The offline-to-online business evolution continues to develop, and as a result, many businesses have been forced to adapt in order to survive. Many have changed their usual methods of selling – for example, closing their bricks and mortar stores and switching to online sales. Even smaller e-commerce sellers are switching from selling on their own platforms to utilising those platforms with a more significant presence, such as Amazon. Consequently, we’ve seen a surge in instances of copyright infringement and an increase in sending DMCA takedown notices. We explore how to approach issuing a notice and obtaining a takedown below.
- What is copyright?
- What constitutes infringement?
- What is a takedown notice?
- Does it matter where the infringement takes place?
- Steps to securing a takedown
- The takedown notice: standardised forms and drafting your own letter
- Practical challenges of sending a copyright infringement takedown notice
- The takedown
- Resolving copyright disputes with the infringing party
- How we can help
What is copyright?
Before we go any further, it is worth reminding ourselves what copyright is. Copyright is an automatic right afforded by law to those who create works, which prevents others from taking ownership, exploiting or controlling that work without the creator’s permission. A variety of intellectual property benefits from copyright protection, including:
- Original literary, dramatic, musical and artistic works (including illustrations, photography, sculptures, dance and mime)
- Original non-literary written work, such as software and web content
- Databases, provided the creator can show they own the intellectual creation such that they conducted the research, collated the data and arranged the information
- Sound and music recordings
- Film and television recordings
- A work of architecture
- The layout of published editions of written, dramatic and musical work
Under English law, broadly, a work will qualify for copyright protection, if:
- The author is a national of the UK, EEA or a state which is a signatory to one of the various international conventions
- The work was first published (or broadcast) in a qualifying country (as set out in the Copyright, Designs and Patents Act 1988 (CDPA))
The author’s work must also be original – they must have created the work using their own skill, judgement and effort and must not have copied the work from elsewhere.
This is a complex area and careful reference should be made to the CDPA.
What constitutes infringement?
Copyright infringement occurs when a third party copies another party’s intellectual property without their permission. This infringement may relate to digital creative work, such as the copying of website content or the use of images without permission, or it may concern the copying of elements of products themselves.
A third party may infringe copyright in a work by doing any of the following without the rights holder’s consent:
- Placing on the internet
- Renting or loaning
- Showing or broadcasting
To learn more about copyright law, please visit our copyright FAQs page.
What is a takedown notice?
Takedown notices are notices issued by rights owners to service providers (such as internet service providers, network operators and web hosts) that are hosting infringing material. The takedown notice sets out details of the alleged infringement, with a view to securing the ‘takedown’ of the material by the relevant website.
The liability of service providers in respect of the infringing material is limited in certain circumstances, provided that they have no actual knowledge of unlawful content, and that on obtaining such knowledge they act "expeditiously" to remove or to disable access to the information.
As such, one can assume that sensible service providers will be motivated to assist with the removal of infringing material. However, this isn’t always straightforward, as we will explore later on.
Does it matter where the infringement takes place?
Under the CDPA, the copyright owner has the exclusive right to communicate the copyright work in the UK. However, a question mark may arise over whether an infringing act has or has not been committed in the UK, where the act has occurred online.
In a 2014 case (Omnibill v EGPSXXX), the court found that a South African website hosting infringing photographs was targeted at the UK market based on visitor traffic information, and therefore infringed the claimant’s rights under the CDPA.
There is also an argument that where infringing material is made available to internet users in the UK by a third party situated abroad, that third party is liable for infringing UK copyright on the basis that they have authorised an infringing act.
As such, there is scope for issuing takedown notices to service providers based in other jurisdictions, though extra or different requirements may apply, depending on the laws of that specific jurisdiction.
Steps to securing a takedown
Only a qualifying rights owner (or their representative) may request a takedown, so assuming that you have confidently established that your work benefits from copyright protection and that you qualify as the rights owner, the first step is to consider how to approach the party that is transmitting the infringing material.
The takedown notice: standardised forms and drafting your own letter
Many platforms such as Amazon and eBay have online forms that must be completed in order to submit a takedown notice. The forms will specify what information is required, and you should ensure that the information you provide is sufficiently detailed and accurate.
Where there is no standardised form available, you can create your own notice. Check whether the platform (or other intermediary) sets out any specific requirements regarding the details to be included and ensure that you provide this information, if so. As mentioned above, jurisdiction-specific requirements may also apply.
A well-drafted letter may include:
- The name, address and contact details of the party sending the notice
- Details of the original work
- Details of the infringing work
- Details of the location of the infringing work (for example, a link to the infringing work)
Practical challenges of sending a copyright infringement takedown notice
One particular challenge with takedown notices is that it can be difficult to engage directly with the larger platforms. Many of the routes for communication with these types of platforms are through automated forms – notices are submitted electronically, reviewed and responses are issued, but there is little (if any) opportunity for detailed engagement around the issues, and this can lead to a frustrating experience and outcome.
One of our clients issued a takedown notice to a large platform and found that the infringing party took several actions to evade detection and prosecution, such as opening and creating multiple accounts on the platform. This led to confusion and delay in the takedown notice request being actioned, hampered further by frustrations with a lack of direct engagement from the platform.
Another client is struggling to get its complaints acknowledged by an ISP due to historic complaints made in the context of an unrelated dispute with a customer. A third client has been subject to an unwarranted takedown notice but has struggled to engage with the platform that has removed their products and has been unable to persuade the platform that the rights being relied upon are, in fact, invalid.
One option to try and open dialogue through a different means is to also send a copy of the takedown notice to the trading address and/or registered address of the ISP. However, challenges with engagement will most likely persist, and so the key tool for securing a prompt takedown (or defending the same) and encouraging positive engagement is ensuring that the takedown notice and other written correspondence is clear, accurate and sufficiently detailed.
Following submission of the notice, it is the responsibility of the platform to respond and remove or disable access to the infringing material.
So, how quickly is a service provider required to remove or restrict access to infringing material? Unfortunately, the law is not clear on this point. In order to avoid liability, a service provider must act “expeditiously” in respect of restriction of access/removal. In two separate cases involving Facebook, the court found that Facebook had not acted "expeditiously" when it took 8 or 9 days in one case and 12 days in another case to remove infringing material from its webpages.
Another issue that may arise is that the infringer may dispute the claim that they are infringing third party material. In this scenario, the platform may re-instate access to the works until the dispute is resolved between the parties. Re-instatement and restriction/removal can happen multiple times throughout an intellectual property dispute of this kind, and so this can be an uncertain time for both parties.
Resolving copyright disputes with the infringing party
So, what is the best approach to take in resolving a copyright dispute? The appropriate strategy will depend on the particular facts of the case and an IP solicitor will guide you on this on a case-by-case basis. However, where appropriate, we encourage clients to explore the possibility of settling the dispute before it progresses to litigation, in order to minimise wasted time and costs.
Parties to an IP dispute are expected to act reasonably in exchanging information and documents relevant to a potential claim and to try and avoid the need for proceedings. The courts certainly take a dim view of any claimant that does not provide the alleged infringer with sufficient details of the infringement and any such claimant could find themselves penalised on costs.
It is worth noting that particular care must always be taken prior to exchanging communications regarding a potential IP dispute - in certain circumstances, the claimant may face a civil claim if they threaten infringement proceedings in respect of certain IP rights.
In those circumstances, any letter that goes further than notifying the recipient of the existence of an IP right can form the basis of a threats action. The statutory threats provisions do not extend to copyright. However, any reference made to other related IP claims could be interpreted as an unjustified threat relating to infringement of those rights. As such, letters must be drafted with care.
The issues in copyright infringement cases can be subtle, as described above, and are often complex. Our expert team are experienced in navigating these complex issues and are well-placed to advise on an effective strategy. Our IP solicitors are highly skilled in crafting well-drafted letters to effectively manage and resolve copyright disputes before they escalate.
How we can help
Our copyright solicitors understand the importance of a prompt response to any infringement of your copyright, to protect your brand and prevent financial losses, and crucially to convey the message that breach of your copyright will not be tolerated.
Our copyright lawyers will act quickly to facilitate the removal of infringing content from websites and from search engines. We will also support you in holding the website hosting company to account if they fail to delete content which they have been ordered to remove or do not act expeditiously in doing so.
We are experienced in leading settlement negotiations with infringing parties, and where litigation is required to resolve the dispute, we have a proven track record of successfully pursuing claims in the courts.
If the infringement of your work occurs in another country, we will seek to intervene using that jurisdiction’s specific copyright laws. We have a well-established network of contemporaries across the globe that we will work with to support you in securing a successful resolution to your dispute.