Are You Crafting Your IP Portfolio with an Eye Towards Leveraging Enforcement Tools on Amazon?
Many brands understand that a well-rounded intellectual property portfolio is critical to protecting their market share from copycats and competitors, but with the explosion of online marketplaces like Amazon, it is critical for brands to additionally consider how to craft their IP portfolio for the strongest protection and most efficient and effective enforcement in light of online marketplace infringement tools. In this piece, we identify some of the intellectual property rights (“IPR”) and strategies that brands should consider as they build an IP portfolio optimized for enforcement on Amazon.
Amazon IPR Enforcement Tools: First, it is helpful to have a basic understanding of the tools that Amazon has developed to help an IPR owner protect its rights. The following table provides a brief overview of each tool:
To maximize the effectiveness of the IPR enforcement tools on Amazon, brands should consider the following when creating and maintaining their IP portfolio:
Having at least one trademark registration (or filed application) with the U.S. Patent and Trademark Office (USPTO) is required for brands that want to create an Amazon Brand Registry account, an Amazon tool commonly used to combat counterfeit and more traditional forms of trademark infringement. While most brands today have registered trademarks, there are some that only rely on “common law” trademark rights. While common law rights can afford protection outside of Amazon, Amazon Brand Registry requires a formal trademark registration (or filed application) with the USPTO. Accessing Brand Registry can allow brands (that sell their products on Amazon or do not want their products on Amazon at all) to report IPR infringements they observe and avoid the limitations of using only the “Report Infringement” page.
Trade Dress: Many brands have developed successful products and taken steps to protect those products with patents and trademarks, but frequently overlook trade dress, which is the unique shape or design of their product or its packaging. Indeed, it is quite common for brands to find cheap copycat products that look just like their product but may not actually infringe on the brand’s patents or registered trademarks. Amazon (again, through Amazon Brand Registry) has an infringement reporting tool specifically for trade dress, so brands should consider protecting the shape or design of their product with registered trade dress and leveraging it on Brand Registry. In performing thousands of infringement submissions on Amazon through eControl’s brand analyst team, we view registered trade dress as an underutilized infringement tool on Amazon.
Utility Patents: When enforcing utility patents on Amazon, usually the most persuasive patent infringement claim to Amazon is that the alleged infringer’s product infringes on the brand’s patent claim that covers a non-complex device.
For example, a brand may have a patent for a new soap formulation and soap dispenser. The patent may include claims (1) to the soap formulation, (2) to a method of dispensing the new formulation, and (3) to a new device for dispensing the formulation, all of which can provide a basis for the patent infringement claim. Assuming third-party Amazon sellers are listing products that allegedly infringe all three of these claims, the most persuasive patent infringement argument to submit to Amazon will likely be (3), the new device for dispensing the formulation. This is because it will likely be the easiest claim for Amazon to understand and with which to evidence infringement, which can sometimes be done with photographs taken from the product listing.
In contrast, to assert patent infringement based on (1) the new soap formulation, a chemical analysis might be necessary. Or, to assert patent infringement on the (2) soap dispensing method, it will likely require making a contributory infringement or inducing infringement argument. These sorts of patent infringement arguments can get complicated rather quickly – from both a comprehension and evidentiary standpoint – so it is critical for the brand to know its audience and to keep it as simple as possible.
Design Patents: Another item to consider in crafting your IP portfolio for maximum effectiveness on Amazon is obtaining the broadest possible coverage for your design patent. In design patents, the claimed invention typically includes all of the elements in the drawings illustrated with solid lines, whereas elements illustrated with dashed lines do not typically form part of the claim. Vorys eControl sees many design patents that include parts of the drawings illustrated with solid lines that are not essential to the overall design. For example, the positions and/or shapes of screws and buttons may not be necessary to obtain a patent on the overall design of a product. However, if these “non-essential” elements are illustrated with solid lines (as opposed to dashed lines) then these elements may be considered a part of the claim that competitors and copycats can change in an effort to avoid patent infringement, while still copying the overall design of the brand’s product. While a brand may be able to successfully enforce its patent on products with such changes outside of Amazon, Vorys has found that even minor differences between the accused product and the patent drawings can make enforcement much more difficult in enforcing design patents on Amazon. Considering these types of issues while preparing the patent application may help the brand achieve greater patent enforcement capabilities on Amazon.
Copyrights: Amazon’s seller agreements include a blanket license for the use of any copyright materials that the brand uploads to the marketplace. This means that other sellers can use those materials to create unauthorized listings on Amazon, such as listings for unapproved multipacks or bundles or even rogue duplicate listings. While brands wishing to sell their products on Amazon cannot opt out of this license, there are strategies that they can employ to limit the use of copyrighted materials on Amazon.
The brand should make sure that they own the copyright to their images or have an exclusive agreement with the copyright owner that allows the brand to assert the copyright rights against unauthorized users. Many brands hire a third party designer, videographer, or photographer to create images and videos (e.g., works in copyright parlance) of their products, and it is not uncommon for the creators of the works to maintain ownership of the works while giving the brand a license to use the works. This arrangement can complicate enforcing the rights in the images against unauthorized uses. Therefore, it is generally a best practice for the brand to own the copyrighted works, which can be attained through a “works made for hire” agreement or an assignment of the work from the creator to the brand. If brand ownership is not an option, then an exclusive license with right to enforce the copyright against unauthorized uses can be acceptable as well.
Next, the brand should limit the images that they use on listings that they create on Amazon. If the brand provides product images to their downstream reseller customers for marketing, the brand should considering having policies in place that limit how their downstream authorized resellers can use those images and, in particular, only allow the resellers to use images in listings on Amazon that are specifically approved by the brand for use on Amazon to better control the blanket license given to Amazon when images are uploaded to its platform. These sorts of restrictions reduce the likelihood of the copyrighted image making its way onto the Amazon platform by someone other than the brand or at the brand’s direction, giving the brand the basis to assert copyright infringement when a third-party seller uses a copyrighted image on a product listing that the brand has not put on Amazon (and thus has not given Amazon the blanket license to use).
As a practical matter, for a brand whose products are already listed on Amazon, these types of copyright strategies are likely more feasible for a brand when the brand is pursuing a re-brand or is launching new products, as it requires thoughtful planning in what images and videos the brand does and does not want on Amazon, as well as implementing authorized reseller policies and other restrictions to maintain those guardrails in practice.
If you have any questions about how to craft an IP portfolio with Amazon in mind, please reach out to your Vorys attorney or directly to Tim Ardizzone at firstname.lastname@example.org.