“www” - World Wide Web or Which Weasel’s stealing my Work
The internet can be a business owner’s best friend and its worst enemy. While on one hand it can assist a company to reach a wide scope of potential customers; on the other hand it can provide others with the opportunity to infringe on its intellectual property.
You may wonder, “How can I prevent others from using my intellectual property online?” While it can be difficult to protect intellectual property online, there is legislation in place to ensure that others cannot blatantly use the intellectual property of others to cause confusion in the marketplace. The following are a few of the enforcement mechanisms unique to protecting online intellectual property:
Uniform Dispute Resolution Policy (“UDRP”)
While the registering of a domain name that is confusingly similar to a trademark does not constitute passing-off or infringement on its own, if the registration of the domain name fulfills the following three-part test:
- the domain name is confusingly similar to the your trademark;
- the registrant of the domain name does not have a legitimate interest in using the domain name for a particular purpose;
- the domain name was registered and is being used in bad faith
it is possible for the trademark owner to have the confusingly similar domain name transferred or cancelled pursuant to the UDRP. This proceeding takes approximately 60 days to reach a resolution.
Uniform Rapid Suspension (“URS”)
Parallel to UDRP, this mechanism also requires the fulfillment of the three-part test noted with UDRP, but the owner of the intellectual property must be able to provide evidence to support the allegations. The process of the URS is faster and less expensive than the UDRP process, no more than 25 days, but on average 7 days, to reach a resolution whereby the domain name is blocked for the remainder of the registration term. However, URS is only available to to new generic top-level domains (“gLTDs”) such as “.guru” or “.xyz” and is not available to gLTDs such as “.com” and “.org”.
CIRA Domain Name Dispute Resolution Policy (“CDRP”)
This mechanism is only available to “.ca” websites and the complainant must meet certain requirements to establish that they have a Canadian presence. The same three-part test as required under UDRP is required for the CDRP, the proceeding typically takes about 90 days and the resolution will result in the domain name either being transferred to the complainant or cancelled.
Internet Service Provider Assisted Content Removal
If you discover that your intellectual property, such as a photograph that you took or a poem you wrote is being used on another party’s website platform such as Facebook®, you can utilize the complaint procedure provided on such website platform. If such a complaint is issued, the website platform will typically either remove or block the infringing content, or will seek a resolution from the owner of the content comprising the infringing content.
If, instead, the infringing material is located on a stand-alone website, you may, pursuant to the Canadian “Notice and Notice” Procedure, contact the Internet Service Provider (“ISP”) of the infringement. The notice must set out the work being infringed, where it can be located, the date and time of the infringement, contact information of the complainant and confirmation that the intellectual property is being used in bad faith. The ISP is required to send notice to its customer of the complaint, must advise you when they send the notice and must retain a record of the notice for a period of 6 months to one year. If the material is not removed by the other party, the complainant may move forward with commencing legal action.
In addition, under the US Digital Millennium Copyright Act-Online Copyright Infringement Liability Limitation Act (“DMCA”) you can provide an ISP with a DMCA notice setting out the work being infringed, where it can be located, contact information of the complainant and confirmation that the intellectual property is being used in bad faith. This will commence the “Notice and Takedown” Procedure which will require the ISP to advise the entity posting the material of the DMCA Notice and, if a counter notice is not filed by the posting entity refuting the DMCA claim, the ISP will remove the material.