September 2015

David Cooper and James Shore write “Primum non nocere: A primer for ethical global counterfeit investigations” for InsideCounsel


Imagine that you get a call from an investigator that you have worked with many times before in a certain foreign country, informing you that he was alerted by law enforcement officials to what will certainly be the largest seizure of counterfeit products ever infringing on your brand. The investigator tells you he has already examined the goods, has confirmed them to be counterfeit and shared that fact with law enforcement. You can already imagine the positive headlines and begin dreaming about how you are going to spend that big bonus that you are certain to receive for your exemplary effort taking an enormous amount of your company’s counterfeit product off the street.

Then your investigator informs you that their power of attorney (PoA) has expired and asks you to complete another to act on your company’s behalf in that foreign jurisdiction. However, they want you to “back date” the PoA such that the PoA appears to be valid when the investigator first had contact with law enforcement on the matter. Meanwhile, samples of the detained products, already sent at the direction of the investigator, are examined by your product engineers at company headquarters. Your engineers determine that some of the products are counterfeit and some are genuine. Engineering shares its results with you and the investigator. Before the investigator receives their termination notice from you, he or she shares the engineering results with foreign law enforcement. After law enforcement reads the report, they announce they will not be moving forward with the case because of the “conflicting” counterfeit determination. They also will not share information surrounding the product detention with you, leaving the case dead on arrival. What, you ponder, just happened to the biggest case of your career and what exactly are you going to tell your boss?