After the original introduction of SHOP Safe in 2020 by the House Judiciary Committee,^[6] the bill was reintroduced in May of 2021.^[7]  It was also introduced into the Senate on May 26, 2021 becoming a bicameral and bipartisan bill.^[8]  A hearing was held on May 27, 2021, where I testified that this is an important piece of legislation that addresses the current imbalance of the sale by third party sellers of counterfeit on e-commerce with the state of secondary liability for trademark counterfeiting under the Tiffany standard.^[9] 

Some significant edits on the bill have been changed since the original introduction based on the May hearing as well as stakeholder meetings and roundtables.^[10]  Several important points from my testimony included:

The language of health and safety was not removed;^[12] however, I would argue that with the current reading of the language that it would, and should, broadly apply to any good, with a counterfeit mark or genuine mark, and the majority of counterfeits do implicate this.^[13]  Another possibility that has been noted is that this could tie in product liability laws, given the language of health and safety, into the Lanham Act,^[14] while others have noted that causes of action exist right now against e-commerce platforms for allowing the sale of counterfeits by third parties under the Lanham Act.^[15] For example, Josh Malone’s LinkedIn post notes that

“Amazon faces a massive liability under the Lanham Act for peddling pirated goods on their platform. Under the SHOP SAFE Act, Amazon can avoid liability for trademark infringement by merely pointing the finger at their Chinese suppliers with fake ID’s, bogus addresses, and false representations.  Today Amazon claims they have implemented most, if not all, of these so-called “best practices”. The SHOP SAFE Act would grant Amazon immunity – a “safe harbor” – so that they cannot be sued for trademark infringement under the Lanham Act. ”^[16]

Despite the above claims,^[17] there is no cause of action against e-commerce providers available under the Lanham Act for secondary liability, only primary liability; hence the current state of caselaw surrounding secondary liability.^[18]  Additionally, SHOP SAFE is not a grant of immunity to e-commerce platforms to be sued under the Lanham Act, and this misunderstands the intent of the bill and the current law.  Under the current state of law, platforms have minimal requirements to avoid secondary liability; essentially, they are only required to respond reactively to a notice and takedown request under Tiffany, the knowledge requirement^[19] and the current law seeks to balance the obligations between platform and brand more appropriately in regard only to secondary liability for trademark infringement.

Regarding product liability law, I do not believe it merges product liability law into the act, as it does not create a cause of action for the injured consumer,^[20] but extends a cause of action for the mark owner against the platform for secondary liability for trademark counterfeiting.^[21]