The Federal Lawyer: A Quick Fix for Online Trademark Infringement

Articles / July 1, 2012

Cleveland Partner Deb Wilcox and Cleveland Associate Courtni Thorpe authored an article for The Federal Lawyer entitled, "A Quick Fix for Online Trademark Infringement," in July 2012. The articles discusses ways of addressing scams occurring on the Internet involving trademark infringement and fake offers that abuse company brands. Wilcox and Thorpe advise on ways to combat these issues, including one of the "most efficient and cost-effective means of addressing these scams:" contacting the Internet service providers to ask for removal of content or disabling access to the sites on which the infringement occurs. The article continues on to discuss the best practices for handling the removal of material infringing on trademarks.

The Digital Millennium Copyright Act (DMCA), Wilcox and Thorpe write, includes instructive content for establishing best practices for handling material infringing on a trademark. "Under the DMCA, every ISP has a duty to develop a policy and procedures for the removal of infringing material and forward the notice to the website owner, who will then have an opportunity to present a counter-notice if it claims the material does not infringe copyright." A number of ISPs have extended DMCA policies and procedures to cover trademarks as well as copyrights, meaning they will generally respond to a takedown notice for trademark infringement in the same manner.

The most difficult step in the process, the authors write, is locating the correct ISP that is providing hosting services and server space for the infringing site. Wilcox and Thorpe outline the steps necessary to identify the providers, including identifying the IP address used. Following identifying the ISP, one must review the ISP's trademark policies to determine the appropriate content of a takedown notice.

"Sending a takedown notice," write Wilcox and Thorpe, "is a quick and easy way to stop trademark infringement on a particular website…keeping a detailed record of the infringement websites and the steps taken against the infringers will assist if litigation becomes necessary."