Potential global scope in identifying online infringers and IP abuse
The year started with the release of The Office of the US Trade Representative’s (USTR) 2017 Out-of-Cycle Review of Notorious Markets.
USTR first identified notorious markets in the Special 301 Report in 2006 and since February 2011 has published the annual list separately to highlight prominent online and physical marketplaces that reportedly engage in or facilitate piracy and counterfeiting. The aim is to increase public awareness and motivate owners, market operators, service providers and governments to prioritise IPR (intellectual property rights) enforcement efforts and subsequently reduce piracy and counterfeiting.
This year’s notorious markets list highlights 25 online markets and 18 physical markets which engage in and facilitate substantial copyright, piracy and trademark infringement. The USTR calls for governments to provide targeted and modernised enforcement tools to combat piracy and reduce the flow of counterfeit products, and for several ecommerce platforms to improve takedown procedures, cooperation with right holders and take more proactive measures.
One such marketplace is Taobao, Alibaba’s hugely popular marketplace. The USTR commended it for its efforts to date, but claims it still offers infringing products and “has not identified metrics to assess objectively the scale of infringing products sold on Taobao.com nor objectively demonstrated that the volume or prevalence of counterfeit goods has decreased over the last year”.
Naturally, Alibaba were not happy with these claims, and immediately released an 11-page rebuttal to each point in the report, claiming they “not only addressed, but went above and beyond, each specific concern raised by the USTR last year.” They say they have made it even easier for rights holders to access and use their IP protection platform, and released a new guide in English on how to use its IP protection platform. A form, which Yellow Brand Protection recommend clients use, was introduced for rights holders to submit takedown requests without an account. The result, Alibaba claim, has resulted in 98% of proactive takedowns being removed before a single sale could be made, and 97% of all takedown requests handled within 24 hours.
EU wish to start a global counterfeit and piracy 'Watch-list ‘
In their rebuttal, Alibaba also asked “What about Amazon, eBay and others?”, stating that the USTR list has no basis for comparison, because it does not ask for similar data from US companies.
A valid observation, which may be answered in the near future, as the European Commission has just started a public consultation to provide the basis for a global counterfeit and piracy ‘Watch-list’. Similar in scope to the USTR’s report, the EU Watch-List aims to “identify the marketplaces outside the EU where counterfeiting, piracy or other forms of intellectual property abuse are common practice”.
Based on stakeholders' input, the commission wants the list to help raise consumer awareness, and encourage marketplaces, local authorities and governments to take action and monitor measures being taken to reduce the availability of goods and services infringing IP rights in the identified markets.
Expected to be published later this year, it will be interesting to read the outcomes and proposals of this EU watch-list. Together with the USTR list, brand owners may see even more action and improvements from governments and online service providers in strengthening their policing efforts and rights protection mechanisms in tackling this growing online issue.