Lesson 3: Mechanisms Outside of Court to Enforce Your IP
There are mechanisms outside of the court setting that can be used to enforce your IP. While some of them may still require that you ultimately end up in court, sometimes the mere fact that you are invoking them against an infringer, as a first step in an overall enforcement process, can act as an effective tool to achieve your objectives without necessitating a full trial.
USING BORDER ENFORCEMENT
National IP laws or other pieces of legislation often contain sections designed to enable an IP owner to compel enforcement at the border to prevent infringing goods from entering the market.
In Canada, the Combating Counterfeit Products Act (CCPA) establishes several border enforcement measures aimed at preventing the importation of counterfeit goods. Specifically, the CCPA is aimed at copyright infringement and trademark counterfeiting and enables IP rights holders to take action against counterfeit goods before they enter the Canadian market.
These kinds of border control mechanisms have become an increasingly prevalent tool for IP rights enforcement in many countries around the world. They often require that a lawsuit for infringement be initiated either prior to or roughly at the same time as the seizures at the border. However, depending on the circumstances, the seizure of infringing goods coupled with the initiation of the lawsuit may be enough to stop the counterfeiters from continuing their activities without you having to proceed to trial.
USING TAKEDOWN NOTICES
In most countries, it is possible to have infringing content taken down by providing a notice of infringement to the internet service provider (ISP). In the case of online copyright infringement, countries have either adopted “notice and takedown“ or “notice and notice“ regimes.
The US system is a “notice and takedown” regime. Under this regime, the ISP that receives a prescribed form of notice from the copyright holder that it is hosting infringing content must remove or take down the infringing content. Canada’s system is different in that it has a “notice and notice“ regime such that when an ISP receives a notice that its service is hosting infringing content, its obligation is to provide a notice to the alleged infringer about the claims of the copyright holder. The matter is then left to the copyright holder and the alleged infringer to resolve.
You can also use this takedown notice method to compel online retailers to remove any websites offering infringing products bearing your IP, whether you are claiming based on your patent, trademark or industrial design rights. This can be effective at stopping the infringing behaviour without you having to go to trial against your online infringer. We will see this mechanism used with success in one of our case studies (Deckers Outdoor Corporation: UGG boots) as well as by Andrew in respect of his POLAR Pen.
USING TECHNOLOGY TO PREVENT INFRINGEMENT
The use of copy-control technologies has become another way of enforcing copyright rights. Embedding technologies that prevent copying or that otherwise manage the rights of the copyright owner can be effective in preventing unauthorized uses of copyrighted works.
In addition, copyright laws of a number of countries protect those who use copy controls from circumvention or tampering so that the copyright holder has rights against both the unauthorized downloader of infringing material and the individual who has developed the means to circumvent the copy-control technologies themselves.
Social media and other sites that are used for both legal and illegal copyright purposes may offer technological avenues of redress.
YouTube provides copyright owners with the ability to mute or block infringing videos. In addition, Google Inc. offers software called ContentID that can track infringing songs that are posted on YouTube. It then places revenue-generated ads on the music videos with the proceeds going directly to the copyright owner. In this way, even though the copyright owner was not given the opportunity to grant permission for the song to be posted on YouTube, they can nevertheless exact an economic return for the use.
Often, consumers will pay for legal alternatives to unauthorized downloading of copyrighted works. For example, Apple’s very popular iTunes service offers lawful downloads at reasonable prices. It doesn’t entirely curb unlawful downloading, but there is evidence to support the claim that most consumers will opt for a legitimate downloading service if given the choice and if the terms and conditions are reasonable.
Other uses of technology to curb trademark infringements can be found in the use of authentication technologies in consumer products. These are difficult to tamper with and offer consumers a guarantee of authenticity of the product. We will revisit this option in the Deckers Outdoor Corporation: UGG boots case study below.
Alternative fora exist to deal with enforcement of various kinds of IP rights. Here are two examples of this approach.
EXAMPLE 1: INTERNATIONAL TRADE COMMISSION
In the United States, the International Trade Commission (ITC) offers an alternative forum for owners of IP rights in the United States who seek to block infringing products from entering the US market. The ITC is an independent administrative tribunal that hears complaints brought by owners of US patents and registered trademarks in respect of alleged infringing imports and can grant remedies such as a ban on importation into the United States. This complaint procedure operates independently and does not require that an infringement lawsuit be filed.
EXAMPLE 2: REGISTERED DOMAIN NAMES
In the case of registered domain names that incorporate your trademarks or are confusingly similar to your trademarks, you might be able to use a quick and fairly cost-effective binding arbitration process to cancel the registration or have the domain name transferred to you. If you are successful in your domain name dispute, you will have effectively taken down the websites that are selling knock-offs of your products. The domain name dispute process could potentially achieve the same or a similar result as proceeding against an online seller of knock-offs under a trademark infringement action but without the delays and costs of a traditional litigation process.
If your domain name is registered under .com, .net or .org registrations, among others, this arbitration process can be initiated under the Uniform Domain-Name Dispute-Resolution Policy.
Some countries have their own arbitration procedures in respect of country top-level domain name registrations (in other words, domain names that end with a country code such as .ca or .uk). In Canada, see the CIRA’s Dispute Resolution Policy.
5. IP MEDIATION
In the right circumstances, you may be able to try to resolve your dispute through a mediation process. Mediation is a cost-effective, non-binding process that is led by the parties through a facilitated negotiation.
In enforcing your IP rights, you may be able to rely on alternative dispute resolution processes and avoid having to go to court. Or you may consider how to use alternative dispute resolution mechanisms to complement and support your overall litigation strategies.