Online Enforcement of IP
Online infringement of Intellectual Property
Online infringement takes many forms, from the sale of counterfeit or infringing products via the internet, to copying domain names and website content.
The internet today has efficiently created a wide range of opportunities for business firms, companies, organizations, and individuals to communicate their brand messages and reach their target audience. However, keeping aside the internet’s openness, versatility, and global reach, its unregulated character has created a fertile ground for infringement of copyrighted content, trademarked brand names and logos, and registered designs. In the broadest sense, online IP infringement covers the sale of counterfeit products and services through the Internet and a variety of other activities, including cybersquatting, phishing, SEO (search engine optimization) abuse, and content piracy.
Forms of Intellectual Property
In most countries, there are four primary types of intellectual property (IP) that can be legally protected, these include patents, trademarks, copyrights, and trade secrets. Intellectual property infringement is the violation of a protected intellectual property right. Intellectual property rights are the rights given to an inventor or creator for their original works. This means that infringement is violating the right protected by a patent, trademark, or copyright. Patents, trademarks, or copyright registrations give the inventor or creator the right to initiate legal proceedings against infringers, collect damages and stop the infringing activity.
Why online IP enforcement is required
Considering that we live in a digital age, it is necessary to have a standard method or process of enforcement of IP rights online, that can be easily adapted by companies, irrespective of their territorial jurisdiction. This is because, companies now find it difficult to constantly monitor online IP infringement and can no longer depend on conventional legal remedies for dealing with infringement on the internet. It is therefore imperative for companies to build a proactive and multi-faceted strategy for copyright and trademark protection, which must offer effective methods of adapting to the challenges of the online environment. This especially important for companies whose business primarily depends on publishing content online. Some forms of intellectual property may only give the owners exclusive rights in the country where the IP is registered, and may require any extra-territorial rights to be independently proved or recognised by a court of law.
However, it becomes difficult to implement these principles online, as it is quite easy to maintain an anonymous identity with the help of offshore internet servers. Consequently, the infringers with this kind of virtual presence can generate huge profits. The difficulties associated with the conventional legal approach leading to successful online IP infringement further includes the aspect of lack of uniformity in the legal landscape. Varying IP laws and regulations in different jurisdictions make it arduous to navigate the legal landscape.
Another important consideration is identifying which individual or entity is liable for the infringement, and taking action accordingly. Infringing content may be published on individual websites of news publications or independent sellers, or on individual blogs, in which case identifying the infringer may be easier. On the other hand, infringing content may also be published on media-sharing sites such as YouTube or Pinterest, social media networks such as Twitter or Instagram, and seller platforms such as Amazon or an app store. Infringing content may also be indexed in search engines such as Google, making such content easy to find and popularise over the original content, thereby causing monetary losses to the IP owner.
Takedown requests
A take-down request, also called a notice and take down request, is a procedure for asking an Internet Service Provider (ISP) or search engine to remove or disable access to illegal, irrelevant or outdated information. Take-down requests may be issued for content that infringes on copyrights, trademarks, patents, privacy rights or personality rights.
Most countries have laws requiring ISPs or intermediaries to provide clear procedures for IP owners to flag content, submit a form or email, and provide the necessary evidence or supporting information for the takedown request. These laws also set a time limit, in some cases, within which the intermediary is required to respond to such requests or take action against the content being reported by the IP owner.
General process followed to take down online content
The general process requires intermediaries to publish terms of use and a user agreement, stating what type of content is illegal and subject to take down action on their respective platforms. IP owners who report or request the takedown of certain content may be required to provide information such as their ownership or other interest in the intellectual property being infringed, the capacity in which the request is being filed, proof of ownership (copyright, trademark or design registration), details of how their IP is being infringed, and a detailed description or URL to enable the intermediary to identify the infringing content.
Most intermediary platforms permit content to be reported either through their own takedown forms, or by sending an email to a designated email address. If contact details for the infringer are available on the platform, the intermediary may require the IP owner to first attempt to resolve the matter with the infringer directly, before filing a takedown request, and may also require proof of such communication before taking any action. While there is no format for issuing such direct communication, a cease and desist notice informing the infringer of the infringement and requiring the infringing content to be taken down may be the most effective, as it also puts the infringer on notice that the IP owner intends to take appropriate legal action in the matter.
There is no statutorily prescribed format in which IP owners are required to issue a cease and desist notice, or even send an email requesting takedown of content. However, some platforms may require a specific form to be filled and submitted. Irrespective of the format in which a takedown request is submitted, IP owners are required to provide sufficient information for the intermediary to identify the infringing content, evidence to prove ownership over the IP, and documents to demonstrate an interest in the matter.
Takedown processes followed by popular platforms, as well as common hurdles in reporting and having content removed, have been discussed in the following post.
For more information about takedown requests, you’re invited to join BananaIP on Thursday, 23rd April, 2020 at 3 pm for a free webinar. The webinar can be accessed here.
Authors: Neharika Vhatkar and Ashwini Arun (Associates, BananaIP Counsels)
This article is brought to you by the Consulting/Strategy Divisions of BananaIP Counsels, a Top IP Firm in India. If you have any questions, or need any clarifications, please write to contact@bananaip.com with the subject: Online IP Enforcement.
Disclaimer: Please note that this article has been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified all the news published in the bulletin. You may write to contact@bananaip.com for corrections and take down.
