Successful brand? Protect it from online infringement
By Jessica Ward
Branding efforts are important contributors to a company’s success and form a key component of intellectual property. As such, achieving a successful brand means that a similar business may seek to use that intellectual property in an attempt to capitalize on associated goodwill.
How to address these matters will depend on the content being used and the copyright or trademark laws that apply. Infringing content that involves obviously copied material such as images, logos, and registered trademarks can often be removed through requests to the hosting website.
However, intellectual property infringement also can occur through a business imitating another more successful brand, but without using identical content. Legal action is typically required to address infringement and protect the intellectual property contained in a successful brand.
Taking action to remove copied content through website processes
When a company posts content originally posted by another business, it can often be readily removed through a simple notice process to the hosting website under applicable copyright or trademark laws. Copyright infringement typically involves the use of copied photographs, and where it does, this method will typically be successful. Trademark infringement, in certain cases, may also be addressed through these self-reporting mechanisms if the infringement is a readily apparent use of your trademark and proof of its registration can be supplied.
The process for removing content is relatively simple and effective. The rights owner is required to submit the notice to the website or may assign an agent to do so. The person submitting the notice must provide evidence of the infringed content, the original content, and ownership of the rights to the content. The person submitting the notice must also sign a legal declaration, usually digitally, which affirms their belief in good faith that the infringing content is unauthorized, and their authorization by the rights owner to act in making the notice.
Notices are most effective when they clearly outline evidence of infringement for the reviewers of these requests. This can often be accomplished through a table of links or screenshots demonstrating the infringing content and corresponding original content. If the copied photos or use of a registered trademark is readily discernable, a first notice should be successful. However, the hosting provider may request further evidence to support the notice, or deny the request without further inquiry. If either occurs, sending a legal letter to the hosting website that describes the grounds for claiming infringement under applicable laws can result in successful removal.
Addressing infringement when a business imitates a brand
In many cases, when the protecting content is imitated in a manner that is a similar (but not exact) copy of protected material, hosting providers will typically refuse to remove the content. This is a common form of infringement and known as “passing off”. Confusingly similar branding will constitute passing off. This may involve using branding elements similar to a company that first operated in the same market with the branding in question. Such branding elements are protected intellectual property. Companies whose intellectual property is the subject of passing off may find recourse in the Trademarks Act.
Copyright or trademark law does not protect a business model alone. Even if the business itself is distinct and innovative, any other company may launch a similar but commercially distinguishable business. But a company entering and operating in any sector has an obligation to ensure its branding is distinct from other businesses separate already operating in that market.
Passing off is typically shown by a pattern of content that is obviously copied in a manner that imitates or causes confusion with the first business. For example, a company may reword slogans, copy photo styling while using its own original photographs, or use a similar website design and layout. The extent and obviousness of the infringement will differ in various instances.
If a company infringes upon intellectual property in a manner that constitutes passing off, the matter may be resolved through sending a cease and desist letter. This is a letter prepared to clearly establish a legal position, demonstrate the intellectual property infringement and request specific actions to resolve the issue. Sending a letter may be successful, but it depends entirely on the infringing company to act and stop its infringement. If the infringing company does not comply with the requests made in the demand letter or does not negotiate a satisfactory resolution, the matter may warrant taking further steps to litigation. Whether it is advisable to escalate the matter by engaging in litigation depends on the circumstances of the infringement and the risks and benefits of further action.
Actively protect intellectual property and its value
Whether infringement of intellectual property takes a form best addressed through online processes, demand letters or litigation, it is critical to be aware of any infringement and promptly address the matter. Branding should be actively protected and resources made available to address any infringing content. Understanding applicable legal rights in these circumstances and taking appropriate action is essential to protect the value of businesses with significant intellectual property assets.