On April 20, 2023 Amazon launched the Anti-Counterfeiting Exchange (ACX) to combat the sale of counterfeit goods on its platform and make it safer for consumers to shop online.
What is the Anti-Counterfeiting Exchange (ACX)?
The program will allow participating stores and marketplace sellers to share information about confirmed counterfeiters who attempt to sell counterfeit products. In accordance with industry standards and best practices, an independent third party provides anonymized data and access for participants to share and receive information. Retailers can then make their own independent decisions about whether and how to use the information. Amazon has indicated that they have already detected hundreds of counterfeiters through the exchange.
The initiative has received support from the National Intellectual Property Rights Coordination Center and the Center for Data Innovation.
Amazon has indicated that it is working with other members of ACX to pilot the exchange and that it invites other retailers and marketplace service providers to join the Anti-Counterfeiting Exchange and collaborate on the retail industry’s collective efforts against counterfeiters.
Tracking Amazon’s Ongoing Anticounterfeiting Efforts
ACX is partner of a larger effort by Amazon in recent years to combat anticounterfeiting. In 2020, Amazon unveiled its Counterfeit Crimes Unit, a global, multi-disciplinary team of former federal prosecutors, experienced investigators and data analysts. The role of the Unit is to investigate counterfeiters on the platform, more effectively pursue civil litigation against counterfeiters, work with brands in joint or independent investigations; and aid law enforcement in criminal actions against counterfeiters. In March 2019 Amazon launched Project Zero to detect fake products before they are purchased.
More information on becoming a member of ACX is available here.
Gibney will continue to monitor this initiative. For questions, please contact John Macaluso, Partner, Intellectual Property at firstname.lastname@example.org.
IP Partner Angelo Mazza participated in the the IACC IP training in San Francisco, providing information on new products or changes to packaging in order to assist U.S. Customs and Border Protection (CBP) and it’s intellectual property protection efforts.
About the event:
Port of San Francisco Training
Date: April 20, 2023
Time: 9:00am – 3:00pm
Where: Port of San Francisco
San Francisco is a popular port due to the volume of cargo that flows through it. This event provides an excellent and unique opportunity to meet and speak directly with Officers, Import Specialists and Fines/Penalties personnel about enforcement issues and latest brand authentication methods.
Gibney IP attorneys Angelo Mazza and Maja Szumarska spoke at the International Anticounterfeiting Coalition (IACC) Annual Conference in Nashville.
Angelo’s panel titled “New Trends in Customs Enforcement” was focused on the changes under the U.S. Custom and Border Protection’s 21st Century Customs Framework. Angelo discussed IP considerations from the brand perspective as it relates to trade reform and border enforcement. Maja’s panel was titled “New Technologies and Impact on IP and Brand Protection – Metaverse, NFTs, and Virtual Goods”. Maja provided an introduction into blockchain technology, focusing on topics such as non-fungible tokens (NFTs), blockchain-based domains, and will discuss the developing case law in this area. She also provided guidance on the tools available to conduct investigations and the key considerations for developing an effective enforcement strategy.
Learn more about the program here.
Angelo Mazza spoke at the International Anticounterfeiting Coalition (IACC) Conference in Nashville on April 4. His panel was titled “New Trends in Customs Enforcement”.
Other speakers include Travis Johnson, Senior Counsel and Vice President – Legislative Affairs, IACC (moderator), Kristyna Richterova, Czech General Customs Directorate and Kristin Weaver, Branch Chief, IPR Operations, U.S. Customs & Border Protection.
The panel focused on the changes under the U.S. Custom and Border Protection’s 21st Century Customs Framework. Angelo will discuss IP considerations from the brand perspective as it relates to trade reform and border enforcement.
Learn more about the program here.
IP Partner Maja Szumarska spoke at the International Anticounterfeiting Coalition (IACC) Conference in Nashville on April 2.
The panel was titled “New Technologies and Impact on IP and Brand Protection – Metaverse, NFTs, and Virtual Goods”. Maja provided an introduction into blockchain technology, focusing on topics such as non-fungible tokens (NFTs), blockchain-based domains, and will discuss the developing case law in this area. She also provided guidance on the tools available to conduct investigations and the key considerations for developing an effective enforcement strategy.
Learn more about the program here.
The Integrity, Notification, and Fairness in Online Retail Marketplaces for Consumers Act (the INFORM Act) was signed into law by President Biden on December 29, 2022. A positive step in the fight against online counterfeiting, the Act supports consumers and brand owners by increasing the accountability of online marketplaces. It will also create greater transparency by requiring online marketplaces to disclose key information about their third-party sellers.
INFORM Act Highlights
High-volume third-party sellers are defined in the Act as vendors who have made at least 200 sales totaling at least $5,000 over a 1-year period.
Online marketplaces will now be required to:
- Collect, verify, and disclose certain information from high-volume, third-party sellers including bank account information, government-issued identification, tax identification numbers; online marketplaces must also annually certify any changes to the information
- Make certain information (e.g., sellers’ names and contact information) available to consumers through the sellers’ product listings
- Suspend further sales by individuals or businesses who fail to provide the required information, or to update it upon request
- Provide consumers with methods to report electronically and by telephone any suspicious activity on the marketplace.
What This Means for Brand Owners
As we previously reported, the INFORM Act is the latest in a series of efforts to combat online counterfeiting. As more brands increasingly transition from traditional brick and mortar to online retail, consumers will continue to see an increase in the sale of counterfeits goods online. While e-commerce platforms have started to implement policies to manage counterfeit sales, contributory liability puts the burden of responsibility on the both the counterfeit seller and the platform. These practices will begin to create incentives for online retailers to be more diligent and proactive.
What to Expect Next
The bill provides the Federal Trade Commission (FTC) and State Attorneys General with the authority to enforce these requirements. Requirements are set to take effect in late-June 2023. Prior to June, it is likely FTC will continue to provide more details on these regulations. Gibney will continue to share ongoing developments.
For questions, related to the INFORM Consumers Act, please contact your Gibney IP attorney John Macaluso at email@example.com or email firstname.lastname@example.org.
Intellectual Property Partners Brian Brokate and Maja Szumarska will speak at the Practising Law Institute’s Intellectual Property Rights Enforcement 2023 on January 13, 2023. The program provides developments on recent copyright and trademark cases and anticounterfeiting trends.
Maja is a chairperson for this event and will present on the “Anti-Counterfeiting Update” panel. This includes: understanding direct liability; issues with serving foreign defendants via email; analyzing seizures and ex parte remedies; understanding contributory liability; authentication & NFTs; and assessing cost-effective enforcement strategies.
Maja will also speak on the panel “Ethical Issues in IP Rights Enforcement”. This session will focus on ethical considerations when conducting IP investigations; disciplinary rules and working with investigators; assessing social media platforms; recent decisions involving ethical violations; and analyzing attorney-client privilege. This panel also features the participation of Judge Vincent L. Briccetti USDJ, SDNY.
Brian will present on the “Current Government IP Enforcement Programs” panel. This session will cover: the types of IP crimes DOJ prosecutes; assess IP protection in light of technological advances; major enforcement cases; developing trends and looming issues; understanding law enforcement during COVID and consumer privacy and commercial surveillance.
Learn more and register.
Gibney attorneys were recognized in New York Super Lawyers 2022. Super Lawyers recognizes lawyers from more than 70 practice areas who have attained a high-degree of peer recognition and professional achievement. The selection process includes independent research, peer nominations and peer evaluations.
Gibney attorneys recognized include:
W. Lee Kinnally, Jr.
Stephen J.O Maltby
The following attorneys were also recognized as 2022 New York Metro Rising Stars:
Kristen J. Heckman, Immigration
Zarina H. Syed, Immigration
Maja Szumarska, Intellectual Property
With student athletes now able to profit from their name, image and likeness (NIL), athletes are taking advantage of opportunities to partner with brand sponsors. When entering into contracts, athletes need to review carefully the terms of the agreement to protect their personal brand. Here are three key considerations to keep in mind when considering any contract:
- Keep the contract terms and duration short.
Any contract and associated fees remain binding for the full duration of the contract. It is important for student athletes signing an agreement to keep in mind that the fee is not going to change. A fee should be commensurate with an athlete’s experience but every athlete’s experience level and value is going to change over time. Therefore, student athletes should avoid long agreement terms until the full value of your endorsement is known. This is typically further into a professional career and even then, long-term licenses should be considered carefully, as entering into a long-term agreement puts you at risk of having to honor an agreement that does not reflect your current value.
Keep your contract term short. The duration of the contract should never extend beyond the length of your remaining time participating in the athletic program at your current institution.
- Narrow the scope of rights.
It is also important to understand the scope of rights that your contract will cover. When entering a license agreement as an athlete, it’s best to keep the scope of rights as narrow as possible to increase your opportunities for economic benefit.
Avoid contracts that give the other party the exclusive right to use your NIL in a broadly defined (or vaguely defined) group of products. And never grant NIL rights for products that the other party does not actually sell.
For example, when partnering with an energy drink company, you don’t want to grant that company exclusive rights for all drinks. If you narrow the focus, such as NIL exclusivity for energy drinks, it allows you to work with other beverage brands in the industry that are not direct competitors. (Don’t lock yourself out of the soda category by giving exclusive rights to a company that does not sell soda.)
Avoid licensing agreements that give the brand owner exclusive NIL access in a broad category. By narrowing the scope, athletes can work with multiple brands within the same industry and increase their endorsement opportunities.
- Limit your time commitment.
As part of endorsement agreements, it is standard for brands to use athletes in marketing campaigns and ads. This may require time commitments for photoshoots or fittings that are needed. But as part of the contract, athletes may also be asked to do in-person events or a meet and greet. These additional obligations should always be clearly defined, and an appropriate per diem payment agreed to, before signing any agreement to avoid open-ended requests.
Make sure that all additional conditions are clearly outlined, including payment terns. Protect your time and prioritize your school obligations by requesting that they take place in the off season.
Keeping these tips in mind will help to protect your personal brand. As part of all contract review, it is also important to be in compliance with state and NCAA rules. Different states have their own NIL guidelines so it is important to understand the guidelines based on where the athlete is attending school. Athletes under the age of 18 must also comply with other state laws. Student athletes should always consult with an attorney to make sure that they are compliant with all applicable regulations and guidance, and to set up the best contracts possible for long-term success.