Develop your online enforcement strategy

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Develop your online enforcement strategy

In-house counsel discussed the most effective response to online infringement at two sessions at the INTA Annual Meeting this week, recommending IP owners take a strategic approach to brand protection.

“Our clients often say ‘can you stop that?’ when one of our brands faces criticism online,” said Rebecca Borden of CBS Corporation. “But we have to be careful. If you take a very tough approach you can look heavy handed, it draws attention to the issue, and given that our organization is about freedom of speech we don’t want to contradict ourselves.”

Instead she urged IP owners to rethink the wording of their standard cease and desist letters, and to take a more lenient approach to fans whose enthusiasm for a brand has crossed the line into infringement. “It doesn’t hurt us to say ‘we recognize you’re a fan and we appreciate that’ and then to explain why we need to enforce our rights to ensure that the creators get paid and that we don’t breach any of our other contracts.”

Pinterest’s Anthony Falzone agreed. “It pays to be nice and respectful to people.”

Borden revealed one of the more unusual requests that she has had to consider while working for the broadcasting company, which airs episodes of Star Trek. CBS was asked whether images from Star Trek could be used on the gravestone of a fan of the sci-fi show. Lawyers had to weigh up whether giving the go-ahead would interfere with a licensing deal the company has with a coffin maker who produces Star-Trek themed caskets, but ultimately sanctioned the request.

In another session on social media in China on Monday, Stanislas Barro of Kerring, which owns brands including PUMA, GUCCI and BRIONI, outlined some of the practical challenges involved in enforcing IP rights online in a country with 618 million internet users, 91% of whom have at least one social media account. He explained how many sellers of counterfeits advertise their products on Sina Weibo to receive maximum exposure, but shift their negotiations with buyers to WeChat, where their conversations remain private. “We get cut out of the discussions at that point,” he said.

“There is lots of ground to cover, the Internet is moving fast and it is a challenge to keep up,” he concluded. On the positive side, however, brand owners are doing more to share best practices for dealing with the problem, and there have been encouraging signs from the authorities, including the establishment of specialized cybercrime units, he said.

more from across site and SHARED ros bottom lb

More from across our site

Saina Shamilov explains how she convinced the Federal Circuit to upend the US ITC’s domestic industry analysis
Christopher Kinkade and Naira Simmons reveal the distributed firm’s hiring hopes for 2025, a little more than a year after it was founded
A CJEU copyright decision on employees' rights and an update on an IP feud concerning foreign rights over 'Superman' were also among the top talking points
Counsel explain how firms advising PTAB petitioners may react to the USPTO’s decision to ditch Fintiv guidance
The recruits include another former Stobbs lawyer, as well as a chief technology officer and chief financial officer
Jeffrey Saltman, who is anticipating a continued ‘ramping up’ of 5G patent litigation, has joined Cole Schotz
We look ahead to next month’s EMEA Awards, discussing the recently published shortlists, our research methodology and what makes the Awards special
EIP also emerged victorious as the England and Wales Court of Appeal backed a challenge brought by Avanci and InterDigital against the electric carmaker
Madeleine Kelly, the Australia-based IP firm’s new managing partner, discusses its new advisory offering, a promising fresh hire and changing market dynamics
Ahead of International Women’s Day, Véronique Dahan argues why a coordinated approach must be implemented to protect women from malicious use of AI
Gift this article