CLE presented on January 20, 2015 by Lucas S. Michels, Ironmark Law Group, PLLC
Summary prepared by Jonathan M. Lloyd, WSBA IPS CLE Chair, 2014-15
Intellectual property and business attorney Lucas S. Michels provided an overview of online copyright and trademark enforcement in the United States and various jurisdictions around the world, including a detailed discussion of tailored enforcement strategies, procedures various countries have adopted to permit pre-litigation enforcement, and use of informal enforcement processes, including those maintained by retail and social media platforms.
Online copyright and trademark infringement is a significant, growing reality facing rights-holders today. Recent studies have estimated there is a $2 trillion global online counterfeit market fueled by online copyright and trademark infringement, with over 400 million users seeking infringing content on a monthly basis. Given this reality, rights-holders need to know how to develop and execute cross-border online enforcement strategies.
As infringers and their assets may be located in various jurisdictions, a rights-holder may need to take a number of steps in developing a tailored strategy to address infringement of its copyrights and/or trademarks:
- First, the rights-holder will need to determine the location of the infringing website and ISP – this can involve detailed review of information on the infringer’s website, as well as searches on the WHOIS website.
- Second, the rights-holder will need to evaluate jurisdiction in the U.S., which generally involves traditional minimum contacts analysis, while varying widely in in other jurisdictions.
- Third, the rights-holder will need to determine what rights, procedures and protections it possesses in the jurisdiction(s) in which it plans to take action to stop the infringement. In the U.S., this may include federal prosecution (registration), while in foreign jurisdictions, a key step will be verifying national treatment, which may be established through international intellectual property treaties such as World Intellectual Property Organization (WIPO) treaties, or comprehensive trade agreements such as the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), as well as bilateral and multilateral U.S. Free Trade Agreements (FTAs).
- Fourth, the rights-holder will want to consider various pre-litigation enforcement procedures, such as cease-and-desist letters and notice-and-takedown procedures, whether under the Digital Millennium Copyright Act (DMCA) or analogous procedures in other jurisdictions.
- Finally, if the rights-holder is unable to obtain relief, it may need to commence litigation enforcement procedures. In doing so, it will need to consider the effectiveness of various available judicial systems, as well as the enforceability of any ultimate award it may obtain.
Mr. Michels provided a detailed discussion of various pre-litigation enforcement mechanisms, including specifically the DMCA notice-and-takedown process and similar regimes other jurisdictions have adopted. The DMCA process provides a cost-effective and expedient approach to stopping infringement, and can be effectively used both to address individual instances of infringement, as well as educating ISPs about serial infringers, but its use has been controversial. A number of other countries have adopted similar notice-and-takedown regimes, while other jurisdictions have adopted different approaches, including notice-and-notice regimes, and expedited judicial injunctive relief processes. Finally, while the DMCA process and many of its counterparts apply only to copyright infringement, judicial decisions in multiple jurisdictions have acknowledged similar notice-and-takedown safe harbor systems for trademarks.
In addition to these formal pre-litigation enforcement procedures, many online retail and social media platforms offer mechanisms that allow rights-holders to address infringing use of their intellectual property. In order to utilize these procedures properly, it is important for rights-holders to carefully review the retail or social media platform’s terms of service and privacy policies, particularly focusing on its right to submit intellectual property complaints and any limitations on the platform’s obligation to respond.
Generally speaking, in utilizing pre-litigation enforcement procedures, it is important for rights-holders to be as detailed as possible in submitting tailored infringement notices and complaints, as well as providing vertical notifications (to all parties they can link to the infringement) and where necessary, repetitive notifications. It can also be effective for rights-holders to consider, and where appropriate, to assert alternative claims or bases for recovery, such as unfair competition, personality rights, privacy rights, moral rights, etc.
The preceding summary discusses certain key points discussed during the CLE presentation, all of which were outlined in greater detail in the accompanying written materials. This summary is a publication of the WSBA International Practice Section, and is posted with the approval of the speaker and the WSBA International Practice Section executive committee. It is designed to inform members of the WSBA International Practice Section of recent legal developments, and may not be used to claim CLE credit. This summary is not intended, nor should it be used, as a substitute for specific legal advice as legal counsel may only be given in response to inquiries regarding particular situations. If you have specific questions about this topic, please feel free to contact Mr. Michels by email at email@example.com or by phone at 206-547-1914.
For the original announcement of this CLE, please visit HERE.