Member Article

Amazon is apparently the world’s most valuable brand, and is one that plays an increasingly important role in our lives. Although most of us know it as an online retailer, a recent BBC documentary describes it as being every bit as much a data-company, one that knows more about us than we know ourselves.

We’ve reported on how Amazon is under considerable pressure to deal with the fact that counterfeit goods can be and are sold on its online platform. Previously, Amazon sought to deal with the issue of counterfeiting with the introduction of its Project Zero, described as a “self-service takedown tool” for brand owners. Project Zero encompasses brand owners providing Amazon with their logo and trade mark data, the brand owner removing counterfeit listings, and a “product serialisation service”, where brand owners create unique codes for every product that they manufacture, therefore enabling Amazon to scan and confirm the authenticity of any product acquired via their online platform.

Today, there is such an increase in retail online that the issue of counterfeit goods available on Amazon remains a concern. In Europe, the Advocate General recently handed down an opinion in the matter ofCoty Germany v Amazon. The background to the case is that the brand owner bought a fake Davidoff perfume as a test purchase. In the court case that followed, the brand owner lost because it could not prove that Amazon was aware of the infringement.

The matter was, however, referred to the Court of Justice of the European Union (“CJEU”). The Advocate General usually provides an opinion before the court considers the matter, and this opinion is generally followed by the court. In his opinion, the Advocate General said that Amazon “can be expected to show particular care in terms of control of the lawfulness of the goods they trade.” In essence, Amazon “cannot simply discharge their responsibility by attributing it exclusively to the seller, precisely because they are aware that, without this control, they can easily serve as a channel for the sale of illegal, counterfeit goods, pirated, stolen, or unlawful or unethical in any other way, infringing the property rights of third parties.”

This suggests that, under European law, there is a difference between a mere warehouse and an online marketplace that is actually involved in the distribution of the goods. Time will tell whether the CJEU follows the Advocate General’s opinion and if it does, companies like Amazon will certainly need to be more vigilant of counterfeits on their platforms, certainly within the EU.

There’s been a further online intellectual property development that might also suggest a divergence between the EU and much of the rest of the world. On 24 January 2020, the BBC, in an article entitled “Article 13: UK will not implement EU copyright law”,explained that the UK, which has now formally left the EU, will not be following a recent EU copyright directive. This notwithstanding the fact that it supported the directive while it was still in the EU.

While this EU copyright directive must still be passed before it becomes effective, the upshot of it is that it will be illegal to upload even snippets of copyright-protected works on an “online content sharing service” like YouTube or Facebook. Recognising that mankind cannot possibly survive without memes and GIFs, the EU authorities subsequently diluted the directive so as to allow for usage of snippets for the purposes of “quotation, criticism, caricature, parody or pastiche”.

How do you view this EU directive? Its’s welcoming in the sense that it imposes greater accountability on online corporations, such as Amazon, but is too restrictive, considering the digital age that we find ourselves in. Certainly, the British Government has expressed an interest in a regulation-light future, with Boris Johnson declaring the EU Copyright Directive to be “terrible for the internet”.

We live in interesting times!

Delene Bertasso Senior Associate IP [email protected] +27 83 399 6172