Online infringement takes many forms, from the sale of counterfeit or infringing products via the internet, to copying another business' website. In this podcast, George Sevier provides some hints and tips as to what you can do if your rights are being infringed on the internet.
Transcript
Hi, I am George Sevier, a lawyer in the intellectual property team at Gowling WLG, based in London. In this podcast, I am going to cover the basics of dealing with copyright and trade mark infringement online. I am not going to look at the law in any detail, but I will provide some hints and tips as to what you can do if your rights are being infringed on the internet.
You might also want to listen to some of the other podcasts in this series, such as those on copyright, trade marks, passing off, and design rights.
Online infringement takes many forms, such as the sale of counterfeit or infringing products via the internet, use of text or images copied from another website, copying entire websites or registering domain names incorporating a brand name. There is often crossover, and you might be faced with a situation where all of these things have happened. Whilst it might be alarming at first, those situations are among the easiest to deal with, because infringement in many forms is likely to mean that there are several possible solutions.
What can we do about all of this?
First things first, we need to bear in mind that things are different online than in the real world. Crucially, the internet allows anonymity. If someone really wants to hide their identity, they can.
Away from the internet, if an infringement takes place, you would want to take action against the infringer, get a court order to prevent them from doing it again, preferably get a damages payment and maybe your costs. This doesn't work on the internet, because you may not be able to identify the infringer, and they could be in any country. And even if you nail them down to a particular country - let's call it 'country A' - it might be that you won't be able to prove infringement in that country. Possibly because you don't have IP protection in country A, or maybe because their servers are in country B, the goods are sent from county C and the customers are in country D.
Also, if you take action in one place, the nature of the internet means that they can just set up another website elsewhere, and still reach the same customers.
Don't get me wrong, infringers can often be identified, tackled at source, and their infringement stopped. However when dealing with serial infringers, which is often the case with the sellers of counterfeit products, you can expect them to be evasive. The best way of dealing with infringers like this, is make life difficult for them, so that they choose to target another brand next time instead of yours.
Let's go through some of the possible actions that we can take. I think of these in terms of tools in a toolbox.
Firstly, domain name complaints
Domain names attract customers, and give credibility to the websites and email addresses which use them. For example, consumers might believe that the slightly discounted handbags on sale at GucciOutletStore.com are genuine products being sold by Gucci, when in fact they could be counterfeits sold by anyone. Or what about if you received an email from chairman@gowlingw1g.com? You are unlikely to notice that the domain name is spelt using the digit 1 instead of the letter L, and it would probably have no reason to question whether the email had actually come from Gowling WLG. It is common for domain names like this to be used to commit fraud. You don't want domain names like this being left in the hands of crooks, so you need to be able to take action to have them transferred to you. When simply asking for a transfer doesn't work, we can force transfers through the making of domain name complaints.
Let me explain how domain name complaints work.
When domain names are registered, the person registering the domain name agrees a contract with the registrar. They are unlikely to read the fine print, but those contracts contain a number of mandatory terms. For example, the person registering the domain name will agree that they are not registering or using it in a way which infringes anyone else's IP rights. They will also agree that if there is a dispute, concerning the domain name, it will be dealt under a standard dispute resolution policy.
There are different dispute resolution policies depending on the top level domain, otherwise known as a TLD or domain extension. The most common policy is the Unified Domain Name Dispute Resolution Policy, commonly known as the UDRP. That applies to several major top level domains including .com, .net and .org. It also applies to a newer breed of top level domains such as .fishing, .healthcare and .lawyer.
Whilst some country code top level domains are subject to the UDRP, several, such as .co.uk, tend to have their own policies. For example, .uk domain names are subject to the Nominet Dispute Resolution Service.
The different dispute resolution policies differ, but the basic premise is that a brandowner can make a complaint which is decided by an independent person, and if the complaint succeeds, then the domain name will be transferred to the brandowner. It depends on the policy concerned, but a complaint is likely to succeed where a domain name is the same or confusingly similar as a trade mark of a brandowner, and the domain name has been registered and used in bad faith, or unfairly.
I should mention that there is also an alternative option where the newer breed of top level domains is concerned - I am talking about domain names ending .global for example. As an alternative to a UDRP complaint, a brandowner can make a Uniform Rapid Suspension complaint, or URS complaint. That is a cut down version of the UDRP process. The key differences being that application is much shorter and cheaper, the result will be made more quickly, but the bar in terms of evidence is much higher - there needs to be clear and convincing evidence of bad faith, rather than just needing to shown bad faith on the balance of probabilities, as is the case with the UDRP. Also, a URS complaint only results in suspension of a domain name account. It does not result in the domain name being transferred to the brandowner.
Overall, domain name complaints are a handy tool to have in the box. They are a much cheaper and quicker alternative to court proceedings. However, it often takes a couple of months to get to a decision, and if you succeed, the determined registrant can just move his website to another address. Also, there is no real scope for the brandowner to recover its legal costs. However, you are making life difficult for the infringer, which is one of our aims.
Next, platform takedowns
Infringing products are often advertised and sold on legitimate platforms such as eBay, Amazon and Alibaba. Where that is the case, many of the platforms have online forms for requesting takedowns.
As a general rule, this works well for cases of straightforward trade mark or copyright infringement, although the platforms may just remove the infringing content from the product listing (e.g. a copyright photograph or a trade mark in a product listing), rather than completely removing the product from sale.
Each platform has its own policy, but as a general rule, they are less receptive to complaints of patent or design infringement, than they are to copyright or trade mark infringement. Amazon has different policies in different jurisdictions, and whilst it is reluctant to de-list products on the basis of patent infringement without a court order, it may provide the registered contact details for the seller so that you can take the matter up directly with the seller.
In the UK at least, the eBay Verified Right Owner process (or VeRO as it is known) is very effective, and eBay listings can normally be removed quite quickly.
Our China office has built up a great relationship with Alibaba, and gets thousands of listings removed, and seller accounts deleted if they re-list the products, but there are local challenges. For example, if the person listing the product claims to own their own IP rights in the product, their listing is likely to be reinstated by the platform. In China, design patents can be registered very quickly, so it is quite easy to produce an official document showing the status of an IP registration.
Google removes search results for pages which infringe copyright, but not trade marks. This does not remove the website in question, but it can mean that links to individual pages are removed, which is likely to reduce traffic to the site.
An option which can be very effective is a payment method block
Where goods are being sold through a website, it is possible to ask the payment processor (such as PayPal or VISA) to stop processing payments from sites which offer counterfeit goods. In doing so, you stop money getting to a seller. They may be able to get round it by moving to a different payment processor, or asking for payment by bank transfer, but you're making life difficult for them.
You can ask a particular payment processor directly, or use the IACC's RogueBlock reporting tool which goes across about 10 different payment processors.
You can also have entire websites taken down, or removed from the internet
The E-Commerce Directive advises that hosting providers are not liable for the information they store, on the condition that if they are made aware of illegal activity or information, they act expeditiously to remove or disable access to the information. There is a similar provision in the US under the Digital Millennium Copyright Act (or DMCA, as it is known). So, if you identify which hosting provider is hosting the website (you can do this by tracing the source of the website's IP address), you can contact the hosting provider, and ask them to take the website down.
A determined infringer can move to another host. He might do that a few times before getting to a host based outside of the EU and US, which ignores takedown requests.
Where there is criminal activity (such as the sale of counterfeits), it might be worth referring it to the Police IP Crime Unit (PIPCU). Not perfect, but they can and do get websites taken down, and they are less likely to pop back up in the same place.
The final tool in our box is ISP Blocking injunctions
These are injunctions sought by owners of copyright infringing material which is being made available for free on websites such as The Pirate Bay. They are injunctions against internet service providers such as BT, TalkTalk and Sky. They have mainly been used by the big movie and music rights owners.
In the past couple of years, a test case brought by Richemont, which owns luxury brands such as Cartier and Mont Blanc, has confirmed that the same blocking injunctions should be available on the basis of trade mark infringement as well - not just copyright infringement.
I hope that you have found this overview of the options useful.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
