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Intellectual Property

Alibaba and the Forty Thousand Thieves: Combating Counterfeiting on B2B websites

For today's consumer goods product developer, counterfeiting is a huge concern. An essential part of any campaign against counterfeit goods is Internet enforcement. In this Analysis, David Starr and Gregory Bennett focus on the details of establishing and maintaining an effective approach to Business-to-Business enforcement to severely limit the volume of counterfeit goods finding their way to our shores and into the consumer market. They write:

B2Bs Notice and Takedown Procedures

     Business-to-business websites are nothing new. Nor are they inherently evil. On the other hand, as platforms for independent, generally unscreened third-parties to host pages and list offerings of goods, the B2B websites are frequently and ever-increasingly host to vast counterfeiting. Fortunately, however, most of these websites have implemented formal procedures for requesting the takedown of allegedly infringing links ("Notice and Takedown"). The Notice and Takedown processes are modeled on the procedures established by the Digital Millennium Copyright Act ("DMCA"). As its name suggests, the DMCA relates to copyright infringement requests, but the B2B websites have instituted the procedures for trademark and patent infringement as well.

     Here's how the Notice and Takedown process generally works: you find a link that you believe contains infringing material, be it based on your trademark, copyright, or patent rights. You submit a takedown request along with the allegedly infringing link and proof of your supporting IPR. The B2B team will review the link based on your claim, and if they agree, they will remove the link. They will also notify the company who posted the link and provide them an opportunity to show why the link did not contain infringing material. Oftentimes, the B2B will also have a policy that will suspend or ban repeat offenders.

     . . . .

Beyond Notice and Takedown: Turning Up The Temperature

     B2Bs are sometimes slow to react or truculent regarding blocking repeat offenders. When frustrations come to a head, consider alternative approaches to improve cooperation.

     First, contacting the B2B's General Counsel office directly will turn up the temperature in a hurry. In so proceeding, it is important to distinguish the B2B's activities from Ebay's activities in the landmark ruling in Tiffany (NJ) Inc. v. Ebay, Inc. [2010 U.S. App. LEXIS 6735 (2d Cir. N.Y. Apr. 1, 2010)] On appeal, Ebay was held free of contributory trademark liability in spite of the rampant counterfeiting Tiffany was battling on the auction giant's site. The key to the decision was that Ebay had no specific knowledge that any given listing was counterfeit and thus had no duty to remove such links before being asked to do so by Tiffany.

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