Claim of Design Right Infringement

[auctilliance]

We were reported for design right infringement for selling silicone shoelaces.  Vero provided the contact info of the claimant and I went on the companies website where they had their patent listed.  Their patent covers a plastic shoelace that is fastened via a buckle.  The silicone shoelaces we were selling did not have a buckle, instead, it uses the tension of the silicone to hold the shoe in place.  

I contacted the company and sent them pictures of the shoelaces we were selling and compared them via pictures & diagrams of their own patent design, explaining they used different mechanisms.  We have not received any response for over 2 months.  Ironically, the company has since removed the link to the patent on their website, which I find coincidental. 

I contacted Ebay/Vero and explained the claimant was unresponsive and asked if we could get some help.  Vero asked for our permission to share our contact with the claimant, to which we agreed.  2 more weeks, no response or contact.  

I further asked Vero if there was any way to appeal, their response was:

"Please note that they are under no legal obligation to respond. Since they filed a claim under penalty of perjury and in good faith, lack of explanation or response to written request does not invalidate their claim. Only written permission directly from the rights owner can grant an appeal. Ebay cannot legally authorize you to relist the item. I'm sorry."

So does this mean any company can just file a claim under penalty of perjury and in good faith and remove any listing they want?  

Has anyone else gone through this process and was successful in reinstating?  Thank you in advance for any insight or feedback.  

[tutwa-20]

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@auctilliance wrote:

So does this mean any company can just file a claim under penalty of perjury and in good faith and remove any listing they want?  

yes

[fab_finds4u]

Any VeRO member can have a listing removed.

[titipeo]

This is getting more towards legal matters, I'm not an attorney, but if you want to proceed, best to lawyer up. 

[luckythewinner]

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@auctilliance wrote:

I further asked Vero if there was any way to appeal, their response was:

You can file a formal counter-notice to the VERO member's Notice of Claimed Infringement:

https://www.plagiarismtoday.com/2010/06/03/7-common-questions-about-dmca-counter-notices/

Essentially, a counter-notice challengest the complainant to file a court order against you - if he does not, the service provider can (theoretically) restore the content that was taken down. So IMHO you should probably contact an attorney before inviting legal action against yourself. (For example, that company may actually hold more patents for silicone shoelaces than just the one you saw on their website.)

Also be aware that even if you file a counter-notice and the VERO complainant backs down, eBay can still block your listings - because the eBay user agreement has a blanket waiver that says: 

"we reserve the right to refuse, modify, or terminate all or part of our Services to anyone for any reason at our discretion"

https://www.ebay.com/help/policies/member-behaviour-policies/user-agreement?id=4259

[auctilliance]

Thank you luckythewinner, that is the most helpful and practical response.  I was at most making $40-$60 a month on this item, so I am going to have to assess if it is worth the costs of lawyering up to challenge this.  

[m60driver]

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@auctilliance wrote:

 I was at most making $40-$60 a month on this item, so I am going to have to assess if it is worth the costs of lawyering up to challenge this.  

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Let me save you some time.  No, it won't be won't the cost of lawyering up.  

[khampasports]

I'm in the same situation.  Maybe the only way to force a change is to file a patent for say some type of pen, and then claim every single product on ebay violates that patent so ebay has to address it.  Just Joking, maybe, not quite sure. 

[simply-the-best-for-you]

You may want to have a peek at Tabberone's website.  She is well known for having fought many of these & won.  The website is a bit old style, but has LOTS of good info.  She's not a lawyer, but that said, she clearly spends a lot of time on fighting VERO claims, more than I'd be willing to. 

[lacemaker3]

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@khampasports wrote:

I'm in the same situation.  Maybe the only way to force a change is to file a patent for say some type of pen, and then claim every single product on ebay violates that patent so ebay has to address it.  Just Joking, maybe, not quite sure. 

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You can file a patent for anything you want. It's very expensive to file a patent application. The patent won't be granted unless you were able to demonstrate how your design is different from all the preexisting designs. If the patent is not granted, then you have lost all of the fees you paid to the patent office for the application, and to maintain the application, and to the patent lawyer that you hired for your application.

[rfmtm]

Do not relist until the matter is resolved. 

Unfortunately a patent infringement case can be problematic.  However, even though it is up to the patent holder to protect and enforce their rights, ebay doesn't care nor is in a position to review these rights, so just removes the item whether it actually infringes or not.

You can file a counter notice, and while this is only legally recognized for copyright, ebay treats it differently and will require the rights holder to show his has started legal action against you for the infringement, or will otherwise let you relist the item. 

You might want to talk to the manufacturer of the item to see what they have to say.   As that is who the member should be going after if in fact there really is infringement.  The manufacturer may have already had a ruling on this, that can be presented to ebay.

You also can have your attorney write the VeRO member a letter with a copy to ebay's legal department indicating the member is abusing the VeRO system.  Ultimately you can challenge the patent, or sue the VeRO member, but certainly not worth that, even though federal case costs are paid by the loser.

Regardless do not relist until the VeRO member has lifted their complaint with ebay.

[kh-gary]

Hi everyone,

Due to the age of this thread, it has been closed to further replies. Please feel free to start a new thread HERE if you wish to continue to discuss this topic.

Thank you for understanding.