Partner
Everyone from artist and designers to brand owners and inventors know that protecting intellectual property rights on the internet can be an uphill battle. You may have finally figured out how to get Amazon to take down a listing that copied your product photos and then you have another infringer selling counterfeit products under your trademark. This can be exhausting and is a normal part of doing business online. Well, Amazon’s marketplace is not the only site you need to be watching for infringing activity.
ShopBase.com is a Vietnamese based online print on demand and dropship company. These services make it easy for infringers to create knock off or counterfeit products, infringe copyrights and trademarks, and make money doing it. Unless ShopBase has a stringent review policy, it is likely that Vietnamese infringers and other infringers all over the world will take advantage of their services, which can facilitate the illegal infringement of IP owner’s rights.
Currently the ShopBase Print on Demand and Dropship private group on Facebook has over 2,500 members and membership appears to be steadily growing. The ease at which print on demand and drop shipping services are provided increases the risk that careless service providers could facilitate infringement. The potential infringement facilitation by ShopBase could be significant for brand owners and copyright holders in particular.
As any Amazon or Alibaba seller knows, keeping up with the marketplace’s policies related to reporting infringement is often a full time job by itself. Now it is more important than ever for IP rights holders to monitor and respond to infringement. Companies like ShopBase must be aware of the potential for infringers to misuse their services and must be vigilant. ShopBase should have a rigorous IP rights policy in place, but you, the owner of the IP, must be ready in the event an instance of infringement is discovered.
Print on demand platforms are legitimate services that allow independent creators to upload graphic designs and sell them printed on t-shirts, mugs, phone cases, and similar merchandise without holding inventory. The business model works because the platform handles manufacturing and fulfillment on a per-order basis. For honest creators, this is a cost-effective way to bring original designs to market.
However, this same infrastructure is easily exploited by bad actors. An infringer can upload a copyrighted image or a design incorporating someone else’s trademark, list products bearing those images for sale, and generate revenue before the rights holder even knows the products exist. Because the platform handles fulfillment, the infringer assumes minimal financial risk. If a listing gets taken down, the infringer simply opens a new account and relists the products.
This whack-a-mole dynamic is one of the defining challenges of IP enforcement in the print on demand space. Rights holders must be prepared to report infringement repeatedly and maintain records of infringing activity to support claims of ongoing, willful infringement if litigation becomes necessary.
Copyright protection under the Copyright Act, 17 U.S.C. § 101 et seq., covers original works of authorship including graphic designs, illustrations, photographs, and logos. Copyright protection attaches automatically when an original work is fixed in a tangible medium of expression. However, registration of the copyright with the U.S. Copyright Office provides critical legal advantages.
Under 17 U.S.C. § 412, copyright owners who have registered their works prior to infringement — or within three months of first publication — are eligible to recover statutory damages of between $750 and $30,000 per work infringed, or up to $150,000 per work if the infringement was willful. They are also eligible to recover attorneys’ fees. These remedies are not available for unregistered works; copyright owners with unregistered works are limited to actual damages and profits, which are often difficult to prove in print on demand cases where individual orders may be small.
Rights holders can use the Digital Millennium Copyright Act notice-and-takedown procedure, 17 U.S.C. § 512(c), to require platforms to remove infringing content. A properly submitted DMCA notice requires the platform to act expeditiously to remove the infringing material or face potential liability. Platforms that receive DMCA notices and fail to act risk losing the safe harbor protections that would otherwise shield them from secondary copyright liability.
When infringers reproduce registered trademarks on merchandise — placing a well-known brand’s logo on a t-shirt, for example — they may be liable not just for trademark infringement under the Lanham Act, 15 U.S.C. § 1114, but also for counterfeiting. Counterfeiting is the intentional reproduction of a registered mark that is identical to, or substantially indistinguishable from, the registered mark. See 15 U.S.C. § 1116(d).
The remedies for counterfeiting are severe. A court can order the seizure and destruction of counterfeit goods. Statutory damages for counterfeiting range from $1,000 to $200,000 per counterfeit mark per type of goods or services sold, and up to $2,000,000 per mark per type of goods or services for willful counterfeiting. See 15 U.S.C. § 1117(c). Criminal penalties under 18 U.S.C. § 2320 are also available for willful trafficking in counterfeit goods.
Rights holders facing infringement on ShopBase and similar platforms should approach enforcement systematically. First, ensure that all trademarks and copyrights are registered. Unregistered rights are significantly harder and more expensive to enforce. Second, implement a monitoring program that regularly searches print on demand platforms, social media marketplaces, and e-commerce sites for potentially infringing listings. Third, when infringement is discovered, document it fully before reporting — screenshots, URLs, sales data where available — because platforms may remove listings quickly after a report is filed.
Fourth, use platform reporting mechanisms as a first step, but understand that a platform operating outside the United States is under no legal obligation to comply with U.S. law absent specific treaty obligations or significant U.S. business operations. For persistent international infringers, additional tools may include civil litigation against U.S.-based intermediaries, Customs recordation to intercept infringing goods at the border, and coordination with law enforcement for particularly egregious cases.
Our attorneys are well versed in online sales platforms, dropshipping and print on demand related infringement. We have helped clients battle to protect their trademarks, copyrights, patents and other IP rights. If you think that your rights have been infringed or you want to make a plan to protect your rights through registration or other means, please reach out to our trademark infringement lawyers today to discuss how we can help.
Federal trademark registrations must be renewed periodically to stay active. Here’s what trademark renewal costs, what filing deadlines apply, and what happens if you miss them.
Read more about Cost of Renewing a Federal Trademark
The federal government announced a crackdown on counterfeit goods and online piracy. Here’s what the initiative targets and what brand owners and rights holders can expect.
Read more about Federal Crackdown on Counterfeit Goods and Piracy
Self-employed professionals and freelancers benefit from trademark registration just as much as large companies. Here are five reasons to register your brand as a trademark.
Read more about 5 Reasons to Trademark Your Self-Employed Brand