| From PLI’s Course Handbook
15th Annual Institute on Intellectual Property Law
cost-effective enforcement strategies for a challenging economy
Matthew L. Levine
Fish & Richardson P.C.
Cost-Effective Enforcement Strategies for a Challenging Economy
I. Knocking Off Knock-Offs: Who Bears the Burden of Policing Infringement?
Increasingly, trademark owners must bear the burden of policing infringement and can only rely so far on ISP’s and auction sites for help with brand enforcement. The price of such vigilance can be high, presenting a serious challenge to trademark owners in a down economy.
A. U.S. Decisions on Auction Sites’ Liability for Contributory Infringement
The decision in Tiffany v. eBay, now under appeal, highlights the U.S. courts’ trend away from holding auction sites liable for contributory infringement if a seller offers counterfeit products through their service.1 Judge Richard Sullivan of the Southern District of New York decided last year that eBay’s use of Tiffany’s trademarks in its advertising and in sponsored links purchased through Yahoo! and Google, was a protected, nominative fair use of the marks. The ruling was based on two logical flaws. First, nominative fair use is a defense only when the defendant’s reference was to goods with a genuine trademark. Thus, it would not apply to counterfeit goods. Second, fair use is not a defense to false advertising. Judge Sullivan also held that eBay was not liable for contributory infringement. In determining whether eBay had facilitated the sale of counterfeit goods, the court said the question was not whether eBay could reasonably anticipate such infringement, but whether eBay continued to supply its services to sellers when it knew or had reason to know of infringement by those sellers. The decision rejected the Restatement approach, which found contributory infringement by manufacturers and distributors either when the auction site intentionally induced a third person to engage in infringing conduct; or when the trademark owner failed to take reasonable precautions against the infringing conduct where such activity can be reasonably anticipated.2 When determining that the standard should be “knew or had reason to know,” rather than “could reasonably anticipate” the trademark infringement, the court conducts a detailed and pain-staking analysis into the financial investment by each party. The District Court’s ruling seems to dwell on the investment dollars spent by the parties far more than consumer confusion.
Tiffany argued that eBay should observe a “Five or More Rule,” or a prospective ban on retailers who sell items in lots of five or greater, contending that those sellers were more likely to be trading in counterfeit goods. The court sharply contradicted such logic, faulting Tiffany for not doing more independently to fight the counterfeiting problem. The court found that Tiffany did not fully utilize eBay’s Verified Rights Owner Program (“VeRO”) program, which was designed to curtail counterfeit listings on the auction site by allowing brand owners to alert eBay to pirating activity. Under this program, when Tiffany found a suspect listing, it could file a Notice of Claimed Infringement (“NOCI”), signaling to eBay that particular items for sale were counterfeit and that the use of Tiffany’s trademark upon those goods constituted infringement. Upon receiving the trademark owner's NOCI report, eBay was responsible for removing the offending listings, which it did, in some cases taking additional steps such as temporarily suspending the accounts of repeat counterfeiters. Throughout the trial and the appeal, eBay has so far successfully argued that the enforcement burden is largely on Tiffany to police its brand.
eBay argued that its anti-counterfeiting efforts were more than sufficient, especially for the volume of goods that passes through its site annually. The company claimed to spend $20 million a year to fight fraud in its online marketplace. eBay claimed it had 4000 employees in its “Trust and Safety” department, 200 customer service representatives who focus on fighting trademark infringement, 70 employees who work exclusively with law enforcement officers, a fraud search engine software tool on which eBay spends $5 million a year, and an “About Me” webpage for sellers to discuss their products and post warnings about potentially counterfeit items. The most salient feature of its strategy to combat infringers was the VeRO, a notice and take-down regime that allowed trademark owners to request the removal of listings suspected of being fakes. eBay also took additional steps with regard to Tiffany merchandise sold on its site. The auction site showed that it issued special warnings to sellers of Tiffany items, that it devoted Trust and Safety department employees specifically to the Tiffany listings, and that it put Tiffany-specific filters on its fraud search engine to find counterfeit goods. The court found that eBay removed more than 284,000 suspected listings within 24 hours of receiving a NOCI, and that few illicit sellers returned to eBay under new account names once their infringing listings had been removed.
Assuming the decision is upheld on appeal, enforcing trademark rights under the Tiffany v. eBay scheme is going to require constant vigilance and a significant commitment of resources by trademark owners. If a brand owner does not or cannot exert such effort, programs like eBay’s VeRO and other largely self-driven notice and take-down regimes are unlikely to reduce the sale of counterfeit items on auction sites.
B. Enforcement in Europe: Recent Auction Site Cases
Generally, European courts have expected more from auction sites, though a new possible trend may be emerging, at least in the UK and Belgium, toward an American-style regime where the trademark owner must be more pro-active in combating infringement.
The Commercial Court of Paris issued three decisions on June 30, 2008 in the case of Louis Vuitton, Christian Dior, Guerlain et al. v. eBay, USA and eBay International, Switzerland. The luxury handbag makers sued eBay and its European operation for failing to stop the sale of counterfeit handbags and clothes. Vuitton and the other designers claimed that genuine perfumes were being sold without a license when only dealers such as perfume chains and department stores were authorized to sell the perfumes. Ultimately, the French court sided with the big-name French design houses and awarded significant damages: EUR 19 million for counterfeit handbags, EUR 15 million for counterfeit clothes, and EUR 3 million for counterfeit perfume, in total roughly the equivalent of $63 million (US). The court held that eBay was guilty of trademark infringement, and that it had acted with gross negligence. eBay was not just platform provider or passive host, the court reasoned, but a broker of the infringing sale. Offering a notice and take down regime alone did not do enough to insulate eBay from liability for its users’ counterfeiting activities. According to the French court, eBay should have checked commercial registers, looked for clear signs of counterfeits, asked for receipts or certificates, and should have closed auctions immediately after notice in order to prevent the sale of counterfeits.
In Germany, the courts have reached a similar opinion about the responsibilities of auction site owners to police their marketplaces for counterfeits. The German court has held that Article 14, section 3 of the EC Directive on Electronic Commerce, which defines the host provider privilege, “shall not affect the possibility for a court or administrative authority of requiring the service provider to terminate or prevent an infringement.”3 Having staked its ground, and put auction sites on notice that they may be held accountable for infringing acts where they have not done enough in the court’s estimation to defeat counterfeiting, the German court has yet to fully define what pre-emptive measures are “technically possible and reasonable.” What is clear is that German courts expect auction sites to apply software to filter out similar infringements by use of keywords and to manually check the results of this filtering process.4 The sites must also monitor conspicuous reserve prices, like “Rolex watches” offered for 800 Euros. The German court also requires that auction sites monitor sellers which sellers have previously sold illicit products, such as youth-endangering content, or Nazi memorabilia.
Recent decisions in the UK and Belgium, however, seem to be turning away from such stringent requirements on auction sites. In the 2006 UK case of Bunt v. Tilley, the British court held that “an ISP should not become liable […] simply because it has been previously told of wholly unrelated instances of infringement.”5 In Belgium, the court last year declared in L’Oreal v. eBay that an auction site has “no general monitoring obligation.”6
C. Cost-Effective Anti-counterfeiting Tips
1. Record all copyrights and trademarks in your IP portfolio with relevant customs and border protection agencies
For retailers and distributors who sell goods internationally, keeping the relevant government agencies informed about your product offerings and alerting the appropriate border control authorities to counterfeiting activity are required activities for brand management.
2. Make use of regular monitoring and enforcement tools provided by auction sites
All of the major online auction sites offer programs that enable trademark owners to report auction listings that infringe on brand or that promote counterfeit goods. As mentioned earlier, eBay offers a Verified Rights Owner Program.7 Overstock.com deletes auction listings and suspends accounts that violate its User Agreement.8 Ubid.com randomly purchases goods on its own site to perform quality control.9 Bid4Assets.com reviews all of its auction listings for signs of counterfeit goods.10
3. Enforce your intellectual property rights globally
Trademark owners can get help from industry-specific organizations that monitor and combat counterfeiting. The following is a list of organizations that can provide free aid and advice.
Alliance for Gray Market and Counterfeit Abatement (AGMA)
Coalition Against Counterfeiting and Piracy (CACP)
China Anti-Counterfeit Technology Association (CATA)
Global Anti-Counterfeiting Group (GACG)
Intellectual Property Owners Association (IPO)
International Anti-Counterfeiting Coalition (IACC)
Quality Brands Protection Committee, China (QBPC)
4. More Enforcement Tips
a. Invest in defensive and offensive approaches
b. Provide a means for buyers to authenticate product on your site so that purchasers can determine whether a good is a counterfeit
c. Educate your entire target market
d. Analyze infringement specific to your marketplace and target your policing efforts
e. Stay current on the law
f. Stay current on the most recent avenues of infringement
II. Policing Marks on High Traffic Sites
Get the most brand-protecting bang for your enforcement buck by concentrating policing efforts on websites that draw the highest traffic.
A. New Facebook URL’s
This summer, Facebook began offering its users the ability to personalize the web address for their page, rather than just being assigned a URL made up of random characters. Starting in June, Facebook ushered existing users over to the new policy and later opened it up to the general public. Facebook users may now choose any username and that term then becomes part of the web address for the member’s Facebook page. The policy change resulted in the conversion of more than 3 million usernames within the first 12 hours and close to 6 million in the first 2 days.
While Facebook members will find it easier to identify each other’s profiles, the policy has caused much concern among trademark owners who are worried that their marks will be misused by Facebook URL cybersquatters. Any Facebook member can attempt to register www.facebook.com/[trademark] without having to prove ownership of the term. Brand owners are also concerned that a competitor may obtain a URL using their mark to block the rightful owner from exploiting the mark on that site. Alternately, trademark owners may want to prevent a URL containing their mark from being used for a protest site about the brand, like the “[trademark]-sucks” genre, which might gain legal protection.
Though Facebook’s change has attracted a significant amount of media attention, there are numerous social networking and blogging websites that allow users to choose their own web addresses, within certain limitations. For many years, MySpace users have been able to replace the string of numbers in their profiles with their username. Though greeted with much anxiety, the Facebook change doesn’t seem to represent a significant shift in the use of URL’s on social networking sites.
Facebook has instituted a notice and take-down system for trademark owners who are concerned about the unauthorized use of their brand in a URL. The social networking site now provides a formal process for brand owners to acquire disputed URL’s or to prevent others from using them. Trademark owners can submit an Intellectual Property Infringement Form to challenge an already registered username that contains a trademark. In many common law countries, owners may challenge another’s registration of a username containing a trademark if they can show rights through use. Currently, assignment of usernames is not permitted. It is not yet clear whether usernames that Facebook has removed due to an infringement notice will be given to the trademark owner, will be made available to the public generally, or will simply be put out of circulation.
1. Facebook Practice Tips
a. Reserve Your Mark as a Username on Facebook
Your company’s Facebook page should have a username corresponding with your trademark. Allowing someone else to register your mark as a username could cause you expensive problems down the road. To claim your mark or name as your Facebook URL, existing Facebook users can simply log onto their current profile. A prompt will appear asking if you want to create a unique URL. If you own a federal trademark registration, you may block others as described above regardless of whether you currently have a Facebook profile.
b. Be Vigilant
If infringing usernames become available again, trademark owners should make sure that others cannot register their trademark as a username.
c. Register Your Exact Mark
Once selected for a profile, a username cannot be changed, so registrants should take care to reserve rights to their exact mark
2. General Social Network Tips
a. Trademark owners should search social networking sites periodically for user-generated content that could tarnish their brand or create consumer confusion
b. Owners of copyright-protected content – such as companies in the entertainment, media, software, and video game industries – must monitor the web regularly for copyright infringement
c. Certain individuals may have rights under state publicity rights laws that protect them from impersonators on social networks like Twitter
B. Twitter’s Trademark Policy
As is evidenced in the recent lawsuit by St. Louis Cardinals manager Tony La Russa, Twitter has come under fire for allowing its users to impersonate famous celebrities. Back in June, La Russa filed suit against Twitter at the U.S. District Court in San Francisco claiming emotional distress and damage to reputation caused by a user's fake page making fun of his DUI charge and the deaths of two Cardinals pitchers.11 La Russa dropped his suit against the social-networking site this summer, and Twitter maintains that there was no monetary settlement. Twitter’s unrepentant stand in support of its users’ right to parody famous individuals indicated to some that Twitter would do little to help celebrities and trademark owner protect their brands.
Twitter’s trademark policy forbids “[u]sing a company or business name, logo, or other trademark protected materials in a manner that may mislead or confuse others or […] for financial gain.” Twitter pledges to immediately suspend accounts with clear intent to mislead others, even if there is no trademark infringement. Twitter says it works with most account owners to remove infringements so that the person may keep the account. If the owner shows that the infringer had a clear intent to mislead people into believing a user account is affiliated with a particular company, Twitter will permanently suspend the infringer’s account. Twitter promises to work with small groups and communities in order to assure their compliance with the policy. In an effort to avoid shutting down innocent vendors, Twitter will contact owners of informational sites to inform them of the necessary steps to regain compliance. Under the policy, news feed accounts must more clearly designate that they are aggregating news about a company to resolve confusion. Twitter says news feed aggregates are welcome, but must not use logos or copyright protected images, and must clearly designate non-affiliation with the entity represented in the news feed to avoid suspension. Mark owners can report trademark violations to Twitter by submitting a web request from the Support home page. Once a ticket is submitted, Twitter promises to respond within 24 hours.
C. Search Engine Keywords
1. Google’s AdWords Policy
Google's AdWords, the keyword advertising system by which companies bid for the right to have their text ads displayed alongside the search results for certain keywords, has undergone significant policy changes this year. Back in February, Google implemented a minor change to its AdWords policy regarding multiple display URL domains per ad group, requiring them all to have the same top-level domain. More significantly, this spring Google changed its policies in regard to keyword advertisement in the U.S., and continued to export more controversial elements of its U.S. policies to the rest of the world.
For some time, Google has allowed businesses to buy the marks of competitors as keywords in the U.S. and Canada. In 2008, Google extended that policy to the UK and Ireland. Then in May, Google vastly expanded from four to 194 the number of countries where AdWords advertisers may use trademarks as keywords without the owner’s approval.
Also in May, Google made a major change to its U.S. keyword ad sales policy. Google has long allowed U.S. companies to pay to use other people's trademarks as keywords, so that their ads will be displayed beside the search results of another person's trademark. However, Google previously did not allow buyers to use the trademarked term in the actual advertisements. Now, in the U.S., Google will allow companies to use other people's trademarks in the advertisements that accompany search results without the owner's permission. AdWords previously allowed competitors to buy keywords that were others’ trademarked terms only as triggers for ads. Google now allows companies that sell branded goods to name those trademarked products in their ads, even if the trademark owner does not consent.
Google said the change was a benefit to trademark owners. Claiming that there were too many “overly generic ads” in its U.S. networks, Google likened the situation to supermarket ad that advertised only “discount cola” and “snacks on sale”.12 The ads, which began appearing June 15, are served throughout the U.S. on google.com and to U.S. users on Google’s Search and Content Networks. Under the old policy, Google explained, a retailer that sells several brands of athletic shoes was not able to highlight all of the brands that it touts in its ad text. However, under the new policy, Google maintains, that advertiser can create specific ads for each of the brands that they sell.
A trademark owner need not be a Google AdWords advertiser in order to file a complaint of infringement against an advertiser in Google’s network. But that has not stopped numerous companies from suing Google in response to the new policy, claiming that the search engine company is directly benefitting from infringing activity at their expense. Rosetta Stone, a developer and marketer of foreign language education software, is one of at least nine companies to Google for allowing advertisers to infringe on its trademark in the ads placed by its competitors delivered through Google’s AdWords system.13 The company has filed a suit in the U.S. District Court for the Eastern District of Virginia asking the court to enjoin Google from allowing its advertisers to use its trademark in online text ads without Rosetta Stone’s permission.14
Google has provided guidelines designed to prevent its advertisers from using someone else’s trademarks in their ads in an infringing way. Google explains that ads using unauthorized marks will only be permitted 1) when the term is used in a descriptive or generic way and not in reference to the trade mark owner; 2) when the term is used by a reseller of the trade marked or a supplier of components corresponding to a trade mark; and 3) where the advertiser is an information resource that does not compete with the trade mark owner. It is not clear if the new policy allows competitors to use each other’s marks for comparative advertising.
Google will not allow:
* Ads using the term in a competitive, critical or negative way
* Ads that do not lead to a landing page which clearly facilitates the sale of either the goods and services corresponding to the trademark OR parts or components related to the goods and services corresponding to the trademark
* Competitive or critical information about the goods and services corresponding to a trademark
* Ads that do not lead to a landing page that provides substantive information about the goods and services corresponding to a trademark
2. Yahoo!’s Keyword Policy for Trademarks15
Yahoo!’s keyword ad policy allows bids on trademark terms only if the content on the advertiser’s site refers to the trademark, its owner, or related product in a permissible nominative manner without creating confusion. For resellers, an advertiser's site must sell (or clearly facilitate the sale of) the product or service bearing the trademark. Unless the advertiser is an authorized reseller, the triggered ads should not create that impression. If the ad links to an informational site which does not compete with the mark owner’s business, then the primary purpose of the advertiser’s site must be to provide substantial information about the trademark owner or trademarked products/services. In addition, the advertiser’s site cannot sell or promote competitive products or services. All content on the advertiser’s site must use the mark in a generic or merely descriptive manner. The advertiser's listing must also disclose the nature of the relevant content.
3. MSN’s Keyword Policy for Trademarks16
Advertisers may only use a third party’s trademark as a keyword if the advertiser site sells authentic goods or services distributed under that trademark if they are a reseller. For informational sites, the main purpose of the advertiser’s site must be to provide information about goods or services represented by the trademark. In addition, the advertiser must not sell or facilitate the sale of competing products or services. In the case of dictionary terms that are trademarks, the advertiser must clearly use the ordinary dictionary use of a term, and the advertiser’s site must not sell or facilitate the sale of competing products or services. Other than the above exceptions, MSN specifies that an advertiser should not bid on any keywords, or include within the text of their advertisements any words that are the trademarks of others—in particular, trademarks of the advertiser's competitor.
III. Inexpensive Preventative Measures
A. Cleaning up old registrations can avoid future cancellation actions
The cost of brand policing can be curtailed through simple, inexpensive maintenance of your trademark portfolio. There’s a lot you can do cheaply on your own to avoid costly oppositions to your registrations. For example, doing a bit of spring cleaning in your older registrations could eliminate unnecessary risk. Many companies that have acquired competitor’s portfolios, or have inherited registrations from a merger, often don’t know enough about the history and composition of those marks. Checking back through your registrations could turn up some overbroad use claims that leave you vulnerable to future challenge. By narrowing the scope of an overbroad registration, a trademark owner can avoid costly opposition proceedings by challengers who in reality pose no threat to its business. In a recent case, the TTAB adopted a more liberal standard for amendments to a registration. The TTAB has redesignated the case of Zanella v. Nordstrom as precedential regarding "correcting" fraud on the PTO by amending the registration to eliminate the issue of contention.17
The owner of the ZANELLA registrations failed to use the mark on all of the goods it had listed in the applications leading to registration. It then voluntarily amended its registrations to delete the subject goods from the registrations, prior to the use of the mark by the party who sought to cancel the registrations based on fraud. In denying summary judgment, the TTAB ruled there was not necessarily fraud, and that the registrant's "timely proactive corrective action raises a genuine issue of material fact regarding whether [the registrant] had the intent to commit fraud." The TTAB went on to say that amending the registrations "prior to any actual or threatened challenge to the registration creates a rebuttable presumption that [the registrant] did not intend to deceive the PTO."
B. Keep watch for online trademark infringement with Google Alerts
Another inexpensive way of monitoring the web for infringers is a free tool from Google called Google Alerts. Users may set up an ongoing series of searches for a trademark or for copyrighted content, and the tool will crawl the web looking for the latest examples. Trademark owners may also use the tool to keep tabs on certain known or suspected infringer sites to watch for updates or mentions of their mark. When the crawler notices a change to one of the pages the user is monitoring, it sends an automatic alert to the user about the confusingly similar web content. The Google Alert is unlikely to replace professional watch list services, but it does provide a cheap and easy way to do some policing without much effort.
IV. The Future of Enforcement
What changes does the future hold for trademark and copyright enforcement?
A. The PRO-IP Act of 2008
The Prioritizing Resources and Organization for Intellectual Property Act (“PRO-IP ACT”) was signed into law by President Bush in October 2008.18 The Act creates a cabinet-level office for intellectual property protection, and stiffens penalties for infringers. President Obama has not yet appointed an IP Czar, and it is unclear whether he will support a law passed hastily in the waning days of the previous Administration. Courts have decided to apply the new law only prospectively, thus courts that have referenced the Act have not yet awarded the higher damages that the new law makes possible.19
The Act makes a number of significant changes. Fines in copyright cases dealing with artistic compilations, like boxed sets of DVD’s, are increased. Courts may now make "multiple awards of statutory damages" when compilations are infringed. The Act makes it easier to obtain maximum penalties for repeat copyright offenders. The 10-year prison term remains intact for felonious repeat offenders but the Act eliminates the requirement that repeat offenders must have distributed at least 10 copyrighted works within 180 days. Any computer or network hardware used to facilitate a copyright crime can be seized by the Justice Department and auctioned off, and the owner does not need to be found guilty of a crime for his property to be taken. The Act also created a new, federal bureaucracy, the White House Intellectual Property Enforcement Representative, or WHIPER. The head of WHIPER, the Intellectual Property Enforcement Coordinator, will be charged with developing a "Joint Strategic Plan" that, in part, involves identifying individuals involved in counterfeiting activity and pirating of goods. Moreover, the Act doubled the range of statutory damages available in counterfeiting cases to the range of $1,000 to $200,000 and up to $2 million if the counterfeiting is willful. The Act also makes mandatory an award of treble damages and attorney’s fees in willful counterfeiting cases regardless of whether the defendant is a direct, vicarious, or contributory infringer.
B. Ideas for Reform
The courts seem to have left the situation imbalanced, placing far more impetus on the trademark owner to bear the cost and lead the effort to police its own brands against infringers and counterfeiters. Legislators and business leaders should consider other options to more fairly distribute the burden.
1. Contributory Infringement
Holding auction sites liable for contributory infringement when counterfeiters use their sites to sell pirated goods exposes them to great risk for allowing their users to traffic in counterfeit goods. Under such a rule, if auction sites fail to detect and control misconduct on their sites they expose themselves to major damages for inattention to infringement. Holding the auction site owner or ISP strictly liable for a seller’s infringement may cause a situation where ISP’s will go too far in deterring infringers, undoubtedly leading to innocent retailers being restricted due to bureaucratic error. Such a damage remedy is also likely to produce higher policing costs for ISP’s and auction sites, which will eventually be passed along to end users.
2. A Take-down Regime
The paradigmatic example of a take-down regime is the Digital Millennium Copyright Act, whose provisions are codified in section 512 of the Copyright Act. Under that Act, auction sites must remove allegedly illicit conduct promptly upon notice of the misconduct. This scheme imposes fewer obligations on ISP’s and auction sites: the host provider is protected from liability so long as it complies with a take-down regime. This type of reform is more cost-efficient for both ISP’s and trademark owners: the burden of policing is shared, but the onus is on the trademark owner who knows the products best to actively hunt for counterfeiters. On the other hand, a take-down regime could be seen as less effective, especially to trademark owners, because it does not require much effort from the ISP in identifying and removing illicit material.
3. A "Hot List" Scheme
Under a "hot list" scheme, a reliable broker, like a government agency, identifies a list of illicit actors and makes the list available to certain industry groups. For example, since 9/11 banks have been forbidden from wiring money to any entity on the federal government's list of suspected supporters of terrorist activity. Airlines are not allowed to cater to any individual whose name appears on the government’s “No Fly” list. An equivalent mechanism could protect trademark owners from infringers and counterfeiters. Government agencies could maintain a list of repeat offenders and provide access to auction site and ISP’s. The ISP would be required to consult the list before authorizing a retailer to offer products through its site. A “hot list” scheme would provide the most predictable liability exposure to auction sites because their obligations would be well defined and manageable. Such a scheme would shift the burden of monitoring away from both auction site companies and trademark owners. Instead, the government would bear most of the cost of identifying and tracking the illicit actors. Trademark owners would still need to be vigilant in reporting infringing activity to the government agency so that its lists of repeat offenders remains current.