The CP isn’t workable and causes counterfeiting to shift
Kari Kammel, 2021 - is the Assistant Director of Education and Outreach at the Center for Anti-Counterfeiting and Product Protection at Michigan State University and adjunct professor of law at the Michigan State University College of Law. Statement before the U.S. House of Representatives Committee on the Judiciary Subcommittee on Courts, Intellectual Property, and the Internet. Hearing on The SHOP SAFE Act: Stemming the Rising Tide of Unsafe Counterfeit Products Online on May 27, 2021, https://docs.house.gov/meetings/JU/JU03/20210527/112713/HHRG-117-JU03-Wstate-KammelK-20210527.pdf //DH
1. Harmonize Type of Goods- SHOP Safe is limited to goods that implicate health and safety52 and I recommend that the type of goods be harmonized.53 It is not clear from the language as to who will be the determiners of whether a good implicates health and safety. I would advocate that the classification be removed and be applied to the sale of any counterfeit goods for several reasons, and if it cannot be removed that a broad interpretation of ‘goods that implicate health and safety’ is adapted.
a. Determination by Online Marketplaces- First, it appears that this would require marketplaces to determine whether each individual product that is posted for sale implicates ‘health and safety’. This could become incredibly onerous,54 and inconsistent, instead of applying it across the board to any product to which a trademark is affixed.
b. Two Classes of Goods Under the Lanham Act- Second, it would create two classes of types of counterfeit goods for liability under the Lanham Act. The provisions of the Lanham Act regarding trademark and service marks are protecting the intellectual property rights’ holders’ goodwill and reputation. This would give a message that many mark holders, including SMEs who are already struggling with this issue, are not entitled to the same level of protection on e-commerce sites and may create a prioritization system within e-commerce sites.
c. Drive Counterfeiting to Certain Industries- Third, in addition to possibly creating classes of goods on the e-commerce platforms, it may also drive counterfeiters to certain industries that do not implicate health and safety; thus, potentially increasing the counterfeit problem for certain industries.
d. If the Language is Adopted, Interpret ‘Health and Safety’ Broadly- In the space of counterfeits, a good that might not normally implicate health and safety may in fact implicate it due to construction with materials not appropriate for intended use, or poor quality materials. Although we know that there is immediate and high risk from counterfeit goods that implicate health and safety (pharmaceuticals, food, etc.), we also know that the absolute lack of regulation, safety standards, working standards, sanitary and hazardous work conditions can make any counterfeit risky to use.