Intellectual Property Insights from Fishman Stewart
Mini Article – Volume 22, Issue 3
Amazon Takedown Policy: A Great Tool…for Trademark Bullies
Critics often complain that Amazon’s marketplace takedown policy is ineffective at combating rampant trademark infringement and sales of counterfeit goods. However, Amazon’s policy seems to work well for trademark owners who use their federal trademark registrations to blackmail and harass product sellers through the online marketplace.
Generally, Amazon’s takedown policy allows a trademark owner to request that Amazon pull listings that infringe trademark rights – so long as the complainant can demonstrate their trademark is registered. This may sound like a fair bar in theory. In practice, however, the system frequently fails to distinguish infringing goods from fairly competing goods. Some parties have found ways to use these systemic failures to their advantage and stifle their competition.
For example, Xuechun Wang, a Chinese resident, sold novelty hockey jerseys on Amazon’s marketplace. The jerseys were reproductions of the Chicago Blackhawks jersey worn by the fictional character Clark Griswold (played by Chevy Chase) in the 1985 classic film National Lampoon’s Christmas Vacation and sport the name “GRISWOLD” on the back. Wang alleges that in late November 2021, after he received a complaint notice from Amazon about the jerseys, he was contacted directly by the complaining party, another Chinese resident, Fan Xiaojuan, who owns a federal trademark registration for CLARK GRISWOLD for “sports jerseys” and other goods. According to Wang, Xiaojuan demanded 100,000 CNY (more than $15,000 USD) in exchange for withdrawal of the complaint to Amazon. Rather than pay the ransom, Wang initiated an action to cancel the registration. The action is pending at the United States Patent and Trademark Office (USPTO) and places the USPTO in the odd position of resolving a dispute over rights to the CLARK GRISWOLD trademark between two Chinese residents, neither of whom appear to be related to PalmStar Media, the legitimate owner of the National Lampoon franchise, or the Chicago Blackhawks hockey team.
In another case, in 2018, the romantic fiction world was rocked by “CockyGate,” as it became known in the romance industry, when author Faleena Hopkins obtained a federal trademark registration for COCKY in connection with romance books. Hopkins wielded her registration like a weapon, using it to file takedown complaints against competitors who used the term COCKY in book titles, regardless of actual infringement or likelihood of confusion. The use of COCKY in many books was in connection with arrogant love interests. After numerous titles were pulled from Amazon, the authors pushed back and successfully pressured Hopkins to withdraw the “COCKY” registration.
In concept, Amazon’s takedown policy is an important enforcement tool for trademark owners. Moreover, trademark owners should take full advantage of the system, as detailed in our white paper on the subject. However, like similar takedown systems on YouTube and Twitter, there are still growing pains to automated and self-operated tools, as they seem especially ripe for abuse by parties who would seek to make a quick dollar (or yen as the case may be) or unfairly stifle competition. For more on these topics, see our previous Fish Tank articles on mistaken copyright strikes and misuse of the system.
For now, it is worth keeping in mind that there are trademark bullies out there looking to take advantage of others, whether through extortion in the case of CLARK GRISWOLD or clearing out the competition as in CockyGate. So, if you receive an Amazon takedown notice, it’s well worth reaching out to an intellectual property attorney to discuss your options.
Published February 11, 2022
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