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Trademark Law

The DMCA: How to Take Down Infringing Cyber Content

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If you have a small business, few things can be as frustrating as seeing another business take your creative content (i.e., product descriptions, photos, names, and so forth) and re-post them as its own. You worked hard building up your company’s brand, product image, and value proposition. How can you stop a competitor from just copying all your hard work?

Oftentimes, the quickest and most cost-effective way to fight back is via the Digital Millennium Copyright Act (DMCA). Under the DMCA, you are allowed to complain directly to the underlying webhost servicing your competitor through a DMCA Complaint (commonly known as a “DMCA Takedown Notice”). Simply stated, your DMCA Takedown Notice informs the webhost that your competitor is using its service to post your stolen creative works. You can demand the webhost disable your competitor’s infringing content or face potential co-responsibility for copyright infringement. For many large webhosting companies out there, the threat of being held co-liable for infringement is enough to get your competitor’s copycat internet postings temporarily taken down, which gives you an opportunity to negotiate a permanent solution with the infringer.

While a DMCA Takedown Notice can be a powerful and cost-effective weapon in defending your creative works, it has both legal and financial limitations you need to consider.

What Can a DMCA Takedown Notice Accomplish?

A DMCA Takedown Notice can result in a webhost temporarily removing infringing copies of your creative works from your competitor’s website. However, there are two big picture items everyone should keep in mind when considering whether to use this tool:

  1. 1) The removal request must be based on copyright infringement, and
  2. 2) Any successful removal will only last for a short period of time (normally about two-weeks) if your competitor files a DMCA Counter Notice.

Let’s dive a little deeper into each point.

First, the DMCA Takedown Notice will only work if you have copyright(s) in the work your competitor has been copycatting. But you may ask, what if I never registered my copyright with the U.S. Copyright Office or a state Copyright Office? That isn’t necessarily the end of the road for your DMCA Takedown Notice. It is a common myth that copyrights do not exist until they are registered with a government entity. That is simply not the case. While copyright registration is a good idea because of certain legal presumptions and other beneficial qualities that come along with it, an unregistered copyright is still a copyright. You can still request webhosts to remove competitor content that infringes on your unregistered creative works.

However, especially when dealing with unregistered copyrights, a best practice is to find evidence that you were using the creative name, description, photos, etc. before your competitor. If you can’t find such evidence, pause to consider the risk before filing a DMCA Takedown Notice. If it turns out the person you believe was copycatting your idea really came up with the idea independently from you (which can happen) and before you were using it for your business, the competitor may be able to sue you for wrongly attacking their copyright(s) to those creative works. If you have evidence you were the first one using those creative works, that helps reduce your risk of liability. So, it’s generally a good idea to do research up-front before filing a DMCA Takedown Notice. If you have a registered copyright(s), you should consider attaching a copy to your DMCA Takedown Notice to further insulate yourself from counter-liability.

Second, a DMCA Takedown Notice can only force a takedown of infringing content for two-weeks if your opponent exercises its right to file a DMCA Counter Notice. When drafting the DMCA, Congress didn’t intend to give people who file a DMCA Takedown Notice unlimited power to demand removal of creative content on the internet. Instead, Congress intended to create a short-term mechanism to bring infringing content under scrutiny. If the infringer doesn’t respond, the content will remain taken down indefinitely. If the infringer does respond and asserts its use isn’t wrongful, the DMCA provides that the webhost must restore the content online. At that point, you, as the original creator of the creative works in question, are free to bring a full lawsuit for copyright infringement if you like.

Basically, a DMCA Takedown Notice is sort of like a legal demand to either “put up or shut up.” If your competitor wants to force its webhost to restore the creative works you have successfully requested to be taken down, then it will need to file a Counter Notice certifying it is not infringing on your rights. Many companies that know they are illegally using other people’s creative works are going to think twice before filing a document denying their activity as it could open them up to additional liability. Other companies may simply decline to file a Counter Notice because they do not want to devote the time or effort necessary to defend their use of those creative works.

At the end of the day, you should approach a DMCA Takedown Notice with the attitude that it may be left unopposed and, thereby, result in a long-term fix for your problem. However, it may be just as likely to result in no more than a short-term takedown followed by an immediate re-posting of the content once your competitor files a Counter Notice. There is no guarantee of permanence in the DMCA Takedown space.

Settlement Discussions Post-DMCA Takedown Notice Filing

One of the greatest benefits of a DMCA Takedown Notice is often that it can prompt your competitor to reach out to you directly (or give you an opportunity to reach out yourself) after the content is removed but before any Counter Notice is filed. This is a good timeframe to attempt to negotiate a permanent solution, such as a contractual agreement that you will withdraw your DMCA Takedown Notice in exchange for an enforceable promise the infringer will not use your content in the future.

How Extensive does a DMCA Takedown Notice Need to Get?

A DMCA Takedown Notice, at a minimum, must identify at least one instance of infringing use of your creative work and contain a handful of other required information, such as your contact information, a statement that you (or your agent filing the notice) has a good faith belief the content is indeed infringing your copyrights, etc. If targeted towards just one or a small handful of specific infringing webpages, a DMCA Takedown Notice can often be drafted relatively quickly and inexpensively.

However, if you are attempting to take down infringing works that copy dozens of your creations, you can expect the DMCA Takedown Notice drafting process to become far more expensive and time-consuming. There is a lot of legwork involved in cross-checking your competitor’s webpages against your own to identify multiple specific instances of infringement.

The Takeaway

A DMCA Takedown Notice can be a relatively inexpensive and quick method for challenging an infringer’s copying of your creative works. It can also provide both the impetus and opportunity for your competitor to negotiate a resolution of the issue with you.

However, it is also important to realize that the DMCA Takedown Notice is only meant to offer short-term relief unless and until your competitor certifies they did nothing wrong. Once that happens, you’re often left with the choice of either further pursuing the issue in court or simply letting it go. It is also important to remember DMCA Takedown Notices are most likely to be inexpensive and simple to draft when they are narrowly targeted at just a few instances of infringement or a single instance of infringement. If you are going to attack multiple instances at once, your DMCA Takedown Notice will become more expensive and complicated. However, it is still much cheaper than filing a lawsuit against the infringer.

If you have questions about DMCA Takedown Notices, would like assistance in challenging a competitor’s use of your creative works, or otherwise protecting and preserving your intellectual property, contact us. Whitcomb, Selinsky, PC has a team of experienced attorneys ready to help.

About the AuthorDavid Tscheschke, Esq.

When David counsels clients, he keeps potential business concerns in mind. This is due to his extensive knowledge of business administration and economics. By identifying critical business or industry issues early on, David tailors his advice to address any concerns he has identified during his initial research and discovery. This mindset allows David to focus on delivering value to every client.

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