Weekly take: INTA president tenure comes at critical counterfeits juncture
INTA’s resolution on online marketplaces and appointment of Amazon’s general counsel follow calls for the association to take a direct position on internet fakes
I usually take notice when the new INTA president is announced, but, beyond that, I don’t tend to follow their tenure that closely.
The trademark association does important work, and its annual meeting is a must-attend for brand owners and private practice lawyers worldwide, but I never feel like there is anything especially significant in who takes over the leadership reins.
It’s a one-year role and is almost always a brand owner who says all the right things.
There’s nothing wrong with that, of course; it's just not something that seems hugely significant.
But when the president for 2024 was elected, I did take note.
Eagle-eyed readers of our Friday roundup, published on November 17, will have noticed that the 2024 head honcho is Dana Northcott, vice president and associate general counsel of intellectual property at Amazon. She begins her tenure on January 1.
The appointment is worth noting for two reasons.
First, Amazon – and indeed many other online marketplaces – is chief among brand owners’ most pressing concerns when it comes to counterfeits.
To their credit, major platforms like Amazon and Alibaba have taken steps to help brand owners in recent years, but the problem undeniably remains.
I’ve already had feedback from one major brand owner who said they were pleased with Amazon’s efforts in tackling counterfeiting and looked forward to an Amazon IP head leading INTA’s work.
However, they noted that some other IP owners, particularly smaller brands, may have a different view.
It will be worth monitoring more reactions in the coming months. However, I suspect few brand owners will publicly reveal their true thoughts.
Looking for leadership
The second interesting aspect of the appointment is that on the same day Northcott was elected (November 14), INTA’s board also agreed to a new resolution aimed at protecting consumers from counterfeits on online marketplaces.
The resolution, which you can read here, notes that INTA has been discussing this topic since 2011 and that although the association has outlined “best practices”, it has yet to take a “direct position on intermediary liability”.
INTA members and legislators are, according to the resolution, “increasingly looking to INTA for a more direct position on the topic”.
Well, what better time to focus on this than now, as the IP head at one of the biggest platforms in the world takes the helm for 12 months?
A spokesperson for INTA told Managing IP that once a resolution is passed it goes on to inform all advocacy work the association does on that issue.
“In 2024, it will be a major focus in advocacy in regard to anti-counterfeiting efforts,” the spokesperson added.
The resolution is fairly wordy.
In essence, it says that INTA affirms the importance of identifying “clear obligations” of online marketplaces and recognises their liability for counterfeit sales, particularly if a platform is aware of those sales.
It adds that marketplaces should demonstrate “reasonable steps” to prevent and remove counterfeits, including creating mandatory user agreements, “commercially reasonable” know-your-customer measures, and policies that implement consequences for repeat offenders.
The resolution also suggests platforms could use measures to detect suspended or banned users, for example through bank and credit card information.
These are all consistent with national and supranational laws including the proposed Shop Safe Act in the US and the EU’s Digital Services Act.
It's worth noting that platforms and internet liberties groups have criticised some of the more stringent requirements that found their way into early drafts of those proposals.
So why is INTA taking a strong stance now?
I can’t help but think the timing is crucial here.
INTA will have known that Northcott’s tenure was approaching for some time: last year, she was president-elect, and before that, vice-president.
With the Amazon counsel at the helm, the next 12 months could prove to be very interesting.
INTA and Northcott will need to ensure they continue to appease brand owners by proving they are on the same team.
On the flip side, major platforms that have concerns about strict measures governing customer data and proactive removals will likely hope INTA will not come down too hard on them regarding their obligations.
Almost all parties agree that removing counterfeits from marketplaces is a priority.
But disagreement remains around the level of proactivity and the measures that platforms must put in place.
As INTA says, the debate has been running since at least 2011.
Over a decade later, 2024 could be one of the most significant years yet.