Fighting Fakes in Professional Sports


Ever wondered how your favorite sports team tackles counterfeit goods? A session on Monday will have the answers. Aaron McDonald interviews one of the panelists.

On Monday, find out how sports brand owners are tackling an ever-increasing volume of counterfeit merchandise, in Session IM01 Industry Breakout: Battling Counterfeit Sports Merchandise—A Multi-Jurisdictional Review, from 10:15 am to 11:30 am.

Moderator Tanya Fickenscher, Vice President and General Counsel at Major League Baseball Properties, Inc. (USA), will be joined by Helen Chen, Senior Director and Senior Legal Counsel at National Basketball Association, China (China); Anna Guix, Intellectual Property Lawyer at FC Barcelona (Spain); Victoria Loughery, Assistant Counsel at National Football League (USA); and Scott Palmer, a Partner at Sheppard Mullin (China).

Topics of discussion will include addressing and managing championship events and enforcing brand owners’ trademark rights on online platforms, including on social media.

“Some unscrupulous actors take advantage of first-to-file trademark systems to obtain trademark rights in bad faith.”

Regarding the main issues facing counterfeit products in sports merchandise, Mr. Palmer says that counterfeiters and the tools they employ to produce, market, distribute, and sell counterfeit goods are becoming more sophisticated.

“Sports leagues and brand owners have to expend significant resources monitoring e-commerce and social media platforms,” he explains.

“This means managing an effective notice-and-takedown program and trying to identify, track down, document, and then hopefully eliminate the more egregious manufacturers and sellers on the ground by employing one of the available offline enforcement tools.”

Mr. Palmer adds that brand owners must address a lot of issues before they can effectively enforce their rights, with finding the source of fakes often proving to be a real challenge.

“Counterfeiters know how to play the game,” he warns. “For example, the most sophisticated ones will rarely store or ship quantities significant enough to interest the enforcement authorities, and they will often move around regularly or operate out of residential areas.”

He adds that some unscrupulous actors take advantage of first-to-file trademark systems to obtain trademark rights in bad faith. According to Mr. Palmer, they often try to invoke those rights as a “shield” against claims of infringement, while some may use them as a ruse for building a “confusing online presence under color of right.”

Mr. Palmer advises brand owners to register their rights quickly and broadly. They shouldn’t seek to register their goods only in the obvious merchandise categories such as apparel, but also consider other classes that are often targeted by infringers, such as bags, posters, and towels. 

“If you are prepared, if you have a well-crafted anticounterfeiting strategy, if you have the right brand protection resources and agents to assist with execution of that strategy, and if you are consistent in executing that strategy, your consumers will appreciate it and you will make an impact,” he concludes.

In another session focusing on counterfeits, registrants can learn about balancing the economic benefit of free trade zones and their vulnerability to exploitation by counterfeiters.

Session CSU01 Working with Intermediaries to Combat the Manufacture and Trade of Counterfeit Goods in Free Trade Zones takes place on Tuesday from 10:00 am to 11:15 am.

fakes, counterfeits, sports, trademark infringement, social media, brand owners, brand protection, Scott Palmer, Sheppard Mullin, INTA, INTA 2018