Most product marketers and distributors likely have had to deal with counterfeit products being sold on e-commerce platforms, such as Amazon and eBay – among others. Although some counterfeit goods and knockoffs are obviously fake, others use the original product’s copyrighted images and trademarks, making it hard for consumers to distinguish a fake from the original.
As a result, the product owner can suffer serious economic harm as many consumers turn to these sites to purchase products. The good news is, most of them – including Amazon and eBay – have systems in place for reporting and subsequently removing infringing listings. The bad news is, these systems are somewhat ineffective for permanently removing serious, repeat infringers.
When dealing with infringement on Amazon and eBay, the process usually goes something like this: you search for your product on the platform and find an unauthorized listing (or oftentimes, several) that displays your trademark and images from your product website. You (or your attorney) fill out the infringement report provided by the platform, and – typically within 48 hours – you receive the notice that a reported listing has been removed.
Sounds simple right? Perhaps not. In many instances, the listing goes right back up because the seller is not prohibited from relisting a product after being reported and removed for infringement. Thus, takedowns become a frustrating game of whack-a-mole until it ultimately becomes apparent that the infringer is not giving up. Although the platform may claim to have a system in place to ban repeat infringers, efforts to compel this action will typically result in the platform directing you to contact the seller through the e-mail provided on the seller’s page, and – under no circumstances – will the platform provide you with direct contact details of the infringer.
In these situations, copyrights become the product owner’s greatest intellectual property asset. If the infringer is using images, videos, or text from the product website or infomercial, you can request a subpoena from the clerk of any United States District Court for the identification of the infringer, without filing a civil action, under the Digital Millennium Copyright Act. Additionally, eBay allows for subpoenaing PayPal records for infringers on its site, which can be very helpful in determining damages stemming from the infringement.
Here is what must be included in the subpoena request:
- A request to the clerk of a district court (a letter) to grant the subpoena
- A copy of the notification letter that will be sent to the platform that identifies the copyrighted work and the infringing listings/users
- The proposed subpoena (which should be limited to providing sufficient to identify the alleged infringer (subpoenas that are too broad will be rejected)
- A sworn declaration that the purpose of the subpoena is to obtain the identity of an alleged infringer and that such information will only be used for the purpose of protecting rights
After serving the service provider with the subpoena, the turnaround time for receiving the identifying information is usually about 10-14 days.
Although this may seem like a tedious process, it is much more efficient than continuously reporting the same infringers to the platform providers. It may also be the more affordable option. It’s better to identify the source of the infringement and deal with it directly rather than continuing to lose profits (and your reputation) due to high sales of inferior counterfeit products.
Trademarks and patents are very important in their own rights and should be formally registered and never disregarded, but copyrights are the key to identifying the most egregious offenders on e-commerce sales platforms.
Written by Paula Brillson Phillips