Knocking the Knock Offs

Peter Phinney

American copyright law has traditionally been intertwined with how we view patents and trademarks. In fact, the U.S. House and Senate Patent Committee and it’s Subcommittee on Patents, Trademarks and Copyrights was responsible for crafting copyright law until fairly recently, and the individual industries affected by copyright have always been the entities that shape actual legislative updates in the U.S. It’s no wonder that the law slants toward some of those older industries, and away from others who are new to the scene and have less wellestablished lobbyists representing their special interests. Since the original copyright statute enacted by Congress in 1790, the law has been revised repeatedly until 1989, when President Clinton signed the Digital Millennium Copyright Act into law.

Without getting into too much detail, the concept of trademark relates to protection of keywords of phrases that are associated with “the origin of particular goods.”

When it comes to adult, our industry is effected by both copyright and trademark infringement issues, copyright in the case of adult video and trademark in the case of pleasure products.

The concept of copyright relates to protection of “original works of authorship,” which might mean text, or images, music, movies or video, etc. While the two appear similar, the test of infringement for each is quite different, as is the application for registration, waiting times, enforcement process, etc.

When it comes to adult, our industry is effected by both copyright and trademark infringement issues, copyright in the case of adult video and trademark in the case of pleasure products.

Last fall, our company began a pilot program with the Free Speech Coalition to look at trademark issues regarding pleasure products, otherwise known as sex toys.

The idea came out of a casual lunch conversation I had with Diane Duke, CEO of the FSC, where we discussed how our company had developed considerable expertise in tracking counterfeit DVD sales online, and as we were doing so, we noticed more and more pleasure products that were being sold by the same individuals who were unloading DVDs they advertised as “ships in plain paper sleeve, no artwork, DVD-R.”

Clearly we thought, if the DVD is on a computer disk with no studio box or cover art, and it’s selling online for $2.99 plus shipping, it’s a pretty safe bet that the DVD is not authentic.

But if that same crook is selling brand name vibrators, handcuffs, ball gags and other items – in some cases leather harnesses, chaps, and other sex paraphernalia, we might suspect that those items were also counterfeit. But how could we know for certain they were not genuine? We wondered if our friends on the pleasure products side of the adult industry were suffering the same degree of theft that our video content clients were suffering.

After that lunch, Diane put us in touch with two pleasure products manufacturers and we launched this pilot effort to see if we could uncover, then help curb counterfeit beyond video. It didn’t take long after we studied the companies’ product catalogs to begin to uncover online sales of items that we suspected were not genuine.

It quickly became apparent that we needed to add a legal mind to the team so we selected a young, aggressive local attorney to advise us on issues involving test of trademark infringement, to compose cease-and-desist letters and the like. As we began to dig, it became clear that the problem of counterfeit pleasure products offered online was extensive, and like digital piracy, it had to be having a deleterious impact on product manufacturers’ bottom line. In one case, we found an item that was manufactured in California and retailed for over $60, that was being offered in a counterfeit version online through a Chinese website for under $5 (plus shipping of about $12 to the U.S.) More remarkable, the counterfeit item was promoted using the actual manufacturer’s installation photos taken directly from their online catalog. And the counterfeit item was being advertised using the actual manufacturer’s trademarked brand name.

So in this case, there was trademark infringement (unauthorized use of the brand name) as well as copyright infringement (use of the manufacturer’s photos and installation instructions.) That particular item was offered on eBay and we had it taken down in 24 hours. The seller was notified of our complaint and offered an opportunity to explain his position and provide appropriate documentation of any licensing agreements. He remained silent. Will the item be offered for sale somewhere else now? Perhaps, but at least it’s not on eBay anymore, and the seller has been put on notice that the manufacturer of the genuine item is aggressively enforcing their rights to their trademark brand and their proprietary distribution system.

For purposes of this pilot program, we’ve focused on online sales venues that we know well and we trust – large American online retailers and auction sites that care about customer satisfaction. In some cases we’ve had terrific instant success. We provide documentation with our complaint, and the items are removed from offer in less than 24 hours.

But in other cases, most notably with Amazon.com, we are having some trouble navigating their abuse reporting protocols. It’s much too early to tell whether our difficulty is a result of us not fully understanding Amazon’s relationship to its vendors, or whether there are other factors at work – including the size and structure of the company that make dealing with Amazon especially challenging.

Most everyone knows by now that Amazon has become the world’s largest e-commerce site, with annual sales of over $60 billion. It sells in 10 countries (German sales second to the U.S.,) and has 200 million active customers. When we followed Amazon’s prescribed procedure for reporting abusive sales, we received the following response to our complaint of infringement: “If you believe sellers are offering an item different than advertised, the Copyright department at Amazon.com will be unable to assist you.

Any reports of a possible violation of the Amazon.com Community Rules and/or Participation Agreement are handled by our Seller Performance team.”

And when we approached this same item from the point of view of authenticity, we received this:

“Amazon respects a manufacturer’s right to institute policies and rules to manage and control the distribution of its products. However, Amazon considers the enforcement of these policies and rules to be a matter between the manufacturer and the retailers. As a result, it would not be appropriate for Amazon to assist in such enforcement activities.”

It seems we need to make a “test buy” of this product, then use that purchase record to lodge a complaint with the Amazon Seller Performance Team noting that the item is not the same as what is advertised. I have no doubt that we’ll find a way to navigate Amazon’s elaborate abuse reporting protocols even if it means we have to buy something from a crook to demonstrate that he’s a crook.

With the current shift toward online shopping and away from traditional brick-and-mortar stores we’re seeing this past holiday season, it’s likely that the online trademark issue is going to become even more important to manufacturers in years to come.

One thing we’ve learned is that the specialized skills we use to fight digital piracy can, with slight modification, be tuned to fight trademark violations and illicit sale of knock offs and fraudulent merchandise online as well. And that’s good for the adult industry.

Luckily, as I said when I opened this piece, American laws around trademarks and around copyright are similar but different, and they are intertwined in ways that benefit the fight against infringement, and ways that benefit manufacturers, who have much to gain from working with antipiracy consultants if they intend to control theft of their product ideas.

Peter Phinney runs Porn Guardian with business partner Dominic Ford. The company offers a full suite of anti-piracy services to the adult industry and currently represents more than 370 individual brands across all content niches.