Using Copyright to Enforce in the Absence of Trademarks

Ed Jacobs
Director of Brand Protection, reCommerce

In our ever-evolving field, I’ve grown to understand “brand protection” as a fairly broad term that’s interpreted differently depending on the type of brand being protected. Every strategy will almost always require a multi-faceted approach based on the portfolio of products and yes, protecting brands involves protecting their trademarks—but these are usually solved with carefully crafted cease and desist requests “C&Ds”. Generally speaking, no one really wants to be forced into litigation.

Trademark claims are great protection if you own a trademark. But not everyone owns a trademark, through formal registration or common law, and it’s therefore not always possible to use a trademark to enforce on your brand or content. Accordingly, sometimes a copyright claim might be the most effective way to remove a product listing or unlawfully copied content. 

What is copyright (vs trademarks)?

BPP readers most likely know a few things in this regard. Like the fact that copyright is a type of intellectual property that can be protected as soon as it’s produced in a tangible format. Whether it’s ink on a page, paint on a canvas, a sculpture, a photo, an audio or video recording, or any form of digital content. Whatever it is, as long as authorship and/or ownership of the original content can be proven, it can be protected from unlawful reproduction, adaptation, publication, performance, and display. Unlike trademarks, copyrights don’t have to be formally registered with a government department like the USPTO or the UK’s Intellectual Property Office to be enforced, though this can be a requirement in order to collect damages etc. 

How do you enforce copyright online?

Thanks to the 1998 Digital Millennium Copyright Act (“DMCA”), it is illegal in the US to produce or distribute technology, devices, or services intended to circumvent measures that control access to copyrighted works. Since most online content is accessible globally, this makes it much easier to achieve content removals almost anywhere in the world. It also makes achieving swift copyright removals straightforward on most sites and platforms.

Major websites that publish third party content (YouTube, Instagram, eBay, etc.) have dedicated easy-to-access, copyright removal tools and processes. Major search engines like Google and Bing also have dedicated copyright removal tools, so if you’re struggling to remove content at its source, at least you can get it removed from search engine listings. For many copyright owners, search engine removals are just as important in tackling the problem as removing the content itself.

Links to DMCA forms, as well as agents and processes can be found in a website’s footer—”About Us,” “Privacy,” “Terms of Use,” or “Help” links etc. If you’re still unable to find the right reporting method, you should be able to dig around to find a contact method (email or physical) to submit a copyright removal request. Be sure to look up the domain’s WHOIS record and send the first notice to the site registrant as well. 

What should be included to ensure a copyright removal request is successful?

What if the initial DMCA request doesn’t work?

It should work 80-90% of the time as the DMCA provides third parties legal incentive to remove the listings. The remaining thorns in your side might require a phased approach. Escalating claims with the site’s hosting provider should get your removal rates above 90%.

Identify the hosting company behind the IP address your target URL is hosted on. Many nefarious sites are hosted on Internet Service Providers (ISPs) that provide anonymity and security for websites. By forwarding your notice to the hosting provider and showing that you’ve already sent it to the site owner, this should nip the problem in the bud, as most hosting providers specify in their Terms of Use that violating copyright is a breach of their terms. WHOIS records also usually include the necessary “abuse” emails for the domain registrar and hosting provider.

So now you’re at 95% removal rates. On rare occasions, you may encounter copyright violations on uncooperative ISPs, or language barriers that prevent effective communication. In these situations, you may need to escalate a claim to the relevant Regional Internet Registry (RIR).

Sometimes, you’ll find content replicated lawfully, for news reporting, criticism, or educational purposes. Accordingly, be diligent in assessing your claims. An overzealous approach will result in counterclaims claiming fair use at the very least. It’s at this point where you’d have to carefully assess whether the counterclaim claim is bogus or not and whether to retract or escalate your claim.

Are there any other removal techniques besides simply sending a copyright removal request?

Yes, although they often require some creativity to conceive and significant resources to accomplish removal.

After all, copyright and trademark laws vary across the globe. The British Recorded Music Industry (BPI) has estimated that online piracy costs the record industry £200 million a year (British Phonographic Industry, 2022). By leveraging §97A of the 1988 Copyright, Designs and Patents Act, the BPI succeeded in pursuing the UK High Court grant an injunction against the major UK ISPs, forcing them to block access to websites that have knowledge of someone using their service to violate copyright.

While this approach has managed to contain a massive problem and reduce the impact of copyright theft on a national scale, there are always obstacles (pirate sites creating hundreds of new proxy domains, bypassing ISPs using a VPN), no single approach is a guaranteed win. Keeping in mind the UK music industry also submits more than a million URLS to Google for copyright violations every day to combat online piracy (Google Transparency Report). As the battle wages on, copyright removal tools will continue to remain as relevant as traditional IP protection techniques.