Defense against the Taking Over of Product Images on Amazon

Up to now, the problem of taking over product images on Amazon has not had a great deal of relevance in practice. This is surprising insofar as Amazon is one of the leading online global market places and thousands of items are offered and sold there every day. Of course great importance is attached to the product description and images, which are created by the merchants themselves, so it is amazing to find out that as far as we can tell there have only been a few court decisions issued on this extremely complex legal topic.

Item descriptions on Amazon are stored by EAN numbers or ASIN numbers. EAN numbers are a standardized code for the identification of a product that are issued by GS1 Germany GmbH. ASIN numbers are the corresponding Amazon equivalent. Each product on Amazon can be clearly identified using EAN numbers or ASIN numbers. Amazon has designed its marketplace in such a way that optimally only one EAN or ASIN number can be used for each product because the purpose is that users are able to view various offerings from different merchants at the same time, and therefore also see the different prices. As a consequence of course, the first merchant who set up the corresponding offering is always exposed to the problem that competitors – possibly even with lower prices – rely on that product description and the product images and offer the same product. This becomes particularly critical if product images are included in addition to the product description, which were created by the merchant who first set up the product itself.

Diverging treatment in case law

Up to now, case law gives a more than inconsistent picture. In its 2011 decision (MMR 2011, 588 et seqq.), Nuremberg-Fürth Regional Court differentiated between whether the product images at issue contained a corresponding branding by the merchant in question. Only under these circumstances a claim to cease and desist under copyright law was affirmed. This decision was based on the background that a differentiation is made in the Amazon Terms of Use between whether the photos in question contain branding, trademarks, or company identification by the merchant in question.

It should be noted here that the Amazon Terms of Use are very complex and are not easily understandable because they involve various sets of rules in which it is not always clear what should apply in each case. This also led to Nuremberg-Fürth Regional Court classifying parts of the Amazon Terms of Use as invalid.

Frankfurt am Main Higher Regional Court decided on another case in 2011 (MMR 2012, 183 et seqq.), which related to trademark law. In this case, a merchant inserted its trademark onto a product image after one and a half years while the products were coexisting (probably also on the basis of the Amazon Terms of Use). When he initiated proceedings against the competitor based on a claim of trademark infringement, Frankfurt am Main Higher Regional Court denied his claims. The reasons the judges gave were that the conduct constituted an abuse of law. In the opinion of Frankfurt am Main Higher Regional Court, after one and a half years of coexistence it was not permissible to just change the product image and then issue a warning about trademark infringement. In any event, Frankfurt am Main Higher Regional Court let it be known that the case could be evaluated in a completely different way if information had been given in advance (and not a formal warning about trademark law).

Frankfurt am Main Regional Court had a completely opposite point of view (it was not the lower court for the aforementioned decision by Frankfurt am Main Higher Regional Court), even considering the inclusion of a trademark in a product image to be a breach of the German Unfair Competition Act (Frankfurt am Main Regional Court, MMR-Aktuell 2011, 321653 (Headnote)). The reason was that including the trademark in the images could be used as a way to avoid competitors that were also using the product presentation. This argument by Frankfurt am Main Regional Court was in no way convincing because each competitor is free to set up its own EAN or ASIN numbers and therefore set up the product itself. On the other hand, it cannot be prohibited of course for a merchant to publish his own trademarks or signs in connection with product images. As a result of the claim being abandoned in the appeals procedure, the judgment by Frankfurt am Main Regional Court was, however,
declared ineffective.

Handling in practice

It is currently therefore recommended that if a merchant wishes to protect his own product description and in particular also product images, this can be achieved by including trademarks and other branding in the product images. In case of a previous coexistence of items and descriptions with competitors, how- ever, before asserting copyright or trademarks, the competitor should be informed that he is infringing third-party rights. In this way the abuse of law mentioned by Frankfurt am Main Higher Regional Court can probably be avoided. It must also be stated that the legal situation can in no way be considered to have been clarified and therefore it is entirely possible that there will be fluctuations in jurisdiction. What makes the situation particularly volatile is that, as far as we can tell, Amazon up to now has taken no steps to increase transparency in this area and in particular has not accordingly adjusted the Terms of Use that the jurisdiction considered defective. Since this topic affects numerous merchants and is sure to end in further disputes, it would be a good idea for Amazon to handle it in a timely manner. Until then, there are legal risks particularly because it is now being circulated in the market that Amazon will be initiating its own proceedings against merchants who incorporate their trademark rights in product images. The grounds for this will also be an alleged breach of the Amazon Terms of Use, which will guarantee that this will remain an explosive topic in the future.

Conclusion

The fact that there is not much or just inconsistent case law means that each case needs to be checked carefully. The current legal situation may provide opportunities for merchants to protect their own product presentations, but Amazon itself is ensuring that efficient protection of rights cannot currently be achieved without incurring risks. There will doubtlessly be new developments in this area in the future.