Design Patent Enforcement in Online Marketplaces

Summer Associate Leen Mosa also contributed to this article.

Global E-commerce platforms continue to grow, with many online marketplaces replacing traditional brick-and-mortar stores. While online marketplaces help legitimate products reach consumers more widely than brick-and-mortar stores, they also make it easier for knockoffs and copycats to cannibalize sales of legitimate products. Perhaps recognizing that a product’s ornamentality can be the primary reason consumers click on a product listing and eventually purchase it, platforms like Walmart, eBay, and Amazon have established takedown procedures based on design patents, which protect a product’s ornamental appearance, to help intellectual property (IP) owners exclude knockoff and copycat product listings. These platforms’ takedown procedures are detailed below.

Walmart

Walmart’s Brand Portal helps IP owners address infringing product listings on Walmart.com (in the U.S.) and Walmart.ca (in Canada). Through the Portal, an IP owner may submit an Intellectual Property Claim Form to report patent (in addition to trademark and copyright) infringement claims. The Form requires identifying:

• the party reporting the alleged infringement,
• the party owning the allegedly infringed intellectual property, the nature of the infringement (e.g., “Infringement of a design patent”),
• link(s) to the allegedly infringing product, and
• the name of its owner.

The Form also allows an IP owner to submit supporting documents, like a copy of an Official Letters Patent or Trademark or Copyright Registration.

The party reporting the alleged infringement must sign the Form and attest that it (1) has a good faith belief that the alleged infringement is not authorized by the IP owner or its agent or the law; (2) has accurately completed the Form and is authorized to act on behalf of the IP owner under a penalty of perjury; and (3) understands that any abuse of the Form and the tool will result in its Walmart account being terminated.

The Brand Portal forwards infringement claims, including the IP owner’s contact information, to an alleged infringer. Walmart encourages the parties to resolve the issue amicably outside the Marketplace but reserves the right to remove infringing product listings.

eBay

eBay’s Verified Rights Owner Program allows IP owners to report infringing listings on eBay by submitting a Notice of Claimed Infringement at vero@ebay.com. Among the reportable listings are product listings that infringe “a valid and enforceable patent” and “a registered design right (available in Europe, Asia, Australia, and New Zealand only”). Notably, an alleged patent infringement—which would appear to include a U.S. design patent—requires the reporting party to provide a copy of the relevant court order and the patent registration information. In contrast, an alleged infringement of a registered European, Asian, Australian, or New Zealand design right simply requires the reporting party to provide the design right registration information.

The contents of the Notice are otherwise similar to the contents of Walmart’s Form, which include:

• information identifying the party reporting the alleged infringement,
• the party owning the intellectual property alleged to be infringed,
• the nature of the infringement,
• link(s) to the allegedly infringing product,
• the name of its owner, and
• a signed declaration of a good faith belief that infringement has occurred and that the information is accurate under a penalty of perjury.

Submitting a Notice of Claimed Infringement automatically triggers eBay’s process of taking down an allegedly infringing product listing. The seller of the allegedly infringing product is notified of the takedown and given the rights owner’s contact information to resolve any issues if the removal was unwarranted.

Amazon

Amazon allows IP owners to report allegedly infringing product listings on Amazon via the “Report a Violation” (RAV) tool (for IP owners enrolled in Amazon’s Brand Registry) or the “Report Infringement tool” (for IP owners who do not have a brand enrolled in Amazon’s Brand Registry). Either tool allows the IP owner to submit a notice of infringement, which may assert only one IP violation per notice. Thus, if a product listing appears to allege more than one type of IP (e.g., a trademark and a design patent) or two different rights of the same IP type (e.g., two design patents), separate notices are required.

The IP owner or its authorized agent must submit a notice of IP infringement including:

• the patent number of the patent believed to be infringed,
• the nature of the asserted infringement (e.g. whether the product design is an infringement),
• a URL of the infringing product listing or its Amazon Standard Identification Number (ASIN), and
• the details of the seller selling the infringing product.

Supporting documents, such as a copy of the asserted patent and order IDS for any test buys of the allegedly infringing product, are not required but may be helpful.

If Amazon finds the notice valid, accused infringers are notified and their listing(s) are removed, though it is unclear how long this process takes. If Amazon rejects the notice, it will provide the IP owners with a notification including the reason for rejection. Amazon also warns IP owners that the continuous submission of inaccurate notices could lead to the removal of their ability to use either tool to report allegedly infringing product listings.

Additional Risks Arising from Using Takedown Procedures

Takedown procedures available on e-commerce platforms can be quick and effective, but they are not without risks. Beyond losing the ability to use takedown procedures and the privilege of selling legitimate products on these platforms, IP owners can risk facing expensive court action. A recent case involving a patent owner’s use of the Amazon Patent Evaluation Express program (“APEX”) exposed the patent owner to a declaratory judgment action in the accused infringer’s home state. An IP owner should therefore keep in mind that initiating takedown procedures on an e-commerce platform could similarly prompt the accused infringer to file a declaratory judgment action in a venue unfavorable to the IP owner.