It’s Friday, 8:30 AM, and you’re eating breakfast at your desk. Overnight you have received an urgent e-mail from Bob Shine, vice-president of Business Affairs. Bob is based in your head office several time zones away. For the past nine months you have been assisting him with due diligence in the divestment of one of your major brands to another large multinational. The negotiations are in their final stages.
Bob’s opposite number has just called him in an excited state. He has found something on the web he doesn’t like. ‘Plenty to choose from’, you think to yourself, but, reading on, you see that this concerns the brand that is being sold for several million dollars. The link Bob provides takes you to a website that prominently displays the registered mark, reproduces some brand imagery and refers to your company name. The purpose of the website seems to be directing browsers to online competitions and shopping sites, and there’s a section where users can register their personal details to receive ‘exciting offers and job opportunities’.
As luck would have it, you recently attended a seminar on the jurisdiction of US and EU courts in cases of online trade mark infringement. You quickly fire off an e-mail to Bob setting out the factors affecting jurisdiction and how they dictate the court in which he will need to bring his claim. It’s now only 9:30 AM, but, pleased with your morning’s efforts, you head off to the company gym to work up an appetite for lunch.
STOP THE TREADMILL!
Unless you’re very lucky, the first part of that fact pattern, or something quite like it, has actually happened to you. Unless you’re very lucky to still be employed, the second part hasn’t. Apart from everything else wrong with the actions we so unfairly attributed to you, you’ve worked with Bob Shine for nine years and know what he expects. Just like it says on his LinkedIn profile, Bob is a man who expects, and invariably gets, results.
In the circumstances, if satisfactory results can’t be achieved before the weekend, you suspect he might settle for some meaningful action.
WHERE DO I START?
For the past decade legislators and judges have been kept busy considering how territorial trade mark rights work (or don’t work) on the internet, and, in the EU, the new uses of brand names made possible by the web have led to an almost total re-analysis of what trade marks are, and when, how and by whom, they will be infringed. The new legislation and jurisprudence has been fascinating for the specialist practitioner and a hot topic for legal articles and seminars. But it has left the brand owner with more questions than answers about how to approach situations like the one just described. This article aims to give a brief, practical introduction to the steps brand owners can take to enforce their rights on the web, without involving the courts.
DO I NEED SPECIALIST ADVICE?
In at least two ways, intellectual property (IP) lawyers are like plumbers. If you really need one, the sooner you pick up the phone the more money you’re going to save in the long run. But if you can fix the toilet flush yourself, the opposite is probably true. In many situations brand owners can take practical steps without external advice. In others, eg where complex jurisdictional issues exist, the rights position is not clear, or the abuse concerned does not fit into one of the traditional categories of infringement, early specialist advice can help avoid potentially costly or embarrassing results. This article aims to provide the reader with a better feel for which is which.
BE CAREFUL OUT THERE
At this point a note of caution is necessary. Abuse of your trade marks on the internet requires the services of at least one internet service provider (ISP). This creates a weakness for your online infringer that you can exploit, but it also creates a risk when doing so. Allegations of infringement made to an ISP without proper justification can give rise to liability under the applicable law of unjustified threats or, occasionally ‘trade libel’ or similar, meaning you lose control of your complaint or, worse, have an award of damages made against you. For this reason, we urge caution in complex cases and recommend specialist advice where you have doubts.
CHOOSE YOUR BATTLES
Your first task is to decide how much, if any, of your time and attention a particular case deserves. There may be sites that profit from the reputation and goodwill of your trade mark, whether or not they actually infringe, but cause you little or no harm. On the other hand, the nature of the web means any unauthorised use of your trade mark could soon be copied by others, which can accelerate dilution of your brand. Defamation is outside the scope of this article, but slurs on your brand beyond fair comment should also be given due consideration.
Your rights position in the territory concerned, eg whether there are vulnerabilities in your registered rights that may be exposed, should influence your level of aggression.
INFRINGEMENT ON WEBSITES
We begin with a broad category, which includes use of a mark on the banner of a website offering identical or similar goods or services, or to redirect internet traffic to competitors. The common feature here is that the key ISP for our purposes is the webhost.
Where infringing content is hosted in an ISP’s webspace, the place to start is always the ISP’s ‘acceptable use’ policy, or equivalent, usually found on the ISP’s website. It will be based on applicable local law, and, invariably, contain a general prohibition on the misuse of others’ IP rights. A call to the ISP referring to the policy will often be enough to get the result you want; if not, it may support a subsequent ‘takedown’ notice, or empower the host to take action against its client.
Spending time on preliminary investigations pays dividends. Establishing the correct web host and its location is crucial. There are free online services that help with this task, but it can get technical. Check more than one WHOIS/server report. Alternatively, become friendly with someone in your IT department who understands this stuff. Taking evidence, in the form of screenshots, at the earliest opportunity is essential, but often forgotten. Dedicated web-caching software is useful, although it often struggles to take useful images of the site as it appears to the browser, particularly on Flash and Java sites.
In the EU, the Electronic Commerce Directive (00/31/EC) provides ISPs with broad so-called ‘safe harbour’ defences against liability resulting from the activities of their clients. In recent years some commentators have suggested that these provisions are too protective of ISPs, but for present purposes, they are very useful. A host can rely on the ‘hosting’ exception only where it has no knowledge of the offending activity, or acts expeditiously to remove or disable access on obtaining such knowledge. Sending a takedown request expressly referring to this limitation will put the onus onto the ISP to make the next move.
In the US, too, knowledge is everything. In Tiffany v eBay , which considered the extent of eBay’s liability for the sale of counterfeit goods on its site, it was made clear that the liability of an ISP depends on specific knowledge of a specific infringement, and cannot be constructed from general knowledge that a company’s trade marks are frequently infringed by users of a site.
Webhosts vary in their willingness to take down reported sites. If they refuse to help, it is up to you to escalate the matter. However, the simplicity of sending a takedown request, and the result it can achieve, make it a worthwhile step in most cases. People will tell you that the infringer can simply put the site back up on a different host within an hour. While this is true, you have not only put the infringer through the cost and trouble of doing so, but, if the host forwards your complaint to its client (it will often do little more), you have put the infringer on notice of your rights. Be aware of this if there are tactical reasons to wait; for instance, if you are waiting for a test purchase of suspected counterfeits to arrive.
There is no fixed definition of social media, but it typically involves the use of web-based technology to create a dialogue, share information, provide access to knowledge and develop a shared understanding. Well-known social media tools include social networking sites such as Twitter, Facebook and LinkedIn. Social media can be used by businesses to promote their brand. It can also be used by your employees, customers or competitors to share ideas and opinions about your business by reference to your trade marks. These comments may not always be favourable, but nor will they always be defamatory or infringing.
Monitoring all new content is likely to be impossible and attempting to interfere with the free discussion of your goods or services is a recipe for bad publicity. Action is usually best reserved for cases involving damaging or misleading statements about your brand. In these cases, as above, contacting the site operator to request that it remove the offending material and sanction the contributor is usually the best place to start.
AUCTION AND SHOPPING SITES
Readers in the fashion, luxury goods, consumer electronics or other sectors frequently targeted by counterfeiters will be familiar with eBay’s Verified Rights Owner (VeRO) Program to remove objectionable listings. eBay is not the only online auction site, but it retains a large share of the consumer market. Following the trail from a seller of counterfeit goods can often lead to business-to-business sites, eg the Chinese-owned AliBaba, which act as portals between manufacturers in low-cost jurisdictions and distributors worldwide. Just as eBay has changed its business model to focus increasingly on business sellers, its largest rival Amazon has moved in the other direction, and now offers a universal online trading platform for small businesses.
The basis of VeRO is the notice of complained infringement (NOCI), which acts as the notice and takedown. eBay itself provides a reporting tool for bulk reporting and third-party products are available to automate this further. Creating an ‘About Me’ page, setting out your company’s rights and how they are commonly infringed, is your way of participating in the ‘community’ aspect of the site. eBay maintains that these pages have a measurable effect on the number of infringements.
Because unscrupulous sellers on eBay are reassured by others selling the same counterfeit goods, it is important to be proactive: a concerted campaign of NOCIs against the worst offenders can make a real difference in a matter of weeks. eBay will punish the worst offenders with a temporary suspension, but you should not wait for them to return and recommence their activities. One of the attractions for unscrupulous eBay sellers is the perceived anonymity. By completing eBay’s personal information agreement (PIA) and obtaining registered contact details, you can lift the veil of secrecy. This allows you either to inform administrative bodies, such as the Trading Standards Institute in the UK, or contact the seller directly. You may be surprised at the extent to which a concerted campaign of simple letters can make infringers think twice, or at least persuade them to pick on somebody else.
The most high-profile online issue for the courts in recent years has been the internet search engines practice of listing paid advertisements above or alongside the ‘natural’ results of an internet search. Website owners can bid on certain keywords, which might include registered trade marks, and the highest bidder for that particular word or words, in that geographical region, has its site listed first. Not only do the advertisements themselves provide another prominent field for misuse of your trade marks, the bidder is arguably misusing your mark merely by using it as a keyword.
The courts of different jurisdictions differ as to whether using a mark as a keyword constitutes infringement, by either the bidder or the search engine. The policies of the search engines in responding to complaints of trade mark owners vary accordingly. In 2010, in three joined cases, including Google France & Google (Intellectual property), the Court of Justice of the European Union (ECJ) considered several questions referred under Article 5(1)(a) of the Trade Marks Directive (identical mark and identical goods or services). Until that time the position had varied across the different EU member states.
In Google France the ECJ held that the use of trade marks in keywords constitutes infringement only where the resulting advertisement does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to originate from the proprietor of the trade mark or an unrelated third party.
To many brand owners, and most trade mark lawyers, this is an unsatisfactory result – not least because it appears to introduce a ‘confusion’ test to Article 5(1)(a) infringements. In practical terms, it is difficult to conceive of a situation where use of a keyword could be an infringement without the sponsored advert it links to not already being an infringement in its own right. The outstanding references in Interflora, Inc & anor v Marks & Spencer plc & anor  and L’Oreal SA & ors v eBay International AG & ors  might force the court to add clarity, but we predict further challenges in this area.
Currently, in all but a few jurisdictions, a complaint through its AdWord policy will prompt Google to investigate only where the trade mark is used in advertisement text. In the US, current practice is not to disable keywords in response to a complaint by a trade mark proprietor at all. In the EU, it will currently investigate only where the keyword and the advertisement text, viewed together, give rise to the ‘confusion’ discussed above.
Domain names are useful tools for the infringer to make its site appear genuine, or receive e-mails at a genuine-looking address. Before approaching this aspect of enforcement, it pays to have a clear domain name strategy in place. Strategies can range from registering a single domain name and only attacking significantly damaging abusive registrations as they arise, to pre-emptively registering every domain name that includes your business names or brands and on which you would be prepared to spend money if they were later misused.
However clear and well implemented your strategy is, there will still be occasions where you will want to recover a domain name. There are three ways to do this without a court order. The first is to purchase it, directly or indirectly, from the infringer, however distasteful that may seem. Secondly, you could bring a complaint under the relevant dispute resolution service. Finally, you could negotiate a transfer, for example on the back of threatened infringement or domain name complaint proceedings.
Generic top level domains (gTLDs), including .com, .net and .org, are governed by the Internet Corporation for Assigned Names and Numbers (ICANN). Complaints in respect of objectionable gTLD names can be made under ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) to approved arbitration service providers. Complaints relating to country-specific domain names may be brought under the local registry dispute resolution services where these exist (eg Nominet for .uk names).
Decisions are name-specific. Retrieving ‘yourtrademark.com’ through a UDRP complaint will take a couple of months and may cost you a few thousand pounds. The infringer will, however, be able to restore their website in the domain ‘your-trademark.com’ in five minutes, at a cost of about £10. A negotiated agreement for transfer of the domain name has the advantage of including legally enforceable undertakings to prevent this.
CALL THE COPS?
Often, particularly in the financial services, recruitment and charity sectors, a brand will be used simply as a convenient cover under which to obtain personal details or cash. These cases can nevertheless be the most damaging to the brand.
Suspected criminal activity should be reported to the police. In appropriate cases, this can provide another route of enforcement, but the authorities have limited resources and will look for identifiable victims when deciding which complaints to investigate. The Federal Bureau of Investigation’s Internet Crime Complaint Center (IC3), which opened a decade ago, received over 300,000 complaints last year. The closest UK equivalent, Action Fraud, was launched recently. These services are designed to act as a central hub to receive and collate intelligence on fraudsters, and an electronic report can be built into your process for dealing with any fraudulent sites you find. Remember that if an investigation is started, you should ensure that you inform the investigating authority before you make direct contact with the target.
Situations like that at the beginning of the article can be avoided if you take steps to monitor the use of your marks on the web. This can be time consuming. Various providers offer software-based systems, or investigators based in low-cost jurisdictions, to trawl the web for unauthorised use of your trade marks. While this can be useful, it can also produce a terrifying number of results to be analysed and considered.
Google Alerts is a free, web-monitoring service designed to update you on specific content based on keywords you enter, and is quick to set up. Twitter is a powerful tool to track conversations about your business, brands and products as they happen. But the best free sources of information are your customers, and your sales and marketing teams. Make sure they know that you want to hear about sites they find and provide them with a simple means of reporting them.
GOOD NIGHT AND GOOD LUCK
Hopefully you can now venture out into the great, wide webspace with more awareness of the routes of enforcement available, an idea of the pitfalls, and a feel for where you can go it alone and where you need a specialist guide. If you still believe that you don’t have the time, resources or confidence to take some of these steps yourself, we hope you are now better placed to seek out the professional support you need and to know when you are being presented with the right options.
Which brings us to the other way IP lawyers are like plumbers: if the first thing you hear is a suck of air through the teeth and an estimate of 15 hours of associate time to research the type of cistern you have, you need to call a different one.