Amazon.com and the Amazon marketplace account for nearly 50% of the e-commerce market in the United States. Instead of looking for specific products on brand-specific websites, most online shoppers take advantage of the convenience that an Amazon account provides including stored credit cards and shipping information. Due to its size, Amazon is a breeding ground for intellectual property infringement, counterfeiting, and retail fraud across its thirteen international marketplaces.
Forbes reports that 70% of online shoppers with a household income of over $150,000 have Amazon accounts. While Amazon has a medium for reporting infringement and a protective Brand Registry, it still faces unprecedented levels of infringement claims. Hundreds, if not thousands, of infringement reports are submitted to Amazon’s infringement investigators on a daily basis, and a lengthy claims process may frustrate your business. Having an experienced Amazon lawyer on your side can make all the difference.
Amazon Intellectual Property Rights Infringement
Amazon intellectual property infringement typically involves the unauthorized use of trademarks, copyrights, or patents by third-party sellers on the Amazon marketplace.
Trademark Infringement on Amazon
Trademarks are words, names, symbols, designs, or sounds that identify or distinguish a product or service of a company from those of others. A trademark can be a symbol, such as the Nike “swish,” a unique or stylized name, such as “Starbucks,” or a combination of both, such as “Amazon” stylized with an orange smile. Trademark infringement is the unauthorized use of a trademark in connection with goods likely to cause confusion among consumers. Both registered and unregistered trademarks are protected in the United States. However, trademarks registered through the United States Patent and Trademark Office (“USPTO”) are afforded substantially greater legal protection. For any trademark infringement we recommend a trademark cease and desist letter.
Submitting documentation of your registered trademark to Amazon may be enough to freeze the accounts of marketplace infringers. Without official documentation, however, it’s extremely difficult to convince Amazon to take action.
Trademark infringement is very common in the Amazon marketplace where third-party sellers thrive on marketing inexpensive alternatives to name brand products. Falsely claiming a product is “certified” by the trademark owner or using a substantially similar trademark designed to confuse consumers may be trademark infringement. It’s also harder to see the difference between counterfeit products on Amazon than in a retail setting. False or substantially similar trademarks on a product may look the same as the registered trademark in a small photograph whereas retail consumers are more likely to be able to spot the counterfeit immediately. Trademark infringers thrive on online marketplaces such as Amazon where buyers are unable to fully scrutinize a product.
While each state has different trademark infringement laws, the Lanham Act often applies to trademark infringement claims in the United States. Proving trademark infringement by a third-party seller to Amazon should follow the three elements of a trademark infringement generally:
- The trademark is legally protectable. The easiest way of proving this is through documentation of registration from the USPTO. While it’s possible that the USPTO registered an invalid trademark, Amazon seldom delves into such detail when dealing with third-party infringement claims.
- You actually own the trademark. Frustrated consumers often complain to Amazon that they purchased fraudulently marked products, but they do not have standing to bring a trademark infringement claim against the counterfeiting party. Only the trademark owner has standing to do so.
- You must show that the defendant’s use of the trademark causes a likelihood of confusion. Amazon may actually be your ally here. Amazon product reviews and comments such as “I thought this was an Apple product” or “appeared to be a picture of a Coach bag” can help prove actual marketplace confusion.
Submitting your trademark registration, proof of ownership (identity), and a batch of comments from confused consumers may force Amazon to remove the product from the marketplace. For further information on trademark infringement on Amazon, please see our Amazon Trademark Infringement page.
Copyright Infringement on Amazon
Copyrights protect “original works of authorship” including the following forms of expression:
- Web sites,
- Graphic designs,
- Videos, and
Like trademark infringement, Amazon is ripe for copyright infringement. Amazon Music, Amazon Video, and Amazon’s Kindle store often unintentionally contain infringing works. Copyright infringement is especially prevalent in the Amazon Kindle store where unregulated, self-published literature is abundant.
Copyrights arise even without registration. Once an original work is expressed in a tangible medium, i.e., paper, canvases, computers, or voice recorders, United States copyright laws protect it. However, proving copyright infringement on Amazon without registering a copyright through the United States Copyright Office may be extremely difficult. The U.S. Copyright Office offers the following categories of copyright registration:
- Literary Works,
- Visual Arts,
- Performing Arts,
- Motion Pictures,
- Photographs, and
- Digital Content.
Federal law makes it illegal to violate the exclusive right of a copyright owner by, without authorization, reproducing copyrighted works, preparing derivative works based on the copyrighted work (i.e., an abridgment), distributing the copyrighted work, performing the copyrighted work, or displaying the copyrighted work publically (including screenshots and pictures from a movie).
In order to prove copyright infringement, a copyright owner must do the following:
- Establish the validity of the copyright. This often means producing a copyright registration. Without registration, you will have to show that your copyright arose at common law and that you transferred the work onto a tangible medium before the alleged infringer. Copyright registration is a prerequisite to file a lawsuit for copyright infringement.
- Prove that the defendant infringed upon the copyright. The infringement must fall into one of the above categories, i.e., display, sale, reproduction, or performance, and the owner must generally prove the defendant copied the original work. The test for copyright infringement is “substantial similarity,” which is often subjective. Amazon may determine the works are not substantially similar, but a jury may disagree. You must generally show that the defendant had access to your work and that the two works bear substantial similarities.
Damages available against an infringing third party may include disgorgement of profits, an injunction, the lost market value of your copyright, or statutory damages. A typical first step with copyright infringements is a copyright cease and desist letter and we recommend that it be sent by a copyright lawyer. For more information about copyright infringement on Amazon, please see our Amazon Copyright Infringement page.
Patent Infringement on Amazon
Patent infringement occurs when an unauthorized party makes, uses, sells, or offers to sell a patented product or system. The violation must occur in the United States or the infringing product must be imported into the United States. This means a foreign entity producing infringing products is subject to a patent infringement claim if those items are sold on Amazon in the U.S.. Patent infringement claims are often reported to Amazon after the infringement has been established. Sending Amazon a court order proving the infringement may be sufficient to force the removal of the infringing product from the Amazon marketplace. Some patent owners may also use Amazon to discover potential infringing products. Ordering recommended products or those claiming similarity to your own may reveal patent infringement.
For more information about patent infringement on Amazon, please see our Amazon Patent Infringement page.
Reporting Infringement to Amazon
You may report alleged intellectual property infringement directly to Amazon via its website. Common infringement claims include use and sharing of copyrighted images by competing sellers on detail pages. If the copyright owner posted an image, however, it may legally appear on comparison or recommendation pages controlled by Amazon. You do give Amazon a limited right to utilize your copyrights if you, the copyright owner, posted the copyrighted material to Amazon. If you believe use of the copyright was unauthorized, then consider hiring an attorney to send a cease and desist letter or submit your claim to Amazon.
Amazon Intellectual Property Rights Infringement Appeal
While Amazon does its best to address infringement reports, it’s economically unfeasible for it to have an intellectual property lawyer review every initial submission. Further, there are many instances of false reports submitted by unauthorized parties or product competitors to suspend an account or have an account banned. Amazon has an appeals process for resubmitting erroneously denied infringement claims. These appeals often require additional documentation but are addressed by higher-level representatives. We recommend hiring an attorney familiar with Amazon issues to assist you if you have an infringement or appeal issue.
Amazon Infringement Attorneys – Mandour & Associates
Utilizing an experienced intellectual property infringement attorney can increase the chances your claims will be thoroughly reviewed and addressed by Amazon. The intellectual property attorneys at Mandour & Associates will vigorously protect your rights on Amazon.
If you have an infringement issue on Amazon, please feel free to contact us.