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COPYRIGHT 2014 DIGITAL BRANDWORKS, ALL RIGHTS RESERVED 19
27
The Concept of “Agreement”
Antitrust issues do not arise from
independent conduct if the actor lacks “monopoly
power.” Violations require “agreements.”
An “agreement” subject to antitrust scrutiny
does not have to be in writing. “Agreements” can
be inferred from written or oral communications
which may have led independent parties to engage
in anticompetitive conduct -- “circumstantial
evidence.”
28
Customer Selection
Acting independently, a supplier has the right to select or terminate dealings with a particular customer or category of customers (e.g. internet retailers). However, the supplier cannot do so by agreement with any of its competitors.
A supplier, acting independently, is free to do business
with or terminate a customer for:
• lack of a “brick and mortar” presence or sufficient locations
• credit reasons
• failure to adequately purchase or present the supplier’s
products
• reselling to the trade or otherwise diverting the supplier’s
products.
• selling or advertising below the supplier’s prices. (See
Exhibits 1 & 2.)
29
Customer Limitations
A supplier, acting independently, can determine to sell to a particular retailer at one or more locations, but not at other locations.
It can also prohibit a customer from:
• diverting its products to other locations or to the trade
• reselling its products over the Internet, or it can place conditions on such sales. (See Exhibits 3 & 4.)
Additionally, it can limit particular products to specific customers, or determine to sell a product line only to one or a few customers.
30
Resale Price Maintenance (“RPM”)
While establishing a ceiling on a customer’s
resale prices (“maximum resale price maintenance”)
generally is lawful, establishing a floor (“minimum
resale price maintenance”) remains very dangerous
under the antitrust laws.
A supplier is best counseled not to enter into
agreements or understandings with customers as to
the prices below which they may not resell the
supplier’s products. Such agreements are
absolutely prohibited under the laws of some states.
31
Resale Price Maintenance (cont’d)
However, a supplier can suggest or recommend that customers resell a product at or above a specified price so long as the customer remains free to decide whether to follow the suggestion. (See Exhibit 1.)
A supplier can talk to a customer in general terms about the profit enhancing reasons for its pricing recommendations, and the in-store services such prices support. But it should not go further.
32
Specifically, the supplier should not:
• Pressure or coerce a customer to resell at the supplier’s suggested retail prices.
• Increase wholesale prices or reduce discounts/allowances to a customer who has resold products below suggested prices.
• Provide rebates only if a customer resells at or above suggested prices.
• Refuse to sell particular items or threaten to slow down delivery to a customer who resells below suggested prices.
• However, a supplier, acting independently, may establish the selling prices of agents or consignees selling products on its behalf.
Pricing Don’ts
Promotional Pricing
Retailers should not need a supplier’s approval to
promote the sale of its products.
A supplier should not prohibit customers from
reselling below the supplier’s promotional prices or beyond
a suggested end date for a promotion.
However, the supplier may require customers to
pass promotional funds on to their customers as a
condition of receiving such funds.
• E.g., a retailer can be provided a $25.00 promotional rebate only if it has passed the promotional $25.00 through to its customers from its independently determined selling price for the item.
33
Retailer Pricing Complaints
If a supplier receives a pricing complaint
from Customer A about Customer B’s selling or
advertised prices, the supplier should respond as
follows:
• Customer B’s prices cannot be discussed.
• A decision about action to be taken, if any, will independently be made by the supplier, and not reported back to Customer A.
34
35
Minimum Advertised Price (“MAP”) Policies
“MAP” means “Minimum Advertised Price.”
• It does not relate to selling prices.
• It is a Policy providing that a retailer will: • only be reimbursed for advertising at or above MAP,
• lose advertising support,
• or sales of the applicable product will be suspended for a period of time if the retailer advertises below MAP.
A MAP Policy is permissible if the supplier:
• only withholds financial support from a retailer under a Co-op Advertising Policy for advertisements below MAP, so long as the retailer remains free to advertise below MAP at its own expense, and also is free to resell at prices it independently chooses.
36
MAP POLICIES (cont’d)
The legality of a MAP Policy is unclear if it goes beyond just refusing to support below MAP advertisements, for example:
• suspending financial support for a period of time if a retailer’s advertisement is below-MAP.
• suspending sales of the product if a retailer’s advertisement is below-MAP.
• terminating a retailer for failing to comply with the MAP Policy. (See Exhibit 5.)
Legal counseling should be obtained for the development of a MAP policy.
37
Pricing Incentives
• A supplier can offer a customer better prices or higher discounts if a purchase from the supplier:
• is increased in quantity (quantity discounts);
• is at or above stated percentages of the customer’s requirements for products in a category (loyalty discounts);
• is in an amount that approaches, equals, or exceeds the supplier’s market share (market share discounts); or
• is for two or more different products (bundled discounts).
• “Most Favored Nation” (MFN) provisions can assure a customer that the supplier will reduce the customer’s prices to a lower price that has been offered to a competing customer.
©2011. All rights reserved.
GREENBERG TRAURIG, LLP ATTORNEYS AT LAW WWW.GTLAW.COM
“The New Frontier” of Brand
Enforcement on the Internet:
A U.S. Perspective
Steven J. Wadyka, Jr.
Shareholder
Greenberg Traurig, LLP
Washington, D.C. USA
(202) 331-3105
Overview of Internet Brand Enforcement
Challenges/costs/benefits
Internet marketing, search engines and
keyword advertising
Secondary liability for online service
providers
Brand enforcement in social media
Remedies against “rogue” websites
Conclusions and predictions
Challenges Facing Brand Owners in Internet
Enforcement
Potential IP rights violators
• Search engines selling trademarks as “keywords”
(Google, Yahoo!, Bing)
• Domain name registrars (GoDaddy)
• Social networking sites (Facebook, Twitter,
LinkedIn)
• “Rogue” websites/online counterfeiters
• Auction sites (eBay)
• Web hosting providers/ISPs
• Payment processors (PayPal)
Challenges Facing Brand Owners in Internet
Enforcement
Jurisdictional issues
• How to subject offshore (and often anonymous) IP rights violator to the courts and laws of the U.S. and obtain relief that can be enforced against the violator?
Cost considerations
• Private investigators
• Monitoring/watching services
• Legal fees
Efficiency and effectiveness
• Identify and choose targets wisely
Deterrence and Return on Investment
• Substantial relief may provide disincentive to would-be violators and help brand owner recoup losses and cost outlays
Challenges Facing Brand Owners in
Internet Enforcement
Secondary liability
• Hold online service providers responsible for the
infringing acts of others
• Hold brand owners responsible for the actions of
third parties
• Two theories:
– Vicarious infringement: Principal liable for
acts of its agent
– Contributory infringement: Analogous to
aiding and abetting
Search Engines & Keyword Advertising
Rosetta Stone v. Google, 676
F.3d 144 (4th Cir. 2012)
Rosetta Stone sued Google for
trademark infringement based
on sale of keywords consisting
of Rosetta Stone’s trademark to
trigger ads for competitors’ and
counterfeit products
District court granted summary
judgment for Google on Rosetta
Stone’s direct and contributory
infringement claims
Search Engines & Keyword Advertising
Rosetta Stone v. Google
Direct trademark infringement
• Disputed issues of fact regarding Google’s intent; evidence showed that Google expected uptick in litigation due to AdWords policy change
• District court ignored evidence of actual confusion as to sponsorship
• Sophistication of consumers – internal Google study showed seasoned Internet users were confused by Google’s sponsored links
• Functionality doctrine inapplicable – Irrelevant that Google’s computer program functioned better by use of Rosetta Stone’s mark
Search Engines & Keyword Advertising
Rosetta Stone v. Google
Contributory trademark infringement
• Insufficient for service provider to have general knowledge that some percentage of purchasers use the service to engage in infringing activities
• Must provide service to identified individuals that it knows or has reason to know are engaging in trademark infringement
• District court improperly weighed conflicting evidence regarding Google’s allowance of known counterfeiters to bid on Rosetta Stone keywords
Search Engines & Keyword Advertising
1-800 CONTACTS, Inc. v.
Lens.com, Inc., 722 F.3d 1229
(10th Cir. 2013)
• Lens.com used an “affiliate
network,” managed through an
aggregator, to assist with
online marketing
• Affiliates purchased keywords
containing 1-800’s mark
• Some impressions displayed 1-
800’s mark
• 1-800 argued “initial interest
confusion”
• Sued Lens.com based on
theories of vicarious and
contributory infringement
Search Engines & Keyword Advertising
1-800 CONTACTS, Inc. v. Lens.com, Inc.
• Relevant issue for consumer confusion is not what keyword was purchased, but what language was used in the ad generated by keyword
• Likelihood of confusion existed as to impressions containing plaintiff’s mark
• No vicarious liability
Affiliate had no authority to act on behalf of defendant and thus was not an “agent”
• BUT, there was contributory liability
Lens.com could have stopped use of infringing ads by requiring its aggregator to send e-mail blast to affiliates forbidding such use
Domain Name Registrars
Petroliam Nasional Berhad (Petronas) v.
GoDaddy, 737 F.3d 546 (9th Cir. 2013)
• A third party registered “petronastower.net” and
“petronastowers.net” and used GoDaddy’s domain
forwarding service to direct users to a porn site
• Petronas sued GoDaddy for contributory cybersquatting
under the federal anti-cybersquatting statute (ACPA)
• Appeals court held that neither the plain text nor
purpose of the ACPA supports a claim for contributory
cybersquatting
• Would saddle registrars with nearly impossible task of
“divining the intent of their customers”
• Issue may soon be before US Supreme Court
Auction Sites & Online Marketplaces
Tiffany v. eBay, 600 F.3d 93 (2d Cir. 2010)
• First U.S. case to apply contributory trademark
infringement standard to online marketplace
• Tiffany claimed that eBay was liable for contributory
trademark infringement by supplying its services to
sellers of counterfeit Tiffany goods while knowing or
having reason to know that such sellers were infringing
Tiffany’s marks
• District court ruled in favor of eBay; Tiffany appealed
Auction Sites & Online Marketplaces
Tiffany v. eBay
• Affirms judgment in favor of eBay
• For contributory trademark infringement, a service
provider must have more than a general knowledge or
reason to know that its service is being used to sell
counterfeit goods
Some contemporary knowledge of which particular
listings are infringing or will infringe in the future is
necessary
Tiffany’s generalized allegations of counterfeiting
failed to provide eBay with the required knowledge
• eBay’s extensive anti-piracy efforts – Trust & Safety
Dept., fraud engine to detect listings for counterfeit
goods, VeRO Program providing rights owners with
“notice and takedown” remedies – all were critical to a
finding of no liability
Web Hosting Providers
Louis Vuitton v. Akanoc Solutions, 658
F.3d 936 (9th Cir. 2011)
• Defendants provided web hosting
services to sites that sold counterfeit
Louis Vuitton products
• LV made several demands that
defendants either remove infringing
content or require their customers to
do so; No response from defendants;
sites continued to operate
• LV sued for contributory trademark
infringement
Argued that defendants had actual
knowledge of sites’ activities, knowingly
avoided learning full extent of those
activities, and deliberately disregarded
LV’s demands, thereby knowingly enabling
the infringing conduct by hosting the sites
• Jury found for LV, awarded statutory
damages totaling $31.5 million
Web Hosting Providers
Louis Vuitton v. Akanoc Solutions
• Affirmed on appeal as to liability
• Issue: Whether defendants exercised direct control of third
party’s “means of infringement”
• Defendants: The websites selling counterfeit goods were to
sole means of infringement
• Appeals court held that defendants physically host websites
on their servers and route Internet traffic to and from those
sites
• “The Internet equivalent of leasing real estate.”
• Defendants had direct control over the “master switch” that
kept the sites online and available
• Reduced statutory damage award to $10.5 million
Payment Processors
Theory of liability
• Contributory infringement
Intentional inducement
Actual knowledge or willful blindness, while having sufficient control over the instrumentality used to infringe
Divergent case holdings
• Perfect 10 v. Visa, 494 F.3d 788 (9th Cir. 2007)
allegation that credit card processors can decide to stop processing payments to sites dealing in counterfeits was insufficient to state a claim (Judge Kozinski dissenting)
• Gucci v. Frontline Processing, 721 F.Supp.2d 228 (SDNY 2010)
“control” sufficiently alleged because credit card processing services are a necessary element for the transaction of counterfeit goods online; “knowingly provide a financial bridge between buyers and sellers of counterfeit products”
Social Media
Presents opportunities and challenges for brand
owners
• Opportunities:
Build brand strength/loyalty by creating official
company page and fan page
Register usernames consisting of your
company’s brands
Use social media pages commercially to provide
new ways to reach consumers
Spread branding message instantaneously across
numerous platforms
Social Media
• Challenges:
Improper suggestions of affiliation/sponsorship
– Brand appears in usernames pointing to sites
containing false information about the
company’s products
Counterfeiting - Username points to sites selling
counterfeit goods
“Username squatting” - New FB account created
solely to take advantage of grabbing a username
Dilution - Blurring and tarnishment
Imposters - Possible parody defense; permissible on
Twitter provided parody is clear
Social Media
Enforcement strategies in social media sites
• Assessment of infringing activity
Balance the need for brand protection vs. potential
alienation of customers
– Must always be mindful of duty to police your
marks
– How much of an issue does the activity create
for your business?
– Does it interfere with any ongoing advertising or
promotional campaigns?
– Is it an isolated, ephemeral instance or a
concerted attack?
Social Media
Enforcement strategies in social media sites
• Consider free speech issues and potential public
backlash of enforcement effort
– First Amendment to U.S. Constitution
grants broad protection to political
speech/commentary/criticism, less
protection to commercial speech
– Keep in mind that cease and desist letter
may well be posted on social media sites to
generate negative exposure for the brand
» Adjust tone of enforcement depending
on whether infringer is willful or
simply innocent or misguided
Social Media
Enforcement strategies in social media sites
• Become familiar with the site’s Complaint and
Takedown Policies, Community Guidelines, and Terms
of Use
• Develop takedown strategy and assess requirements
Copyright Infringement (DMCA)
Trademark Infringement
Unauthorized Impersonation
Repeat Offenders
Harassment, defamation, theft of confidential material
• Keep in mind that policies and requirements my change
over time
Social Media
Enforcement strategies in social media sites
Expand your internal monitoring program to include
social media sites
Develop consistent monitoring and enforcement
procedures
Use search engines to find infringing/harmful content
– Google.com/alerts (generates alerts for use of
company names and brands on the Web, blogs,
news, discussion groups)
Consider vendors and software tools with social
media monitoring capability
Keep tabs on what is being said about your brand in
“real time”
“Rogue” Websites
What is a “rogue” website?
• A site that traffics in stolen movies, TV shows and music, or counterfeit goods
• Located throughout the world
• Appear legitimate by featuring brands and advertising of reputable companies and accepting major credit cards
• Enable site operators to profit from brands and other IP they had no role in creating
• “A Web site that is set up to spread a virus, collect names for spammers or for some other illicit or repugnant purpose” (PC Magazine Encyclopedia)
“Rogue” Websites
What type of threat do they present to brands?
• The counterfeit business model is shifting toward use
of “rogue” websites
Seizures by U.S. Customs & Border Patrol jumped 24% in
2011, but overall value of goods seized decreased by 5%
from previous year
Proliferation of rogue sites in part responsible
Difficult to stop counterfeit goods from entering US if
purchased through rogue website
Hard to locate or identify operators of sites
Lack of any lasting remedy since sites are easily re-
established
A Rogue Website Case Study: Tory Burch
An example of how brand owners can
combat the sale and distribution of
counterfeit goods through “rogue” websites
under current U.S. laws
A Rogue Website Case Study: Tory Burch
Tory Burch brought suit in Dec. 2010 in SDNY against an interrelated group of anonymous counterfeiters
Defendants established over 200 websites to sell counterfeit Tory Burch products
The sites were in English, accept major credit cards, copy Tory Burch marks, designs and photos
Sites established at URLs containing the Tory Burch marks so they would rank highly web searches for “Tory Burch” name
Defendants used multiple fake names and addresses and submitted false WHOIS data to avoid detection
New sites quickly set up once existing sites disabled
A Rogue Website Case Study: Tory Burch
Court granted Tory Burch’s motion for default judgment and permanent injunction (Order dated May 13, 2011)
• Court had personal jurisdiction over the defendants based on their operation of fully-interactive websites through which they sold Tory Burch counterfeits
Recent 2d Cir. case upholding jurisdiction over nonresident counterfeiter based on sale/shipment of at least 1 counterfeit handbag into NY and its operation of highly-interactive website (Chloe v. Queen Bee (2d Cir. 2010))
• Found that defendants “went to great lengths to conceal themselves and their ill-gotten proceeds from Tory Burch’s and this Court’s detection by using multiple false identities and addresses as well as purposefully deceptive contact information”
• Permanently enjoined 3rd party service providers (ISPs, registries, registrars, online marketplaces) from providing any services to defendants
• Awarded Tory Burch $164 million in damages
A Rogue Website Case Study: Tory Burch
Court also granted ongoing injunctive relief tailored to suit the unique challenges presented by the anonymity of defendants and ease by which they are able to establish new sites
Order enables Tory Burch
• to disable additional rogue sites as they are established by defendants and discovered by Tory Burch
• To freeze and recover any additional newly-discovered financial accounts used in connection with defendants’ operation, such funds to be applied toward satisfaction of $164 million judgment
• To obtain transfers of additional domain names associated with any newly-discovered rogue sites
Ongoing mechanism avoids the need to institute a separate action each time a new rogue site is established
Conclusions and Predictions
The legality of using trademarks in keyword advertising is
still unsettled
Greater challenges for brand owners in seeking to hold
online service providers liable for trademark
infringement, creating greater need for remedies against
direct infringers, wherever located
Competitors will become more aggressive in marketing
through social media sites, resulting in trademark disputes
that will test adequacy of traditional trademark law in the
social media context
Rogue websites will become more sophisticated in their
operation and more difficult to identify
COPYRIGHT 2014 DIGITAL BRANDWORKS, ALL RIGHTS RESERVED 71
Be Prepared to protect your brand with strong policies –MAP, retailer agreements, etc
Strengthen retail partnerships by enforcing agreements and address distribution concerns
Start with knowing where you stand online
Consider selling direct to offset irregularities in the marketplace which degrade your brand
Marketing and Merchandising within the online channel
Manage online retailers differently - its not “set-it-and-forget-it”
COPYRIGHT 2014 DIGITAL BRANDWORKS, ALL RIGHTS RESERVED 80
Work with your team to establish quantitative benchmarks and goals
related to the program and an initial demand plan. Additionally, develop a
dynamic dashboard specific to your business goals that can be regularly
updated.
As needed, develop inventory management set up, payment and inventory
reconciliation.
Work with a creative team that will update imagery, product detail page
copy and other assets in accordance with your brand guidelines.
At the conclusion of development, deploy your brand into the marketplaces
and establish a roadmap that highlights key milestones and initiatives
related to your program.
COPYRIGHT 2014 DIGITAL BRANDWORKS, ALL RIGHTS RESERVED 81
Actively manage your products and overall online presence.
Monitor your brand and competitors, manage marketplace logistics, upload
content refreshes, regular benchmark key KPIs and continually optimize
your presence to ensure we are meeting established goals.
Actively pursue merchandising value ads and paid opportunities
Perform inventory management and payment reconciliation related to the
marketplaces where your brand is present.
Provide regular reporting on sales, competitors and channel metrics along
with analysis and recommendations on how to optimize to meet your goals.
COPYRIGHT 2014 DIGITAL BRANDWORKS, ALL RIGHTS RESERVED 84
• Stakeholder interviews
• SWOT analysis
• Product training & education
• Asset audit & needs identification
• Retailer and competitive online audit
• Asset optimization
• Demand forecasting
• Content management system integration
with retailers
• KPI identification & development
• Management dashboard development
• Daily maintenance
• Maintain listings & collateral material
• Facilitate price, inventory & order
management
• Plan & coordinate marketing promotions
• Assist in communicating new product
initiatives & education
• Marketing asset development
• Sales & trends analysis item breakdown
• Sales & merchandising management