The suit between Tiffany and eBay is providing a serious test of eBay’s “Notice and Takedown” model for avoiding contributory infringement liability for counterfeiting and other trademark misuse by sellers on its site. (Fn1) In this suit, Tiffany seeks to hold eBay liable for contributory and direct infringement, false advertising and trademark dilution for its involvement in the sale of counterfeit Tiffany merchandise on its site.
According to eBay, more than 100 million listing appear on eBay at any one time, and approximately 6 million new listings are posted each day. However, a certain percentage of these listings are for counterfeit goods. Tiffany alone reported 20,915 infringing listings to eBay in 2003, 45,242 in 2004, 59,012 in 2005 and 134,779 in 2006. According to Tiffany, 30% or more of Tiffany jewelry list on the site at any time can safely be deemed to be counterfeit.
Selling counterfeit trademarked merchandise constitutes trademark infringement. It also downgrades the confidence of consumers in the integrity of the source of those goods. eBay does not take possession of, and hence never sees, the goods sold on its site, so to combat the sale of counterfeit goods on its site, eBay has employed an ever-expanding arsenal of computer-based defenses. Chief among these is its “notice and takedown” system — its VeRO program. Under this system, a trademark, copyright or patent rights owner who sees an infringing item on the site can report the listing to eBay by submitting a Notice of Claimed Infringement (NOCI).
eBay’s NOCI form is its Digital Millennium Copyright Act (DMCA) takedown notice form — which eBay has converted for use for all forms of alleged intellectual property rights infringement. The form requires that the rights owner submit all of the elements required for a DMCA notice (Fn2): (i) the identity of the alleged rights owner, (ii) the identity of the specific eBay listing numbers where the infringing material is located, (iii) the type of infringement, and (iv) the required DMCA statements that the complaining party has a good faith belief that the use on eBay is unauthorized and that the complaining party is authorized to act for the rights owner. For an overview of the VeRO program and to obtain a NOCI form, see http://pages.ebay.com/help/tp/vero-rights-owner.html.
Upon receiving a NOCI, eBay verifies that the NOCI contains the necessary information and appears accurate, and then removes the reported listing. At the time of the Tiffany v. eBay trial (2008), 75% of reported listings were removed within 4 hours. After removing a listing, eBay also attempts to prevent or to undo any actual sale. If the listing is removed before a sale has occurred, eBay cancels all bids and notifies the seller and bidder that the listing has been removed. If a sale has already occurred, eBay cancels the transaction retroactively, removes the listing and informs the parties that the listing has been removed and that the transaction should not be completed. eBay also refunds all associated fees. eBay also reviews the seller’s account and may suspend the seller. (Fn3)
In addition to its NOCI system, eBay also uses what it terms a “sophisticated fraud engine,” on which it spend more than $5 million annually to maintain and enhance. This search engine “uses more than 13,000 different search rules to locate potentially infringing or problematic activity. For example, it searches for listings that explicitly offer “knock-off,” “replica,” or “faux” merchandise. eBay also suspends sellers for repeat violations, conducts periodic “clean-up” reviews of listings and warns sellers against listing counterfeit goods. (Fn4)