Most businesses now have an e-commerce presence, which they use to generate trade alongside, or in some cases, instead of, traditional brick and mortar stores. Even small businesses can access a global consumer base through online marketplaces like Amazon and Etsy.
The surge in e-commerce has brought about challenges for brand owners since it provides more extensive opportunities for copyright infringement, and our intellectual property solicitors have seen a rise in the number of clients needing assistance with online copyright infringement issues. In this article, our copyright lawyers explore how a rights owner might affect the takedown of items that infringe their copyright.
- What is copyright?
- What constitutes infringement?
- How do you identify copyright infringement?
- What is a takedown notice?
- Does it matter where the infringement takes place?
- Securing a takedown
- The takedown notice - standardised forms or bespoke notification
- Practical challenges of sending a copyright infringement takedown notice
- The takedown
- Counterclaims and challenges
- Alternatives to takedown notices
- How we can help
What is copyright?
Before we go any further, it is worth reminding ourselves what copyright is.
Copyright in the UK arises automatically and protects a variety of original works. It prevents anyone other than the copyright owner from taking ownership, exploiting or controlling the work without the owner’s permission.
The works that are protected by copyright are wide and varied, and include the following:
- 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
Generally speaking, under English law, 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 work is original – the creator must have created it using their own skill, judgement and effort and must not have copied it from elsewhere.
Whether or not a work qualifies for copyright protection can be a complex question, so speak to us if you are unsure. We will review your work and the circumstances in which you created it and advise accordingly.
What constitutes infringement?
If a third party copies your work without permission, they may be liable for copyright infringement. The acts which constitute ‘copying’ in the legal sense include the following:
- Placing on the internet
- Renting or loaning
- Showing or broadcasting
In the context of online sales, the types of third-party acts that might infringe your copyright include the following:
- Selling copies of your work, such as illustrations.
- Selling items featuring your work, such as clothing adorned with your artwork.
- Selling items featuring your literary works, such as poems or lyrics.
- Selling photographs of your work, such as sculptures.
- Using your photographs in connection with their listings.
- Using your wording in connection with their listings.
- Copying your website content.
How do you identify copyright infringement?
The onus is on the rights owner to detect and take action against instances of copyright infringement. To do so, some implement a formal strategy to monitor websites identified as being high risk in terms of infringement, such as eBay and Etsy. Some rights owners monitor the relevant websites themselves, whereas others, often larger businesses or those whose rights are extensively infringed, enlist the help of third parties with specialist software to carry out the task.
A third party does not need to have copied your work exactly, or in its entirety, to be liable for copyright infringement. The relevant legal test is whether a ‘substantial part’ has been copied. The test is qualitative, not quantitative, so there are no hard and fast rules a rights owner can follow to establish whether a particular act amounts to infringement. There is, however, a significant body of case law on the topic, which provides guidance on whether a Judge would likely deem the use infringing. Experienced intellectual property solicitors, like us, have an in-depth understanding of the relevant case law and can advise on whether the circumstances constitute infringement.
What is a takedown notice?
Takedown notices are notices issued by intellectual property rights owners to service providers that host infringing material offered for sale by third parties. Examples of the types of sites to whom a notice might be sent include Amazon, eBay and Etsy. The takedown notice details the intellectual property in question and the alleged infringement, and requests that the site ‘takes down’ the material.
Takedown notices are an invaluable tool for rights owners facing online copyright infringement. The nature of marketplaces such as Amazon is such that it is often tricky to identify and engage with individual sellers directly. Moreover, the liability of service providers for copyright infringement in respect of items sold by third party users is limited in certain circumstances. A rights owner may, therefore, be unable to pursue the service provider themselves for the infringing acts, although the law in this area is constantly evolving and somewhat murky. To give themselves the best chance of avoiding liability, most service providers implement an IP complaint mechanism whereby rights owners can notify them of any infringing content which the service provider can remove or disable access to if they believe the complaint has merit.
It follows, therefore, that it is a service provider’s interests to act upon any takedown notice promptly, to avoid exposing themselves to liability for infringement. Unfortunately, matters are often not that straightforward, as we explain below.
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, the global nature of e-commerce means that sellers from around the world may upload infringing material. So, the question arises over whether such acts constitute infringement.
Generally speaking, if a foreign Defendant’s actions target UK consumers, their actions might constitute infringement in the UK. For example, 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.
As such, there is scope for issuing takedown notices to service providers based in other jurisdictions, but extra or different requirements may apply, depending on the laws of that specific jurisdiction.
Securing a takedown
Securing a takedown can be a time-consuming task and one which, if not done correctly, can have adverse consequences for a rights owner. It is, therefore, important to consult experienced intellectual property solicitors to assist you in preparing and submitting a takedown notice and dealing with any subsequent issues.
Only a qualifying rights owner (or their representative) may request a takedown. So, the first step we will take, before embarking on any course of action, will be to confirm that copyright subsists in the work and that you are the legal owner of that copyright.
The takedown notice - standardised forms or bespoke notification
Many platforms, such as Amazon and eBay, have specific procedures that must be followed, and online forms that must be completed, when submitting a takedown notice. Whilst the forms specify the type of information required, the rights owner must select the specific evidence relevant to the matter, which needs to be sufficiently detailed and accurate. This can be more problematic in cases concerning copyright infringement, where the intellectual property is not registered, than in cases involving registered rights, such as trade marks.
If your work is infringed on a platform that does not have a standardised form, you need to create your own notification. The precise contents of the notification will depend on the circumstances, but will likely include the following:
- Your details and how you are entitled to claim ownership of the work.
- Details of the original work.
- Details of the infringing work.
- Details of the infringement. This might include a link to the infringing listing or a printout of the infringing material.
We have vast experience in preparing takedown notices on all online platforms and are well-versed in the nuances of the policies and expectations of each one. Online platforms take erroneous copyright infringement allegations seriously, so your takedown notice must be comprehensive, accurate and legally sound. Expert legal advice is, therefore, vital. We will prepare the notification on your behalf, having first confirmed your legal position and the specific platform’s requirements. If the platform is based outside the UK, we will ensure the notification satisfies any applicable jurisdiction-specific requirements.
Practical challenges of sending a copyright infringement takedown notice
Infringements on platforms such as eBay and Etsy present unique challenges. Whilst takedown notices offer rights owners a lifeline by enabling them to go directly to the host of the infringing content, many inexperienced complainants find the process time consuming, frustrating and sometimes ineffective, particularly when an infringer is well-versed in the platform’s procedures and able to manipulate them.
Many of the challenges stem from the automated nature of the processes implemented by most larger platforms, which render it virtually impossible to engage directly with a human being. Most of the routes for communication with these types of platforms are through automated forms; notices are submitted electronically, reviewed and responded to with little (if any) opportunity for detailed engagement.
We are regularly contacted by clients whose repeated attempts to elicit the takedown of infringing material have failed. Sometimes, the infringers have actively evaded detection and liability by opening and creating multiple accounts on the platform. The inability of the rights owner to engage directly with the platform has rendered them unable to convey the true extent of the infringer’s activities and unlawful behaviour. Conversely, we often act for clients on the receiving end of takedowns erroneously actioned on the back of invalid notices. Once again, the automated nature of the systems used by many platforms has rendered those clients unable to alert the platform to the fact that the products are, in fact, not infringing, and they have lost sales as a result.
We are well-versed in dealing with issues arising on e-commerce sites. We ensure our takedown notices are as clear and detailed as possible to reduce the likelihood of complications. If a problem does arise, we often succeed in engaging directly with the platform, and will simultaneously pursue any appropriate additional courses of action to stem the infringements, which might include sending a copy of the takedown notice to the ISP’s registered address.
When a platform receives a takedown notice, it must respond by removing the infringing material to avoid liability for infringement. Clearly, the longer the unlawful activity persists the greater the potential harm to the rights owner. Accordingly, our clients are often eager to understand how quickly a service provider is obliged to remove or restrict access to infringing material.
Unfortunately, there is no clear-cut answer. Whilst the law requires the service provider to act ‘expeditiously’, it does not state what time frame will be deemed sufficiently ‘expeditious’. 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, to remove infringing material.
Counterclaims and challenges
The removal of an infringing item is sometimes not the end of the matter. If an infringer disputes the takedown, the platform may reinstate access to the items until the dispute is resolved between the parties. Some platforms, such as Etsy, operate a policy whereby a listing is reinstated on receipt of a counter-notice unless the rights owner commences legal proceedings within a specified time. It is, therefore, important to have a clear strategy mapped out as to how you intend to address such issues before commencing the takedown procedure.
Furthermore, many sellers rely on e-commerce as their sole source of income so, when their items are taken down for what they believe to be invalid reasons, they take their own legal advice to restore their listings and remove the threat of future takedowns. We have acted for many such clients, successfully challenging takedown requests, obtaining assurances from the rights owner that no further requests will be made and securing payment of our client’s legal costs. Accordingly, as we have explained above, the importance of ensuring your takedown request is legally and factually accurate cannot be overstated.
Alternatives to takedown notices
Sometimes, the circumstances of a case are such that we might advise contacting the infringer directly, in addition to issuing a takedown notice, for example if the infringements are extensive or there is a risk that the infringer will seek to evade the platform’s infringement policies. Occasionally, we may advise issuing a claim against the infringer to stem their activities and recover financial damages. Litigation is, however, very much a last resort and we settle the majority of copyright infringement cases through negotiation or alternative dispute methods such as mediation.
We always begin by sending a detailed letter to the infringer, setting out the nature of your rights, their infringements, and the relevant law. Not only do such letters serve to open up the lines of communication between the parties and focus the infringer’s mind on the potential ramifications of continuing with their unlawful activities, but they are also an essential pre-requisite to any further action that may become necessary. Taking Court action without first providing the infringer with sufficient details of their unlawful activities and affording them an opportunity to cease and make good their infringements puts you at risk of being penalised by the Court should your case reach trial.
Correspondence with an infringer must be carefully drafted. In certain circumstances, a rights owner can be liable for ‘unjustified threats’ if they threaten to take proceedings against an alleged infringer without due course. The unjustified threats legislation does not extend to copyright matters. However, if a rights owner simultaneously includes infringement allegations relating to other intellectual property rights covered by the legislation, such as trade marks, they may find themselves the subject of a groundless threats action. If your situation brings such issues into play, we will devise a strategy that effectively enforces your rights whilst avoiding any liability for unjustified threats.
How we can help
Whilst there is no doubt that e-commerce, in some respects, facilitates copyright infringement, it also increases the visibility of those infringements. Rights owners no longer need to rely on tip-offs or store visits to detect infringing acts but can instead actively monitor the activities of e-commerce sellers online and take action accordingly. Our copyright solicitors understand the importance of addressing copyright infringements promptly to protect your brand, prevent financial losses, and, crucially, convey the message that infringement of your copyright will not be tolerated. We act decisively to affect the removal of infringing content from websites and search engines and support you in holding the service provider and website hosting company to account if they fail to act expeditiously.
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.