• Don't Fall Victim to Online Trademark Infringement
  • November 10, 2008
  • Law Firm: Troutman Sanders LLP - Atlanta Office
  • In the past, trademark owners policed flea markets for counterfeit, pirated, or otherwise infringing or unauthorized products. Today, even though flea markets are still a problem, trademark owners also have to deal with the worldwide flea market, otherwise known as the Internet, where countless infringing items are available to people all over the world.

    Online auction sites sometimes contain items for sale that are counterfeit, pirated, or are otherwise infringing. With a few exceptions, you can sell just about anything on these auction sites—from a box of Kleenex® brand tissues to a used jet airplane. Although the most popular online auction site, eBay, states that it is “committed to protecting the intellectual property rights of third parties,” trademark owners cannot rely on such sites to police themselves and proactively remove infringing merchandise. And, with the recent Tiffany Inc. v. eBay, Inc. decision, in which a U.S. District Court ruled that eBay is not responsible for policing counterfeit listings on its auction site, this business reality is unlikely to change anytime soon. Although Tiffany is appealing the decision, in the meantime rights holders must continue to actively police such sites for infringing merchandise.

    A bit of help in this effort comes in the form of eBay’s Verified Rights Owner (VeRO) Program, which assists intellectual property rights holders in removing infringing items from eBay. Members of this program contact eBay with little more than the auction number and a basis for the infringement claim (counterfeit item, unauthorized use of a copyrighted image, etc.), and eBay will typically remove the listing. Although the burden still remains solely on rights owners, it does provide rights owners the ability to demand the prompt removal of infringing listings.

    Another source of online discomfort for trademark owners is MySpace, Facebook, and similar social networking websites. These sites help connect people with friends, family, former classmates, etc. Typically, all one needs to join such sites is a valid e-mail address. Although these sites have rules concerning what can and cannot be posted on a member’s page, enforcing these rules typically requires the rights owner to contact the site. Most of these sites respond fairly quickly to copyright infringement claims, due in large part to the safe harbor provisions of the Digital Millennium Copyright Act (DMCA). As the name indicates, however, the DMCA relates to claims of copyright infringement, not trademark infringement. Therefore, social networking sites are not as quick to respond to trademark infringement claims.

    Monitoring the Internet for counterfeit, pirated, or otherwise infringing or unauthorized products or uses of intellectual property takes time and should be done on a regular basis. Is someone monitoring the Internet for infringements of your intellectual property?