Post authored by Ryan Dooley
Most counselors for consumer-facing businesses are strong advocates of IP rights and encourage their clients to stake out a claim on their trademarks, patents, and copyrights in appropriate time frames. This article will discuss some less-discussed considerations for registering IP in a timely fashion by looking at IP enforcement mechanisms outside the judicial system. Specifically, this article will offer a brief overview of Amazon, Google, and Bing’s IP policies.
Two remedies outside the judicial system are relatively widely known: DMCA takedown requests and UDRP complaints. Under the Safe Harbor provision of the Digital Millenium Copyright Act (DMCA), companies will not be charged with copyright infringement if they remove content uploaded by a user after a complaint has been filed pursuant to 17 U.S. Code § 512(c)(1)(C). For trademarks, the Uniform Domain-Name Dispute-Resolution Policy (UDRP)(https://www.icann.org/resources/pages/help/dndr/udrp-en) prevents bad faith registration of domain names that incorporate the trademark of another.
Lesser known remedies that are attractive to IP owners are the IP protection policies of three websites incredibly important for consumer-facing businesses: Amazon, Google Ads (formerly AdWords), and Microsoft’s Bing. One area that might immediately come to mind is for potential trademark infringement from ads shown because of your client’s trademark. However, this “keyword advertising” has been generally upheld as a valid use of a competitor’s trademark, as long as there is no confusion about the source of the sponsored good. See Multi Time Machine, Inc. v. Amazon. com, Inc., 804 F. 3d 930 at 933, (9th Cir. 2015) (“Because Amazon’s search results page clearly labels the name and manufacturer of each product offered for sale and even includes photographs of the items, no reasonably prudent consumer accustomed to shopping online would likely be confused as to the source of the products.”); see also 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1244–45 (10th Cir. 2013).
An example of a keyword ad is shown in the below image. An Amazon search for “Snapple” returned results for Snapple drinks, but the page also displayed a banner ad at the top for San Pellegrino, a Snapple competitor.
Pictured above is a screenshot of Amazon.com product list, captured 8/17/2018.
Amazon’s IP policy (https://sellercentral.amazon.com/gp/help/help.html/?itemID=G201361070) is the broadest policy out of the three websites, purporting to protect trademarks, copyrights, and patents. Amazon’s policy is notable in that it specifically acknowledges common law trademarks and copyrights and extends its protection to these unregistered IP rights. Amazon offers further protection for owners of registered trademarks if companies enroll their trademarks with Amazon’s Brand Registry (https://brandservices.amazon.com/benefits). This program offers protection against sellers shipping items from countries where brands are not used or manufactured and sellers creating new products on Amazon purporting to be part of a brand’s catalog, but do not actually exist.
Amazon is notable for allowing patent complaints to restrict the sales of goods offered by a competitor. The scope of protection can vary wildly across Amazon’s catalogue, as some complaints result in the takedown of a product, whereas others result in no action at all. A single violation of Amazon’s policies might result in suspension of a product’s sales, and multiple violations of Amazon’s policies might cause Amazon to shut down a seller’s account.
Microsoft’s policies for Bing (https://advertise.bingads.microsoft.com/en-us/resources/policies/intellectual-property-policies) actually go beyond what is required under Multi Time Machine and, in fact, protect against keyword advertising that infringes trademarks, along with protecting ad copy. Their policy states, “[a]s an advertiser, you are responsible for ensuring that your keywords and ad content, including trademarks and logos, do not infringe or violate the intellectual property rights of others.”
The trademark complaint form (https://advertise.bingads.microsoft.com/en-us/resources/policies/trademark-misuse), however, lists the trademark registration number as a required field, which could limit remedies to only owners of federally registered trademarks. The copyright complaint form (https://advertise.bingads.microsoft.com/en-us/resources/policies/copyright-infringement) does not have this requirement, and should be an open avenue for copyright claims. Microsoft does not disclose the penalty for violations of its IP policies.
Google’s trademark ad policy (https://support.google.com/adspolicy/answer/6118) restricts the use of trademarks in ad text, but specifically notes that it does not protect trademarks as keywords. Google’s Copyright policy (https://support.google.com/adspolicy/answer/6018015?hl=en&ref_topic=1626336) notes that it removes unauthorized copyrighted content, and offers a web form (https://support.google.com/google-ads/contact/copyright) to owners of copyrights for authorizing their use in ads. Google says that it “may restrict the use of trademarks in ad text” in response to a trademark owner complaint, and may “disprove” an ad that contains copyrighted content.
Amazon, Microsoft, and Google all offer IP protection in their policies to varying degrees. Unlike judicial enforcement, complaints are private and decided by employees of the companies, often leading to seemingly arbitrary decisions. One cannot point to past decisions to convince employees to “rule” in certain ways, and a final ruling against your client usually cannot be reversed unless you return with a court order in your client’s favor.
While trademark and copyright complaints can be often made without registration beforehand, the employees of these companies are not trained legal analysts and often will not understand when rights arise under common law protections or which rights are even granted. Because you only get a limited opportunity to convince a private company of the validity of your client’s rights, registration of IP goes a long way towards convincing a layman employee of the validity and strength of your client’s rights.
About the Author:
Ryan Dooley is an IP attorney who helps startups and small businesses with intellectual property matters, covering trademark, copyright, and patent issues. He has experience in technologies such as computer networking, VPN technology, social networking, computer hardware, medical scanning technology, electronic health records, e-readers, and mechanical devices. Ryan has published articles regarding legal developments in emerging areas such as esports, blockchain technologies, hardware vulnerabilities, and piracy. Before law school, Ryan attended the University of California Santa Cruz, where he earned a degree in Computer Science: Game Design.