INTA Steps Up Efforts to Combat Counterfeits, New Laws Under Consideration

INTA has a long tradition of leadership in the fight against counterfeiting worldwide, and its position has remained firm that counterfeits should be stopped wherever they are found—including on the Internet. New governmental responses have been aimed at combating online counterfeit activity. Here, INTA looks at key, proposed legislation in the United States and Europe on this issue.

The Internet provides the ideal setting for counterfeiters to thrive in plain sight. Shoppers can order goods from counterfeiters online and never know their identity. Counterfeiters can accept credit card transactions from across the globe anonymously and ship goods directly to consumers.

In the past year, counterfeiters have taken advantage of consumers’ increased demand to buy goods online due to the COVID-19 pandemic, and brand protection professionals have seen further growth in the already enormous quantity of counterfeits available online. In ordinary times and in today’s extraordinary environment, INTA strongly reaffirms that it is in the best interest of brands to protect consumers from the dangers of acquiring counterfeit products online and elsewhere, and the Association continues to build on its longstanding history of bringing all the stakeholders together to work on this problem.

This year did not just bring a rise in counterfeiting on the Internet, but also the beginning of a reevaluation by governments of e-commerce laws in some of the globe’s largest economies. These include China, India, the European Union, and the United States.

On September 13, 2020, the Supreme People’s Court of China released a set of documents involving intellectual property (IP) disputes on e-commerce platforms, as the guiding opinions for China’s E-Commerce Law, which was enacted in 2018 (INTA also submitted comments to the three versions of the bill). INTA has been following the developments of the proposed e-commerce law in India as well, with a consultation anticipated soon. In addition, the Association has been especially busy with the legislation developing in the United States and the European Union.

In the United States, three major pieces of anticounterfeiting legislation are pending in Congress. The Stopping All Nefarious Toys in America Act or “SANTA Act” was referred to the Senate Committee on Commerce, Science, and Transportation. The SANTA Act, introduced in December 2019, sets requirements for online marketplaces selling toys to verify seller information and disclose it to consumers.

The SHOP SAFE Act (Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce Act of 2020) was introduced and referred to the House Judiciary Committee on March 2, 2020. This Act proposes amendments to the Lanham Act to provide for contributory liability of e-commerce platforms with third-party sellers offering counterfeits goods that represent health and safety risks. E-commerce platforms would be exempted from liability only if the third-party seller is available for service of process in the United States and the platform demonstrated reasonable steps to prevent counterfeiting.

Finally, the Integrity, Notification, and Fairness in Online Retail Marketplaces for Consumers Act or the “INFORM Consumers Act” was introduced in the Senate Committee on Commerce, Science, and Transportation a week after the SHOP SAFE Act. It requires online marketplaces to disclose verified information about the third-party sellers of consumer products to consumers.

All three pieces of U.S. legislation aim to foster consumer trust, one of the main pillars of INTA’s mission. The Association has several committees looking at the acts and analyzing how each compares with INTA’s current positions and how the Association can seek to improve the anticounterfeiting framework to protect American consumers shopping on the Internet.

In Europe, INTA is also looking to protect online shoppers by engaging with the European Commission (EC) in its possible amendment of the 2000 E-Commerce Law through the Digital Services Act (DSA). INTA submitted comments to the public consultation for the DSA on September 8, 2020. The Association highlighted best practices that could be implemented to mitigate harms to consumers.

For example, there are programs in place today that could be emulated and expanded. These include the trusted seller program for pharmaceutical products under Regulation (EU) 699/2014 and the Spanish Antipiracy Commission, which uses an administrative process to safeguard copyrights in a digital environment. INTA also supports the development of national enforcement coordination centers, based on the U.S. National IP Rights Center.

INTA’s submission to the Commission on the DSA also highlighted the unintended effects of the EU General Data Protection Regulation (GDPR) on IP enforcement, namely, its effects on a platform’s ability to share data with rights holders and the redaction of data, including the owner’s name and contact information, within the domain name registration data system known as WHOIS. If trademark owners are unable to determine a counterfeiter’s identity, they are unable to enforce their rights and protect their consumers from the harms of substandard counterfeits.

INTA has been actively engaged in the policy development process taking place at the International Corporation for Assigned Names and Numbers (ICANN), the organization that sets the WHOIS policies for top-level domain names. However, there has been controversy and confusion over what types of access and disclosure are permissible under the GDPR. ICANN has been working with EU data protection authorities to gain more clarity on the issue.

“The GDPR has created some unforeseen consequences in terms of ensuring transparency in online transactions and access to critical domain name ownership data for law enforcement, brand owners, and cybersecurity experts. This may be an issue that only more action from the EU can fix,” said Lori Schulman, INTA’s Senior Director, Internet Policy.

INTA Chief Representative Officer–Europe Hélène Nicora emphasizes that all stakeholders need to do their part to combat counterfeiting. “We know that the Internet is the new El Dorado for counterfeiters who can sell more diverse products, reach more consumers than ever, while retaining anonymity more easily. Against this background, any relevant stakeholder—whether public or private—has to play their role,” Ms. Nicora said.

“Coordinating actions against counterfeiting has become an inevitable ‘must-have.’ Finding a workable, balanced, and efficient approach is not an easy equation to solve. Many factors need to be considered by the EU when amending its legislative framework,” she continued. “We welcome the EU public consultation, which is a good start to identify best practices and understand this complex equation while working toward a reasonable solution. Of course, INTA will follow any developments in Europe very closely.”

INTA’s comments to the DSA also included several best practices from the Association’s publication “Addressing the Sale of Counterfeits on the Internet.” It offers a roadmap for voluntary collaboration between all of the parties involved in fighting counterfeiting, and provides recommendations for search websites, online marketplaces, payment service providers, and trademark owners, as well as for social media, logistics, domain name registrars, and registry companies. INTA has shared the best practices with members and nonmembers, including government officials, worldwide. Last updated in 2017, the best practices document is currently under revision to include stronger measures to encourage all stakeholders to work together in combating counterfeiting online.

With this document as a basis, INTA has supported voluntary collaboration in the fight against counterfeiting on the Internet—recognizing that members oppose counterfeiting. INTA has leveraged its diverse membership, including stakeholders from brands and intermediaries, willing to work together to advocate for stronger anticounterfeiting policies on the Internet.

In the last 18 months, INTA has held more than 20 events focused on the issue—including its cornerstone event, the annual Anticounterfeiting Workshop, which draws platforms, government officials, and rights holders in a daylong moderated discussion. The Workshop has been so successful that INTA is offering two sessions at the 2020 Annual Meeting & Leadership Meeting to accommodate all time zones.

INTA’s Anticounterfeiting Manager, Maysa Razavi, observed, “After many years working on the problem of online counterfeiting, I have heard from members—both brand owners and e-commerce platforms—with detailed observations about their struggles to slow it down. This problem is complex, and there is no one-size-fits-all model. But the more dialogues we have with all the players, the more solutions become apparent. We all agree that we do not want counterfeits to be available online. The biggest issue now is to expand our efforts as the problem accelerates—especially this year.”

Furthermore, INTA is working to promote transparency of the anticounterfeiting policies of various platforms. This year, the Association has held 15 sessions allowing platforms to share their policies and answer questions from rights holders; more are scheduled in the coming months. INTA has been sharing various platforms’ new anticounterfeiting policies through articles to inform the anticounterfeiting community.

In addition, INTA’s Anticounterfeiting Committee has several workstreams focused on transparency. Most notably, the Committee is working on a study comparing several e-commerce platforms’ anticounterfeiting policies and finalizing a separate companion social media study to be released at the 2020 Annual Meeting & Leadership Meeting in November.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.