The safe harbor from liability is too weak and invites litigations
Andrew Ligon Fant, 2022 - J.D. Candidate, 2023, University of Georgia School of Law. “Reconsidering the Willful Blindness Doctrine in Contributory Trademark Infringement,” 29 J. INTELL. PROP. L. 318 (2022). Available at: https://digitalcommons.law.uga.edu/jipl/vol29/iss2/3 //DH
The most problematic part of the SHOP SAFE Act is its requirement that online marketplaces implement a program to “expeditiously” take down counterfeit listings the platform is reasonably aware of.152 The Act adopts a very broad view—similar to the “reason to know” standard that the Tiffany court rejected153—of when an online marketplace should be reasonably aware of the use of a counterfeit mark.154 If an online marketplace has a program but perhaps does not take down counterfeit listings “expeditiously,” it may be exposed to liability despite good faith efforts. This could be a reasonable outcome if the marketplace could otherwise avail itself of a safe haven through reasonable efforts, but the requirement for such a program is actually an eligibility requirement for the safe haven.
The Act purports to create a safe haven, but the numerous exceptions to the rules and reliance on reasonableness muddy the waters and invite litigation.155 One such exception is found in the Act’s definition of “repeated use of a counterfeit mark”: “[u]se of a counterfeit mark by a third-party seller in 3 separate listings within 1 year shall be considered repeated use, except when reasonable mitigating circumstances exist.”156 What qualifies as a reasonable mitigating circumstance is anyone’s guess.