Copyright Against Counterfeiters-An Effective Tool for Brand Protection
Vice President of Intellectual Property, World Wrestling Entertainment, Inc. (WWE)
Trademarks: the source identifier
While trademark rights certainly play a predominant role in the fight against fake merchandise, a brand’s registered and unregistered copyrighted artistic works – including designs, photos and logos – can also play an equally important role in a robust and aggressive IP enforcement program.
Whether you oversee monitoring and enforcement for a large company or a small brand, one thing remains constant: the more IP rights you own and have at your disposal, the wider an impact you can have against infringers. Different jurisdictions have different IP laws and requirements which country specific platforms, including online e-commerce marketplaces, must adhere to. So, with both legitimate and unauthorized use of your brand across the globe, it’s important to audit individual markets you currently (or plan to) conduct business in, and not to adopt a static strategy with respect to IP filings and enforcement.
When dealing with infringement of your brand’s IP on merchandise, trademark rights have always been looked at as the key component in the fight against fakes. After all, a trademark is a source identifier for goods and services, and many countries require proof of trademark rights as a prerequisite for civil and criminal legal action. In the United States, while the Lanham Act provides civil remedies for trademark infringement and counterfeiting, the Trademark Counterfeiting Act criminalizes certain violations of the Lanham Act’s anti-counterfeiting provisions at the federal level. Some individual U.S. states also have separate statutes to address criminal counterfeiting at the state level as well (see BPP, June 2019 “Professional Pointer: Looking at States’ Laws: Interview with A-CAPP Assistant Director Kari Kammel“).
But many brand owners are not going to take the onerous step to file civil suits or attempt to refer criminal cases to law enforcement each and every time they witness infringement of their brand online – it’s simply not cost effective or feasible.
Ownership of a valid trademark registration is a mandatory prerequisite to a successful trademark counterfeiting claim under federal law in the U.S., and is also necessary to file such rights for enforcement purposes with most, if not all, Customs agencies.
Additionally, many online marketplaces have anti-counterfeiting tools, policies and terms of service that state one must list specific trademark registration rights or provide even more significant details for unregistered trademark rights in order to enforce via a trademark reason code. While some online marketplaces allow a brand owner to point to trademark rights they have registered in any jurisdiction, this is certainly the exception and not the rule. Instead, many online marketplaces require you to show evidence of trademark rights in the jurisdiction the online marketplace operates in.
For example, the Chinese online marketplace, Taobao, requires you to evidence specific Chinese trademark registrations to enforce on infringing listings on its platform. Lazada (like Taobao, also owned by the Alibaba Group), is the top e-commerce platform in Southeast Asia, and operates separate marketplaces in Indonesia, Malaysia, Singapore, Vietnam, Thailand and the Philippines. In order to enforce counterfeits on these marketplaces, brand owners must first supply a valid trademark registration from the jurisdiction of the country-specific platform on which the listing appears.
As a result, it is imperative for a brand owner to register core trademarks in key product and service classes in jurisdictions important to one’s business, including those where counterfeits are sold/made/exported. But of course, this can start to get prohibitively expensive. The more brands fall under your company’s umbrella, the more categories of goods and services you branch out to. The more countries you operate or plan to operate in, and the more places you witness counterfeit activity from.
As such, brand owners must get creative when strategizing on how best to build out a successful monitoring and enforcement program. Relying solely on trademark rights to enforce on online marketplaces is an onerous process, particularly when monitoring and enforcement at scale.
Copyrights – the augmentation tool
Many inauthentic products may infringe on a brand’s trademark rights, but they may also infringe on other rights as well, including a brand’s registered or unregistered copyrights. When it comes to online brand enforcement, particularly at scale, it is much easier to base the takedown of an infringing listing on an infringed registered or unregistered copyright work.
Why? While no creative work is automatically protected worldwide, there are multilateral, international treaties which provide protection automatically for all creative works as soon as they are fixed in a medium of expression.
By way of example, The Berne Convention for Protection of Literary and Artistic Works, currently signed by 179 countries, formally mandated several aspects of modern copyright law – it introduced the concept that a copyright exists the moment a work is “fixed,” rather than requiring registration, and also enforces a requirement that countries recognize copyrights held by the citizens of all other parties to the convention. So, (1) this removes the need to formalize and register copyright ownership rights in order to enforce said rights in any member country; and (2) if one owns a copyright in one member country, theoretically it can use that as a basis to enforce in other member countries, and online marketplaces in those countries as well.
Under the notice and takedown provisions of the Digital Millennium Copyright Act (DMCA) in the United States, and similar law in many other jurisdictions (e.g. Article 14 of the Electronic Commerce Directive that European Union member states have implemented into national law, etc.), in order to remain insulated from liability, online service providers – a broad definition that includes online marketplaces – need to typically remove or block infringing materials uploaded by third-parties using their services and identified in good-faith takedown notices “expeditiously.” Additionally, a complainant only needs to provide a general identification of the copyrighted work being infringed, or a representative list of such works.
So, on many online marketplaces, this removes the need to specify a given trademark registration being infringed when alleging infringing activity on a given platform; while an infringing marketplace listing may infringe the trademark rights of a brand, it may also simultaneously infringe another IP right, such as copyright.
As an example, see Figure 1 below. WWE has confirmed the product listed for sale is indeed counterfeit, but as stated above, Lazada Thailand requires a brand to own a Thai trademark registration for the mark reported being infringed under its counterfeit policy. Currently, WWE does not have a Thai trademark registration for the WWE or NWO word marks, or the NWO Logo in Class 25 for apparel, which would appear to hamper its ability to enforce on this fake product. However, it does have a U.S. copyright registration for the NWO Logo being used on the t-shirt design. Thus, even though it does not have a Thai copyright registration for the NWO Logo, where it would not have been able to enforce on this product before, via its U.S. copyright rights, WWE can successfully work to remove this listing from Lazada under its copyright policy.
While trademark rights certainly provide a necessary tool in the fight against counterfeit merchandise, with the wide global adoption of the Internet, and the proliferation of online marketplaces in various jurisdictions, a savvy brand owner should utilize its entire IP portfolio for enforcement purposes. Unregistered and registered copyright rights – including those of widely used photographs, corporate logos, designs on apparel, etc. – should strongly be considered to help augment an IP monitoring and enforcement program.
THE BRAND PROTECTION PROFESSIONAL | SEPTEMBER 2022 | VOLUME 7 NUMBER 3
2022 COPYRIGHT MICHIGAN STATE UNIVERSITY BOARD OF TRUSTEES