A couple of famous, publicly-traded companies have been a bit embarrassed recently when third parties they have engaged to make sure no one is improperly using their trademarks or copyrights online have instead demanded shut downs of legitimate uses.

Companies faced with rampant theft of their intellectual property frequently outsource the DMCA Take-Down Notice process to third parties, which search the Internet for infringing content and notify website operators that such content should be removed.  Although created under the Digital Millennium Copyright Act, intellectual property owners are able to use the DMCA Take-Down Notice to have website operators remove content that infringes other rights as well, including trademark rights.

Perhaps more so than when companies send their own DMCA Take-Down Notices, the use of third parties for DMCA Take-Down Notices can be problematic.  In addition to a third party's legitimate content being removed through DMCA Take-Down Notices, companies may also inadvertently request that a website operator remove their own content, as Microsoft recently learned when the company it uses for DMCA Take-Down Notices requested that Google remove links to several authentic Microsoft webpages.  Such a mistake is not limited to Microsoft or its third party service, LeakID – the same mistake was made earlier this year by HBO's third party service, MarkMonitor, which requested the removal of HBO webpages.

Accordingly, while outsourcing DMCA Take-Down Notices to a third party may help a company protect its intellectual property, it is not without risks if sufficient quality control is not in place.

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