Peter Hlavnicka is an active author, contributor, keynote speaker, and commentator to the global IP strategy and brand protection, deeptech and medtech venture capital, reputation risk management, and frontier technologies.

Protecting the Brand, Volume I: Counterfeiting and Grey Markets is a handbook for law practitioners as well as business executives. It is a unique perspective of best practices in addressing issues around counterfeiting and grey markets—from a legal as well as a business point of view. The authors explore the threats posed by counterfeiting and grey markets to a variety of industries and illuminate what problems these may cause. Before setting forth the range of legal strategies for remedying incidents of counterfeiting and grey markets, the authors outline preventive measures businesses can take to combat the threats, and showcase some of the emerging technologies that can serve as enablers of Brand Protection’s 3 IPR’s (3 I’s = Intelligence, Investigation, Innovation; 3 P’s = Protection, Perseverance, Perpetuation; 3 R’s = Remedy, Recovery, Rehabilitation).

Keywords intellectual property; trademarks; brand protection; counterfeiting; grey market; parallel import; best practices; case law; prevention; commercial secrets; cybersquatting; remedies; procedures; enforcement; law practitioners; business leadership; Lanham Act; global brand; technology; online; websites; copyright

While the Volume 1 of PROTECTING THE BRAND provides a unique combination of legal and business best practices related to intellectual property protection the Volume 2 showcases specific U.S. states specific legal statues and examples related to legal approach to counterfeiting and grey market issues.

The primary emphasis is again on providing advice to U.S. companies about how to navigate the complex domestic legislation and to provide a single source of reference for both law practitioners (educating them about the legal remedies available to their clients) and any person or team tasked with intellectual property rights enforcement and compliance that needs to understand the applicable state legislation.

Both volumes of this book are focused on leveraging trademark enforcement while also commenting on copyright and patent enforcement, establishing a framework for successful brand protection in the future.

The performance and survival of a business in a global economy depends on understanding and managing the risks - external and those embedded within its operations. It is vital to identify and prioritize significant risks and detect the weakest points. Adding other elements to an essential ERM program (PESTEL and Porter’s 5 Forces, Treatment Plans, Scorecards, etc.), the Three Lines of Defense (3LoD) components, and Process Improvements (Six Sigma, 8D, etc.) significantly increases the ERM success rate. The authors outline a comprehensive strategy to designing and implementing a robust and successful ERM program – and not just successful in implementation but also yielding enormous returns for the organizations that implemented this enhanced ERM program.

Reviews:

“The most useful ERM program I have ever seen. I have asked the other companies on which I am a Board Member to emulate your exact program.”

Thomas McDaniel, Audit Committee Chairman at SunPower Corporation, former Executive Vice President, Chief Financial Officer and Treasurer of Edison International

“I have personally served on 12 corporate boards. On two of those companies, I worked with John where he was the chief internal auditor. He was outstanding. In both companies, he put an ERM plan into place that was outstanding. It was well structured, covered all of our major risks and, best of all, it was a plan that management bought into and owned. John is a true expert in designing and implementing ERM plans and, now with this book, in sharing with others what he knows. As I have taught corporate governance, accounting and auditing at three major universities (U of Illinois, Stanford, and BYU), I have learned that there are five key elements to having a successful company: (1) having the right leaders in place, (2) having a strategic plan and mission in place that is bought into by everyone in the organization, (3) implementing processes to accomplish the plans and mission, (4) mitigating the risks that keep you from accomplishing your plan, and (5) excellent communication processes throughout the organization to ensure that everyone in the organization is on the same page. It is often the fourth of these success elements that fails (mitigating risks) that John's excellent ERM work addresses. I strongly recommend this book to anyone interested in understanding and mitigating their risks so their organizations can be more successful.”

W. Steve Albrecht, Ph.D., MBA, CPA, CIA, & CFE; Professor Emeritus University of Illinois, Stanford, and Brigham Young University

Global supply chains are highly vulnerable and securing them is key to the success and reputation of your business. Incorporating risk mitigation practices such as Compliance and Brand Protection into your overall business playbook substantially reduce risks to your business in Asia. Ideally, periodic reviews and data analysis should be rolled out globally (as a part of larger ERM or independently), adding more visibility to emerging business risks and the ability to your business to predict potential issues before they happen.

Before you start your business activities in Asia you must strengthen your business by:

1. Registering trademarks and copyrights with the appropriate country’s patent and trade-mark office and Customs authorities;
2. Cultivating use of intellectual property; and
3. Monitoring supply and distribution, anticipating problems, and enforcement.

In order to secure your supply chain you must also include key ingredients such as

• A team that understands the entire supply chain - manufacturing and distribution - and the areas of potential safety compromise.
• Finance, Legal, and Compliance due diligence of all vendors, manufacturers, distributors alike.
• Robust and enforceable contract terms.
• Robust data security and e-business solutions policies and procedures and preventing unauthorized access.
• Compliance Reviews including business ethics, licensing, use of e-business tools and proprietary data (cyber security).
• Developing a sound data strategy includes:
  • Understanding what your critical IP, trade secrets and other critical data are;
  • Security teams (IT, physical, brand protection) understand and document where such critical information resides throughout the company including 3^rd parties.
• Connecting and communicating with business partners, the public (end users, analysts, government agencies, consumers, etc.).

Some processes can be outsourced to 3^rd party vendors - for example, online monitoring and takedowns, investigations, research and analytics, auditing, stress testing, litigation, etc., and depends on the resources at hand and your business strategy.

If you like more information and vendor recommendations, do not hesitate to reach out to me.

Protecting the Brand: Counterfeiting and Gray Markets, a new book written by three experts in intellectual property security that serves as a teaching tool on strategies to guard against the stealing of commercial secrets.

The authors use real-life examples to illustrate what actually happens when unscrupulous competitors interfere with legitimate business. They show how various state and federal statutes, including the Lanham Act and various criminal statutes, can be used to fight those who cheat their way into the market. New concepts, such as cybersquatting, are discussed and explained, and there is coverage of international remedies that can be employed when the appropriate occasion arises. They also suggest a variety of internal procedures that businesses can put in place to protect themselves against theft.

In a single volume packed with useful information, authors Peter Hlavnicka, Anthony M. Keats, and Ryan Drimalla help corporate executives and legal counsel fully understand the expanse of challenges associated with protecting corporate assets against what amounts to intellectual piracy.

Specific topics include:

• Problems caused by counterfeit and gray market goods
• Specific industry case studies
• Pro-active internal procedures to combat counterfeiting
• Using the Lanham Act to combat gray and counterfeit goods
• Trademark infringement and dilution
• Copyright piracy enforcement and recent developments
• Issues relating to websites and cybersquatting
• International remedies available to corporate executives