We're going to launch straight into the nightmare scenario, as the heading and the and the and the materials you will have received indicated. We're also looking today at IP theft and IP and brand harm that's been caused. The scenario that we're going to be looking at, you've just discovered that a copycat website has has come online, is impersonating your brand. You found out at the same time that is sending out emails to your customers. And purporting to sell and market goods, services, whatever it may be. In your name, obviously, business, is is now significantly at risk. You are undoubtedly in this situation now, faced with a number of pressing and urgent matters that you're going to have to address.
For many, this is a this is an all too common scenario. The good news is today, we've got two experts on the panel with me to help us navigate our way through this scenario, and many that will be like it or very similar, all involving some sort of IP or brand type theme. And so I'm delighted to welcome Andrew Clark, who's the partnerships and investigations manager with the City of London Police. And Cassie Hill, who's a partner in our innovation innovation team. And as I say, they both are going to be helping me work our way through this, problems. So let's get started. We're in our first phase of our scenario. We're in the immediate aftermath. We've discovered what has happened, or at least what we think is happening.
We don't yet know the full extent of it. Let's look at what might be our first, you know, response to that. We're going to start first with with you. And if you don't mind, one consideration, inevitably, for a client in this situation or brand holder is going to be do I report it to law enforcement?
What can I do from a criminal perspective? So as well as introducing yourself briefly, if you wouldn't mind, perhaps you can give us some insight into what that first reaction might look like and what might be some good and best practice in that scenario. All right. Thank you so much for for inviting me to to talk today.
So it's a real pleasure to be here. I, I'm going to channel my inner Martin Lewis for, for this session because 25 minutes is a bit of a anomaly to me. Being an unofficial retiree from the police, I spent, three and a half years in the private sector before returning recently, to the police intellectual Property crime unit, where it's great to be back and to to bring both sides together.
The reporting, as you said, Gareth, is really important. And with IP crime, there are two the two portals. There are two ways to, to report things. And the first, when I come on to my, my top five and Martin Lewis fashion just say that the intellectual property, portal is the first is the first one for purely IP crime.
It's not the best, it's not the best, but it's not the easiest. It's really important to get to get that right. But there's also a very significant crossover with fraud. And report fraud. So if it's more serious, if there are things that are really at risk, please go through the report fraud element. But again, it's important to get that get that right from the very start.
So my top five without dancing around to the late Martin Lewis. The referral is is really important and it's really important to get it right. These things are like this. Thousands come in and they can't. They can very quickly be missed for a simple thing like such as such as loss. We've had that recently with loss hasn't been filled in or hasn't been filled in correctly, and it can't be downgraded.
And therefore the response may not come in. And I must say, with all these things, they aren't quick. It's why it's important to do things first and make sure things are boxed up. So there's huge amounts, huge, huge amounts of data. Also on the report, it isn't helpful, but also things like a section nine statement, a letter of authority and confirming rights held, and also a commitment for court attendance.
So things that we look for agree in that referral, that first referral section within that timelines very, very important as number two chronology of events is really important. What happens when it happens? And going back to the very, very sort, the kernel of what has happened here is really, really important. And that is often missed physical and digital evidence, and ensuring the integrity.
And again, it's not just it's not just a matter of a simple screenshot. We're really looking for good scrapes, good screen captures including date, time, date and date stamps, which is good continuity of evidence with the digital. It's the same as it would be in physical. So you find the knife it backs gets backed up. It's that kind of having that in your head that those are the kind of things that really looking for.
Digital is just the same as it would be in physical, physical life test purchases. They are excellent, but again, the original evidence, capture and continuity of this evidence is vital. And having that in a package, financial information, if there has been a purchase or there's any financial information that can be given by a company or a supplier, the exact time and date of, of these transactions, anything to do with the, the, the the financial element is really, really key.
And coming on to my note point number five, the duty of candor is so, so important. We've had lots of problems with that. Also some examples of some excellent work being completely upfront from the start. What has gone on? Is there anything else behind the scene that, that that made that may undermine the case? When we pull away from it?
These things can always be dealt with. Has it been reported elsewhere to other law enforcement agencies? Have civil actions been taken or are they under way? All these things can be worked with. They it's all fine civil and and and legal, civil and public prosecutions at the same time. And you know, anything else that we can work through?
As long as we know about it from the start. So that's pretty much my top five of, of what we need to if you're going down to do a police report, perfect. Thank you, Andy. And of course, beautifully teed up there for Cassie, because I think one of the myths that all three of us have encountered in various forms is this idea that perhaps you have to choose, do I have to be a criminal or civil?
Do I have to wait? As Cassie is now going to reveal, the answer is no, you don't. No, no you don't. And and I think it was always a worry with lots of our clients that do you pick civil or criminal? And I'm just not sure or naturally. You know, we work with Pepkor with, with Andy's team a lot, and it's a much more collaborative approach, now.
And as long as, you know, there's good information sharing agreements in place and things, it it works much better. I mean, just to introduce myself, as Gareth said, I'm a partner in the innovation department at Michigan, and I head up the intellectual property enforcement group. With more than 15 years experience dealing with IP disputes, I come across, you know, scenarios like this one a lot, where brands have been compromised.
So Andy's talked a bit about the, criminal perspective, but what can you do from a civil perspective? Well, might seem obvious, but before you take any action, you need to know what your rights are that you can rely on in order to do so. And so by this, I mean, you know, what are your IP rights, be that trademarks, designs, copyright, patents, make sure you've got them all in one place, in one file with all your registrations, any assignments from third parties you might have so that you know it's there when you need it.
If you want to go one step further and be super organized, then you can even have, precedents and drafts, in relation to takedowns, which I'll come on to in a second. So if you kind of ensure that your house is in order now, if this scenario arises, then you're equipped to deal with it quickly. The next thing you should do, and this echoes exactly what Andy's just said, is get evidence of the wrongdoing.
And it's obviously gone into, details about how you can do that. But it's important because often some of the initial action you can take can mean that an infringing website disappears and then you might not be able to follow up with further criminal or civil action, because you haven't then got any evidence of the wrongdoing. So once you've got your evidence, your IP rights, the first thing you want to do is stem any any damage quickly.
That's been made by that website, by making website marketplace and social media takedown requests. If you can identify who's behind it, then contact them as well with the cease and desist letter, I should say, just as a kind of flag that, takedowns or cease and desist should only be filed where there's a legitimate case because if not, you could open yourself up to an unjustified threats claim.
Now for websites, the best way to do a takedown in all scenario is to contact both the website registrar and website host to request that takedown. They all have their own reporting systems for these types of issues, and you can find that reporting systems on their websites. We actually did this for, family office who had a very, offline investment business, but someone had created a website which appeared to be their company with all of their directors listed on it, but with bogus email, addresses set up by the infringer.
And, there was encouragement on that website to invest. So we contacted both the host and the registrar and the registrar on the basis that the information we provided took down the website within a day. And that solved the problem for the client. Now, depending on the scope of the infringement, you might also want to consider social contacting social media websites often we see that a bogus website to make itself look more legitimate has genuine links to social media on it.
So think about reporting to TikTok x Instagram, Facebook, or you might be wanting to report to marketplaces such as eBay, Amazon and Alibaba if the infringing activity appears there, which it can often do. And again, they have takedown forms which you can use, but you have to be careful about which one to use because there are several for IP and fraud.
And often I is reviewing the initial requests and can simply do the computer says no, rejection if it doesn't see some of the appropriate keywords that it's looking for. And from experience, I found that the fraud forms are often much more effective and quicker at taking things down. So if if there is an ability to demonstrate a fraud there, on top of the infringement of IP rights, it's well worth doing.
For example, we were acting for a bank where there were phishing emails and social media post made about, using the bank's trademarks and seeking customer details. And, the fraud group got those posts, taken down immediately, whereas the trademark rate was, a little bit slower and required further information. That's not to say that the trademark rate doesn't work.
It does. But just to be aware of the speed of these things sometimes, I would also, the kind of banging the evidence from, again, make sure you take screenshots of the forms that you submit before you click on the submit button for evidential purposes, because generally you don't actually get an email saying this is what you submitted.
And you might need this if you're issuing proceedings against the infringer. Depending on the severity of the attack, you might want to consider whether there's any immediate injunctive relief that you need to do. And you also might want to think about whether you need to make a press release to your customers to warn them. You probably have all seen in the press recently that M&S had a cyber attack, and they had to issue several press releases to their customers about what was happening and what they were doing to fix the issue.
But and it did take a long time to deal with in the end, but it was important that they kept the customers updated and had good communication with them in order not to lose the trust of those customers. While there were things out with that control that were ongoing. Thanks, Cassie. And you've mentioned that the treatment of this sort of conduct or misconduct is fraud.
Sometimes. And in lieu of getting into the technicalities of trademark and copyright, well, it's an interesting theme, I think, which we're going to come back to, in the context of potential criminal action that might be taken down, down the track, but so thanks both. That's obviously set the scene. We've, we've discovered initial problem. We've got those top tips from Martin Lewis in relation to you know, how what points to focus on on your police report in order to best assist the police in triaging the issue and working out what assistance can be provided?
Cassie, you've touched there on on work that could be going on in parallel to that from a civil, non-criminal perspective to initially sort of stem the bleeding, as it were, but also then to potentially start sort of fighting back. Let's move on, I suppose, to our next phase and the weeks and months that might now be following. We've learned more.
We've stopped the initial issue. We might now be turning our mind to other, more sort of, you know, greater sort of impact type enforcement action that we might want to take. Andy, I'm going to come to you, I think next in relation to this, obviously, that we've, we've we've had our police report and as you've heard, there's a situation now where the victim is maybe done some initial investigating has done some initial action to, to prevent what's been going on.
What what what what can you tell us about what might now be happening from a law enforcement perspective, as you move into those sort of weeks and months that follow what what would be a policing priority, what would you be looking at and what guidance would you give at this point? I thank you, thank you guys. I say, I think it's a as Cassie was just saying, this is very much a collaborative approach.
No intellectual property crime stays away from normal, a normal report of a traditional crime. It's very important to know that this is not the time. This is very much a partnership led, initiative. I know to do it. But the things that the police will be getting on with our sites. So a nice rounded package with lots of stuff that we can work on, financial inquiries, key communications data.
These are things that we could do a lot easier with building up the case. We're looking for links were building intelligence case. We may be applying for warrants. And again, talking about this civil and public partnership, as long as we are mentioning within warrants that there is a possibility that we may be, that we may deal with this civilly as well, that we put that on we we are complying with the law.
This is something that's probably not not known greatly. As long as we're doing that, we're complying. We're carrying on with build, we're building these cases. We may be looking at conducting warrants and conducting digital forensics, at the same time. So again, working together, going back in and liaising with whoever else we're working with often a law firm on behalf of a client.
Perfect. Thank you. And so if this was a seesaw has the balance now tipped a little bit Cassie, in terms of from your perspective looking at the sort of medium to longer term strategy, what sort of considerations are you now sort of discussing with, with clients and what what are the factors that potentially are in play in terms of how much further they want to go on the civil side of things?
Yeah, I mean, I think with all of this, once you've had your, initial kind of action and, you know, you may have got some success by getting the website taken down, it's it's thinking about as a business, what is the cost benefit analysis of, of, taking further action. What are you looking to achieve from it? You might, you know, some key considerations might be publicity and reputational impact.
There's often a deterrence effect with taking on like that either civil or criminal, proceedings and, sending a message to the market, you'll need to consider where the infringer is based in the world and whether you're going to have enforcement difficulties and be able to recover damages and legal costs, because that can, you know, often be an issue or you might not get any engagement from the infringer.
And so if if that's the case, one option that we do take is to get a website blocking injunction, particularly where you might have got the website taken down on day one, but then it pops up in a slightly different version. You know, a few days later and you end up with this whac-a-mole situation. So for one of our gaming clients, in the run up to Christmas, there were lots of websites that, which appeared to be different and unrelated and somewhere and someone they popped up, online selling different counterfeit versions of their games and products to try and chip their consoles to allow the playing of these games.
And the infringer was we knew who it was, but they were in an unfriendly jurisdiction, and they weren't engaging. So we got a blocking injunction against the main internet service providers in the UK, like Virgin and Sky, in order that they would block access to those websites on their networks, thereby alleviating the issue here. And that was a much better use of their resources than trying to pursue an infringer who was in an unfriendly jurisdiction.
I mean, if if they're not, then other options, you can take it to issue issue civil proceedings in the High Court, or if the case isn't, you don't think it warrants that. There's also the Intellectual Property Enterprise Court, which is, was set up for small to medium businesses to bring their claims. And it has capped costs, which often helps or even things like you might want to make a domain complaint to nominate, or I can try and recover the domain.
Or you might want to make a complaint to the Company Names Tribunal where the infringers registered a company name, which is the same as your trademark. In order to get this change. And we've done that a lot, and we did it for a famous fashion designer recently. But that, for example, is a straightforward process but takes quite a long time.
Again, you should think about any further press releases you might want to make. And there also might be a health and safety aspect to what's happening. One of our pharmaceutical clients, for example, became aware of, counterfeit versions of their medicine being sold online. So we also, needed to report this to the MHRA. We actually also got a search and freezing order against the individual dealing in this medicine.
And hilariously, when we were searching his premises, he had some legitimate medicine of our clients, of which he was selling the counterfeit one, but he wouldn't take the counterfeit one and would only take the genuine one. So I can tell you what's, tell you it's not very safe to do with that kind of medicine. That's that's good to know.
On a on a number of levels, conscious of time. And you've touched on a really important, issue there, I think, which is deterrence. And also I want to pick up, as I said, on, on that and also the earlier point that you made in relation to the fact that at the heart of a lot of what we're talking about here, although there are complexities to it in terms of the copyright law, maybe in relation to the technological or the technical way in which the the crime or the misconduct is being committed, that at the heart of these incidents, they are frauds, they are some version of theft, or they are an economic crime where someone is obviously trying to deprive another of a property. And one of the I think the sort of key trend, certainly the we've all seen in Andy and I worked directly on is particularly in relation to IP crime cases, is private prosecutions. And for those on the call who haven't come across the private prosecution, that is a criminal prosecution bought by a private entity or some other organization is essentially not the state.
What I suppose sets, IP crime apart is and Andy's alluded to this already is that collaborative approach that is potentially available, in instances where IP crime is taken place that perhaps isn't available for all other, crimes for, for perfectly probably obvious reasons, whether it's a burglary, whether it's, you know, some sort of motoring incident, whatever it might be.
But IP crime tends to lend itself because of who and because of the forward sort of thinking nature of those who are involved in it, in trying to potentially work together and bring a criminal action. And we've certainly seen instances where because plainly, Andy and I know you'd agree with this, the state can't deal with every single incident that comes its way, but there may still be a perfectly legitimate case that a prosecution is required in the public interest.
You've identified wrongdoers who have been engaged in significant criminality, and therefore action needs to be taken. And I know that we've certainly worked together on cases where there will be information sharing arrangements with with police. And that certainly a I sure is a key takeaway is that there are these opportunities to to in the right cases to work collaboratively.
Certainly recent examples that we've been involved in have seen the criminal courts treating IP crime extremely seriously. A case that we concluded a year ago ended up with the main protagonist getting sentenced to seven years imprisonment, and they're facing financial orders that have that have followed. Some of you might have seen there's a there's an ongoing campaign involving fact and others in relation to the misuse of, illegal streams and Premier League football.
And that gives another example of a case where an individual was also sent to him, is sent to prison. And so I think is another key takeaway and another option that that is certainly on the, on the menu at the beginning. Is, is this option of a private prosecution? Obviously if the state can assist then that will be the first option, but it needn't be the end of the story.
And it was the last thing I was just going to mention just through you, Andy, before we get to also the key takeaways from the three of us. Andy, I know that the policing response is not all about criminal action. Going into a Crown Court, taking that action, it will be in the appropriate case. But but there's an example I think you've got which is of a non criminal, intervention or option that might be available to brand holders in this sort of situation.
Yeah. Thanks guys. Yes. The the it is very it escalates. It escalates through. We consider things at every stage operation a cycle is something that could run, which again is a disruption technique. It's all to do with site takedowns. We liaise very closely with, with all the domains, etc., so we can we can do that as a, as a, as a level.
And again it provides it provides a good alternative disruption. As well as simple seizure cash seizures. It depends on the case individually. But if the operation is Shikoh, yes, it's definitely one of those ones that can be, that can be utilized at an early stage. And I think I'm right saying there's guidance in a and then literature on his website available.
So this isn't something just known internally to the police. This is deliberately and consciously something which members of the public brand holders are encouraged to to interact with and engage with. Yes, I'm, I'm liaising with brands on a daily basis with regards to, to reports that I made and through the IPO, for operation a Ciccone it was director PPK a little while ago, but now they they're formulating the channels or to or to the IPO.
So, yeah, I constantly liaise with them saying this is ongoing and this is how we're going to take action on the on these particular ones. But also we can develop the intelligence. And if there is, if there is a case to go further or there's something else that we can say, we can liaise back and forth and say, actually we think there's something linked in with something more serious.
So it's keeping that open, but also bearing in mind the, the requirements of the, the business or the rights holders at the very start. Excellent. Thank you. Before I get on to the sort of key takeaway from from you both and also one from from me, I see we have had, one question that that's come into the chat, and I think it touches on stuff that we have all of us mentioned, but it poses the question is what what what what what are the options or perhaps what are the limitations when dealing with unfriendly jurisdictions?
Both from a criminal perspective and from a civil perspective? Cassie, if you've got, say, servers in a particularly hostile part of the world, you know, for example, Russia at the moment, what what what what does that mean, if anything, in terms of the the limits or the options available to you, I'll say those two to Cassie from a civil perspective.
Yes. Yeah. I mean, and and that's, you know, the blocking injunction that I mentioned earlier is, is a good example of something that you can do where you've got somewhere like Russia. Another thing to do is to think a bit laterally. And particularly with Russia, is there are there any sanctions breaches around, something that that website is doing and, and you can attack it that way or, you know, if you know who's behind it and you can link them to other things, then there may be other avenues that actually kind of stem that issue, but you're not attacking it head on as a, as an IP infringement, because sometimes where you are in very difficult jurisdictions, you have to go around it a bit differently. Obviously, always look at, you know, who the hosts are and where the money's going if you can do that. Particularly, as Andy mentioned, with test purchases, you might be able to do some tracing through and see that actually it's ending up somewhere else. And so there might be a route of following the money and seeing where that's going.
Indeed. Great advice Andy. From a criminal perspective, I'm assuming that you'll be looking at some sort of mutual mutual legal assistance, looking at partner organizations in other jurisdictions that you might be able to call upon, or whether that some sort of, you know, Euro wide sort of, yeah, entity that you can potentially sort of link up with, in sort of ten to 20s.
Yeah. Well, what does law enforcement do with, with getting data from Russia. Yeah, yeah. Russia. You can let's say Cassie. Cassie hit the nail on the head. There you go to look at you've got to look at the other ways around this. There's quite often we see it all the time. Days after they will be going outside the jurisdiction.
There will be other elements where we have got like a really good network building networks all the time. In Europe, in the Far East, you know that that's all good. So places where you would have initially thought that we can't do anything. Actually, we can through partner. Partner working, but it's. Yeah, there are certain jurisdictions that are North Korea, for example.
But yeah. And that's very two seconds. Thank you. And that takes us back to where we started wasn't it. Which is that's the sort of information you need at the beginning, because that enables you properly to triage the situation. And identify and be realistic, I suppose, about the the options that you might have in response. I'm very conscious of time.
I'm going to wrap it up and sort of summarize. I think what what we all would have said at this point, obviously, Cassie has emphasized the need for you to be prepared for these sort of situations and react quickly when they come along. And these I certainly preach the virtue of patience and good information. Evidence preservation is going to be key.
And I would also, I think, echo all of those things and also just encourage frank and honest dialog along the way. You have to be realistic with your expectations. But I think hopefully we've shown with IP con, there really are a number of different ways in which you can attack a problem. And kind of if you don't ask, then you don't get.
So we would really encourage, as I say, those early conversations and and and yeah, cooperation collaboration will be key in this situation. But but make sure you talk I'm going to wrap it up. I'm going to say thank you to everyone who's joined us. We hope you found it informative. As I say, play it back on the website next time you want to see us.
And hopefully you'll join us for the next session. Thanks very much.