Trevor Little

Earlier this week the International AntiCounterfeiting Coalition (IACC) and the City of London Police’s Police Intellectual Property Crime Unit (PIPCU) announced a joint effort to take down websites selling counterfeits through the IACC’s RogueBlock programme. The announcement led the Electronic Frontier Foundation (EFF) to voice concern over what it views as a “shadowy deal” that could lead to enforcement overreach. In separate responses to World Trademark Review, PIPCU and the IACC have expanded on the parameters of the collaboration.

On Monday it was announced that the collaboration between the IACC and PIPCU would see domain name takedowns added as a feature in RogueBlock, the collaboration with payment providers in which the latter terminate merchant accounts that illicit websites use to receive payments. To date the IACC notes that the programme has led to the termination of more than 5,300 individual merchant accounts. In our recent survey of IACC members the programme received positive ratings.

The new collaboration expands RogueBlock's reach by targeting websites themselves through PIPCU's Operation Ashiko, an initiative designed to disrupt websites selling counterfeit goods. Since its inception, the operation has led to the suspension of more than 20,000 websites selling fakes, and this new collaboration will result in PIPCU considering website submissions received via RogueBlock.

However, last night the EFF expressed concern over both RogueBlock and what it characterises as this latest “shadowy deal”. Jeremy Malcolm, senior global policy analyst, stated that, while he understands the desire to takedown websites to prevent consumers purchasing counterfeit goods, there is the “the potential for enforcement overreach and abuse”. Going further, he argues that RogueBlock does not accommodate differences in national trademark law, meaning that a website which offers goods that are infringing in one country could be made inaccessible across the entire internet (as an example he cites “Spanish sports streaming site Rojadirecta, which had its domain name seized by the US government for over a year, despite the site being lawful in its native Spain”).

He additionally contends that the RogueBlock program lacks transparency and accountability: “If a website is wrongly listed by the IACC in its RogueBlock program, thereby becoming a target for blocking by the City of London Police and the payment processors, there is no readily accessible pathway to have its inclusion reviewed and, if necessary, reversed. This opens up much scope for websites to be wrongly listed for anti-competitive or political reasons, or simply by mistake”.

On this, a spokesperson for PIPCU told World Trademark Review that it does have open communication channels with impacted registrants, noting: “When a website is suspended as a result of Operation Ashiko, the registrant is provided with a point of contact within PIPCU so that representations can be made and the circumstances reviewed.” Additionally, with regard to the question of geographical differences, he pointed to the specific jurisdiction of PIPCU, noting: “Operation Ashiko focuses on websites that are aimed at UK consumers and sit within the ‘.uk’ domain.” 

As to the EFF’s hope that PIPCU “will engage in some independent investigation” before taking down sites, the spokesperson confirmed that the unit “independently assesses and investigates all reports concerning websites that are alleged to be selling counterfeit goods”, noting that this “will include reference to evidence provided by trademark holders”. 

In this regard, PIPCU has moved to reassure the EFF over fears of overreach. Of course, the reach of RogueBlock extends beyond just the UK domain environment and the EFF has pledged to monitor the programme in all its scope going forward, concluding: “We would have less of a problem with RogueBlock if the program was simply a channel to inform enforcement authorities of claims of infringement, which could be investigated and enforced through legal channels. But the program steps into shadow regulation territory to the extent that it encourages payment processors to take action against claimed infringers directly, without due process or means of review.”

For its part, the IACC notes that impacted parties do have the ability to respond and adds that all reported complaints are fully assessed. In a statement supplied to World Trademark Review, it expands: "RogueBlock serves one purpose - to stop counterfeit criminals from taking advantage of unsuspecting consumers and legitimate businesses by following the money. The IACC works closely with brands, credit card companies and government officials to ensure that the provider of these submissions own the rights to the mark, the submitted claims are legitimate, that any remedial actions taken are appropriate in light of the specific circumstances, and that there are controls in place to permit the operator of a site to respond to an asserted violation. Since the program's launch in 2012, RogueBlock has been heralded as a success across all industries and sectors, and we look forward to expanding and strengthening the program."

It is important to note that RogueBlock is a voluntary programme, with such payment processors as MasterCard, Visa, PayPal, MoneyGram, American Express, Discover, PULSE, Diners Club and Western Union choosing to receive information from rights holders (via the IACC) on suspicious actors. The reported activity can then be investigated and, if deemed warranted, the account terminated because merchants are deemed to have violated the terms of the service agreement with the payment processor. Ultimately, it is for the payment processor to decide if the merchant account should be terminated based on their existing contract (based on a complaint that has been scrutinised prior to submission).

Such cross-industry efforts to combat the spectre of illicit trade, as long as they are responsible, are to be applauded. At the same time, concern over IP overreach and debate over the application of trademark law in the online environment is not new and such tensions will not go away any time soon (in a previous World Trademark Review podcast we had a lively discussion with Corynne McSherry, legal director at the Electronic Frontier Foundation, over the question ‘is trademark law fit for purpose in the online environment?’). In many respects, it is wholly positive that private, voluntary initiatives such as RogueBlock come under a wider gaze, so they are able to operate transparently, explain their importance and respond to accusations of being “shadowy”. These are discussions that should be had, as they ultimately benefit all parties – even if agreement can’t ultimately be reached on the best way to take down counterfeiters.

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