Navigating the Two Sides of Amazon's Take-Down Process

If a take-down request is successful, the accused infringer will receive an email notification advising that the listing for the accused infringer's product has been removed, but that the product may be re-listed if Amazon receives a retraction of the request from the rights owner. The notification will also provide the accused infringer with the contact information of the rights owner.

Before discussing how to challenge a take-down notice, it is important to appreciate the effect a successful notice has on an accused infringer's business. The most obvious consequence is the immediate loss of sales on Amazon for the accused product. However, in some instances Amazon may suspend the accused infringer's entire Amazon account, preventing all sales of any product. This can occur where multiple Amazon policy violations have been submitted against the accused infringer including, but not limited to, infringement issues. If the entire account has been suspended, the accused infringer must submit a “Plan of Action” and include the following information: (1) “[t]he reason you were selling allegedly infringing products and/or uploaded allegedly infringing content” (2) “[t]he steps you have taken to ensure that you are no longer infringing” (3) “[h]ow you will avoid infringement in the future” (4) “[a]ny other pertinent information.” See, Amazon Intellectual Property Policy. Amazon terminates accounts of repeat infringers in “appropriate circumstances” but does not define the circumstances in which termination would be “appropriate.”

An accused infringer that believes the take-down notice is meritless has two options: contact the rights holder to try to resolve the issue and/or respond directly to the take-down notice via Amazon. To maximize effectiveness and efficiency, accused infringers should exercise both options simultaneously.

A rights holder that submitted a successful take-down request won't be motivated to cooperate with the accused infringer because its goal has already been achieved, namely, to cease sales of the accused product on Amazon. Nonetheless, if the rights holder agrees to retract the take-down notice, the retraction must be submitted to Amazon via the email address used to submit the take-down request. This is important particularly where a rights holder filed a successful take-down request but then sold all of its assets, including rights to the asserted intellectual property and its Amazon account information. In this circumstance, only the acquirer can submit the retraction because it is in possession of the former rights owner's Amazon account that was used to submit the take-down request.

If a rights holder agrees to withdraw a successful take-down notice, it is critical to the accused infringer that the rights owner also inform Amazon that the ASIN associated with the allegedly infringing product be reinstated. Failure to reinstate the ASIN ensures the rights holder still “wins” despite permitting the accused infringer's product(s) back on Amazon's website. This is because a product's ASIN captures the momentum of the product's sales on Amazon. For example, the more a product sells on Amazon, the more likely its ASIN will be at the top of Amazon's search results for that type of product. To create an analogy in the trademark context, a product's ASIN encompasses the “good will” of the product. Therefore, failure to secure reinstatement of the accused infringer's ASIN forces the accused infringer to forgo building sales momentum. Essentially, this means that a new ASIN will be assigned to the product that will require the accused infringer to start from scratch and rebuild goodwill associated with the new ASIN.

An accused infringer should also respond directly to the take-down notice and specify why the accused believes Amazon's conclusion is mistaken. In a trademark instance, the accused must also “[p]rovide any invoice or Order ID that demonstrates the authenticity of the product.”

Instead of or concurrently with the response described above, an accused infringer may seek declaratory relief of non-infringement. An accused infringer that chooses to file suit where it is located, rather than where the rights holder is located, may encounter challenges in asserting personal jurisdiction over the rights holder. This is arguably because the removal took place in cyberspace rather than within any particular state. See, e.g., Avocent Huntsville v. Aten Int'l Co., 552 F.3d 1340 (Fed. Cir. 2008) (refusing to authorize personal jurisdiction over a declaratory judgment defendant who sent cease-and-desist letters into the forum and (an unsuccessful) take-down request to Amazon that was intended to damage the plaintiff's sales). This opinion is supported by the fact that the take-down request seeks no information on the accused infringer's location.

Some courts, such as in Dudnikov v. Chalk & Vermillion Fine Arts, 514 F.3d 1063 (10th Cir. 2008), have disagreed with this approach and instead found that the harm of an online retraction (in Dudnikov it was the removal of the accused infringer's auction page on eBay) is sufficient to obtain personal jurisdiction where the accused infringer is located because the rights holder caused harm to the accused infringer in the accused infringer's jurisdiction.

In addition to seeking declaratory relief of non-infringement, an accused infringer can consider adding state-based claims to its complaint to seek additional relief, such as damages for the loss of sales. For example, in New York an accused infringer should consider whether it can satisfy the requirements for pleading a claim of tortious interference with prospective business relations, though a rights holder may move to dismiss any state-based claim on grounds of federal preemption deriving from the accused infringer's copyright-, trademark- or patent-related claims. To avoid dismissal, an accused infringer may have to show that the rights holder's actions were made in bad faith and therefore should be subject to tort liability under state law.

As Amazon continues to grow and change the retail landscape, it is increasingly important for entertainment and media attorneys to have the tools to assist clients in navigating infringement issues on Amazon. This is particularly true because Amazon provides injunctive-like relief that previously could not be obtained without pursuing costly litigation.

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Edward Weisz is a member of and Alanna Miller is an associate in the New York Office of Cozen O'Connor. Website: https://www.cozen.com/offices/new-york. This article also appeared in The New York Law Journal, an ALM sibling of Entertainment Law & Finance.