Various stakeholders in the field of e-commerce have reached a non-binding agreement to cooperate in the fight against the sale of counterfeit goods online.

BACKGROUND

On 4 May 2011, participants in a European Commission Stakeholders’ Dialogue signed a non-binding Memorandum of Understanding (MoU) on the sale of counterfeit goods over the internet. The purpose is to encourage collaboration between interested parties in the reduction of the sale of counterfeits via e-commerce platforms.  

Signatories to the MoU include anti-counterfeiting organisations, leading rights holders and internet platforms, i.e., providers of e-commerce trading.  

THE MEMORANDUM

The MoU provides that the signatory companies will commit themselves to undertake certain measures to combat counterfeit sales, whilst the trade associations will further promote the MoU amongst their members.  

The document includes a moratorium on litigation, whereby the signatories state that they are willing to cooperate and assist each other to reduce internet counterfeit sales and agree not to initiate any new litigation against each other concerning matters covered by the MoU.  

The MoU describes notice and take-down procedures as “indispensable” in the fight against the sale of counterfeit goods over the internet. It states that rights holders should have the ability to notify internet platforms of sellers engaged in such sales. Internet platforms agree to take such information into consideration as part of their preventive measures.  

Under the agreement, internet platforms commit to take appropriate, commercially reasonable and technically feasible measures to identify and/or prevent the sale of counterfeit goods. Rights owners agree to take commercially reasonable and available steps to monitor sales on internet platform websites.  

Further, internet platforms commit to adopt, publish and enforce IP right policies, which should be communicated clearly, indicated on their websites, and reflected in the contracts they conclude with their sellers. They also commit to disclose, upon request by rights holders, relevant information including the identity and contact details of alleged infringers, insofar as permitted by applicable data protection laws.  

As for repeat infringers, internet platforms commit to implement and enforce deterrent repeat infringer policies, which will include the suspension or restriction of accounts or sellers. They also commit to using their best efforts to prevent re-registration of permanently suspended sellers.  

All signatories commit to cooperating and assisting law enforcement authorities such as customs and border authorities, where appropriate.  

There will be an assessment period of one year to review and measure progress. After the assessment period, signatories may extend the MoU indefinitely. The signatories will meet biannually to review the MoU and take further steps if necessary.  

COMMENT

According to the Commission, “The MoU strikes a fair balance between the interests of the parties concerned and should be a good first pragmatic step to strengthen the fight against counterfeiting and piracy on the internet”. Further, “The agreement on the MoU demonstrates that voluntary arrangements can, in certain circumstances, provide flexibility to adapt quickly to technological developments and deliver efficient solutions.”