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• Recent Statistics• Legal Landscape• Tiffany v. eBay & Parallel European Cases• Yahoo!’s Efforts To Stop Counterfeiting• Nokia’s Anti-Counterfeiting Strategies• Open Discussion – Counterfeiting on the Internet• Questions
• $25 billion counterfeit goods traded online each year (Moises Naim, Illicit, Anchor Books, 2005.)
• International Anti-Counterfeiting Coalition– $600 billion dollar a year problem– 10,000% increase in the past two decades– Effect on U.S. business: $200-$250 billion/year – Directly responsible for the loss of +750,000 U.S. jobs– Approximately 5%-7% of the world trade
• Organisation for Economic Cooperation and Development– Approximately 2% of global trade; rises to 5% when
domestic & digital piracy are included (2007 Study)
• Send a Cease & Desist Letter– Provides actual notice to counterfeiter
• May support argument for willful infringement • May support increased statutory damages (15 U.S.C. 1117(c))• Counterfeiter may flee/destroy evidence• May prompt declaratory judgment action
• Tiffany estimated that 30-75% of “Tiffany” goods on eBay are counterfeit
• Tiffany argued that eBay had general knowledge of counterfeit goods being sold on its site
• Tiffany argued that eBay should be liable for direct/contributory trademark infringement, unfair competition, false advertising, and direct/contributory dilution
• S.D.N.Y held: (576 F. Supp.2d 463)– “[W]hile eBay clearly possessed general knowledge
as to counterfeiting on its website, such generalized knowledge is insufficient . . . to impose upon eBay an affirmative duty to remedy the problem.”
– “[W]hen eBay possessed the requisite knowledge, it took appropriate steps to remove listings and suspend service. Under these circumstances, the Court declines to impose liability for contributory trademark infringement.”
• “Tiffany must ultimately bear the burden to police its marks.”
• The Court rejected Tiffany’s argument that eBay could “screen out potentially counterfeit Tiffany listings more cheaply, quickly, and effectively than Tiffany.”
• “[E]ven if it were true that eBay is best situated to staunch the tide of trademark infringement against Tiffany . . . that is not the law.”
• As a famous brand owner, Yahoo!’s interests are aligned with brand owners combating infringement and counterfeiting
• Yahoo! Inc. is the owner of one of the most recognized brands in the world, valued at over $5 billion (2009 Business Week / Interbrand Annual Brand Report)
• Yahoo.com is the world’s largest network of online integrated services, with more than 500 million users worldwide (Yahoo! internal data)
• As a famous brand owner, Yahoo!’s interests are aligned with brand owners combating infringement and counterfeiting.
• Yahoo! is actively involved in enforcement efforts, including dedicated resources – staffing and funding - to protect our own brands, online and offline.
• Yahoo! is taking active leadership roles in organizations combating abuses:– INTA (regular member and represented on Board of Directors)– ICANN (including President of Intellectual Property
Constituency) – Sponsor Member, Messaging Anti-Abuse Working Group
(MAAWG)– Steering Committee, Anti-Phishing Working Group (APWG)– DomainKeys Identified Mail (DKIM) approved by Internet
Engineering Task Force to combat spam and phishing
Trademark Guidelines• Yahoo!’s relevancy guidelines for advertisers allow an
advertiser to bid on a third party trademark ONLY IF– the advertiser’s website contains content relevant to the trademark
AND the trademark as used in the ad:• constitutes nominative fair use (either a reseller, or NON-
COMPETITIVE information site, such as product reviews, comparisons, commentary, or news information); or
• is in a generic or merely descriptive manner;
• The trademark must be included in the ad title/description in a way that makes clear the nature of the relevant content on the advertiser’s website and why the listing appeared in response to the query.
• Copyright / IP Policy– This DMCA-compliant system is not limited to
copyright complaints, but also may be used to submit complaints about counterfeiting activity if identified in services such as Shopping, Groups, Mail, Web Hosting, Small Business, etc.
Nokia is consistently ranked as top 10 most valuable brands in the world
The full range of Nokia’s products are pirated, from mobile accessories, to mobile phones, to cracked software
Nokia has a Brand Protection Enforcement team– Multi-regional, interdisciplinary– Border protection– Internet enforcement– Civil/ criminal litigation– Lobbying– Not a corporate function
Notice and Takedown and DMCA are generally first step: • Establish actual notice• Volume / Scalability• Reducing false positives• Language limitations• Educating newcomersEscalation and prioritization• Controlled purchases• Criminal prosecution• UDRPFactors to consider• Recidivism and breadth of infringement• Dangerous products/leaked products/new infringements• Consumer complaints/stakeholder complaints/product returns• Identity of infringer (Powerseller, legitimate player in the market)
• The Internet facilitates counterfeit trades. Internet can be used against infringers by providing an intelligence network and facilitating removal of infringing listings from online markets
• Daily, over 250,000+ postings for Nokia products are on the Internet
• Access to every major online market for counterfeit product (incl. eBay, Alibaba, TradeKey, DHgate, Amazon, Craigslist, etc.)
• Absent a software solution, we can never analyze the full picture of the online counterfeit situation. It is not possible to review and record every outlet for counterfeit product by hand
―Frame of reference ---enabling us to identify and focus on the highest profile online infringers at any given moment
• Automatic creation of database of infringers.• Identity Tracker cross-references information regarding each infringer, so
we can identify syndicates even though they include collections of different seller names and user accounts
• Investigation began Oct. 2008 • Pitched to Fed, State, and County Authorities• Suffolk County PD/DA accepted case• Arrested April 2nd, $200k bail• Plea agreement TM Counterfeiting (Class E