[Congressional Bills 118th Congress]
[From the U.S. Government Publishing Office]
[H.R. 8684 Introduced in House (IH)]
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118th CONGRESS
2d Session
H. R. 8684
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
June 11, 2024
Mr. Issa (for himself, Mr. Nadler, Mr. Cline, and Mr. Johnson of
Georgia) 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 contributory
liability for certain electronic commerce platforms 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 Representatives of the
United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ``Stopping Harmful Offers on Platforms
by Screening Against Fakes in E-commerce Act of 2024'' or the ``SHOP
SAFE Act of 2024''.
SEC. 2. CONTRIBUTORY LIABILITY FOR ELECTRONIC COMMERCE PLATFORMS.
(a) In General.--Section 32 of the Act entitled ``An Act to provide
for the registration and protection of trademarks used in commerce, to
carry out the provisions of certain international conventions, and for
other purposes'', approved July 5, 1946 (commonly known as the
``Trademark Act of 1946'') (15 U.S.C. 1114), is amended by adding at
the end the following:
``(4)(A) Except as provided in subparagraph (B), an
electronic commerce platform shall be contributorily liable in
a civil action under paragraph (1) for a case in which a third-
party seller is shown to have used in commerce a counterfeit
mark in connection with the sale, offering for sale,
distribution, or advertising of a good that implicates health
and safety on the platform.
``(B) An electronic commerce platform shall not be subject
to contributory liability under subparagraph (A) if the
electronic commerce platform demonstrates that the platform
took reasonable measures to implement each of the following
steps to prevent infringing use by the applicable third-party
seller on the platform before that infringing use:
``(i) Determined after an investigation and
periodically confirmed--
``(I) that the third-party seller
designated a registered agent in the United
States for service of process; or
``(II) in the case of a third-party seller
located in the United States that has not
designated a registered agent under subclause
(I), that the third-party seller has designated
a verified address for service of process in
the United States.
``(ii) Imposed on the third-party seller as a
condition of participating on the electronic commerce
platform requirements that the third-party seller--
``(I) consents to the jurisdiction of the
courts of the United States with respect to
claims related to participation by the third-
party seller on the platform; and
``(II) uses images on the electronic
commerce platform that accurately depict the
goods sold, offered for sale, distributed, or
advertised on the electronic commerce platform.
``(iii) Provided accessible electronic means by
which a registrant and consumer can notify the
electronic commerce platform of suspected use of a
counterfeit mark.
``(iv)(I) Implemented at no charge from the
electronic commerce platform to registrants proactive
measures for screening listings for goods before
displaying the goods to the public to prevent the use
by any third-party seller of a counterfeit mark in
connection with the sale, offering for sale,
distribution, or advertising of goods on the platform.
``(II) For purposes of implementing the proactive
measures described in subclause (I)--
``(aa) a registrant shall provide the
applicable electronic commerce platform with a
notice of the mark of the registrant and a
point of contact in advance; and
``(bb) the applicable electronic commerce
platform may not require that a registrant
participate in any program specific to the
electronic commerce platform.
``(III) An electronic commerce platform shall not
be liable under subparagraph (A) for failure to comply
with subclause (I) if the registrant has not provided
the platform with the information required under
subclause (II) and information relating to the mark is
not publicly available.
``(IV) If the screening described in subclause (I)
blocks goods from being displayed on the applicable
electronic commerce platform, the electronic commerce
platform shall allow an opportunity for the applicable
third-party seller to provide proof that the goods in
question are not counterfeit.
``(v)(I) Implemented at no charge from the
electronic commerce platform to registrants a program
to expeditiously disable or remove from the platform
any listing for which the platform has actual or
constructive knowledge of the use of a counterfeit mark
in connection with the sale, offering for sale,
distribution, or advertising of goods.
``(II) For the purposes of subclause (I),
constructive knowledge of the use of a counterfeit mark
may be inferred based on information gathered by the
applicable electronic commerce platform (including
information submitted by registrants to the electronic
commerce platform), including information regarding--
``(aa) the use of a counterfeit mark on the
platform;
``(bb) the allegedly infringed
registration;
``(cc) identifying characteristics of a
particular listing or third-party seller; or
``(dd) other circumstances, as appropriate.
``(III) An electronic commerce platform may
reinstate a listing disabled or removed under this
clause, if, after an investigation initiated by the
platform or upon request of the affected third-party
seller, the platform reasonably determines that a
counterfeit mark was not used in the listing.
``(IV) A verified decision to reinstate a listing
under subclause (III) shall not be a basis for finding
that the applicable electronic commerce platform failed
to comply with this clause.
``(vi)(I) Implemented a publicly available, written
policy that requires termination of a third-party
seller that has been determined to have engaged in
repeated use of a counterfeit mark in connection with
the sale, offering for sale, distribution, or
advertising of goods on the electronic commerce
platform.
``(II) The use of a counterfeit mark by a third-
party seller in 3 separate listings during a 1-year
period typically shall be considered repeated use for
the purposes of subclause (I), but an electronic
commerce platform may allow a third-party seller to
remain active after repeated use of a counterfeit mark
when mitigating circumstances exist.
``(III) The determination of whether mitigating
circumstances exist for the purposes of subclause (II)
shall consider the overall activity of the applicable
third-party seller, efforts the third-party seller has
taken to cure supply-chain concerns, third-party seller
intent, the scope and nature of the defenses offered by
the third-party seller, efforts the third-party seller
takes to refute or resolve disputes once notified of a
concern, and any other factor considered relevant by a
court.
``(IV) An electronic commerce platform may
reinstate a third-party seller after terminating the
third-party seller under subclause (I), if, after an
investigation initiated by the platform or upon request
of the affected third-party seller, the platform
determines that the third-party seller did not engage
in repeated use of a counterfeit mark or that
mitigating circumstances exist.
``(V) A verified decision by an electronic commerce
platform under subclause (IV) to reinstate a third-
party seller shall not be a basis for finding that the
platform failed to comply with this clause.
``(vii) Implemented at no charge from the
electronic commerce platform to registrants measures
for screening third-party sellers to ensure that third-
party sellers that have been terminated under clause
(vi) do not rejoin or remain on the platform under a
different seller identity or alias.
``(viii) Provided a verified basis, upon request of
a registrant, for the registrant to contact a third-
party seller, or the designated agent of a third-party
seller for service of process, if the registrant has a
bona fide belief that the third-party seller has used a
counterfeit mark of a mark belonging to the registrant
in connection with the sale, offering for sale,
distribution, or advertising of goods that implicate
health and safety on the electronic commerce platform,
except that the platform is not required to provide
information that constitutes the personal identity of
an individual, a residential street address, or
personal contact information of an individual (and, in
such case, the platform shall provide an alternative
means of contacting the third-party seller).
``(C) The determination of whether the measures in this
paragraph are reasonable shall consider the size and resources
of an electronic commerce platform, the nature of the goods and
services provided by the platform, available technological and
non-technological solutions, the amount of information provided
by a registrant to the platform, and any other factor
considered relevant by a court.
``(D)(i) This paragraph shall apply to an electronic
commerce platform--
``(I) that has sales on the platform in the current
or previous calendar year in an amount of not less than
$500,000; or
``(II) with less than $500,000 in sales on the
platform in the current or previous calendar year,
beginning on the date that is 180 days after the date
on which the platform receives the tenth notice, in
aggregate, that qualifies under clause (ii).
``(ii) To count toward the aggregate 10-notice threshold
under clause (i)(II), a notice shall--
``(I) include a reference to this paragraph;
``(II) include an explicit notification of the 10-
notice threshold and the requirement of the applicable
electronic commerce platform to publish the information
under clause (iii); and
``(III) identify a listing on the applicable
electronic commerce platform that reasonably could be
determined to have used a counterfeit mark in
connection with the sale, offering for sale,
distribution, or advertising of goods that implicate
health and safety.
``(iii) Not later than 30 days after the date on which an
electronic commerce platform described in clause (i)(II)
receives the first notice under clause (ii), the platform shall
make publicly available an attestation that--
``(I) the sales of goods on the platform in the
current or previous calendar year were less than
$500,000; and
``(II) includes an aggregate count of the notices
received by the platform that qualify under clause
(ii), which shall be updated upon receipt of additional
notices by the platform.
``(E) An electronic commerce platform shall implement and
maintain reasonable security procedures and practices,
including administrative, physical, and technical safeguards,
appropriate to the nature of the data and the purposes for
which the data will be used, to protect the data collected to
comply with the requirements of this paragraph from
unauthorized use, disclosure, access, destruction, or
modification.
``(F) This paragraph may not be construed to limit
liability or defenses in contexts other than those described in
this paragraph, including any cause of action or defenses
available under any other provision of this Act,
notwithstanding that the same facts may give rise to a claim
under this paragraph.
``(G) With respect to fiscal year 2026, and each fiscal
year thereafter, the amounts in subparagraph (D) shall be
increased by an amount equal to the percentage increase during
the preceding fiscal year, if any, in the Consumer Price Index
for All Urban Consumers published by the Department of Labor.
``(H) In this paragraph:
``(i) The term `consumer product' has the meaning
given the term in section 101 of the Magnuson-Moss
Warranty--Federal Trade Commission Improvement Act (15
U.S.C. 2301) and section 700.1 of title 16, Code of
Federal Regulations, or any successor regulation.
``(ii) The term `counterfeit mark' has the meaning
given the term in section 34(d)(1)(B).
``(iii) The term `electronic commerce platform'--
``(I) means any person or entity that
operates a consumer-directed electronically
based or accessed platform that--
``(aa) includes features that allow
for, facilitate, or enable third-party
sellers to engage in the sale or
purchase of a consumer product in the
United States; and
``(bb) is used by 1 or more third-
party sellers; and
``(II) does not include any electronically-
accessed platform that--
``(aa) prohibits the sale of goods
by a third-party seller; and
``(bb) takes reasonable steps to
prevent an unauthorized third-party
sale or offer for sale.
``(iv) The term `good that implicates health and
safety' means a consumer product, the use of which can
lead to illness, disease, injury, serious adverse
event, allergic reaction, or death, if the consumer
product is produced without compliance with all
applicable Federal, State, and local health and safety
regulations and industry-designated testing, safety,
quality, certification, manufacturing, packaging, and
labeling standards.
``(v) The term `third-party seller' means any
seller, independent of an electronic commerce platform,
that sells, offers to sell, or contracts to sell a
consumer product in the United States through an
electronic commerce platform.''.
(b) Effective Date.--This section, and the amendments made by this
section, shall take effect on the date that is 1 year after the date of
enactment of this Act.
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