Countering Unauthorized Postings on the Internet
The internet has provided owners of intellectual property with virtually instantaneous and unlimited access to vast new markets and opportunities. On the other hand, the new medium has provided opportunities for copycats to make unauthorized use of others’ intellectual property works.
The Digital Millennium Copyright Act (DMCA) provides a legal and procedural framework and mechanism for quick take down of unauthorized postings of copyrighted works on the internet by Online Service Providers (OSP)s such as Google, Expedia, YouTube and eBay, to name a few, while at the same time, limiting liability to qualifying OSP’s.
To be eligible for the liability release aspect of the law, the DMCA requires that the OSPs promptly block access to allegedly infringing material following notification from copyright owner; that the OSP terminate the accounts of repeat offenders; and that they disclose the identify of alleged infringer(s) to the proper copyright owner.
The DMCA also provides a remedy for objecting to a take down by providing the affected party with the opportunity to file a Counter Notice with the OSP in an effort to restore the removed material. However, the DMCA’s Counter Notice process can be initiated only after the initial DMCA Take down process has been completed and the infringing material has been removed. Notably, the Counter Notice process cannot be used as a defense to a Takedown Notice or
to delay the process. The OSP must wait 10-14 days following receipt of a valid Counter Notice before restoring the removed item(s). The copyright owner, in turn, can prevent restoration of access by filing a complaint in court.
The DMCA only applies to copyrighted works. However, over the past decade many larger online providers such as Google, Amazon and eBay have extended a modified version of the DMCA to other intellectual property rights, such as trademarks, patents, rights of publicity, etc. Notably, the OSP’s who have adopted such DMCA counterparts have chosen to leave out the Counter Notice provision of the DMCA.
Patent infringement is the least common form of take down enforced by OSPs because most, if not all, require a court order as proof of infringement.
For take down requests dealing with trademarks, OSP’s typically require the same elements that a DMCA notice does: a statement of the owner’s rights, the type and location of the allegedly infringing item, identification of the alleged infringer (if available), and a penalty of perjury statement. In addition, most OSP’s now require a “test purchase” from the alleged infringer using the allegedly infringing mark.
The DMCA and its counterparts for other types of Intellectual Property are powerful tools, which, properly used, provide effective means for clearing the web of infringing material.
© 2017 Dr. Dariush Adli