Best practices for Plans of Action and DMCA counter notices
This post is by Chris McCabe, a former Investigation Specialist for Amazon’s Seller Performance team and founder of ecommerceChris.com, with Suzi Hixon, an Amazon FBA seller and attorney specializing in intellectual property law at The Private Label Lawyer.
Chris McCabe’s first post on this topic, False Infringement Claims are Rife on Amazon, was published on Web Retailer in January.
The incidence of rights infringement claims at Amazon spiked upward recently, as many parties have realized how easily this can be abused to remove unwanted sellers from a desired listing.
In fact, Amazon’s policy teams have moved much more aggressively to suspend sellers, instead of warning them and removing the ASIN in question from their listings.
The net result of these actions is to drive up the number of suspended account appeals. These appeals require Plans of Action to address not only how you’ll resolve the current dispute with the claimant, but also how you’ll avoid such rights infringement cases in the future.
That’s the bad news. The good news is that the increased friction around notice claims has resulted in new methods to prevent notice abuse. Amazon is now taking this subject very seriously and no abuse of Amazon’s systems or policies will be tolerated going forward.
Amazon rights infringement claims: a recap
The past notice process led sellers to contact rights’ owners via email asking for a retraction or attempting to resolve the dispute, then asking that party to contact Amazon directly. Sometimes that worked, sometimes it didn’t. Either way, you had little hope of hearing from the claimant due to their lack of incentive to “help” you with your Amazon problems. Their intended goal was to drive you off the listing and perhaps even get you suspended, and it worked like a charm. Why should they play ball with you now?
Often the only recourse in these situations was to remove all such inventory and declare that you’d never again list or sell those items, while also submitting a Plan of Action. Given the inconsistency of Amazon’s internal processes and varying degrees of Standard Operating Procedure enforcement by investigators, sometimes this worked, and sometimes it didn’t.
In recent conversations with sellers and various internal Amazon contacts, I have discovered more about the new team assembled to handle reports of such abuse. Reports of abuse by false claimants, and counter notices, will be assessed and acted upon when sellers give proper documentation. Patterns of abuse, such as repeated false claims from active sellers, will likely result in account closure. From what I’ve heard, they’ll be laying down the law shortly.
Time will tell if these new actions will improve the lot of sellers coping with false claims. The status quo methods of referring sellers to the rights owner, and standing entirely back from the fray, should be coming to an end as suspended sellers demand more attention to the complainant themselves – and the nature of their allegations.
In the old days…
The process of vetting infringement forms always appeared shaky, even back during my days at Amazon. How could an entity that looked like little more than a free email address and a hastily filled-out complaint result in warnings and removals out of the blue?
As policy enforcers, our options were limited. We had to act on the forms to prevent accusations of a failure to protect right’s owners, and we had to limit Amazon’s liability from the damages associated with that failure. Beyond that, we had no obligation to research who had what rights out there in the world. That was your responsibility as a seller, and you had the court system available to you if you wanted to litigate it with the claimant.
But what if you can’t even tell who the claimant is? Amazon only gives you an email address, in some cases. You could hire an IP attorney to write a letter and submit it on their law firm’s letterhead to generate a response, but who knows if that will even provoke a reaction?
In the future, your previously bleak options will become real and productive ones, with the use of the counter notice process, explained in detail below. Now, Amazon will have to take seriously your dispute over the validity of the form they’ve received. Did they act on on a false infringement form that could have been vetted and disregarded? Also, did Amazon suspend your account based on one or more false infringement claims? Were damages incurred?
What if you’re suspended for notices?
You won’t have much time to work with right’s owners (through your attorney) to resolve legal disputes if Amazon has suspended you.
The filers of the forms know this, and it’s one reason why these tools are so effective for them. They know that reporting you for multiple listings within a tight timeframe could easily mean a month-long suspension, or longer, depending on the strength (or weakness) of your Plan of Action.
Will it be enough to show Amazon, through FBA removal orders and listing deletions, that you’ve successfully resolved the matter, and won’t list or sell those products again? You’ll need a solid Plan of Action with a convincing method that specifies your capabilities for future avoidance. Care must be taken to lay out preventive steps that will eliminate their need to warn or suspend you for this from now on.
These days, with hundreds (if not thousands) of claims coming in every week, the last thing Amazon wants is to enforce infringement claims over and over on the same sellers. If Amazon must keep reviewing your account while killing your listings and sending you warnings, then you’re considered more trouble than you’re worth.
How to create a Plan of Action
Write an appeal that demonstrates the action items below. At minimum:
- You’ve retained professional legal advice not only to protect yourself, but to prevent future possible violations.
- All items you sell are vetted and documented prior to listing them, to ensure that the brand will not come after you for selling it on Amazon.com.
- You’ve immediately removed offending items when contacted by the right’s owner or brand, upon verifying that their claims are legitimate, to resolve the dispute.
- Indicate that you are going over ALL listings with your IP attorney to ensure that nothing will violate another party’s rights when you sell it.
In other words, talk about adherence to compliance, and show that you understand your place in the reseller universe. If the brand comes calling and files notices with Amazon, you can’t run and hide. You need to address it head-on.
But before thinking of the viability of a Plan of Action you may not need to write, yet, let’s talk solutions and first steps. What should you do when you get one of these and when should you counter?
Once again, I spoke to Suzi Hixon, The Private Label Lawyer, about how Amazon sellers need to react when confronting such right’s owner claims.
As an IP attorney, Suzi suggests that you:
- First attempt to reach out to the right’s owner for an explanation of the allegations. Even if you’ve received a baseless notice and your account has not been suspended, do not ignore the letter.
- It’s wise to reach out to the complainant politely. Don’t get angry and defensive, and certainly do not send accusatory or threatening letters to other parties or their attorneys. Also, don’t assume that you know what the basis for the IP rights infringement is.
- In many circumstances, the right’s owner is enforcing IP rights that you might not even be aware of. Tell the alleged rights’ owner that you strive to respect other’s intellectual property, and that you are writing to them to determine the basis of their claim. Ask them to substantiate their claims, including any registration numbers upon which the claims are based.
- Oftentimes, the right’s owner (or their agent) will explain to you the basis of the allegations, and may encourage you to retain your own attorney going forward. They may or may not agree to retract the complaint pending your removal of any infringing material. They may ignore you entirely.
Unfortunately, however, we are seeing more and more situations on Amazon where sellers are submitting false or unsubstantiated intellectual property rights infringement claims to intimidate and damage competitors. What do you do when you receive an allegation of intellectual property (IP) rights infringement from Amazon when the allegation is false or unsubstantiated?
You can consider filing a “DMCA counterclaim” (“counterclaim” or “counter notice”) to Amazon.
Please note: filing a DMCA counterclaim can have serious legal ramifications. Seek the advice of an attorney who can help guide you through determining whether the IP rights allegedly owned by a complainant can be substantiated.
What is a DMCA counterclaim?
An intellectual property rights holder may submit to a service provider (e.g., Amazon) a “takedown demand of allegedly infringing material.” The provider will then remove the allegedly infringing content, and it must then notify the alleged infringer. This is what happens usually when you’ve received a “notice” from Amazon.
The alleged infringer (i.e., the recipient of the notice) then has the opportunity to file a DMCA counterclaim in which they contest the claim of infringement. The provider should then forward the counterclaim to the initial complainant. Unless the complainant files an action seeking a court order against the alleged infringer, the provider should reinstate the material within 10 to 14 business days after receiving the counter notice.
In other words, with a DMCA counterclaim, you are telling the alleged right’s owner to put up, or shut up.
How do you do file a DMCA counterclaim?
First, try to determine the status of the underlying intellectual property rights that are allegedly being infringed. Again, we’re seeing lots of issues on Amazon where sellers are touting rights they do not have. You’ll need to reach out to the alleged rights’ holder or their agents, if possible, as discussed above.
Second, make sure you are confident that you are not infringing the alleged rights holder’s intellectual property. Hopefully, the complainant or their attorney will respond to you with the basis of their allegation. You might want to have your own attorney cross-check the validity of this.
Third, as long as you are not infringing the complainant’s IP rights, prepare your counter notice to Amazon.
Note: the DMCA creates liability for knowingly making false claims in a DMCA takedown notice or counter notice. If the alleged rights holder (complainant) has a solid infringement claim, sending a DMCA may trigger a lawsuit. Proceed with caution!
You’ll need to provide a legal signature, your full name and contact information, an identification of the material that’s been taken down and where it appeared before it was removed, and a statement made under penalty of perjury that you have a “good faith belief” the material was removed by mistake or misidentification.
If you misrepresent that material is not infringing, you may be liable for damages (including costs and attorney fees). Again, if you are not sure whether or not the material is infringing, you should contact an attorney before submitting a counter notice to Amazon. This can be a complex matter with legal ramifications. I cannot stress enough here how important it is to proceed with caution.
You will also need to indicate your consent to the jurisdiction of a federal court in the district where you live (if you reside in the U.S.), and you must provide your consent to accept service of process from whomever submitted the takedown notice, or that party’s agent.
At this point, the complainant should receive a copy of the counter notice from Amazon. If the complainant does not provide to Amazon, within 14 days, that a lawsuit has been filed, your content should then be reinstated.
Again, filing a DMCA counterclaim can have serious legal consequences, on and off the Amazon platform. In fact, it could trigger a lawsuit. Be sure you have a good faith belief that the removal was the result of a misidentification or an error, and consider retaining an attorney to help you.
This information is not legal advice. You are responsible for any use of this information. You should retain competent legal counsel if you have any questions.
There’s light at the end of the tunnel
So Amazon will be more responsive to abuse of the rights infringement notice process AND you can make use of counter notices, in the proper circumstances, to defend yourself against false claims.
It’s unclear how long all of this might take, but Amazon may be moving things in the right direction at long last.
They understand the nature of the problem and from what we hear, they’re turning their attention towards adequate solutions.
Chris McCabe of ecommerceChris shows sellers how to keep their accounts healthy, or, if the worst should happen, how to get their account back from a suspension. For Amazon sellers, having their merchant account suspended means losing time and money trying to get back in business.
Suzi Hixon of The Private Label Lawyer has practiced intellectual property law for almost 14 years. This extensive experience, combined with over six years running her own businesses, including an Amazon-based private label brand, has provided her with a unique skillset geared towards helping Amazon sellers protect their brands.