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The Fight Against Counterfeiters from In-House, Outside Counsel and Criminal Perspectives

Level: Beginner
Runtime: 62 minutes
Recorded Date: July 22, 2020
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        15 USCA Section 1116
                - Civil actions arising out of use of counterfeit marks
         15 USCA Section 1117
                - Profits; damages and costs; attorney fees
                - Treble Damages
                - Statutory Damages
        • 18 USCA Section 2320
                - Offenses
                - Penalties
        • Legislation: Medicrime Convention

: 1 hour, 2 minutes
Recorded: July 22, 2020
For NY - Difficulty Level: Newly admitted attorneys only (transitional)


This panel CLE will focus on civil and criminal rights and remedies related to combating counterfeiting in the United States and around the world. It will identify issues faced by global internet marketplaces, such as Alibaba, in attempting to identify and prevent counterfeits. It will further discuss available civil and regulatory remedies for businesses of all sizes when identifying counterfeits, including trademark infringement and DMCA remedies. It will further offer insight into efforts by the Federal Government and FBI to combat counterfeits in the United States, the types of products that will garner focus for criminal prosecution, and when civilians should escalate complaints to the Bureau.

This program was recorded on July 22nd, 2020.

Provided By

American Bar Association
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Eric Proudfoot

Supervisory Special Agent, Intellectual Property Rights Unit
Federal Bureau of Investigation

Eric Proudfoot is a Supervisory Special Agent managing the FBI's Intellectual Property Rights Unit. In 12 years, he has been an Agent, SSA Proudfoot has investigated IPR crimes, complex financial crimes, counterintelligence, and cyber matters.

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Matthew C. Acosta

Platt Cheema Richmond, PLLC.

Matt Acosta is a complex commercial and Intellectual Property litigator and adviser experienced in a variety of matters, including those involving breaches of contract, trade secret and unfair competition, patent and trademark litigation, breach of warranty, banking, and insurance. His litigation practice includes counseling clients at every stage of the trial process, including developing cost effective litigation strategies, reducing the burdens of discovery, negotiating favorable settlements, and representing clients at trail. Matt has litigated cases throughout the country, including in Illinois, Florida, Utah, Delaware, California, and Texas. Matt has also practiced before the United States Court of Appeals for the Federal Circuit and appeared before the Judicial Panel on Multi-District Litigation.

In addition to his trial practice, Matt assists clients in developing Intellectual Property strategies and protection. This includes navigating the costs and benefits of trademark, trade secret and patent protection, performing infringement and liability analyses, and providing general IP counseling. Matt has represented and advised a variety of clients, including Fortune 500 companies, in the consumer electronics, biomedical, internet service, mobile application, and telecommunication technology spaces.

Following law school, Matt clerked for the Hon. Leonard Davis, Eastern District of Texas, . While in law school, Matt interned for the Hon. Walter Smith Jr., Western District of Texas, Waco Division, as well as the Hon. Robert Pemberton, Texas Third Court of Appeals – Austin.

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James L. Bikoff

Smith, Gambrell & Russell, LLP.

James L. Bikoff’s practice focuses on formulating and implementing worldwide trademark and copyright protection and enforcement programs for clients in the consumer and industrial product sectors, as well as non-profits, and service providers such as banks and insurance companies. He also engages in Internet and domain name counseling and enforcement actions.

Mr. Bikoff has been active for over 30 years directing worldwide trademark and copyright protection, litigation and anti-counterfeiting enforcement. More recently, Mr. Bikoff has been active in Internet and domain name litigation. His clients have included the International Olympic Committee, the United States Olympic Committee, Major League Soccer, the Federation Internationale de Football Association, the American Red Cross, the National Grange and Tristar Insurance. He was in charge of enforcement for the1994 World Cup Games, the 1996 Olympic Games in Atlanta, Georgia, and the 1999 and 2003 Women’s World Cup Games. Mr. Bikoff also counsels a growing number of wineries and restaurants on trademark and copyright issues.

Mr. Bikoff is chair of the Trademark Litigation Committee of the Intellectual Property Section of the American Bar Association, a member of the European Community Trademark Association (Anticounterfeiting Committee), the International Trademark Association, Chair of the Internet Committee Subcommittee on Whois and Privacy Issues, and the New York Intellectual Property Law Association (Trademark and Internet Committees), and has served as co-chair of the Intellectual Property Committee of the DC Bar Association. He is also a member of several editorial and advisory boards, including the IP Litigator, International Quarterly, The University of Baltimore Intellectual Property Law Journal and the World eBusiness Law Report.

Mr. Bikoff was lead counsel in a landmark anti-cybersquatting action for the NCAA involving the first freeze of assets against an offshore Internet gambling website, and was lead counsel in a case involving the largest number of domain names ever joined as defendants: International Olympic Committee, United States Olympic Committee and Salt Lake Organizing Committee for the Olympic Winter Games of 2002 v. 2000, et al., Civ. No. 00-1018-A (E.D.Va. 2000). Mr. Bikoff has also achieved a string of victories in UDRP proceedings on behalf of the American Red Cross, the International Olympic Committee and other clients.

Mr. Bikoff has written and spoken frequently on intellectual property protection and enforcement in the United States and abroad, and has testified before Congress in support of intellectual property legislation. He was actively involved in the enactment of the Trademark Counterfeiting Act of 1984 and the Anti-cybersquatting Consumer Protection Act (“ACPA”). He is the author and co-author of numerous articles on trademark, copyright and domain name issues including “What’s The Next Play for the Redskins? What Blackhorse Really Means For the Football Team” World Trademark Review Daily (June 25, 2014); “Cancellation Action Based On Misrepresentation of Source Does Not Require Use of Mark In U.S. Commerce” World Trademark Review Daily (May 1, 2014)(Bayer FLANAX Case); “The Uniform Rapid Suspension System–A New Weapon in the War Against Cybersquatters” LANDSLIDE (January/February 2014); “TTAB Cancels Mark For Being Highly Descriptive” World Trademark Review Daily (July 30, 2013)(Annapolis Tours Case); “Federal Circuit Provides Trademark Owners Tool To Prevent Repeated Attacks” World Trademark Review Daily (Jan. 28, 2013)(Disney Winnie the Pooh Case); “Legislation Targets Theft of US Property by Rogue Websites” World Trademark Review (Feb/March 2012); “Hauling In the Middleman: Contributory Trademark Infringement in North America” Oxford University Press, Journal of Intellectual Property Law & Practice (February 2010); “The UDRP Turns Ten” World Trademark Review (Aug/Sept. 2009); “Louis Vuitton Holds ISP Accountable for Combined $ 21.6 Million” Oxford University Press, Journal of Intellectual Property Law & Practice (July 2010); “Costco v. Omega: The Foreign First-Sale Doctrine” Westlaw Journal, Intellectual Property (Jan. 12, 2011).

Mr. Bikoff graduated, cum laude, from the University of Cincinnati in 1962. He received his LL.B. from Columbia University School of Law in 1965 and obtained an LL.M. in trade regulation from the New York University School of Law in 1966.

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Matthew Bassiur

Vice President, Head of Global IP Enforcement
Alibaba Group

Matthew Bassiur serves as Vice President, Head of Global Intellectual Property Enforcement for Alibaba Group. He leads a team that works with international brands, retail partners, industry associations, government regulators, law enforcement and other organizations to advance Alibaba Group’s IP protection efforts. Matthew joined Alibaba from Pfizer Inc., where he served as Vice President and Deputy Chief Security Officer – overseeing anti-counterfeiting operations as well as large-scale investigations.

Prior to Pfizer, Matthew was Senior Director for Global Security and Counsel for IPR Enforcement at Apple Inc. Prior to Apple, Matthew was a federal prosecutor in the Computer Crime & Intellectual Property Section of the U.S. Department of Justice, where he prosecuted multi-jurisdictional IP crimes. From 1998 to 2006, Matthew served as an assistant district attorney in the Manhattan DA’s Office where he specialized in the prosecution of IP offenses and Asian organized crime. Matthew earned his J.D. from the University of Virginia School of Law in 1998.

Mr. Bassiur earned his J.D. from the University of Virginia, School of Law in 1998 and was inducted into the Order of the Coif. He currently serves on the Executive Board of the International Anti-Counterfeiting Coalition, and the Board of Directors of the ICE Foundation.

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