Barely a day goes by without one of our counterfeit prevention lawyers getting contacted by someone seeking help in getting counterfeit products taken off the web. We have for years been writing about how our lawyers have a near 100% success rate at getting counterfeit products removed from e-commerce websites, but our success rate depends largely on whether the offending product is truly a counterfeit, as that term is commonly defined by lawyers not businesspeople.
All of the big e-commerce sites (Amazon, PayPay Mall, Ebay, Mercado Libre, AliExpress, Taobao, JD.com, Etsy, Shopee, Flipkart, Allegro, Tmall, Zalando, Wish, Coupang, Trendyol, etc.) have their own formal procedures for removing product listings that infringe a third party’s IP rights and pretty much without exception, to secure the removal of infringing listings, you must follow their procedures to the letter.
Among other things, you typically must provide documentation proving (1) the IP owner’s existence and (2) the IP owner’s rights to the IP in question. Only after you have submitted these documents and had them verified by the e-commerce site can you even submit a takedown request. When you do submit your takedown request (assuming everything goes smoothly), most e-commerce sites will remove the counterfeit products within a week or so. When things don’t go smoothly with an e-commerce site (which judging from our volume of phone calls is rather frequently) it is vital to have a person on your side who speaks the language of the country in which the website is based, understands that country’s intellectual property laws, and is experienced in dealing with the particular website posting your products. This person is necessary to get to higher-level employees at the e-commerce site and explain to them why the listing does in fact violate your IP.
To date, our international IP lawyers have succeeded with every takedown request seeking the removal of products that infringe our client’s trademarks or copyrights. But probably half the time, we have to tell the potential client there is no point hiring us for the product removal. Why is that? The below email from one of our international IP lawyers who regularly works on takedown matters across multiple websites explains.
Every website has its own takedown protocols, and the key to getting products removed is to follow that site’s protocols. You express an interest in suing these websites and we do not advise that unless and until we have sought to get your products taken down and failed. Lawsuits are expensive and based on our track record in securing takedowns, the odds are overwhelming that we will never need to file one on your behalf. To put things in perspective, we have never filed one.
You are correct that only the copyright or trademark owner or its authorized representative can make takedown requests. However, sites vary as to the sort of authentication they require for a Power of Attorney and most of the sites know our law firm well enough that they almost never require we provide them with a formal Power of Attorney to achieve a takedown.
The most important thing is that we show proof that you have registered your IP (your trademark or your copyright) somewhere. Some sites sometimes will take down products with foreign IP registrations, but in-country registrations are always much better. Technically, most countries are obligated to recognize copyrights registered in any Berne Convention signatory nation, but explaining a particular country’s WTO obligations to a 23-year-old customer service representative seldom works. And as you can probably imagine, securing the removal of copyrighted IP for which a copyright has never been registered anywhere is even more difficult. This is why gaming/video/music companies so often complain about how difficult it is to secure counterfeit takedowns. By the time they get their in-country copyright registration and can submit a takedown request, the damage has been done. How many people will still be downloading today’s big game six months from now?
Another thing to consider is that the more sophisticated/well-heeled the website, the more likely it has a formal takedown procedure. For the smaller websites, we generally have to contact someone directly because there are no instructions on the website or they are hopeless. But unless the website is a pirate site (which is rarely the case), it does not want to be sued for hosting counterfeit or pirated items and so long as we do all the work for them, they’ll be happy to take down rogue products and content.
Finally, you should be aware that once this whole takedown process begins, it’s pretty much ongoing. The pirates and counterfeiters don’t just give up because their first upload got taken down. And even if we stop one or two of the counterfeiters, we should expect more to pop up. This is why companies hire us to monitor and report and after we remove the existing counterfeits, we should discuss what sort of future programs make sense for your company and your situation.. One of the things we can and should do though is try to figure out who is doing the counterfeiting, how they are doing it, and what we can do — if anything — to try to stop it or slow it down.
My law firm has an account with a huge number of online marketplaces that makes us eligible to seek removal of links that infringe our clients’ IP. We do this by submitting proof of identification and authorization, as well as information regarding the IP which is being infringed upon. This is usually accomplished by our providing the following: (i) our client’s “business license,” (ii) any formal IP registration documents and (iii) (sometimes) a power of attorney signed by the client, authorizing us to file the complaint on its behalf. We also submit the following information: the IP registration number(s), the title of the IP, the name of the IP owner, the type of IP, the country of registration, the time period during which the IP registration is effective, and the period during which the IP owner wishes to protect its IP rights. We translate these documents into the native language of the country in which the online marketplace is based to make things easier on the website company and because doing so greatly speeds things up. After submission, it usually takes only a few days to verify our information.
Once the online marketplace verifies the information we provide, we provide the infringing links and removal virtually always quickly occurs. For complaints concerning patent rights, we also need to provide proof of the connection between the infringing material and the IP being infringed.
With many online marketplaces, if the allegedly infringing party does not respond to the complaint within anywhere from 3-14 days of receipt, either by deleting the infringing link or by filing a cross-complaint, the online marketplace will delete the infringing link and most then bar the infringing party from posting the same information again. If the infringing party files a cross-complaint, we would then need to deny the cross-complaint, and then the online marketplace usually will handle the “dispute.” As you would probably imagine, counterfeiters almost never file a cross-complaint; they typically just slink away.
If your IP (especially your trademark or your copyright) is registered in the country in which the online marketplace is based, securing the removal of products that infringe on your IP can be relatively fast and easy. If your IP is registered in a country other than the one in which the online marketplace is based, securing the removal of the products that infringe on your IP can be accomplished, but not always. If your IP is not registered anywhere, the best strategy is usually (but not always) for securing removal of infringing products is to register it first and then seek removal, rather than to seek removal first. Some online marketplaces (it largely depends on the country) are not at all quick to remove products that allegedly infringe on a patent (as opposed to a trademark or a copyright). These marketplaces often will not remove such products without a court order to do so.
In other words, plan now with your IP filings for takedowns later.