Cutting through it all: practical ways to respond to online IP infringement

It’s a scenario which happens all-too frequently.  It comes to your attention that your IP is being infringed online – be that original media content which you’ve produced, marketing material which promotes your services or lookalike products being offered for sale.  A competitor or someone looking for a shortcut, such as an aggregator, decides to re-use your hard work.

There are numerous pieces of legislation and lines of caselaw which can come into play.  The risk is that you can end up going round in circles.  For example, the CJEU’s recent decisions on hyperlinking and making content available are all subtly different and a canny infringer will look to exploit that.

For in-house teams who need to react quickly to these infringements, cutting through the complications is important.  This is a risk balancing exercise, but in our experience the majority of infringements can be policed without it being necessary to engage in lengthy debate or legal proceedings with the infringer.  The key is to focus on pressure points to secure a removal.

• If the website with the infringing content is being hosted by a third party’s service, send a takedown notice to the hosting provider. In some cases, such as eBay, there is a specific service to help you do this – its Verified Rights Owners’ programme.  In other cases, you need to write to the hosting provider direct.  We find that a quick review of the hosting provider’s terms and conditions can pay dividends, as the T&Cs invariably state that the user must not use the service to carry out unlawful acts.  Explaining to the hosting provider that they are hosting infringing content, that this amounts to a breach of their own T&Cs and that they stand to be liable if they fail to remove it, very often has the desired effect.

• The infringing content is often distributed, by the infringer, to members of the public in return for payment and they will be using a payment mechanism. Banks and other payment service providers are under obligations not to allow their systems to be used for fraudulent purposes and we have had success in closing down infringing operations by sending appropriate notices to the payment service providers.  This can sometimes require a test purchase but you may well want to do that anyway so that you have evidence of the unlawful activity.

• You should also, of course, demand cessation by contacting the infringer direct. A direction of travel is being established by the CJEU in its decisions in GS Media, Stichtung Brein and Retriever Sverige – where the dissemination of the material (i) takes advantage of the effort of the original IP owner and (ii) circumvents protections which the original owner has tried to put in place, the law would entitle the owner to an injunction.  If the owner would be entitled to an injunction, they are in a good position to press for a cessation undertaking prior to proceedings.  Framing your demand with this outcome in mind will assist.

• Where a third party facilitates infringements, for example by providing a Wi-Fi network which is used to download infringing media, the law is developing so that the remedies which are imposed on these “innocent” facilitators takes into account their size and their resources. You should frame your request for a takedown or other practical solution accordingly.  For example, in McFadden v Sony the copyright owner was entitled to an injunction which just required the “innocent” facilitator to password protect the Wi-Fi network which he made available.  He was not held to be liable in financial terms for all the downloads which had occurred.  By contrast, in the recent website blocking decisions in England & Wales, the large ISPs (which clearly have far greater resources than Mr McFadden) were required to go much further and to take active steps to block access to specific websites which were responsible for both trade mark and copyright infringement.  Before launching against a third party facilitator, give some thought as to where on the size and resources scale they lie, the sorts of measures that a court might consider proportionate, and frame your request with these considerations in mind.

• Do not overlook that there may be a simpler cause of action available. If you can argue breach of contract or simple infringement of trade mark, you may well be able to avoid the more complex issues and arguments which surround liability for online infringement.  Of course, if initial demands and dialogue do not resolve the issue and proceedings are necessary, you may need to draft your claim on different grounds.  However, at the pre-action phase a cessation is a win, no matter whether you obtain that on the basis of complex or more straightforward claims.

• Also review your own terms of use of your website. A paywall is a clear indication that you have not authorised your material for general consumption.  Even if you do not use a paywall, you can put yourself in a stronger position by including express terms which regulate what level, if any, of reproduction or hyperlinking you will permit.  You then need to bear in mind how prominent you make those express terms and whether you use a “click to accept” arrangement.  Adding this type of term can help to swing things in your favour later down the line.

The law in this area will continue to develop and decisions will continue to play catch up with the technology.  Thinking laterally may well help you cut through what could otherwise become complicated arguments.