[Federal Register Volume 85, Number 220 (Friday, November 13, 2020)]
[Notices]
[Pages 72635-72637]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-25163]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-T-2020-0035]
Secondary Trademark Infringement Liability in the E-Commerce
Setting
AGENCY: Patent and Trademark Office, Department of Commerce.
ACTION: Request for comments.
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SUMMARY: On January 24, 2020, the Department of Homeland Security (DHS)
released its Report to the President of the United States titled
``Combating Trafficking in Counterfeit and Pirated Goods'' (DHS
Report). The report responded to the April 3, 2019, Presidential
Memorandum titled ``Memorandum on Combating Trafficking in Counterfeit
and Pirated Goods'' (Presidential Memorandum). Among the action items
identified in the DHS Report was action 9, titled ``Assess Contributory
Trademark Infringement Liability for E-Commerce.'' In order to
implement this action item, the United States Patent and Trademark
Office (USPTO) is seeking information from intellectual property rights
holders, online third-party marketplaces and other third-party online
intermediaries, and other private sector stakeholders, on the
application of the traditional doctrines of trademark infringement to
the e-commerce setting. More specifically, the USPTO seeks input on the
application of contributory and/or vicarious trademark infringement
liability (secondary infringement liability) to e-commerce.
DATES: Comments must be received by 5 p.m. EST on December 28, 2020.
ADDRESSES: You may submit comments and responses to the questions below
by one of the following methods:
(a) Electronic Submissions: Submit all electronic comments via the
Federal e-Rulemaking Portal at https://www.regulations.gov (at the
homepage, enter PTO-T-2020-0035 in the ``Search''' box, click the
``Comment Now!'' icon, complete the required fields, and enter or
attach your comments). The materials in the docket will not be edited
to remove identifying or contact information, and the USPTO cautions
against including any information in an electronic submission that the
submitter does not want publicly disclosed. Attachments to electronic
comments will be accepted in Microsoft Word or Excel or Adobe PDF
formats only. Comments containing references to studies, research, and
other empirical data that are not widely published should include
copies of the referenced materials. Please do not submit additional
materials. If you want to submit a comment with confidential business
information that you do not wish to be made public, submit the comment
as a written/paper submission in the manner detailed below.
(b) Written/Paper Submissions: Send all written/paper submissions
to: United States Patent and Trademark Office, Mail Stop OPIA, P.O. Box
1450, Alexandria, Virginia 22314. Submission packaging should clearly
indicate that materials are responsive to Docket No. PTO-T-2020-0035,
Office of Policy and International Affairs, Comment Request; Secondary
Trademark Infringement Liability in the E-Commerce Setting.
Submissions of Confidential Business Information: Any submissions
containing confidential business information must be delivered in a
sealed envelope marked ``confidential treatment requested'' to the
address listed above. Submitters should provide an index listing the
document(s) or information that they would like the USPTO to withhold.
The index should include information such as numbers used to identify
the relevant document(s) or information, document title and
description, and relevant page numbers and/or section numbers within a
document. Submitters should provide a statement explaining their
grounds for objecting to the disclosure of the information to the
public as well. The USPTO also requests that submitters of confidential
business information include a non-confidential version (either
redacted or summarized) of those confidential submissions that will be
available for public viewing and posted on https://www.regulations.gov.
In the event that the submitter cannot provide a non-confidential
version of its submission, the USPTO requests that the submitter post a
notice in the docket stating that it has provided the USPTO with
confidential business information. Should a submitter fail to either
docket a non-confidential version of its submission or post a notice
that confidential business information has been provided, the USPTO
will note the receipt of the submission on the docket with the
submitter's organization or name (to the degree permitted by law) and
the date of submission.
[[Page 72636]]
FOR FURTHER INFORMATION CONTACT: Holly Lance, USPTO, Office of Policy
and International Affairs, at [email protected] or 571-272-9300.
Please direct media inquiries to the USPTO's Office of the Chief
Communications Officer at 571-272-8400.
SUPPLEMENTARY INFORMATION: The DHS Report describes how the rapid
growth of e-commerce platforms, ``further catalyzed by third-party
online marketplaces connected to the platforms, has revolutionized the
way products are bought and sold.'' DHS Report at 7, available at
https://www.dhs.gov/sites/default/files/publications/20_0124_plcy_counterfeit-pirated-goods-report_01.pdf . This overall
growth ``has facilitated online trafficking in counterfeit and pirated
goods.'' Id. (The DHS Report addresses both trademark counterfeiting
and copyright piracy, but action 9, the subject of this Federal
Register Notice (FRN), is limited to trademark counterfeiting.)
American consumers shopping on e-commerce platforms now face a greater
risk of purchasing counterfeits, including goods that endanger the
health and safety of unsuspecting consumers. The U.S. Congress has also
taken up the issue of dangerous counterfeits. On March 2, 2020, H.R.
6058, the ``SHOP SAFE Act of 2020,'' which addresses the contributory
liability of e-commerce platforms in relation to counterfeit goods
implicating health and safety, was introduced in the House of
Representatives.
Historically, counterfeits were distributed through in-person
transactions, such as those at swap meets, and by individual sellers,
often on street corners. Today, many counterfeits are trafficked
through e-commerce supply chains in concert with marketing, sales, and
distribution networks. See DHS Report at 10. While e-commerce has
supported the launch of thousands of legitimate businesses, it has also
enabled counterfeiters to easily establish attractive ``store-fronts''
to compete with legitimate businesses. See id. at 11.
The development of the DHS Report benefitted from extensive
interagency discussion that included DHS, the Department of Justice,
the Office of the United States Trade Representative, the Department of
Commerce, the Food and Drug Administration, the Office of the
Intellectual Property Enforcement Coordinator, and the Department of
State. The DHS Report also benefited from outreach to, and comments
from, numerous private sector stakeholders, including responses to the
Department of Commerce's FRN 2019-14715 titled ``Comment Request;
Report on the State of Counterfeit and Pirated Goods Trafficking and
Recommendations,'' issued on July 10, 2019. 84 FR 32861. The FRN
requested comments on a variety of issues drawn from the Presidential
Memorandum. As summarized in the DHS Report, the comments relevant to
the subject of this FRN included rights holder assertions that the
present legal landscape for online secondary liability in the e-
commerce space is ``out of date.'' DHS Report at 24. In particular, the
rights holders noted, in the brick-and-mortar economy, contributory
infringement liability has been well developed through case law for the
licensing and oversight of sellers, but a comparable regime is largely
nonexistent in the e-commerce realm. Id. at 24-25. Comments were also
received from platforms noting that they have ``invested heavily in
proactive efforts to prevent counterfeits from reaching their online
stores,'' and several commenters noted that some platforms have
significant interactions with law enforcement to combat counterfeits
trafficking. Id. at 25.
The DHS Report includes a section on ``Immediate Action by DHS and
Recommendations for the USG [U.S. Government].'' The ninth item, titled
``Assess Contributory Trademark Infringement Liability for E-
Commerce,'' calls for the Department of Commerce to seek input from the
private sector and other stakeholders as to the application of the
traditional doctrines of trademark infringement to the e-commerce
setting, including whether to pursue changes in the application of the
secondary infringement standards to platforms. See DHS Report at 33.
This FRN seeks comments on that issue.
Request for Information: The USPTO requests information from
interested stakeholders, including but not limited to trademark owners
affected by the sale of counterfeit goods offered through e-commerce
platforms and online third-party marketplaces and intermediaries.
Respondents may address any, all, or none of the following
questions. Please identify, where possible, the question(s) your
comments are intended to address.
Respondents may organize their submissions in any manner. Reminder:
Respondents have the responsibility to request that any information
contained in a submission be treated as confidential business
information and must certify that such information is confidential and
would not customarily be released to the public by the submitter.
Confidential business information must be clearly designated as such
and provided only by mail carrier as described above.
The USPTO welcomes all input relevant to the application of the
traditional doctrines of secondary trademark infringement to the e-
commerce setting, more specifically whether to pursue changes in the
application of the secondary infringement standards to platforms. In
particular, we seek the following information:
1. Is the doctrine of secondary infringement liability, as
currently applied by the courts, an effective tool in addressing the
problem of the online sale of counterfeit goods? If not, please
identify the shortcomings in this approach to combatting counterfeits
sold online, including whether the shortcomings are general to all
goods and modes of e-commerce or whether they are specific to a
particular type of goods or e-commerce.
2. Have you pursued or defended secondary trademark infringement
claims against an e-commerce platform, online third-party marketplace,
or other online third-party intermediary where the claim was that the
intermediary facilitated the sale of counterfeit goods, including
counterfeit goods offered by a third-party seller? If so, what
challenges did you face in pursuing or defending these claims under a
secondary infringement theory, and what was the result?
3. If you have chosen not to pursue a potential claim or defend
against a claim for secondary trademark infringement against an e-
commerce platform, online third-party marketplace, or other online
third-party intermediary for reasons related to the current
interpretation of the doctrine of secondary infringement, please
explain how your decision-making was affected by the state of the law
and how a different interpretation might have led to a different
decision.
4. To the extent you have identified shortcomings in the current
application of the doctrine of secondary infringement in your answers
to the above questions, please explain how you would recommend
resolving those shortcomings.
a. For all types of recommendations, please identify their scope,
including the type of goods or e-commerce affected. Where appropriate,
please prioritize your recommendations.
b. If your recommendation includes implementation in steps and/or
over time, please identify each step and the contemplated timeframe for
implementation.
[[Page 72637]]
5. Please provide any studies or other information in your
possession that demonstrate whether or not a change in the law of
secondary liability for trademark counterfeiting with respect to e-
commerce platforms, online third-party marketplaces, and other online
third-party intermediaries would be effective in reducing online sales
of counterfeit goods, or whether it would pose any risks.
6. Are there any other areas of law or legal doctrines that could
help inform or supplement the standard for secondary trademark
infringement to reduce online sales of counterfeit goods?
Dated: November 6, 2020.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2020-25163 Filed 11-12-20; 8:45 am]
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