*Note* The Meeting below has been cancelled. Further information is available here.
The U.S. Patent and Trademark Office (USPTO) announced late last week that it will hold a public meeting on July 17, 2017 at its Alexandria, Virginia headquarters on measuring the impact of voluntary initiatives to reduce online intellectual property infringement.
As private online retail and social media platforms such as Amazon and Facebook are becoming the main channels in which people shop and socialize respectively, voluntary IP enforcement measures taken by these and other online parties are increasingly shaping how IP is enforced online—with both positive and negative reception. Google is a perfect example of this phenomenon. Google currently handles millions of online copyright and trademark takedown requests a day, up from merely dozens a day just a decade ago. Based on its heightened role as one of the Internet’s main search engines and online service providers, Google has developed its own voluntary initiatives to deter trademark and copyright infringement including removal of listings that have received repeated notices of IP infringement. While arguably taken to protect against any contributory liability (see 17 U.S.C. § 512(i)(1)(A)), Google’s voluntary enforcement measures such as its removal of repeat infringers is shaping how IP is protected online and how content rights holders address online IP protection. Despite such influence, Google has in the past also faced scorn by such rights holders for not going far enough with other voluntary measures, such as demoting search results of known infringers.
The July 17th meeting is a part of the USPTO’s recent outreach efforts to such interested parties concerning their voluntary online IP enforcement regimes, and is intended to evaluate how such private parties are addressing online IP enforcement—both and home and abroad. Topics to be discussed at the meeting include (among others) evaluating the effectiveness of self-regulatory regimes, presenting case studies of certain private sector initiatives, discussing the role of voluntary undertakings in raising consumer awareness and stemming revenue flows to bad actors (i.e. infringers), as well as others.
Further information about the meeting is available here.
Wanted to let you all know that I will be speaking on cross-border online copyright and trademark enforcement at a Washington State Bar Association – International Practice Section seminar on January 20, 2015 at Noon at Davis Wright Tremaine LLP in Seattle, Washington.
Titled Online Copyright and Trademark Enforcement in the U.S. and Abroad, the seminar will cover issues in obtaining cross-border protection for copyrighted works and trademarks, understanding copyright and trademark enforcement systems in the U.S. and other jurisdictions, and using copyright and trademark enforcement measures on major online social media and retail sites such as Google, Facebook, Amazon, Baidu and others.
Further information on attending the seminar can be found here.
Hope you can make it. It should be fun!
I have had the privilege to write an article on combating international online trademark infringement in ornamental and fruit varieties for the CIOPORA Chronicle, an annual publication of the International Community of Breeders of Asexually Reproduced Ornamental and Fruit Varieties that focuses on the “recent changes and developments in the field of Intellectual Property Protection for plant innovation.”
It is available on pages 24-25 of the 2014 edition of the CIOPORA Chronicle at: http://www.floraculture.nl/digizine/ciopora_june2014/index.html.
Last week, I had the privilege of being a guest writer for Seattle-area based Efinitytech on an article dealing with infringing online advertisements. Although it was focused on combatting trademark infringing online advertising on U.S.-based search engines such as Google, Bing and Yahoo!, as well as U.S. social media sites such as Facebook and Twitter, it contained many of the same considerations trademark owners, and their agents, should consider when combatting infringing online advertisements abroad. However, there are a few additional foreign issues trademark rights holders should consider.
1. Obtain A Trademark Registration. U.S. businesses generally need a U.S. federal trademark registration to submit an advertising complaint to a U.S. online advertising website. A U.S. federal trademark registration establishes a presumption of ownership and exclusive rights in a trademark in the U.S. This gives U.S. search engines and social media sites assurances that a filed advertising complaint is valid.
Additional Foreign Considerations: A trademark registration is also generally required to submit ad complaints in other countries. Many countries do not even recognize a business’ rights in a trademark unless it has registered the mark with the country’s national trademark office. As a result, Google, Bing and Yahoo!, their foreign subsidiaries, as well as many other foreign advertising sites, require that a business have a valid trademark registration in the country where they are filing an online ad complaint. This means that if a rights holder wants to enforce their trademark rights against a foreign ad, they generally have to have a valid trademark registration in that foreign country.
2. Advertising Websites Have Different Trademark Enforcement Reputations. U.S. search engines and social media sites have their own track records for responding to advertising complaints. For example, Bing and Yahoo!’s U.S. sites will often remove an infringing ad upon evidence of a valid U.S. federal trademark registration, while Google U.S.’ site generally declines removing ads infringing a descriptive trademark, even if the mark is federally registered through acquired distinctiveness (aka secondary meaning).
Additional Foreign Considerations: The varied reputations of online advertising sites’ handling of trademark ad complaints are even more disparate at the global level. Many foreign sites have good track records, while others less so. Also, some foreign advertising sites have ad enforcement features that offer benefits beyond those offered on most U.S. websites. For example, China’s leading search engine, Baidu, allows trademark rights holders to register their Chinese registered marks with their representatives in order to prevent others from purchasing infringing ads and ad words on their website. However, like Google, Baidu’s IP enforcement system is imperfect, as it has been criticized in the past for failing to stop the sale of ad words to fraudulent advertisers.
3. Multiple Ad Complaints May Need To Be Filed. Trademark rights holders may need to submit multiple complaints against an infringer before an infringer’s ad appears removed. This can be due to the ineffectiveness of an advertising website complaint system, or more likely because an infringing advertiser has made several ad purchases, requiring the submission of multiple ad complaints in order to effectively remove all of an infringer’s advertisements.
Additional Foreign Considerations: None. Additional complaints may need to be filed for foreign trademark ad complaints as well.
4. Consider The Ramifications Of Filing An Online Complaint. Lastly, submitting an online ad complaint may impact an infringing advertiser’s online reputation as well as the trademark rights holder. Based on these ramifications, trademark rights holders should consider reaching out to alleged infringers, either directly or through an attorney, to see if the disputed ad can be removed amicably.
Additional Foreign Considerations: The consequences of filing online trademark ad complaints abroad is as significant, or even more so, then doing so in the U.S. As I have previously highlighted, countries maintain different beliefs and perceptions towards the legal rights that should be given to trademarks and other forms of IP. In particular, several important and emerging foreign markets such as Canada, Chile and New Zealand disagree with forceful online IP enforcement, as seen in their current rejection of copyright website takedowns. This means that submitting online trademark ad complaints may have similar or even more negative reactions in a business’ particular industry (and among the public) abroad than at home. Based on these circumstances, businesses should feel even more inclined to first reach out to foreign infringing advertisers before they submit online ad complaints.
What’s The Takeaway? As combatting infringing online advertisements has many of the same challenges and considerations in the U.S. as abroad, businesses wishing to protect their brands abroad need to identify the countries where they have or may have significant business and develop strategies to protect against online ad infringement. This requires considering foreign trademark registration, identifying major foreign online advertising websites, and developing processes and procedures to monitor and enforce rights against infringing advertising activity on such websites. Doing so can help businesses to more effectively protect their brands in the foreign markets they wish to grow.