June 27, 2023

When Amazon Sues for False Copyright Claims – Vorys eControl’s Take Three Months Out and What Brands Should Be Doing in Response


When Amazon Sues for False Copyright Claims – Vorys eControl’s Take Three Months Out and What Brands Should Be Doing in Response

Refresh my memory, what happened?

On March 30, 2023, Amazon filed three nearly identical lawsuits in the federal district court in Seattle claiming that bad actors on their platform misused their Brand Registry accounts to target third party sellers with improper copyright infringement complaints.

So what did Amazon take issue with specifically?

Amazon claimed that groups of entities and/or individuals conspired to register seller names “Dhuog,” “Sidesk,” and “Vivcic,” and claimed to Amazon that they were rightful owners of trademarks under the same names. They even allegedly provided Amazon with purportedly pending or entirely fake United States Patent and Trademark Office (USPTO) trademark registration numbers/marks of owned names.

These bad actors then proceeded to copy images they found on Amazon for existing product listings to their own fake dummy websites and used Amazon’s Brand Registry tools to report those same listings as infringing their alleged copyrights, submitting as “proof” of infringement the URLs for the copied images (that now resided on the websites they created only days before).

They then proceeded to submit hundreds of Brand Registry complaints.

How did Amazon respond?

In response to the 229 takedown complaints received just from the Dhuog account alone, Amazon states that it removed 16 full product listings or some listing content in an effort “to act expeditiously to protect what it believed at the time to be legitimate rights.”

Once it discovered the fraud, Amazon proceeded to file the three lawsuits against the bad actors. Amazon alleges in each case that it suffered economic harm and expenses associated with investigating and addressing the fraud.

So who is Amazon actually bringing to court to answer for these misdeeds?

That unfortunately still remains a mystery. As of the date of publication of this piece, there is no indication on the court dockets of Amazon effectuating service on any person or entity, and the summonses that the court issued in each case on March 31, 2023 are simply addressed to the aliases “Dhuog,” “Sidesk,” and “Vivcic,” without any other name or address specified for service.

So why isn’t anyone actually named yet?

Amazon has explained that the bad actors involved in this scheme took great pains to hide who they are.

So what can brands take away from these lawsuits?

Protect and Monitor Your Intellectual Property. Brands must take great care to register and monitor their intellectual property, both domestically and abroad. At the very least with respect to international registrations, brands should evaluate registering and monitoring their IP in key markets where they are considering expansion and future growth. Bad actors are constantly testing Amazon’s and other platforms’ processes and tools to take advantage of vulnerabilities. Leaving your IP unprotected, especially in first-to-file jurisdictions like China, can lead to business losses that are expensive and perhaps ultimately impossible to unwind.

Do Not Rely on Marketplace Operators to Protect Your IP for You. While marketplaces offer certain tools to help brands protect their IP, it is critical to constantly monitor your brand’s presence across the key marketplaces to identify and address such vulnerabilities without relying on anyone else to do it for you.

If your brand is interested in a complimentary global marketplace exposure report, please request one here.This report shows which marketplaces globally are selling a significant amount of your products and can be a useful tool in prioritizing IP and brand protection efforts.

Use IP Reporting Tools Correctly. Finally, understand that submitting any type of IP infringement reports on the platforms without substantial basis or exaggerating the extent of the threat to your brand can lead to trouble. This is especially true when brands use third-party vendors who promise swift, broad-based, and “painless” cleanup of the marketplaces without the brand’s close oversight.

Vorys eControl has seen brands and their vendors push the boundaries of what is properly reportable via Brand Registry or Brand Portal and then get sued by resellers and/or suspended by the platforms from being able to report violations. With the recent filings described above, Amazon is clearly not shy about taking violators to court and Amazon has been known to restrict brands’ access to Brand Registry for abuse

If you would like to reassess your brand protection strategies on Amazon and other online marketplaces, please reach out to your Vorys attorney or contact us here.