Phillips & Sutherland, LLP

Copyright: The Key To Revealing The Identity Of Infringers On Amazon and eBay

Most product marketers and distributors have likely 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.

Unfortunately, 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.

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.  Although this may seem like a tedious process, it can be much more efficient than continuously reporting the same infringers.

Digital Law Group has takedown experience on Amazon, eBay and Alibaba, and has issued subpoenas for seller information.

Please Email us if you have any questions or concerns regarding the content above.

Trimming The Fat


Right about now you are likely feeling a bit plumper after indulging on a Thanksgiving feast and all of those beloved leftovers. If, like some of us, you are looking for a way to shed a few pounds prior to the next wave of holiday goodies, we recommend the traditional methods of diet and exercise rather than “miracle” weight loss supplements, as many of these companies are feeling the burn after getting their gooses cooked by the FTC.

Some businesses involved in the “Pure Green Coffee” scheme have reached multimillion dollar settlements with the FTC after making false claims regarding the effectiveness of the product.  The defendants marketed the dietary supplement using fake news sites, footage from The Dr. Oz Show, supposed consumer endorsements, and “clinical proof” that dieters could quickly lose weight without diet and exercise.

Additionally, the FTC recently sent out warning letters to 20 unnamed sellers and marketers of weight loss supplements.  The letters warn that Commission staff has reviewed their weight-loss claims and that they could be misleading. They also detail what type of scientific evidence the FTC says is needed before making weight-loss claims and using consumer testimonials.  Despite the warning, if the products are making money, some of the letter recipients may ignore the warning.

While some companies can afford to lay it on thick when it comes to their product claims, others cannot risk an FTC investigation and potential monetary judgments against them.  If you are selling a nutraceutical, we recommend doing your research before you blur the line between clever and deceptive advertising.

Digital Law Group has experience in reviewing product claims as well as representing companies in governmental investigations.

Please Email us if you have any questions or concerns regarding the content above.

What’s in your customers’ shopping cart?

Holiday shopping is getting into full swing as we are only a few days away from Black Friday, and perhaps more importantly, Cyber Monday.  This season, Digital Law Group wants to make sure consumers are buying your products, and not counterfeits or knock offs from third party websites.

Sales platforms such as Amazon, eBay and Alibaba are great channels to sell products to the masses; however, unless monitored on a regular basis, these sites enable third-party sellers of counterfeit, and in some cases, damaged or expired goods, to cut into your profits.

Alibaba should be of particular concern for many sellers because counterfeit goods are sold on a colossal scale.  For example, consumer electronic sellers (e.g., Bose, Beats by Dre) can easily have tens of thousands of counterfeit listings on Alibaba.  This not only makes it difficult for consumers to identify who the underlying seller is and whether the product is legitimate, but it also makes it difficult for you to know whether your authorized distributor is behind the listings.

Policing the sale of your goods online can be daunting and time consuming if your product is being heavily infringed upon. It also doesn’t help that each marketplace has a different system, some more user friendly than others, for reporting and ultimately removing counterfeit goods, and at times, storefronts.

This holiday season, make sure your customers are buying from you or your authorized sellers.  Digital Law Group has extensive takedown experience and knows how to most efficiently navigate each platform’s reporting system.

Love and deception

Online dating has become such the norm these days that meeting a potential partner through a friend or at a bar almost seems old fashioned.  However, the online dating game comes with certain risks; most commonly, perhaps, is misrepresentation – e.g., profile pictures are outdated and profiles misleading.  While this may be frustrating to someone who is looking to find Mr. or Ms. Right, it is not illegal.  However, when JDI Dating (UK based operator of 18 dating sites) created fake, computer generated profiles and then messaged users from those accounts, a line was certainly crossed.  Many users signed up for the paid membership so that they could respond to the messages.  Then, as if that wasn’t bad enough, without informing users, JDI immediately began charging monthly subscription fees.

JDI Dating has entered into a settlement order that prohibits them from selling or benefiting from customers’ personal information, and to refund fees to the duped daters.

This case highlights two important issues that the FTC does not hesitate to prosecute: negative option marketing and violation of privacy policies.

Negative Option Marketing is where a seller automatically signs the consumer up for a product or service with a recurring fee, unless the consumer chooses not to receive the offer. The law states that before charging a consumer for any goods or services sold in an internet transaction via a negative option feature, the person/company must:

-provide text that clearly discloses all material terms of the transaction before obtaining the consumer’s billing information;

-obtain a consumer’s express informed consent before charging the consumer; and

-provide a simple method for a consumer to stop recurring charges.

Privacy:  JDI’s practices make us question whether its use of consumer information was disclosed in its privacy policy.  It is necessary to accurately disclose to consumers how you will use their information and whether it will be shared with third parties.

Contact Digital Law Group if you need assistance with your billing and privacy practices.

Caffeine in your undies got ya jumpy?

As some of you may know, FTC investigations are commonplace in the consumer product industry. What you may not know, is complaints by consumers that the product did not perform as expected are oftentimes the trigger for these investigations.  Most recently in the hot seat, Wacoal America, Inc. and its caffeine-infused underwear, iPant.  The iPant promised that the caffeine would pass through the skin leaving users with lasting slimming results.  The FTC found the product claims to be unsubstantiated. Not only will Wacoal pay over one million dollars in consumer refunds, but they have become the butt of many coffee-related jokes.

Although many companies make an effort to play by the rules, some have no reason to.  Selling for up to $80.00 each, Wacoal likely still came out on top financially; despite the fines.  However, this is not the case for all.  Some companies cannot afford the risk of walking the fine line between clever and deceptive advertising.  So what do you do?  We advise that you keep your potential enemy close – when in doubt, get an advisory opinion from the FTC.

The FTC provides opinions to companies and industry organizations on a vast array of issues, including product claims.  Although they are only “advisory,” and not binding on the FTC, the opinions provide insight as to whether your proposed practices or claims may lead to consumer complaints and an FTC investigation down the road.  The bottom line is, it could save you a lot of money in the end to ask for a little guidance in the beginning.

The FTC attorneys only consider the facts presented to them in your inquiry.  This means that it is critical to include all of the relevant rules and regulations, as well as all of the facts.  Digital Law Group can help you determine what issues to present to the FTC, draft your inquiry letter and evaluate the issued opinion.

Battle of the trolls

No, we are not talking about Middle-earth (sorry nerds). We are talking about an industry nuisance – the patent troll. Now, the image that may come to mind for you upon hearing the term “patent troll,” is one of a gnarly, greenish creature under a bridge sketching indecipherable images. The funny thing is, actual patent trolls are not that far off.

A patent troll, or a non-practicing entity (NPE), is an individual or company that acquires overly broad patents for the sole purpose of extorting licensing fees from legitimate creators. Today, more than half of patent infringement claims are brought by trolls, and software patents account for the majority of recent filings due to the formerly relaxed standards that made it easy for trolls to obtain them. These slimy practices are often rewarded due to the high costs of litigation.

Patent litigation is so expensive that it is considered the sport of kings. Many companies are not up to the fight and choose to cave in to the demands for licensing or “royalty” fees rather than spend hundreds (yes, hundreds) of thousands of dollars in legal costs. The good news is, times are changing, so don’t bust out that white flag just yet.

In June 2013, President Obama issued executive orders “to protect innovators from frivolous litigation.” In June 2014, the United States Supreme Court handed down a ruling that significantly heightened the standards for software patents, which should limit the number of patents obtained by trolls. Additionally some state courts have taken action as well, including most recently, North Carolina, whose governor just two weeks ago signed the Abusive Patent Assertions Act, which aims to penalize patent trolls for sending “bad faith” demand letters.

While a great deal more is needed to stop patent trolls from extorting money and curbing innovation, we are seeing a good pattern here. Owners of valid patents should no longer quickly settle and give into these trolls. If you find yourself at the receiving end of a patent infringement demand letter, here are some things you should do:

-Do not ignore the notice

-Contact an intellectual property attorney who can assist with the “infringed” patent[s]

-Team up with other named defendants

-Strategize with your attorney on the best/most cost effective way to respond to the demand

Digital Law Group can help you navigate the patent process with ease – from provisional filings to defense.  Contact us today to schedule your free consultation.


Act now…this offer is available for a limited time only!

Did we get your attention? Good. That was the point. The subject line of this newsletter, much like many of those limited time offer claims you see on tv, was used purely to elicit an immediate response. Just like this email will be available in your inbox any time you want to read it, those “limited time offers” are available any time a consumer calls or places an order online – not just in that 10 minute time period as many ads suggest. Soliciting a response from a consumer in this way may seem harmless enough, but this common practice could land you in hot water.

Although the use of these messages in infomercials has been standard industry practice for some time, many states’ Attorneys General are making moves to change the direct response industry. Maximizing consumer protection is the driving force behind these changes, and hefty penalties (up to $10,000 per violation) are being utilized to ensure compliance.

In addition to misleading limited time offer claims, there several other practices in infomercials and on product websites that are being scrutinized right now, including:

1. Inconspicuous shipping and handling charges
2. BOGO offers that do not clearly disclose additional P&H charges
3. Lack of return / refund policies
4. Pre-selected quantities on checkout pages
5. Lack of product order summary / confirmation

These are just a few examples of routine practices that many state AGs are going after right now. In order to avoid finding yourself on the expensive end of an investigation, be sure to seek the advice of a qualified attorney who has handled these matters and can help you minimize your risk of exposure.