Intelligence and intermediaries: effective and scalable enforcement
This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight
Online counterfeiters rely on a number of intermediaries to provide their services. These intermediaries are central to developing an effective online enforcement strategy.
The sale of counterfeit goods is a key issue for rights holders and causes significant damage to the global economy. A September 2015 World Trademark Review blog entry collated information from the Office for Harmonisation in the Internal Market’s investigations into three industries: cosmetics, clothing and footwear and sports goods. Across these three industries alone, €31.5 billion and 417,000 jobs are lost annually as a direct result of counterfeiting. The problem has been magnified by the Internet. By means of online sales, counterfeiters can target consumers and sell counterfeit goods globally with ease.
Enforcement action against counterfeiters themselves is difficult and often prohibitively expensive. This is enhanced by the dynamic and ever-changing methods for selling counterfeit goods online. Although traditional websites are still prominent, counterfeiters now have access to consumers through a variety of other means, including social media, mobile apps, online marketplaces and instant messaging platforms.
Online counterfeiters rely on a number of intermediaries to provide their services. These intermediaries are central to developing an effective online enforcement strategy (see Figure 1).
Key steps to effective engagement with intermediaries
Step 1: Collate intelligence
The key challenge in developing an effective online enforcement programme is determining the scale and nature of the problem. It is crucial – but often very difficult – to build up a detailed understanding of the online counterfeiting landscape and the infrastructure of counterfeit operations. Rights holders acting without meaningful intelligence can default to a scattergun of notice and takedown communications, with limited results. Investing time and resources in intelligence gathering at the outset ensures the development of a strategy targeted at the most egregious infringers across all platforms on which they operate. Key avenues of investigation include the following.
Key operators: Determining the operator or registrant of a counterfeit website, social media account or marketplace seller (depending on which routes to market are being used) is the first step. In many instances, the website operator will have engaged privacy protection services to mask its identity or used false information to register with a platform.
Routes to market: A focus on websites alone is unlikely to reveal the whole picture, given the diversification of platforms. It is important to ascertain the infrastructure behind the counterfeit business. Track the links between key tenets of the operation across different platforms and – potentially – further up the supply chain.
Level of infringement: There is no meaningful way to assess and prioritise targets without insight into the level of infringing activities on each relevant platform and the popularity of those services in key jurisdictions.
The collated intelligence will enable the identification of those intermediaries that are best placed to assist.
Step 2: Identify intermediaries
Which services are the counterfeit operators using to facilitate their infringing network? Are the intermediaries central to the operation of the network (eg, internet service providers (ISPs)) or their routes to market (eg, online marketplaces)? Or are they merely an obstacle to the collation of further intelligence (eg, privacy protection services)?
Step 3: Engage with intermediaries
Each intermediary will have different infringement policies in place and will engage with rights holders on its own terms. Understanding how intermediaries process complaints and communicate is vital for efficient and effective enforcement. What are the capabilities and limitations of each intermediary? What is the most effective way to engage with the intermediary in question and how is it best placed to assist?
The following points are relevant for engagement with intermediaries:
- While some intermediaries will accept cease and desist notices emailed to the designated abuse teams, many are adopting the practice of submitting abuse complaints via an online form. Cease and desist letters may be ignored or take longer to process as intermediaries prioritise the complaints submitted through their online portals.
- Some platforms restrict the number of domains, posts, listings, sellers or users that can be reported simultaneously. If the list is too long, it can result in the complaint being ignored or only partially actioned. Omitting information can lead to similar consequences.
- Many platforms offer tools or standard formats for bulk reporting. These bulk reporting tools reduce the time spent by both the reporting and processing parties.
A major part of any enforcement strategy is to develop long-term working relationships with key platforms and intermediaries in order to understand their specific requirements and to cater to them.
Practical application: Scenario 1
A blog is identified that promotes the sale of counterfeit items. The blogger uses Facebook and Instagram accounts to draw in traffic. These accounts link to shops on Amazon and eBay through which the counterfeit goods are sold. The blog carries an ad in the side panel which encourages users to click through to the associated market places.
- Routes to market – social media and marketplaces
- Relevant intermediaries – platform operators
Many marketplace platforms, including eBay and Amazon, act to remove counterfeit listings when notified. Each marketplace operator will have its own policy regarding the sale of counterfeit goods. Familiarity with these policies and procedures is essential. The key is to focus on professional sellers that are operating in volume or using the marketplace as a route to market alongside other methods.
Counterfeiting has now spread to the realms of social media, with counterfeiters making use of apps such as Whatsapp, WeChat, Instagram and Facebook to promote their sales and access customers.
In 2013 to 2014 sales of counterfeit goods via social media rose by 15%, while sales of counterfeit goods via online auction sites rose by 2%. Apps such as Instagram include ‘shop now’ buttons and targeted advertising, making even this photo-uploading app a potential means of outreach for counterfeiters and a means of accessing a further consumer base.
Figure 1: Key intermediaries for counterfeiters
Practical application: Scenario 2
A website is identified that offers for sale counterfeit products using a rights holder’s marks prominently throughout the site. Payment is made directly via the site. Details of a messaging service are provided so that customers can contact the seller.
- Route to market – website
- Relevant intermediaries (for takedown/impeding access) – hosts, registrars, ISPs
- Relevant intermediaries (for business disruption) – search engines, payment providers, messaging services
The rights holder has two types of intermediary to consider:
- those that can take down the website (or impede access to it); and
- those that can disrupt the business.
The approach taken will depend on the resources available to the rights holder and the level of infringement on the site.
Hosting providers versus ISPs
Hosting providers enable individuals and organisations to make their websites accessible by providing space on servers and internet connectivity.
In the European Union, hosting providers are not liable for hosting infringing websites, provided that they have no actual knowledge of illegal activities or, on obtaining such knowledge, they act expeditiously to disable access to the infringing content (see Article 14 of the EU E-commerce Directive (2000/31/EC)). For many rights holders, the most common option is to notify the host of the infringing website and request that it be taken down. However, takedown notices rarely offer a long-term solution. While many hosting providers act on takedown requests, the operators of rogue websites are adept at moving to new hosts, including so-called ‘bulletproof hosts’, which are typically based outside Western jurisdictions and are known to ignore takedown notices.
In the United Kingdom and elsewhere in the European Union, a more effective long-term solution is to require ISPs to impede subscribers’ access to the website in question by obtaining a court ‘site blocking’ order. The procedure, which is well established in the United Kingdom, has its roots in the copyright infringement provisions of Article 8(3) of the EU Information Society Directive (2001/29/EC). Over 100 piracy sites have been blocked in the United Kingdom and the evidence is that UK use of blocked sites can fall by around 77% in the two months following implementation of the order. Blocking orders targeted at piracy sites have been issued in a number of EU jurisdictions.
In October 2014 Justice Arnold issued a landmark ruling in Cartier International AG v British Sky Broadcasting Ltd, applying the same principles to online trademark infringement on the basis of Article 11 of the EU IP Enforcement Directive (2004/48/EC) and finding that the court has inherent jurisdiction to grant injunctions against intermediaries to block websites selling counterfeit goods. Article 8(3) of the EU Information Society Directive and Article 11 of the EU IP Enforcement Directive have since been used elsewhere in the European Union to block counterfeit sites (eg, in Denmark, access was blocked to the counterfeit site Interior Addict (Fritz Hansen A/S v Telia Denmark, A-38-14). At the time of writing, the Cartier decision is under appeal and scheduled to be heard in April 2016.
While not resulting in the takedown of the website, ISP blocking has the potential to achieve significant scale and uses the technology employed by the counterfeiter (ie, the Internet) to tackle the infringing operation in an effective and proportionate manner.
Domain name registrars
Domain name registrars are accredited entities that manage the registration of domain names and ensure that each one is unique. Registrars are contractually bound to implement certain rights protection mechanisms, such as the Uniform Domain Name Dispute Resolution Policy.
The important role that registrars can play in tackling counterfeiting has been recognised by courts in a number of jurisdictions. In the United States, registrars can be ordered to transfer domain names of counterfeit websites on the application of rights holders, following The North Face Apparel Corp v Fujian Sharing Import & Export Ltd. Domain seizures are now commonplace in the United States and can be made in relation to thousands of infringing websites. In Fujian, the order addressed a network of 130 counterfeit sites operating from approximately 6,000 domain names. The action can be sought on an expedited basis with or without notice and can extend to sites operated from outside the United States. However, unlike ISP site blocking orders in the United Kingdom, there is no safeguard against the same websites reappearing with a new domain name and hosting provider.
In jurisdictions where domain seizures or equivalent actions are not available at scale, engaging with registrars tends to be a far less fruitful enterprise:
- The procedures adopted by registrars often require the rights holder to show that the domain name of the counterfeit website infringes its trademark. Where the domain name itself does not relate to the complainant’s trademark, the rights holder may be unable to obtain an effective remedy.
- While some registrars’ contractual terms allow them to take down domains reported as engaging in abusive activities, the enforcement of a term of this nature is at the registrar’s discretion. Some registrars may be amenable to implementing a takedown in response to a legitimate abuse report; others will be reluctant to do so without a court order.
Search engines provide a key means by which consumers locate counterfeit websites and listings. As recognised by Arnold in the UK Cartier judgment: “it seems reasonably clear that the way in which many consumers find [counterfeit selling] websites… is by searches using search engines.”
Search engines have been notoriously reluctant to offer assistance in combating online counterfeiting. As the largest search engine globally (with a 66.4% global market share for organic search and a 67% market share for paid search), the spotlight is on Google.
Google’s policies allow for a system under which copyright owners can notify Google of specific URLs for content that infringes their rights for ‘delisting’. In 2015 alone, Google reportedly received 350 million such takedown notices. However, regarding trademark infringement and counterfeiting, Google will not act. Its policy is clear: “trademarks used in sites that appear in Google search results, are not covered under our investigation process.” Google will only investigate trademarks used in AdWords (ie, its sponsored links).
In the absence of voluntary engagement, rights holders have resorted to legal action against Google in a number of jurisdictions. These include:
- French case Association des Producteurs de Cinema v Auchan Telecom SAS, in which Google was ordered to de-list certain copyright-infringing websites from its search engines worldwide; and
- Canadian case Equustek Solutions Inc v Jack, in which a global delisting order was made against Google requiring Google to remove from its search results a site selling copycat goods.
Counterfeiting websites are heavily reliant on payment providers as their key source of income. Sites often advertise payment options such as Visa and MasterCard as a badge of legitimacy, but in reality will often accept payment only via (for example) Western Union or PayPal. A test purchase is required before approaching the payment providers in order to identify which intermediaries are actually being used. Payment providers are increasingly engaging with rights holders and agreeing to cease providing services to infringing operations. This is a primary means of disrupting the business.
Initiatives aimed at securing voluntary cooperation from payment providers include the following:
- In the United Kingdom, payment providers (eg, American Express, MasterCard, PayPal and Visa) have voluntarily collaborated with the Police Intellectual Property Crime Unit to ensure that their services are not used to purchase counterfeit goods.
- In Canada, the Anti-fraud Centre is working with payment processors to cancel counterfeiters’ accounts.
- Under the RogueBlock initiative, members of the International AntiCounterfeiting Coalition can report online counterfeiters directly to payment providers (although account termination is at the discretion of the payment providers).
In 2015, 13,000 IP infringement complaints were received by WeChat, 55% of which concerned trademark infringements. Some 7,000 accounts were shut down for involvement in counterfeiting as a result, with one account being linked to 513 separate counterfeiting Instagram accounts (which were also blocked).
The counterfeiting landscape is evolving rapidly and new trends continue to emerge. Rights holders can expect to face new challenges as counterfeiters adapt to enforcement strategies and find new ways of interacting with consumers. These include the growing presence of counterfeiters on social media and the emergence of mobile apps developed specifically for counterfeiting. Three-dimensional printing is a further advancement through which infringing goods can be distributed online via file sharing to be printed offline by the consumer. This blurring of online and offline counterfeiting adds a new layer of complexity.
Developments in technology and counterfeiting are intrinsically linked. To keep up with counterfeiters, enforcement must keep up with technology. If a focused intermediary strategy is aligned with targeted intelligence collation and enforcement, there is clear potential to prevent brand dilution and lost revenue without the cost outweighing the benefits. It is essential to use technology to achieve effective protection – technology to track and enforce, and technology in the form of the online ecosystem to provide scale. In this regard, the battle is just beginning and intermediaries have a crucial role to play. The courts likewise have a critical role in ensuring that intermediaries make the most of their ability to help.
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