How to Deal With Copyright & Trademark Infringements
By Eric Carter
“One day I was chatting with some of my readers and someone asked if I ran another site. At that time, I didn’t. He then linked me to a site that had almost everything I had posted, nearly 5 years’ worth of stuff, all plagiarized under someone else’s name.”
That’s how Jonathan Bailey describes his first encounter with someone stealing his work. That experience was the first step in Jonathan’s eventually founding Plagiarism Today.
If you find yourself in Jonathan’s shoes, what should you do? How do you respond to copyright or trademark infringement?
Don’t’ rush to legal action
Seeing your work claimed by someone else is infuriating.
You might be tempted to take all action necessary to stop the infringement and punish the infringer.
Before jumping to legal action, pause and evaluate the situation in three steps:
- Review your copyright and trademark portfolio
- Determine the scope of your protection against the infringing behavior
- Decide what you want to happen
Review your protected intellectual property
First, review the scope of your copyrights and trademarks.
Even if you effectively filed for and received protection under copyright and trademark laws, you aren’t necessarily protected in all circumstances.
To fully protect your marks and material, you must comply with additional requirements for ongoing protection. Legal terms like use in commerce, continued use, maintenance, and renewal play major roles in determining the scope of your protection.
If you aren’t familiar with these terms, or you question whether you have enforced your rights, you may need the help from an attorney.
Determine the scope of your protection against the infringing behavior
Certain behavior might seem obviously infringing to you, but isn’t actually infringing under the law.
You need to answer the following question to understand your rights against other parties:
Does the language of my copyright or trademark actually prohibit the alleged infringer from using the mark or work in the manner I find infringing?
Answering this question accurately is more challenging than you might think. Technical terms in intellectual property law (e.g. fair use, first amendment, acquiescence, laches, first use, etc.) may permit the alleged infringer’s use.
Consult a copyright or trademark attorney to help you with this question, if possible. If an attorney isn’t an option, find another business owner who has experienced intellectual property infringement. At the very least, ask an objective third party who can review your copyright or trademark against that of the infringer for an unbiased opinion.
What do you want to happen?
The answer to this question might seem obvious. You want the infringer to stop infringing.
This might be true in many cases. But, not always.
When the music industry started its move to online streaming, artists around the world filed countless copyright infringement claims and feared for the future ability to protect their work.
Their concern was legitimate:
How could musicians make a living when online platforms gave away their music for free?
However, some artists saw a business opportunity. Online music platforms represented the cheapest and fastest method in history to get music to a listener base of unprecedented size.
Some artists worked with the streaming services. They worked out agreements where the artist earned a royalty each time a song was played. The streaming services that worked with musicians gained credibility with musicians, and artists grew their ability to reach new listeners.
Now, consider potential infringement of your marks and material. Instead of a legal battle, is there a business opportunity?
Legal action is expensive. Always.
Business opportunities are lucrative. When answering, What do I want to happen? Look for resolution through partnership if possible.
Legal Step One
If your legal rights are infringed, and no business opportunity exists, consider your legal options.
Fortunately, there are simple and cheap first-step options for copyright and trademark owners.
Cease and desist letter
A cease and desist letter is the most common first step in asking someone to stop an infringing behavior.
A cease and desist letter is a letter from you, the owner of a mark or copyright, to the infringing party that demands an end to the infringing activity. They range from multiple pages filled with details to single-page summaries. But, at a minimum, a cease and desist letter should include:
- Introduction of your company and business
- Identification of your legally protected intellectual property, and relevant information
- Copyright: title of copyrighted work & registration number
- Trademark: mark & registration number, description of associated goods/services, number of years in use
- Description of the infringing behavior
- Conclusion that the infringement damages your business
- Demand for the immediate end of the infringing behavior
- Demand for written assurance that the infringing behavior has stopped and will not resume in the future
Attorneys may choose to include more details in cease and desist letters (e.g. value of copyright or trademark to the business, examples of previous enforcement action, etc.). Such details can help your cause but can harm it as well. Unless you hire an attorney to draft the letter, it’s best to keep it basic.
Are cease and desist letters effective?
Cease and desist letters can be effective to the point of full resolution. But, in the event that they don’t resolve the infringement, they are effective to establish your legal claim.
Often, individuals or businesses inadvertently infringe intellectual property rights. The modern business and artistic marketplaces are hyperconnected. Works are created in open source environments and distributed freely across online platforms.
Accidental infringement occurs frequently.
A cease and desist letter to an accidental infringer has a good chance of ending the infringement.
If the infringement is intentional, or the infringer disagrees with your interpretation of rights, the letter might not lead to a resolution. But, the letter plays a valuable role in establishing your claim if the claim goes to litigation.
First, the letter creates evidence that you as the intellectual property owner intend to enforce your rights to the copyright or trademark. Enforcement is a helpful, and sometimes required, element of winning an infringement claim.
Second, the letter demonstrates your effort to resolve the issue without involving the legal system. Judges and juries are sympathetic to parties who try to resolve an issue without filing a lawsuit.
Should an attorney draft the cease and desist letter?
Hire an attorney to draft your letter if possible. Attorneys have template cease and desist letters that they can easily modify to incorporate your facts. The letter should only require a few billable hours from an experienced attorney.
Attorneys are helpful in drafting because copyright and trademark laws and nuanced, and confusing to most people. A poorly drafted, or poorly researched, cease and desist letter can leave you legally exposed to the party you claim infringes your rights.
For example, if your enforceable rights are not as broad as you think they are, your letter could lead the infringing party to hire an attorney and file for intellectual property protection in the narrow area that your copyright or trademark doesn’t protect.
Additionally, your cease and desist letter could prompt the other party to file counterclaims against you.
Online Tools
If you find the infringing behavior on an online platform (e.g. Google, Facebook, YouTube, etc.), you may be able to stop the infringing behavior through the platform provider’s online portal.
DMCA
The Digital Millennium Copyright Act (DMCA) is a law that disallows technology service providers (e.g. Google, Facebook, etc.) from distributing or producing copyright protected works on their platforms without proper permissions.
If you find infringement of your copyrighted material on one of these platforms, most platforms maintain online portals where you can report the infringement and request content removal.
Although the DMCA is specific to copyrights, most service providers allow trademark owners to report trademark infringement through the portals as well.
Your chances of success through these portals is largely dependent on the quality of information you include about your copyright or trademarks when entering data into the portal.
To familiarize yourself with the process and the data requested, take a look at some of the following portals:
These portals won’t get you access to the actual infringer, but they do help limit the distribution of the infringing material. Stopping distribution helps preserve the value of the mark or material to your business.
Should an attorney make your DMCA claims?
Most of the online DMCA portals were designed for the average user, and use layman’s’ terms. If you have information about your copyright or trademark, you can probably fill out the required information without an attorney.
However, if you don’t have success with the online portal, an attorney can help you escalate the issue. The next step in a DMCA claim is a DMCA takedown notice.
Think of a DMCA takedown notice as a cease and desist letter for the platform where you find infringing material.
You need an attorney do draft takedown notices. Effective notices include specific legal elements. If these elements aren’t included in the notice, you will get no attention from the service provider attorneys, and your notice will be ignored.
Legal Step Two
If you have no success with your personally drafted cease and desist letters, and DMCA portals, it’s time to hire an intellectual property attorney.
Some more options before filing a lawsuit
In most circumstances, you should only file a copyright or trademark lawsuit if you have exhausted all other options. Your attorney should know this, but it’s your responsibility to make sure your attorney understands your position.
The average litigation costs start in the mid six figures, but often spike into the millions, for each party in the suit.
Accordingly, engage your attorney to assist you with other options.
At this point, you have established a legal cause of action through at least a cease and desist letter. With a legal claim stated, you now want your legal representative to be the sole point of contact.
When your attorney becomes the main point of contact, you convey to the infringing party the seriousness of your claim. In most cases, this forces the other side to hire their own counsel.
Hopefully, the attorneys can unemotionally address the legal rights of both parties and the alleged infringement. The ultimate goal of both attorneys should be a settlement.
Settlement does not necessarily mean that the infringing party pays the claimant party some amount of money to avoid a lawsuit. A copyright or trademark settlement often takes the form of a business agreement.
The business agreement addresses the problematic situation that led to the infringement claim and establishes ground rules for future business practices. Here are some examples of business agreement settlements:
- Royalty Agreement
- Coexistence Agreement
- Trademark License Agreement
- Copyright License Agreement
- Settlement License Agreement
- Consent Agreement
- Distribution Agreement
Don’t hire an attorney merely to sue the infringing party. Hire the attorney to help identify all potential options, and advocate the best options to the infringing party’s attorney. In most cases, a resolution through settlement is better than spending millions on litigation.
The nuclear option: litigation
When all else fails, sue.
Prepare yourself. Litigation is expensive, slow, and emotionally draining.
Even if you win your case, your cause for celebration will be offset by the time and resources spent away from building your business.
Copyright and trademark infringement are an inevitable risk to your business. Fortunately, if you discover infringement, there are tools available that can help resolve your claim without filing a lawsuit, spending millions and risk sacrificing your property.
If you do discover that your property has been infringed, keep your head, know your rights and take action.
To read more about Jonathan Bailey’s experiences with plagiarism check out his interview. Or visit his website Plagiarismtoday.
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Originally published at QuickBooks Resource Center.
