Carl J. Spagnuolo, Brian Taillon

Summer 2008

McHale Slavin Newsetter

Wild, Wild Web!

by Carl J. Spagnuolo
Entertainment, Trademark & Copyright Attorney
and
Brian Taillon
Intellectual Property Attorney

The Internet has created a marketplace never contemplated by our forefathers. Legitimate, well-respected retailers and con-artists alike have found the Internet to be a veritable field day for commerce. Protected music is traded amongst millions of audiophiles with a sense of absolute entitlement. Counterfeit products are offered for sale under the guise of legitimate trademarks. In this respect, the Internet has certainly lived up to the often-applied moniker of the "wild, wild west." However, intellectual property laws are adaptable to provide the owners of protectable intellectual property the ability to protect their products.

Trademarks

Trademarks are posted on websites in an effort to divert customers and otherwise used in fashions no one could have ever even conceived merely ten years ago. Auction websites have become such a fertile ground for trademark infringement that a number of the more reputable auction websites have established procedures wherein the owner of a Federal Trademark Registration has the right to report infringing material. These more reputable websites will cause the infringing trademark or its misuse to be removed in a form of self-policing. Those dealing with reputable auction sites, such as eBay®, will often find that holding a proper Federal Trademark Registration, and the posting thereof, will lend itself to a lower cost of enforcement, both in time, finances and effort. Check out the rules of each auction site that you deal with regarding their policy for preventing unauthorized uses of trademarks. If a policy is in place, they are often very effective and should time, finances and effort. Check out the rules of each auction site that you deal with regarding their policy for preventing unauthorized uses of trademarks. If a policy is in place, they are often very effective and should always be used as the first line of action should a trademark be infringed in the context of an online sale or promotion. With less-reputable websites, online auctions, and online retailers, the cause of action for federal trademark infringement may still be brought before the court system and the accused website owners may be party to an infringement under the theory of contributory infringement. If possible, the use of revised copyright laws may still avoid the need for engaging in federal-court litigation.

Copyrights

Copyright law protects a given expression, (film clip, photo, text, music, artwork, etc.), and may be used to persuade website operators to remove any purported unauthorized posts of those items. Again, the more reputable websites such as MySpace, YouTube and Google will generally comply voluntarily with the request/demand of a "takedown notice." A "takedown notice" consists of a writing sent to the infringing service provider which clearly identifies the copyrighted work infringed, as well as the infringing material and its location. The "notice" also provides contact information for the individual making the request, with a statement that the request is made in good faith, verification that the information is accurate and that the person making the request is authorized to act on behalf of the copyright registrant, accompanied by a physical or electronic signature of the person authorized to act. Federal copyright law has been updated to address this area wherein the Digital Millennium Copyright Act of 1998 provides a safe harbor provision for online service providers from liability as long as they "act expeditiously to remove, or disable access to" infringing material following formal notification. Placing an infringing website on notice of this Copyright Act may entice an infringer to rectify the situation through a quick response or face the risk of being classified as willful infringers. If the service provider immediately removes the infringing material they fall within the safe harbor provision of the copyright law and will not be subjected to the statutory damages for copyright infringement or payment of attorney’s fees. An easy example to observe is the frequent posting and removal of television clips and movie clips on YouTube. A popular clip may be there one day, and removed the next. These occurrences are typically attributed to voluntary compliance with "takedown notices."

Summary

Selling a product, on a global basis, through the Internet has created both a benefit to the retailer and an exposure to theft of intellectual property rights. However, by proper registration of trademark and copyrights, the retailer can take advantage of the protections of U.S. law and the policies provided by reputable service providers and auction sites to help protect their claim of ownership, in many cases without the need to rely upon the court system. When Trademark Law and Copyright Law is used in combination, once an infringer understands that have a "safe haven" if they act expeditiously to remove the infringing material we have many infringers will comply with a demand notice so as to avoid litigation.

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