Evan Feldstein Vice General Manager & General Counsel at FOREO.

When it comes to counterfeit retail goods, handbags, apparel and watches—not beauty products—likely come to mind. But the prevalence of counterfeit cosmetics has increased significantly over the past few years, ranking in the top 10 of fake items imported into the United States in fiscal year 2017.

Evan Feldstein, vice general manager and general counsel at FOREO North America, attributes the increase to a growing luxury beauty product market, citing as examples skin serums that cost more than $100 and FOREO facial devices that can run up to $200.

“Traditionally, there were lipsticks and individual pieces of makeup that ran $6, $8, $10, $12, $20, and there wasn't a huge market for the counterfeiting because the price was so low,” he said. “But devices are more expensive, and there are now these very high-end makeup products, [establishing] a market for knockoff versions of the expensive products.”

Feldstein, a longtime patent attorney who took on a more generalist legal role when he went in-house at FOREO in May 2016, spoke with Corporate Counsel about his job going after cosmetic counterfeiters and what his day-to-day looks like.

Corporate Counsel: What is the makeup of the FOREO legal department?

Evan Feldstein: It is split across three different offices. I am the general counsel for the U.S. and Canada. We also have a legal department in Zagreb, Croatia, that oversees Europe, the Middle East and Africa, and we have a department in Shanghai, China, that oversees all of the Asian countries.

CC: What is the role of legal in preventing counterfeiting activity?

EF: In terms of prevention, it's nearly impossible. But as a registered patent attorney, I spend a lot of time obtaining patents over our largest products like our Luna range, the fifth patent over which will issue in a couple weeks. With our [illuminating eye massager] IRIS, I have both utility and design patents. We have designs all over the world and utility patents in some smaller, secondary markets like Australia, Canada, South Korea and other places. In terms of trademark registrations … U.S. Customs can catch things at the border for you.

CC: What about getting some sort of remedy after the fact?

EF: In terms of what we do once we've found [a counterfeit item] on places like Amazon or eBay is essentially try and work with them to see if they'll remove it. EBay and Amazon are somewhat difficult in that they require a court order to remove a fake listing, which we have done in the past.

Last summer we filed a suit against 55 defendants. They were all removed from Amazon, eBay, [beauty and personal care website] Alibaba, and they paid us a significant amount of money basically admitting that they were at fault or importing these infringing goods. … That was the first one against a lot of users, but we're probably going to do that about once a year. We did this last August, so probably toward the end of the summer we'll file another one against a significant number and hopefully it goes just as well as the last time.

We've done some smaller litigation where most of the time, we go back and forth with somebody's lawyer, and they end up settling before we actually end up filing. Financially, we're generally the larger party so we have the ability to influence in that manner because nobody wants to spend hundreds of thousands of dollars on attorneys' fees if you're selling 200 products out of Amazon.

CC: Given your IP background, were you brought on because counterfeiting became an issue?

EF: Yes, that was the first thing that the president of the company wanted me to get involved in—patent infringement matters but the prosecution as well. Patent prosecution is somewhat expensive, and we didn't have anybody at the company three years ago who had a background in it, so I oversaw the prosecution side as well as the removal side.

At that point, the company was very young, formed in the U.S. in 2014 and globally in 2013, and nobody anticipated the volume or pace that we were going to have, so the company really needed to get somebody in here quickly. Over the last three years, since I started in May 2016, we've removed 42,000 listings off of the internet, so it's been somewhat successful. But there's always room to improve because as we've gotten more popular, you see more listings now. I think it's sort of a constant battle.

CC: In addition to the patent work, what are your daily duties?

EF: I oversee the entire legal department—contracts review, collections, [Food and Drug Administration], customs. Anything that you could think of in terms of a general counsel's role, I get involved in all of it. …I do try and do most of it myself, although I do use outside counsel for certain things.

CC: Who are your go-to firms?

EF: For the litigation last summer, Marton Ribera Schumann & Chang. I've been working with Pisani & Roll to keep on top of the Trump tariffs situation, and we use Fenwick & West for our international patents and Kunzler Law Group for international trademarks.

CC: Coming from a boutique law firm where you spent 90% of your day doing patent prosecution for medical devices, what is it like having a generalist role?

EF: It's very exciting because there is something new every day. I get to see totally different areas that I never thought I would be involved in. It's also been interesting, since I moved into the management side, where I'm getting involved in marketing and sales, which is totally different from the legal background and very interesting in a way as well.