Legal Memorandum: Trademark/Patent Infringement Investigation

Issue: Under Federal Law, What are Possible Defenses to Private Sting Operation Conducted Pursuant to Trademark Infringement Investigation?

Review of 150 cases that focused on private sting operations conducted pursuant to alleged trademark/patent infringements.  The focus of the court in these cases was whether there was in fact an infringement and violation of federal law.  The court consistently recognized the legitimacy of such private sting operations on public policy grounds.  The issue from a liability standpoint appears to be whether the private sting operation was conducted in a “reasonable” manner.  The courts have not addressed, however, what constitutes a “reasonable” manner.  The following are the most pertinent cases:

•           Levi Strauss v. Shilon, 121 F. 3d 1309 (9^th Cir. 1997)

1)         no entrapment by private sting operation investigators investigating counterfeit jeans where the defendants were predisposed to sell or produce counterfeit goods;

2)         claim that Plaintiff acted with unclean hands because of alleged misconduct during investigation fails where no entrapment proven (defendant not entitled to equitable relief).

•           Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 119 (S.D.N.Y. 1999)

1)         court recognizes the legitimacy of private sting operations to uncover potential unfair business practices.  To prevent the use of investigators who pose as customers might permit targets to freely engage in unfair business practices that would prove harmful to trademark owners and the general public.

2)         court recognizes the common law rule that admissibility of evidence is not affected by means through which it is gathered.

•           Gucci Shops, Inc. v. Conrad, 6 U.S.P.Q. […]