Author: Andrew Clay
Amazon is far and away the biggest UK retailer of non-food items, with a turnover for FY2021 of nearly £27bn, equating to sales in excess of £50,000 per minute. The volume of business conducted on some popular Amazon pages is measured in the tens or even hundreds of thousands of pounds per month.
For many UK traders in a wide variety of goods Amazon represents an absolutely essential route to market.
However Amazon has an IP infringement take down policy, which can lead to your products being removed from Amazon. So what do you if Amazon takes down your listing in response to a third party complaint of IP infringement? This article explains what your options are.
What is Amazon’s take down policy?
Amazon has an IP policy (available here), under which a proprietor of intellectual property rights such as copyrights, trade marks, patents, registered designs or rights in unregistered designs, can file IP infringement complaints with Amazon by using its Report Infringement Form (available here). The form requires the third party complainant to give details of, inter alia, the IP right allegedly infringed, the ASIN (Amazon Standard Identification Number) for each product or the URL of the Amazon page on which the offending item is being offered for sale.
Amazon will typically assess the IP infringement form within a few days of getting it. If it finds the complaint credible then it will remove the offending products from its website. However not every IP infringement notification filed with Amazon will lead to an offending page being taken down.
What happens when Amazon delists your products?
The first that the Amazon trader typically knows about a third party infringement complaint made to Amazon is either that it sees that its products are no longer on the Amazon website or else it receives an email from Amazon informing it that some of its products have been removed and referring to the IP rights complained of, the relevant ASIN numbers of the products removed and the identity of the complainant.
The Amazon email gives the trader three options:-
(i) Firstly the seller can provide Amazon with a letter of authorisation or licence agreement from the relevant manufacturer or rights owner, evidencing that the delisted products were being lawfully sold.
(ii) Secondly if the trader thinks that it has never sold or listed the product, the subject of the complaint, then it is invited to contact Amazon.
(iii) Thirdly if the trader thinks that the complaint is not well-founded, Amazon basically invites the trader to reach out to the complainant and ask for retraction of the notice. This is typically done by using Amazon’s Notice Retraction Form (available here). Amazon wisely in effect leaves it to the trader and the rights owner to sort out the dispute, which Amazon will know next to nothing about, between them.
If the complainant does retract the notice then Amazon will relist the products, usually within a few days of the Notice Retraction Form being filed.
What happens when the complainant won’t retract the notice?
If the complainant won’t retract the notice, then the delisted trader basically has two options to get its products relisted:-
1. Offer Amazon an indemnity in respect of the infringement claim
A number of different concerns motivate Amazon’s take down policy. One of Amazon’s main concerns is to avoid liability in respect of infringing items sold on its platform. Once Amazon has been informed that an item sold on its platform infringes third party IP rights then it likely becomes liable for such infringements unless it promptly takes steps to remove the offending items from its website. However if Amazon is offered an indemnity in respect of such sales then it may relist the items: this was done successfully for example by the defendant in Shenzhen Carku Technology Co., Ltd v The Noco Company [2022] EWHC 2034 (Pat). However it is unclear how often this will work in practice.
2. Sue the Complainant
The UK Threats Legislation
UK IP legislation contains what are referred to as threats provisions. These provisions create in effect a number of statutory torts, making it unlawful to make an unjustified threat against a third party, such as a distributor or retailer, to bring legal proceedings against them for infringement of a relevant IP right. Making such an unjustified threat gives a person aggrieved by such threats a legal cause of action against the person making the threat. The threats provisions were introduced to stop traders fighting proxy wars against mere dealers in goods, who would be unlikely themselves to have enough skin in the game to make it worth their while to defend an infringement allegation and would thus just stop dealing in the goods the subject of a threat of legal proceedings. Such threats provisions exist for patents, registered trade marks, registered designs and UK unregistered design right but bizarrely not for copyright.
So what is the relevance of the threats legislation to Amazon Take Down Requests? A recent case (Shenzhen Carku Technology Co., Ltd v The Noco Company [2022] EWHC 2034 (Pat)) confirmed that submitting an IP infringement report to Amazon can amount to a threat of legal proceedings, which is thus actionable by the delisted trader if the assertion of infringement turns out to have been wrongly made.
So if you believe that your delisted products don’t in fact infringe third party IP rights or that those rights are invalid or don’t even exist then you can threaten to sue and/or actually sue the complainant for unjustified threats if the IP right asserted against your products is a patent, a registered trade mark, a registered design or UK unregistered design right.
Relief Available
The relief available in such a threats action would include (a) a declaration from the court that the threat was unjustified, (b) an injunction against the continuance of the threat and (c) damages in respect of any loss sustained you have suffered by virtue of the threat. The injunction against the continuation of the threat could take the form of a mandatory injunction compelling the complainant to file a retraction form with Amazon in agreed terms. However providing Amazon with a court order containing a declaration that the threat was unjustified would also likely lead to the offending products being relisted.
Given the scale of trade that takes place on popular Amazon listings, a damages claim against the entity filing the take down notice could be substantial, especially if the delisted trader was able to show that due to the absence of its product on Amazon for a long period, Amazon’s algorithms had relisted its product further down the list of search results generated in response to key search terms being entered by a user. In such a situation the delisted trader could claim not just for historical losses, during the period when they were delisted, but also for future losses and/or the additional costs incurred, which could include the costs of paying for sponsored ads to improve the listing position.
What about Copyright Infringement, Passing Off & Breach of Confidence
There are no statutory threats provisions for copyright infringement, passing off or breach of confidence. However a delisted trader could seek a declaration that such threats were unjustified, an injunction and damages on the basis of the torts of ether malicious/injurious falsehood, wrongful interference with a contract or tortious interference with a business relationship. An injunction against threats to bring copyright infringement proceedings was for example granted in Jaybeam Limited v Abru Aluminium Limited [1976] RPC 308 on the basis of such torts.
Should my business sue Amazon?
Suing Amazon in respect of the Amazon Take Down policy and the delisting is very unlikely to be a worthwhile route for a number of reasons.
Firstly, Amazon has very much deeper pockets than almost any trader and could be expected to vigorously defend any claim brought against it for delisting a seller’s products based on a third party claim of IP violation. Amazon’s standard seller terms and conditions also give it a right of no fault termination of its contract with any seller on 30 days’ notice. So falling out with Amazon is unlikely to be in a seller’s best interest.
Secondly, in relation to any contract claim, Amazon’s UK standard seller terms and conditions (here) contain numerous provisions that would make such an action highly problematic.
Thirdly, it is also difficult to see how a tort claim could be framed against Amazon that would stand any real chance of success. In relation to a negligence claim, Amazon can’t, for example, be expected to forensically determine IP infringement and validity questions in the way that a court can, so that its delisting of products subject to a third party IP infringement complaint is unlikely to breach any duty of care it owes to its customers. Tortious interference type claims generally require an existing contract between the complainant and a third party (rather than the mere possibility of a future contract) that is interfered with. Malicious falsehood type claims require the defendant to publish false words to a third party, which is not something that Amazon do. Amazon’s standard seller terms and conditions would also greatly curtail the prospect of any such claim leading to a significant financial recovery.
Have you been subject to an Amazon Take Down or IP Infringement Claim?
If you have been subject to an Amazon take down or a third party IP infringement claim then do not hesitate to contact our Andrew Clay, who has over 34 years’ experience of IP infringement claims.
