Online marketplaces like Amazon and eBay allow third parties to sell goods, and intellectual property owners face challenges in enforcing their rights against infringing listings. IP owners can use "Report and Delist" procedures to notify marketplaces of infringing listings and request removal. While marketplaces generally comply, current patent laws may not hold them liable for others' infringing products. IP owners must actively police their rights on these platforms.

1. e-commerce enforcement
Presented by Tim Nichols
© 2016 Workman Nydegger

2. What is e-commerce?
• the buying and selling of goods and services, or
the transmitting of funds and data, over an
electronic network, primarily the Internet

3. • Amazon.com
• eBay.com
• Etsy.com
• Shopify.com
• Bigcommerce.com
• Bonanza.com
• GoAntiques.com
• CafePress.com
• Zibbet.com
• Alibaba.com
Online marketplaces

4. • Key weapon that IP owners can use to combat
online IP infringement
• Basic elements to “Report and Delist” are:
– Notifying the online marketplace of infringing
listings or items on their sites; and
– Requesting the online marketplace’s voluntary
delisting of the items
• For the most part, online marketplaces honor
“report and delist” requests (for good and bad)
• Virtually every online has some form of IP
policy that states “we take intellectual
property rights very seriously. We comply
with intellectual property laws and industry
best practices in order to maintain the
integrity of our . . . marketplace”
• However . . . .
“Report and Delist”

5. • The Digital Millennium Copyright Act (DMCA) includes a safe
harbor that exempts Internet service providers and other
intermediaries from direct and indirect liability for copyright
infringement if they meet certain conditions
• Some of those conditions include:
– No actual or constructive knowledge of infringing behavior
– No financial benefit directly attributable to the infringing
activity, in a case in which the service provider has the right
and ability to control such activity
– When given a proper notice of infringing material, the
online marketplace “responds expeditiously to remove, or
disable access to, the material that is claimed to be
infringing”
17 U.S.C. 512(c)(1)
Copyright

6. • DMCA Takedown
– This allows copyright owners to send “DMCA takedowns” to
online marketplaces in order to facilitate quick removal of
copyrighted work from online websites
– What does a DMCA takedown look like?
• Signature of copyright owner or authorized agent
• Identification of work being infringed
• Identification of infringing material that you want taken down and enough
information to allow the online marketplace to locate the material
• Ways for the online marketplace to contact you (address, email, phone)
• A statement that you have “a good faith belief that use of the material in a
manner complained of is not authorized by the copyright owner, its agent,
or the law”
• A statement that “the information in the notification is accurate, and
under penalty of perjury, that the complaining party is authorized to act
on behalf of the owner of an exclusive right that is allegedly infringed.”
17 USC 512(c)(3)
Copyright

7. • Patent infringement can occur by making, using,
importing, offering to sell, or selling a patented product.
See 35 USC 271
• Milo & Gabby v. Amazon.com, 144 F.Supp.3d 1251
(W.D.Wash 2015)
– Milo & Gabby is a small, family business that has design
patents protecting its animal shaped pillows
– A Chinese manufacturer made copies of the pillows and
created sale listings on Amazon.com
– When Milo & Gabby became aware of the listings and
informed Amazon, Amazon investigated the accusations and
removed the products from its online store
Patents

8. Milo & Gabby’s Claim
• Milo & Gabby sued Amazon for “offering to sell” the allegedly
infringing products on Amazon.com
• Milo & Gabby alleged that:
• the infringing goods were listed on Amazon’s online store
• Buyers made payments directly to Amazon, and
• Amazon advertised the products, issued invoices, and shipped
the goods
Patents

9. The Decision
• The Court found that Amazon did not communicate or set the price,
description, or quantity of the goods, and ultimately held that:
“Amazon did not offer to sell the allegedly infringing products
because there was no manifestation of the willingness of Amazon to
enter into a bargain, so made as to justify another person in
understanding that his assent to that bargain is invited and will
conclude it”
• The Court admitted it was troubled by its decision and the impact it may
have (e.g., Amazon can allow sellers to list and sell almost anything on
its platform and still avoid patent infringement liability)
• The Court observed this as an example “where law lags behind
technology” and suggested that Congress should address the issue
Patents

10. Patents

11. • Tiffany Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010)
– Tiffany sells high end jewelry in retail stores, catalogues, and online
but not through third-party online retailers
– eBay sells goods online by connecting third-party sellers and buyers
and without ever taking possession of the goods
– Tiffany reported counterfeit listings to eBay
– eBay promptly removed all listings that Tiffany reported and took
affirmative steps to identify and remove counterfeit Tiffany goods
Trademarks

12. Tiffany’s Claim
• Tiffany accused eBay of both direct and contributory trademark
infringement
The Decision
• Direct trademark infringement? No
– The Court held that eBay was not liable for direct trademark
infringement because eBay’s use of Tiffany’s mark was protected by the
doctrine of nominative fair use
• Contributory trademark infringement? No
– The Court held that a service provider is not liable for contributory
trademark infringement unless the service provider (1) has
contemporary knowledge about particular items on its site that infringe
or will infringe in the future and (2) subsequently refuses to act on that
knowledge
– For contributory trademark infringement liability to lie, the service
provider must have more than a general knowledge or reason to know
that its service is being used to sell counterfeit goods
Trademarks

13. – IP owners are responsible to police and enforce their own IP on online
marketplaces
– “Report and Delist” can be a powerful tool in an IP enforcement strategy
– Compared to the normal legal process of getting an injunction, which
takes a long time and an enormous amount of resources, “Report and
Delist” is fast and simple
– Using “Report and Delist” can be frustrating
– Under the current laws, online marketplaces are more likely to remove
material that infringes copyrights and trademarks than material that
infringes patents
Key points to consider