

Oceanside, California, USA

 

What is your role in your company/organization?

 

My role is to manage the creation and production of our game line from concept to the product arrival at our distribution center.

 

What are the top 2 challenges in IP enforcement you see affecting brands over the next year?

 

1. Identifying product being counterfeited within a variety of distribution channels.

2. Registering product branding in other countries (outside of USA) to improve our ability to enforce our IP and remove counterfeit products.

 

Can you provide your top 2 best practices for protecting IP?

 

Regular surveillance of various marketplaces to identify nefarious characters. Joining groups that assist us in IP enforcement and working closely with our China factories to help identify possible sources of counterfeit product. IACC has been an extremely valuable resource for our business.

 

Can you tell us something about yourself outside of your job?

 

I work closely with a group that helps provide food to those in need and also mentors the youth in our community. Being in the board game industry, I really enjoy volunteering at schools in our area participating in workshops to let the kids know what we do and how we do it. The kids are very responsive to the value of playing board games and they are eager to come up with their own games.

 

Contact info: paul@usaopoly.com 

 

 
     
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International AntiCounterfeiting Coalition, 727 15th Street NW, 9th Floor, Washington, District of Columbia 20005, United States

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