Just this month, pet medication supplier, Pet King Brands, discovered multiple counterfeit listings for its hydrocortisone ear solution, Zymox.   Upon notification, Amazon removed the listings and issued refunds to customers who purchased the bogus products.  In the past, refunds have been issued for some counterfeits, but usually only months after the listing was reported.  Pet King is currently testing the counterfeit items to determine their contents and offer consumers more information (i.e., about potential health concerns, etc.).

Other brand owners, however, have been fighting counterfeit trolls for years with only bare minimum support from Amazon; relying heavily on their own lawyers to exterminate these brand leeches.  For example, 71-year-old inventor Bonnie Tyler a/k/a “Granny Thug” has, with the help of her attorneys, removed about 800 counterfeit listings of her egg pealing product, the NEGG.  Tyler herself spends time every day on the platform sniffing out infringers, and when asked what advice she would give to new product owners, Tyler said “I would immediately get your trademark.”  Tyler’s battle has been ongoing for two years and predates Amazon’s new unit.  Given the sheer volume of products on the platform, like Tyler, many owners will have to scare off counterfeiters with limited assistance from Amazon’s new task force.

If you are a brand owner, it is imperative that you monitor Amazon daily for cheap knockoff products disguised as your own.  Contact an attorney who can offer a brand quality and safety enforcement program for your product to ensure that consumers are getting treated, not tricked, when they buy your product this holiday season.

A recent investigation by the Wall Street Journal revealed that over 4000 items for sale on Amazon were mislabeled, declared unsafe by US agencies, or all-out banned by federal regulators.  Horrifically, over 2000 of those Amazon listings were medications and children’s toys that lacked proper health and safety warnings.  Specifically, the investigators ordered and tested 10 children’s products, many promoted as “Amazon’s Choice.” Four failed tests based on federal safety standards.  Moreover, 46% of the 4152 unsafe products were fulfilled by Amazon. 

Sadly, a mislabeled product sold on Amazon was involved in the death of one consumer.  In 2014, Albert Stokes purchased a motorcycle helmet on Amazon that was listed as certified by the U.S. Department of Transportation (DOT). Subsequently, Mr. Stokes was involved in a fatal accident wherein his helmet came off. His mother sued Amazon claiming the helmet was defective, but ultimately settled for $5,000 with no admission of liability from Amazon. However, in July 2019 the National Highway Traffic Safety Administration stated that the helmet was not DOT compliant and that it had been recalled.  At that time, it was still listed as DOT compliant on Amazon.  The listing has since been removed (5 years after the accident). 

Whether you are selling lens wipes or motorcycle helmets, cheap counterfeits of your product can pose hidden dangers to consumers.  Not only does this erode your brand image, but it can also open you up to unwanted liability claims.  While Amazon is taking steps to make it easier to monitor and remove counterfeits from the platform, it is far from a perfect system. Product marketers should consult with an experienced attorney who can navigate Amazon’s platform and help ensure that their trademarks, copyrights and brand name do not appear on listings for potentially hazardous counterfeits.

The copyright is so overlooked that even product attorneys forget what a powerful member of the IP protection league it is. For example, patent rights enforcement tends to be technical and complex, often requiring long, costly legal battles with Tony Stark caliber experts to prove infringement. However, copyrights, which protect property such as images, illustrations, infomercials, and product packaging, are pretty easy to eyeball, even for an untrained juror.

Copyright is also the most affordable IP protection to secure. Moreover, copyright infringement triggers statutory damage awards that can soar to up to $30,000 per occurrence; plus, recovery of attorney’s fees. As such, trial attorneys are more willing to take on a (properly registered) copyright infringement case on a contingency basis. Of course, statutory damages are merely a fallback, with many product owners seeking actual damages (i.e., lost profits), which is an entirely different hulk of a task.

Additionally, the copyright is the only member of the IP protection league that successfully combats counterfeit sales on platforms such as Amazon; trademark registration alone will not suffice to remove counterfeits on Amazon. To be sure, the counterfeit seller merely has to allege that it is selling a legitimate product, and then there is no infringement thanks to the First Sale Doctrine (you bought it, you own it, you can resell it and call it what it is). In some instances, the infringer changes the name of the product, which effectively shields it from a trademark infringement claim altogether. However, the right to resell a product does not give rise to the right to display copyrighted images for the purpose of that sale. This is another reason why the copyright is so powerful.

While patents and trademarks are formidable tools for many reasons other than defending against knock-offs and counterfeits, with the copyright being such a low-cost titan in the IP universe, it’s a wonder more businesses do not utilize its armor. For maximum protection, copyrights need to be registered in a flash, so be sure to summon an intellectual property attorney prior to your product rollout.

In its Request for Consultations, the U.S. alleged that China violates the TRIPS Agreement insofar as it “denies foreign patent holders the ability to enforce their patent rights against a Chinese joint-venture party after a technology transfer contract ends. China also imposes mandatory adverse contract terms that discriminate against and are less favorable for imported foreign technology.”

For example, the Regulations of the People’s Republic of China on the Administration of the Import and Export of Technologies prohibits a U.S. patent-related technology license contract from restricting a Chinese party from improving the technology or from using the improved technology. Those same regulations go on to say that any improvements in imported technology belong to the party making the improvement. Therefore, a U.S. patent holder cannot stop a Chinese entity with which it is working from modifying or “improving” a patent, even ever so slightly. Then, that improved patent automatically belongs to the Chinese entity, which now has unfettered rights to license and distribute.

In April 2018, the Ukraine, Japan, Saudi Arabia, Chinese Taipei (Taiwan), and the European Union (EU), all formally requested to join the Consultations requested by the United States, generally citing substantial interests in the interpretation of the relevant provisions of the TRIPS Agreement.

In addition to requesting to join the U.S., the EU filed its own Request for Consultations on June 1, echoing and expanding upon the concerns of the United States. The E.U. Request goes on to say that “China’s measures appear to adversely affect exports to China of technology, including intellectual property rights, by European Union undertakings and also appear to nullify or impair the benefits accruing to the European Union and its Member States.” (emphasis added)

China’s Ministry of Commerce responded to the EU’s Request stating, in part, “The Chinese government has always attached great importance to the protection of intellectual property rights and adopted many strong measures to protect the legitimate rights and interests of domestic and foreign intellectual property rights holders.”

So, what happens next? According to the WTO Dispute Settlement System, the request for consultations formally initiates a dispute in the WTO. If the consultations fail to settle a dispute within 60 days after the date of receipt of the request for consultations, the complaining party may request adjudication by a panel. The findings of the panel will be adopted by the Dispute Settlement Body (DSB) of the WTO, unless a party appeals the finding or the DSB decides by consensus to not adopt the panel’s report.

As of June 7, a panel has not been requested as a result of the U.S.’s Request, even though the 60-day benchmark has come and gone, and the status remains “in consultations.” Stay tuned to this space for updates.