SHOP SAFE Act of 2020

I 116TH CONGRESS 2D SESSION H. R. 6058 To amend the Trademark Act of 1946 to provide for contributory liability for certain electronic commerce platforms for use of a counterfeit mark by a third party on such platforms, and for other purposes. IN THE HOUSE OF REPRESENTATIVES MARCH 2, 2020 Mr. NADLER (for himself, Mr. COLLINS of Georgia, Mr. JOHNSON of Georgia, and Mrs. ROBY) introduced the following bill; which was referred to the Committee on the Judiciary A BILL To amend the Trademark Act of 1946 to provide for con- tributory liability for certain electronic commerce plat- forms for use of a counterfeit mark by a third party on such platforms, and for other purposes. Be it enacted by the Senate and House of Representa- 1 tives of the United States of America in Congress assembled, 2 SECTION 1. SHORT TITLE. 3 This Act may be cited as the ‘‘Stopping Harmful Of- 4 fers on Platforms by Screening Against Fakes in E-com- 5 merce Act of 2020’’ or the ‘‘SHOP SAFE Act of 2020’’. 6 VerDate Sep 11 2014 20:50 Mar 05, 2020 Jkt 099200 PO 00000 Frm 00001 Fmt 6652 Sfmt 6201 E:\BILLS\H6058.IH H6058 pamtmann on DSKBC07HB2PROD with BILLS 2 •HR 6058 IH SEC. 2. CONTRIBUTORY LIABILITY FOR ELECTRONIC COM- 1 MERCE PLATFORMS. 2 Section 32 of the Act entitled ‘‘An Act to provide for 3 the registration and protection of trademarks used in com- 4 merce, to carry out the provisions of certain international 5 conventions, and for other purposes’’, approved July 5, 6 1946 (commonly known as the ‘‘Trademark Act of 1946’’) 7 (15 U.S.C. 1114), is amended by inserting at the end the 8 following: 9 ‘‘(4)(A) An electronic commerce platform shall 10 be contributorily liable for infringement by a third- 11 party seller participating on the platform for use in 12 commerce of a counterfeit mark in connection with 13 the sale, offering for sale, distribution, or advertising 14 of goods that implicate health and safety, unless the 15 following requirements are met: 16 ‘‘(i) The third-party seller is available for 17 service of process in the United States. 18 ‘‘(ii) Before any alleged infringing act by 19 the third-party seller, the platform dem- 20 onstrates that the platform took each of the fol- 21 lowing reasonable steps to prevent such use on 22 the platform: 23 ‘‘(I) Verified through governmental 24 identification and other reliable docu- 25 mentation the identity, principal place of 26 VerDate Sep 11 2014 03:28 Mar 06, 2020 Jkt 099200 PO 00000 Frm 00002 Fmt 6652 Sfmt 6201 E:\BILLS\H6058.IH H6058 pamtmann on DSKBC07HB2PROD with BILLS 3 •HR 6058 IH business, and contact information of the 1 third-party seller. 2 ‘‘(II) Required the third-party seller 3 to verify and attest to the authenticity of 4 goods on or in connection with which a 5 registered mark is used. 6 ‘‘(III) Imposed on the third-party sell- 7 er as a condition of participating on the 8 platform contractual requirements that— 9 ‘‘(aa) the third-party seller 10 agrees not to use a counterfeit mark 11 in connection with the sale, offering 12 for sale, distribution, or advertising of 13 goods on the platform; and 14 ‘‘(bb) the third-party seller con- 15 sents to the jurisdiction of United 16 States courts with respect to claims 17 related to the third-party seller’s par- 18 ticipation on the platform. 19 ‘‘(IV) Displayed conspicuously on the 20 platform the verified principal place of 21 business, contact information, and identity 22 of the third-party seller, the country of ori- 23 gin and manufacture of the goods, and the 24 VerDate Sep 11 2014 20:50 Mar 05, 2020 Jkt 099200 PO 00000 Frm 00003 Fmt 6652 Sfmt 6201 E:\BILLS\H6058.IH H6058 pamtmann on DSKBC07HB2PROD with BILLS 4 •HR 6058 IH location from which the goods will be 1 shipped. 2 ‘‘(V) Required each third-party seller 3 to use images that the seller owns or has 4 permission to use and that accurately de- 5 pict the actual goods offered for sale on 6 the platform. 7 ‘‘(VI) Implemented at no cost to the 8 registrant proactive technological measures 9 for screening goods before displaying the 10 goods to the public to prevent any third- 11 party seller’s use of a counterfeit mark in 12 connection with the sale, offering for sale, 13 distribution, or advertising of goods on the 14 platform. 15 ‘‘(VII) Implemented at no cost to the 16 registrant a program to expeditiously dis- 17 able or remove from the platform a listing 18 by any third-party seller that reasonably 19 could be determined to have used a coun- 20 terfeit mark in connection with the sale, 21 offering for sale, distribution, or adver- 22 tising of goods. 23 ‘‘(VIII) Terminated use of the plat- 24 form by any third-party seller that has en- 25 VerDate Sep 11 2014 20:50 Mar 05, 2020 Jkt 099200 PO 00000 Frm 00004 Fmt 6652 Sfmt 6201 E:\BILLS\H6058.IH H6058 pamtmann on DSKBC07HB2PROD with BILLS 5 •HR 6058 IH gaged in more than three instances of use 1 of a counterfeit mark in connection with 2 the sale, offering for sale, distribution, or 3 advertising of goods on the platform. 4 ‘‘(IX) Implemented at no cost to the 5 registrant technological measures for 6 screening third-party sellers to ensure that 7 sellers who have been terminated do not 8 rejoin or remain on the platform under a 9 different seller identity or alias. 10 ‘‘(X) Provided the information verified 11 under clause (I) of each third-party seller 12 that used a counterfeit mark in connection 13 with the sale, offering for sale, distribu- 14 tion, or advertising of goods on the plat- 15 form to relevant law enforcement and, 16 upon request, the registrant. 17 ‘‘(B) In this paragraph: 18 ‘‘(i) The term ‘counterfeit mark’ has the 19 meaning given that term in section 34(d)(1)(B). 20 ‘‘(ii) The term ‘electronic commerce plat- 21 form’ means any electronically accessed plat- 22 form that includes publicly interactive features 23 that allow for arranging the sale, purchase, 24 payment, or shipping of goods, or that enables 25 VerDate Sep 11 2014 20:50 Mar 05, 2020 Jkt 099200 PO 00000 Frm 00005 Fmt 6652 Sfmt 6201 E:\BILLS\H6058.IH H6058 pamtmann on DSKBC07HB2PROD with BILLS 6 •HR 6058 IH a person other than an operator of such plat- 1 form to sell or offer to sell physical goods to 2 consumers located in the United States. 3 ‘‘(iii) The term ‘goods that implicate 4 health and safety’ means goods the use of 5 which can lead to illness, disease, injury, serious 6 adverse event, allergic reaction, or death if pro- 7 duced without compliance with all applicable 8 Federal, State, and local health and safety reg- 9 ulations and industry-designated testing, safety, 10 quality, certification, manufacturing, packaging, 11 and labeling standards. 12 ‘‘(iv) The term ‘third-party seller’ means a 13 person other than the electronic commerce plat- 14 form who uses the platform to arrange for the 15 sale, purchase, payment, or shipping of goods. 16 ‘‘(C) Nothing in this paragraph may be con- 17 strued to limit liability for direct infringement.’’. 18 Æ VerDate Sep 11 2014 20:50 Mar 05, 2020 Jkt 099200 PO 00000 Frm 00006 Fmt 6652 Sfmt 6301 E:\BILLS\H6058.IH H6058 pamtmann on DSKBC07HB2PROD with BILLS