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 ros bottom lb

More from across our site

Scott Palmer, who took 16 lawyers with him when we moved from Perkins Coie to Loeb & Loeb last year, reveals how his Beijing-based team has hit the ground running
Coke Morgan Stewart previously spent 10 years in various USPTO roles before joining O’Melveny in 2023
Law firm Stephens Scown secured victory for its client in a dispute over two cider products
The Court of Appeal said the UPC can award damages based on a national court’s infringement ruling, giving the last laugh to the lawyer who filed the case
AI
Robert Guthrie at Osborne Clarke runs through the government’s AI and copyright consultation and considers the expected challenges
A lawyer firing Meta as a client has reinforced why the industry should not shy away from losing business from those with questionable ethical standards, even if it comes at a cost
A blow for Getty ahead of its AI showdown with Stability AI and a licensing deal between Nokia and Samsung were among the big talking points this week
The IP Federation has written to the UPC Court of Appeal’s presiding judge ahead of a crucial decision on whether in-house lawyers and attorneys can represent their employers in litigation
A Boies Schiller Flexner partner explains how he helped toy company Tangle prevail in a copyright case concerning a kinetic sculpture
Awards
Submit your nominations for this year's WIBL Americas Awards by February 28
Gift this article