The Digital Millennium Copyright Act (DMCA) is the law that provides copyright owners with remedies if their works/content are being used unlawfully on an Internet site.  While there are some administrative requirements to exercising remedies, the main requirement is that the copyright owner believe in good faith that its content is being misappropriated.

In a recent United States district court, an additional requirements has been added before a copyright owner can utilize the DMCA. Basically, the court ruling states that under the DMCA, a copyright owner must first evaluate whether the use of the material is a fair use of the copyright PRIOR to demanding that copyrighted material be removed from an Internet site. The court held that a copyright owner acted in bad faith by issuing a takedown notice without proper consideration of the fair use doctrine.

Unfortunately, fair use is a fact based inquiry and so it is not always easy to determine whether or not a use is fair use (even for a trained intellectual property lawyer).  In this case, the court acknowledged that there is no bright-line rule with respect to what constitutes “fair use” of copyrighted material.  Factors to consider in making this determination include (1) how much of the original work was reproduced; (2) whether the new use is commercial in nature; (3) whether the market for the original work was harmed; and (4) whether the new work is a parody.

Copyright infringement on the Internet is a rapidly growing problem because it is so easy to copy and publish material.  This case clearly adds another hurdle to enforcement which can be costly if a copyright owner needs to hire a lawyer to assess fair use.  However, the court ruling makes sense given that fair use is an established and protected use of copyright material in the US.

One big issue with the Internet is that it is really easy for competitors and other businesses to publish and share content on the Internet. Because many Internet businesses are so easily reproducible, the biggest competitive advantage you can create is developing your BRAND in your market.

Think about the best brands on the Internet- Amazon, eBay, Google, Facebook for example.  People choose to visit sites and do business with these companies sometimes because of their brand reputation. While you may be operating a much smaller business, your brand is still going to be the most valuable asset to your technology or online business.

Now, as you develop your brand and establish your trade names and trademarks, there may be others out there who will seek to exploit them.  One method includes attempt to try to confuse the public into buying their products and services based on the customers thinking it is part of your company – this is through the unlawful use of your trade names or trademarks on your site.

If you ever find one of these culprits, what can you do?  There are two things you can do immediately.

1. First, find the owner of the site with the offending content and send them a cease and desist letter.  This is basically a letter notifying them of the infringement and asking them to remove your marks and any other infringing content from their website immediately.  You can send this directly or have your lawyer send out on law firm letterhead (there is nothing to get people to behave more than sending letter from a lawyer).

2. Second, there is a law called the Digital Millennium Copyright Act which provides an avenue for you to send a letter to the internet service provider or the website that is hosting the content where your trademark resides.  Now, this company can be a hosting provider like GoDaddy or Hostgator, but it also includes every major website that hosts content (e.g., Google, Yahoo, Facebook, YouTube, Craigslist).

They will have a policy on their sites for how you can notify them of an infringement in their hosted content.  Make sure you follow their policies exactly as written.  They all have staff dedicated to this because if they do not take down infringing content once they are put on notice of it, they could later be held liable.  The law requires that have a policy.

The law has specific requirements for what should be in the notice to the service provider and you should review the specific provision before preparing one, but generally it requires -

- a signature of the person who owns the trademark being infringed

- adequate description and location of the infringing material (URL link)

- information to help the provider contact you

- a statement that you in good faith believe that the use of the material being complained of is not authorized by the owner or the law

- certification of accuracy