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.

Jim Ricaurte

Allegiance Protection Group

President

Long Island, NY, USA

What is your role in your company/organization?

As the founder, I oversee a team of support personnel and field investigators in their completion of a variety of investigative activities that are in furtherance of anti-counterfeiting efforts. I’m hands-on with each situation, project the objective to the team, monitor its progress, and be adaptive with evolving scenarios. I also spend time in the field with my team where connections are made in full circle.

What makes your company unique? 

We recognize that each industry has its own unique set of counterfeiting issues, and know that a one strategy for all approach isn’t the answer. Our 15 years of experience enables our assessment of a counterfeiting issue to implement a multifaceted strategy to address the issue at hand. Our utilization of different investigative resources, contacts, and analytical approach are supplemented with our “boots on the ground” team that facilitate our tried and true results. Remember, counterfeiters are relentless opportunists and we must be vigilant as an industry.

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?

This may sound cliché but what’s most rewarding is helping others. Taking something that maybe insignificant, then connect the pieces to ultimately drive an investigation to accomplish the objective is very gratifying.

A significant case in our anti-counterfeiting arena, would be that of a counterfeit manufacturing operation involving multiple health care products. We initiated an all hands investigation with limited information and time frame, that had to be developed into a comprehensive and presentable case. Our investigation spearheaded law enforcement’s dismantling, arrests, and record number seizure of counterfeit health care products, that was the first of its kind domestically.

How did you get into brand protection?

I had recognized that brand protection was an important field and purpose. I felt my contribution to this field would be a natural fit given my law enforcement career investigating white collar crimes. I bridge my experience to support brand protection teams in order to mitigate counterfeiting, and to address those that “rip off” innovation and creative ideas. Over the years, I’ve seen the impact counterfeiting has on our industries, economy and how it supports other illegal activities. Protecting against those who don’t play by the rules is something I knew I wanted to be part of.

Contact info: j.ricaurte@allegianceprotection.com 

Chuck Williams

Cisco

Director, Brand Protection

Raleigh, NC,USA

What is your role in your company/organization?

I am the Director of Brand Protection, focused on the Americas.

What makes your company unique?

For the second year running, Cisco was ranked #1 on Fortune's World's Best Workplaces. How’s that for unique? Cisco is transforming how people and businesses around the world connect, communicate and collaborate with our leading networking and security solutions. We are focused on powering an inclusive future for all through the technology we build, our scale and extended ecosystem, our commitment to corporate social responsibility and social justice, our teams, and the support we bring to our communities.

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

Partner with e-commerce platforms to protect your IP on high volume, diverse global markets, build a global discipline to identify and pursue the most impactful infringers to your brand.  

Ensure you are fully supporting Customs and LE, along with deploying simplified and rapid methods of counterfeit detection.

What hobbies or causes are you passionate about?

Giving back to my community is an outlet and passion of mine. I enjoy volunteering with the Inter-faith Food Shuttle, which pioneers innovative and transformative solutions to end hunger. You may also find me on the hardwoods, coaching youth basketball or contributing my time and talent to my children’s school.

Contact info: chuwilli@cisco.com 

Michael Houle

Corsearch, Inc.

Team Manager

Boston, MA, USA

What is your role in your company/organization?

I manage our North East vertical of our Brand Protection group which includes a number of our tech and automotive industry brands. This involves working with my clients to develop a custom strategy and building a comprehensive brand protection program across multiple channels like marketplaces, websites/domains and social media. I also oversee our Website/Domain Enforcement Team that handles the website takedown and domain recovery for all our U.S. brands.

What makes your company unique?

Corsearch is unique because we are more than just a brand protection provider. Corsearch is the only provider to offer an end-to-end solution that covers every step of the trademark journey. With 10 offices worldwide and hundreds of trained professionals we have experts that are familiar with the struggles of the brands and can assist with anything our clients need.

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

One piece of advice I would give to any brand looking to enforce their IP rights is to review their IP rights portfolio to make sure they have global coverage. It is extremely important to have the local trademark for the marketplace or site we want to report. Having the correct IP greatly helps when planning a strategic brand protection program and can allow us to design a best in class strategy.

How did you get into brand protection?

My career started at Forum as a Case Coordinator administering UDRP disputes. I’ve always been interested in intellectual property, so this was a great introduction into brand protection, and I was hooked. When I left Forum, I worked at a corporate registrar on their domain acquisition and recovery team where I expanded my knowledge to include marketplace and social media enforcement. I then joined Yellow Brand Protection as the fourth employee in North America and we were soon acquired by Corsearch. It’s been so rewarding being apart of such a great team and so much fun watching the company grow.

Contact info: michael.houle@corsearch.com

Michael Lewis

Entertainment Software Association

Chief Counsel, Intellectual Property Protection and Security 

Washington, D.C., USA

What is your role in your company/organization?

I serve as Chief Counsel for Intellectual Property (“IP”) Protection and Security at the Entertainment Software Association (“ESA”), the U.S. trade association serving companies that publish interactive software, computer and video games for game consoles, handheld devices, personal computers, and the Internet. In this role, I manage a team of IP and cybersecurity professionals that execute ESA’s global IP enforcement program that includes investigation and mitigation of IP (both physical and online) and security threats both domestically and internationally. I also work closely with ESA member companies to identify, develop and coordinate policy priorities that benefit ESA members. I also serve as Executive Director of the Game Security Group, an information sharing and analysis center (ISAC) for the video game industry that focuses on securing video game platforms by sharing information on cybersecurity threats and threat indicators across the industry.

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

The top two challenges for our industry over the next year are: (1) mitigating the impact of traditional online piracy as consumption of online content continues to rise during the pandemic; and (2) disrupting the sale and distribution of Unauthorized Digital Goods (UDGs). On the piracy front, bad actors continue to find novel ways to infringe and distribute video game content. It is critical that our enforcement techniques keep pace. Working closely with government agencies, online intermediaries, and other stakeholders on forward-looking strategies is key to the disruption and removal of illegal online operations.

UDGs have become a priority issue for our industry. A UDG is a digital asset - virtual currency, digital account, skin or other digital good - that is available within a video game environment or works alongside a video game that is distributed illegally outside the game environment via websites, online marketplaces or social media outlets. The illegal sale of UDGs infringe our members IP, are often connected to consumer fraud and money laundering schemes, and have a negative financial impact on ESA members.

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

I have the privilege of managing an outstanding team of lawyers, analysts, and technology specialists in the fight against infringement. Teamwork is key to combating IP infringement. The two qualities that I find to be most impactful for the team are having passion for the subject matter and investigative skill to help track down bad actors. In my experience, having passion for the industry/brand you are protecting leads to greater engagement to solve novel infringement issues. The variety of infringing activity that we see across our industry is very different and depends heavily on the game platform and type of game. Having a deep understanding of the game platforms and ecosystem gives us greater ability to enforce our members IP. In addition, having a solid foundation in investigative skills, particularly open source intelligence gathering, is a great tool that allows us to collect disparate pieces of information and connect the dots to identify bad actors and identify new and emerging threats.

What hobbies or causes are you passionate about?

I went to Howard University and I would DJ parties on the weekends as a hobby. My weapons of choice were two Technique 1200s (turntables), a mixer, a microphone and four-to-six crates of vinyl.  My favorite genres to share with my peers were R&B (modern & old-school), Hip-Hop, Reggae and Pop.  My parents effectively derailed my career aspirations of becoming a professional DJ (mentioning something about pulling my college funding…) but it did lead me to explore other career options in the entertainment industry including becoming a lawyer. In law school, I began to explore copyright and trademark classes and became passionate about intellectual property rights including the effective protection and enforcement of those rights. This was a career catalyst for me and I have not looked back.

Contact info: mlewis@theesa.com

Ashly E. Sands 

Epstein Drangel LLP

Partner 

Brooklyn, New York, USA

What is your role in your company/organization?

Ashly E. Sands, who has been with the firm since 2011, is a partner and leads the firm’s anti-counterfeiting and litigation group. Ashly’s practice focuses in, among others, the areas of anti-counterfeiting, trademark, trade dress, copyright, licensing, internet, false advertising, unfair competition law. She specializes in advising brands in building, managing, using, protecting and enforcing their intellectual property rights and assets. A large part of her work involves developing, implementing and managing successful, tailored anti-counterfeiting programs for global brands in a multitude of industries including, without limitation toys, fashion, arts, technology, entertainment and consumer products as well as delivering efficient and effective strategies in IP disputes and litigation.

What makes your company unique?

Epstein Drangel LLP’s ability to develop innovative, results-driven strategies for cost-neutral enforcement sets us apart from other firms in this space. These strategies enable our clients to re-invest enforcement recoveries into IP prosecution and other anti-counterfeiting activities in the United States, in China through our Beijing office, and throughout the world with our network of like-minded foreign partners.

We are very much of the mindset that personal relationships matter in both partnerships and with our clients and place an emphasis on working with teams where we have fostered mutual admiration and respect on a personal level as well as a professional one.

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

One of the biggest challenges is the fact that brands and retailers have had to shift to an entirely e-commerce based business model as a result of the pandemic, which can make it harder for consumers to differentiate the real from the fake.

First, infringers and counterfeiters now have the opportunity to capitalize on the fact that the development, shipment, manufacturing and/or distribution of product lines has been delayed for many brand owners, and as a result are getting to market earlier, and in some cases even before the authentic products are available.

Second, the increased availability of official images of more products (as a result of more brands and an increased number of SKUs being offered through e-commerce sites) offers bad actors more opportunities to use luxury product images to attract consumers to listings for counterfeit products. Moreover, third-party retailers have offered deep site-wide discounts and free shipping that has extended to oft excluded luxury goods, which could be likely to continue well after the pandemic is over due to consumer sentiment on spending, leftover inventory and an overall downturn of the economy.

While brands may not currently have robust budgets, there are a plethora of creative, cost-effective intellectual property strategies available, including those that are cost-neutral (i.e., those that do not require brands to expend money or incur costs associated with enforcement).  For example, we at Epstein Drangel have had great success in bringing lawsuits against hundreds of online sellers, selling via large online platforms—notorious sources of counterfeit goods, that have resulted in enormous intangible and tangible benefits for our clients and their respective brands.

How did you get into brand protection?

Prior to attending law school, I worked for one of the BigLaw firms as a legal assistant/case manager. In that position I had the opportunity to work on two trademark and trade dress infringement cases involving a high-end fashion house which alleged that another popular handbag brand infringed of one of its famous handbag designs and the design of one of its handbag closures. While I had always been interested in intellectual property law, the ability to be part of a federal infringement action solidified my interest in making it my career.

Contact info: asands@ipcounselors.com  

Alastair Rippon

Geneva Laboratories /Union Swiss

IP & Brand Protection Director

Cape Town, South Africa

What is your role in your company/organization?

I am responsible for the management of our international IP portfolio & all brand protection activities.

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

The first is obvious - what we call our foundation work – build a comprehensive trademark portfolio and then do customs recordals & trainings. Thereafter it’s about selecting strategic cases, in strategic markets, with the primary objective of disrupting the supply chain. We work on what we term both the demand & supply side - with the very focused objective of working cases to both 1) identify key links in the chain & 2) determine the source.

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?

First and foremost, it is the simple challenge of taking up the “fight of right versus wrong”. Counterfeit is so wrong, on some many levels – left unchecked it is a cancer. For our brand, it is about protecting our consumers - none of them want counterfeit product. Ours is a very different scenario to the one faced by the luxury brands. And then it has been such a privilege to work with so many amazing, smart, brave people – my team, our investigators, attorneys & partners in over 40 countries around the world.

How did you get into brand protection?

By chance really – counterfeit was an unfortunate outcome of our global success. In my role, as Finance & Operations Director (I’m a Chartered Account – not an attorney) I was responsible for the management of our global trademark portfolio. After our first sighting of counterfeit in 2012 we were forced to apply our minds to our brand protection work. By 2016 the threat was such that it warranted my full-time focus and so we started to build an in-house, centralized brand protection team.

Christopher Macolini

MIC Worldwide, LLC

Partner

Buenos Aires, Argentina/Key Biscayne, FL

What is your role in your company/organization?

I am founder and Managing Partner of the company overseeing all operational aspects of the company. I am also an investigator and have been for the past 34 years.

What makes your company unique?

We are a U.S. style company, founded and run by Americans based in Latin America and provide IP investigative services on the ground in every country in the region. As one of the two founders and managers of the company, I have experience on all sides of IP investigations. I spent 15 years in U.S. Federal Law Enforcement. I then spent 2 years as Head of IP investigations for Microsoft Latin America, allowing insight into the issues from a company perspective. For the past 17 years, we have been providing IP investigative consulting services, giving us the unique perspective of covering all sides of the issues.

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? 

Last year I wrote a book entitled “Counterfeits, war stories and lessons learned – An investigator’s perspective” in which I tried to lay out all of our best practices for intellectual property investigations through real-life case samples and what we have learned from them. The acceptance and feedback has been extremely positive, and I am proud to have been able to contribute to cause.

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

I was born in the U.S., but raised primarily in Latin America, growing up in Argentina, Venezuela and Mexico, where I graduated from high school. As an adult, I have lived in Denver, El Paso, Argentina, Peru, Panama and Bolivia. I now split my time living between Buenos Aires and Miami, and travel extensively through the region.

Contact info: ctm@micww.com

Jose Ignacio Carrillo de Albornoz

Smart Protection

Head of Enforcement

Madrid, Spain

What is your role in your company/organization?

Head of Enforcement

What makes your company unique?

At Smart Protection we support our clients by protecting their intellectual property online. We combine machine-learning technology with the work of our team of cybersecurity experts to deliver a 95% + success rate. We are a global company with clients in 22 countries and a team comprising of 23 nationalities, a global team to face a global threat. We are social media experts, as well as members of Google's TCRP Program (Trusted Copyright Removal Program), this allows us to delist URLs at the highest speed and efficiency. The combination of technology and a world class team makes our solution unique.

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

The biggest challenge regarding IP enforcement are the Rogue Sites, which have the potential to cause untold amounts of damage to brand reputation, profit margins and above all consumer confidence. They are built to deceive consumers by mimicking the look and feel of those of official brands. Fraudsters market counterfeit or lookalike products and services, duping unsuspecting shoppers into purchasing fake goods or sharing personal or payment information.

The second challenge is the sophisticated strategies used by modern-day cybercriminals which make it difficult for consumers to decipher between what is real and fake. Cybercriminals are now more technological than ever and only with technology we can fight back.

What hobbies or causes are you passionate about? 

I am a big enthusiast of outdoor activities. I often visit the mountains or countryside to ski, climb, hike, camp, or collect wild mushrooms with my family and friends. As it's currently Autumn in Spain, the countryside is full of wild Chanterelles which grow at the base of pinetrees. During our trips, the mushrooms are examined by a mycological expert before being cooked and shared at the end of the day. I am passionate about teaching, and sharing my knowledge on the subject and thats why I teach at the Masters in Digital Law, Innovation, and Emerging Technologies, from the Madrid Bar Association.

Contact info: joseignacio.carrillo@smartprotection.com

John Carriero

Under Armour, Inc.

Sr. Director, Global Brand Protection

Baltimore, Maryland ,USA

What is your role in your company/organization?

I am responsible for the global anti-counterfeiting and brand protection program.

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

Understand your company’s goals and align your program - commit to a strategy. Consistency is key. Working for a sports brand it is easy to find parallels in our work and our success. As with most training routines – you may not see results on day 1, 10, or 20, but over time you will see the results of your efforts. Allow your program to grow with the business. Don’t be afraid to review and modify based on outside factors – this pandemic has confirmed we may not anticipate all future scenarios and events.

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?

The most rewarding part is the process. It is a good feeling to look back at the early days and see how this program has advanced through the years. Many talented partners have contributed to our success, and many more will help shape and redefine this program in the years to come. I’m fortunate to lead this handpicked team of internal and external experts. While we are pleased with our current program, there is a common phrase used here at Under Armour – “we are just getting started”.

Who has inspired you most in life?

My Dad. He was strong, determined, committed, direct, reliable and had incredible work ethic. He served as a great role model – play hard, play fair, never quit, and be a man of your word. I credit him and his guidance for my successes in life.

Contact info: jcarriero@underarmour.com