Protecting Your Intellectual Property Against Infringement on the Internet

By Jaren D. Wilcoxson and Sheryl A. Koval

Since just about everything is on the Internet today, it is no surprise that trademark and copyright infringement often happen there as well. What follows is a brief summary of the basic trademark and copyright problems that may arise on the Internet, as well as some practical tips for dealing with them when they occur.

As much as people have come up with innovative ways to use the Internet positively, still others have come up with ways to utilize the Internet as a means to impair valuable intellectual property rights. Although it is impossible to identify every type of infringement occurring on the Internet, there are a few that are particularly prevalent. First, trademark infringement often happens through the domain name of a website. The classic instance is cybersquatting, which is said to occur when a third party registers your trademark as a domain name (e.g., www.domain.com) and then attempts to sell it at an inflated price. Other uses may be as a fan site (e.g., www.domainrules.com), as an anti-fan site (e.g., www.domainstinks.com), or as a "typosquatter" (e.g., www.domian.com).

Second, potential trademark and copyright infringement can occur in the content of the website – the website features your product name or logo (or variations on your name or logo) or sections of copyrighted material for which the registrant does not have a license. This can occur, for example, when the owner of a website purports to be an authorized distributor of your product or uses images, sounds or written descriptions for which you own the copyright.

One possibility that should be considered at the outset is to file for appropriate trademark or copyright registrations. A well-developed strategy for registering certain types of intellectual property can be useful in establishing ownership down the road if you discover a potential infringer. In addition, use of a watch service is something that may enable you to identify possible infringers.

Also, when registering your domain name, register the possible variations that may result in infringement so as to avoid the costs of recovering them later on. For example, you should consider registering any obvious variations, different top level domains ("TLDs") (e.g., .com, .org, .biz), nicknames, slogans, obvious typos, and criticism or fan names.

There is always the option of litigation to protect your intellectual property. Traditional infringement and dilution remedies exist under the Lanham Act, the Copyright Act and state law. Additionally, in 1999, Congress enacted the Anti- Cybersquatting Consumer Protection Act to deal with trademark infringement through domain names. The Digital Millennium Copyright Act ("DMCA") was enacted in 1998 to protect against improper use of copyrighted material through digital media.

Traditional litigation may be attractive in that, in addition to shutting down the offending website or having your protected material removed, there is the potential that you may recover damages from the infringing party and, in some cases, recover your attorneys’ fees. On the other hand, litigation is often a costly and lengthy process. Additionally, except in limited circumstances where the court may be able to exercise "in rem" jurisdiction, litigation requires identification of the infringer, which in cyberspace is not always a straightforward proposition.

Below are several viable alternatives to the litigation process that may be appropriate in certain instances to protect your intellectual property. They are less costly and quicker, but they provide more circumscribed remedies.

ICANN’s Uniform Domain Name Dispute Resolution Policy ("UDRP"). ICANN is a non-profit governing body that oversees much of the activity on the Internet. As part of its function, ICANN established the UDRP to deal with infringing uses of domain names. As part of the domain name registration process, registrants must agree to submit to the UDRP to resolve disputes concerning competing rights in a domain name. UDRP provides for a convenient form of alternative dispute resolution when you believe that someone has registered in bad faith a domain that is identical or confusingly similar to your mark.

The procedure under the UDRP is fairly straightforward, making it easy to contain costs. Typically, no hearing is granted in these proceedings. Rather, a decision is made on the basis of an opening complaint by the complaining party and a response, if any, by the registrant of the domain name. The proceedings can result in a decision in as little as three to four months. Moreover, in many cases, the registrant will not respond, increasing the likelihood of success.

The UDRP has its limitations. Neither damages nor attorneys’ fees can be recovered. Rather, the only available remedies are the transfer or cancellation of the domain name. Moreover, in the event of a ruling in favor of a complaining trademark owner, the registrant is allowed a 10-day period within which to challenge the ruling in court. Nevertheless, a UDRP proceeding is attractive because it is comparatively quick and inexpensive and statistics show that trademark owners tend to prevail more often than not.

Recourse through the registrar. Many domain name registrars also include in their terms and conditions protective procedures that may help if you believe your copyrights or trademarks are being infringed in the body of a website (for domain name disputes, you will be referred to ICANN’s UDRP). While easy to use, and often effective, the remedies that these provisions offer are fairly easy to challenge.

As an initial note, if you wish to take advantage of the remedies offered by a registrar, you will first have to determine who the registrar is. This information can usually be found in a "WHOIS" database, available on any number of websites (e.g., www.whois.net, www.networksolutions.com, www.register.com).

Copyrights. Copyright dispute resolution procedures can usually be found by clicking on the link to "legal" on the registrar’s website (often located at the very bottom of the website’s homepage). These provisions are fairly standard in light of the "takedown" safe harbor provisions included in the DMCA.

In most instances, the registrar requires that you send them notification, either by email or regular mail, that includes your contact information, an electronic signature of the copyright owner, identification of the work that is being infringed and identification of the infringing material. The notification also should include a statement that you have a good faith belief that the person using the information is not authorized to do so.

If the registrar believes the notification is appropriate, it will remove or disable access to the infringing material. In doing so, however, the registrar must take reasonable steps to notify the accused infringer to afford an opportunity to submit a counter-notification. The counter-notification must include a statement that the registrant has a good faith belief that the material was removed or disabled because of a mistake or misidentification and that it submits to the jurisdiction of the court where the registrar is located. If a proper counter-notification is filed, the registrar must notify you that the material will be restored within ten days. In that case, you are likely faced with the prospect of having to resort to litigation, although there is always the possibility that a registrant will never file a counter-notification.

Trademarks. Not all registrars offer dispute resolution procedures for trademarked material, probably because there is currently no trademark analog to the DMCA’s takedown safe harbor. Nevertheless, because the law is not clear whether a registrar can be found contributorily liable for trademark infringement by its registrants, some do offer them. For those who do, the procedures are similar to those for copyrights. Shutdown is not automatic, however, and the registrar may allow time for investigation. On the other hand, the procedure may allow for remedies other than just shutdown of the site – e.g., suspension from registering additional domains for a period of time.

Although not surefire ways to retrieve your intellectual property, the registrar’s own policies and ICAAN’s UDRP are valuable tools in an intellectual property owner’s arsenal. They are often a good first start, as they are less costly and time-consuming than traditional litigation and may produce the desired result quickly and efficiently.

Goodwin Procter LLP is one of the nation's leading law firms, with a team of 700 attorneys and offices in Boston, Los Angeles, New York, San Diego, San Francisco and Washington, D.C. The firm combines in-depth legal knowledge with practical business experience to deliver innovative solutions to complex legal problems. We provide litigation, corporate law and real estate services to clients ranging from start-up companies to Fortune 500 multinationals, with a focus on matters involving private equity, technology companies, real estate capital markets, financial services, intellectual property and products liability.