Category Archives: IP Ownership

Why You Should Have Agreements with Your Independent Contractors

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bulb-40701_1280A work prepared by an employee within the scope of his employment is owned by the employer (which is known as a “work made for hire”).

However, just because you pay someone to create something for you doesn’t mean it’s a “work made for hire”.

If you hire an independent contractor (such as a freelancer, consultant or third party company) to create something for you (e.g., design a website, create advertising materials, take photographs, etc.), if you want to own the materials created – and not just have limited rights to use the materials –you will need a signed, written agreement transferring the intellectual property rights to you.

Independent Contractors own the copyrights in their creations unless the rights are transferred by a signed, written agreement.

Even if you aren’t going to own the intellectual property rights in the materials created by an independent contractor, an agreement is still a good idea to clarify what rights you have to use (and potentially modify) the materials.

 

Why Should I Register My Trademarks?

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TrademarkIn the United States, trademark rights are based on (1) priority (who used the mark first), (2) territory (the geographic area(s) where the mark has been used), and (3) use (whether products or services are actually provided under the mark).

Generally, the first to either use a mark in commerce or file an intent-to-use application with the United States Patent and Trademark Office (USPTO) has the ultimate right to use and registration of the mark.

Common law rights arise when products or services are offered for sale in connection with the mark.  However, common law rights are limited to the trade area in which you actually use the mark and those rights may be limited or even prohibited by prior senior uses of the same or confusingly similar marks.

A trademark owner may also register a mark in one or more individual states through Secretary of State Offices.

Although registering your mark with the USPTO is not required to establish rights in a trademark, there are many important benefits of federal trademark registration with the USPTO.  For example, upon registration of a federal trademark, the registrant obtains rights to the mark throughout the United States retroactive to the date of filing of the application. The registrant also obtains the right to stop junior users from adopting confusingly similar marks in overlapping trade areas or anywhere the registrant has acquired goodwill in such mark.

Here are some of the benefits of registration:

  • Registration provides constructive notice nationwide of the mark owner’s claim in the mark and evidence of ownership of the mark.
  • The mark owner has the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
  • The mark owner may bring lawsuits for infringement in federal court.
  • The mark owner may be entitled to recover profits, damages and costs of infringement, attorneys’ fees and treble damages.
  • Registration can be used as a basis for obtaining registration in foreign countries.
  • The mark can obtain incontestable status after continuous use for 5 years after the date of registration on the Principal Register (which limits third parties’ rights to contest your mark).
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

An application for trademark registration requires: (1) a completed application form, (2) a nonrefundable filing fee starting at $350 per class of goods/services, and, for marks already being used in commerce, (3) specimens of the mark showing use of the mark in connection with the applicable goods/services.

Click here for more information about how to select and protect a trademark.

Protect Your Brand: The Duty to Police Trademarks

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So, you’ve found and registered a unique brand.  Congratulations!  That’s a major accomplishment!  However, once you have rights in a brand, you need to make sure you keep those rights in tact to protect the brand.

Although you are not required to prosecute (or even act immediately against) every potential infringer of your brands, you do have a legal duty to protect against infringement and act reasonably in protecting your trademark rights.  If you fail to properly “police” your marks, you risk diminishing the value of your brand, damaging your goodwill, and weakening your mark.police-294107_1280

In extreme cases, failure to police a mark can lead to abandonment of all trademark rights in the mark.  For example, ASPIRIN used to be a brand name owed by Bayer and ESCALATOR used to be owned by Otis Elevator Company…but these marks became so widely used as the name of the underlying products themselves that the marks became generic terms for those products, and both companies eventually lost their trademark rights in the names.  (Unlike a trademark, a generic name consists of the word commonly used to identify a product.  For example, the terms “computer,” “software” and “internet” are generic names and anyone is free to use them.)

To protect your marks and prevent competitors from using confusingly similar marks that could affect your reputation and bottom line, you should implement a plan to monitor your marks and enforce your rights when necessary.

To help you monitor your marks, you may want to sign up for Watch Services that will notify you of potential issues, such as new trademarks filed with the US Patent and Trademark Office (USPTO), Secretary of State Offices or in foreign countries, as well as domain name filings, common law marks and corporate filings.  At the very least, you may want to set up Google Alerts to monitor mentions of your brand or products on the Internet.  If you have licensed any of your marks to third parties, you should monitor your licensees’ use of your marks as well.

In the event you become aware of a potential infringing or confusingly similar mark, you can determine (in consultation with your trademark attorney) what, if any, actions you may want to take to protect your trademark rights.  Depending on the situation, you may decide to send a cease and desist letter to the infringing party, file an Opposition or Cancellation action with the USPTO, file a lawsuit in State or Federal Court, pursue a combination of these options, or decide on a different strategy.

Why Should I Register My Copyrights?

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CopyrightThe moment you create and write down, record, photograph or otherwise “fix” your creative work in “any tangible medium of expression,” you automatically have copyright protection in that work under the United States Copyright Act.  Although filing an application for registration of your work with the U.S. Copyright Office is not required for this protection, the benefits of registration could be substantial.

For example, if you wait until your work has been infringed and the infringement occurs more than 3 months after you first made the work publicly available, then you will not be able to obtain statutory damages or attorney’s fees for the infringement, and you’ll have to prove actual damages instead.  This can make or break your chances of recovering any money from the infringer, as actual damages can be difficult to prove and may not exist in certain situations.

Additionally, before you can bring a lawsuit for copyright infringement, you must have a copyright registration for the work that has been infringed.  This means that you could end up filing a copyright application after the infringement occurs and end up paying a much higher filing fee without the main benefits you would have had had you filed the application before the infringement occurred.

Here’s a list of some of the benefits of registration:

  • If registration is made within 3 months after publication of the work OR prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.
  • Before an infringement suit may be filed in court, registration is necessary for works of U. S. origin.
  • Registration establishes a public record of the copyright claim.
  • If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.
  • Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.

Registration may be made at any time within the life of the copyright. An application for copyright registration contains three essential elements: (1) a completed application form, (2) a nonrefundable filing fee (typically $45-$65), and (3) a nonreturnable deposit—that is, a copy or copies of the work being registered and “deposited” with the Copyright Office.

As the U.S. is a member to a number of international treaties related to copyright protection, your U.S. copyright rights will be recognized in most countries throughout the world, and vice versa.

Intellectual Property Audits: Taking Stock of Your Intangibles

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Most companies routinely perform inventory audits of their physical assets…but — even though it’s not always on the radar — performing audits of intangible assets is equally (and perhaps even more) important.

The objective of an IP audit is to identify and protect intellectual property assets that provide you with Audit Rubber Stamp Shows Financial Accounting Examinationa competitive advantage and promote the goodwill of your business.  By creating a process to identify and take steps to protect intellectual property at least once a year (and perhaps more frequently if IP is a major component of your business), you can ensure that valuable assets are not made public, or otherwise lost or compromised, prior to taking the appropriate actions to protect them.  An intellectual property audit and due diligence review should also be performed in connection with mergers and acquisitions and other buy/sell transactions, as well as financing transactions that affect IP assets.

Typical intellectual property assets include product, service and company names and logos (trademarks), website content, written materials, and creative works (copyrights), formulas, processes, product designs and inventions (patents), and proprietary customer lists and other confidential information, such as pricing data and vendor information (trade secrets). Depending on your industry and the types of products and services you offer, there may be other intellectual property assets to consider.  These items should be identified and reviewed on a regular basis.

An audit should include a variety of information, such as:

  • Name/Description of IP – Identification of mark or domain name, title of copyright or patent
  • Subject of IP – List of goods/services, copyrighted material, description of patent
  • Status of IP – Application and registration number(s), intent-to-use or actual use-based mark, upcoming filing deadlines, IP not protected, related litigation or other disputes or issues
  • When/How/Where the IP Has Been Used – Dates of first use/publication, where/how IP used/published, U.S./International use, and any licenses or agreements regarding the IP
  • Chain of Title – IP owner(s), list of all IP transfers, note any transfers that have not been recorded, note any gaps in the record of ownership

Once your intellectual property has been itemized, you should determine whether any additional protections or updates to existing protections are necessary.  You should also review company policies and agreements with employees, independent contractors and licensees regarding the creation, use and protection of your (or third party) IP assets, as well as confidentiality and non-compete protections.  Additionally, your social media, website and insurance policies should be reviewed, as well as your advertising and marketing materials.  You may also consider whether you need to implement systems to monitor unauthorized use of your IP assets by others and address how to approach infringement scenarios.

Internal IP audits are a great start, but you should consider consulting with an IP attorney to ensure all of your IP has been identified and is protected.

 

Music Copyrights

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When you talk about copyrights in the music industry, at least two different copyrights exist.  There is a copyright in the lyrics and/or music of the song [the musical composition], and a separate copyright in the recorded version(s) of the song [the sound recording(s)].  If you record or re-record a song (your own or a cover of someone else’s), the copyright in the lyrics and music would remain the same, but there would be a new copyright in each new sound recording. 

musician shows classical guitar and flower music

Copyright in Music and Lyrics

Under the U.S. Copyright Act, everyone that contributes to the songwriting has a claim to the copyright.  Regardless of how much or how little you contribute, the Copyright Act considers all contributors to the same song to be joint authors (a.k.a. co-authors).  Each joint author owns an indivisible share to the entire copyright, unless there is a written agreement stating otherwise between all of the contributors (or any non-contributors).  Therefore, each co-author can do what he wants with the copyright as long as he pays the other co-author(s) an equal share of the proceeds.  Copyright ownership of a song can be very profitable, as songwriters receive money from publishing.  (Sometimes, songwriters assign their copyrights to music publishers to exploit the songs and administer the rights.)

Copyright in Sound Recordings

Technically everyone that contributes to the recording has a claim to the sound recording.  However, usually whomever pays for the recording (usually a record label) owns this copyright through a contract.  The songwriter will own the copyright in the lyrics and music, but the record label will own the copyright in the sound recording.  If the artist pays for the studio time, then the musicians who play on the recording will jointly own the copyright to the sound recording unless this is a written contract to the contrary.  

If the same person or group of people own the copyright in one or more musical compositions as well as the resulting sound recordings, then both copyrights can be protected on one copyright application.  If the owners are different, then separate copyright applications will need to be filed for the musical compositions and sound recordings.

 

Why and How Brands Selling on Amazon Should Enroll in Amazon Brand Registry

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(Originally published in the Dallas Business Journal, October 2, 2019.)

If you are selling products on or through Amazon, this article will discuss why you should consider enrolling your brand name(s) in Amazon Brand Registry, and provide information about how to do so.

Why you should enroll in Amazon Brand Registry

There are a number of benefits to brand owners enrolling in Amazon Brand Registry, which was created to help build and maintain customer trust and ensure customers that they are purchasing authentic goods. Ultimately, Brand Registry helps you:

  1. Ensure that your brand is accurately represented on Amazon.
  2. Monitor how third parties are using or misusing your brand on Amazon (including searches for text, as well as images of your products and logos).
  3. Find and report potential infringers and counterfeits [1]

As a brand owner, you have a duty to police your marks to protect against infringement and act reasonably in protecting your trademark rights to avoid diminishing the value of your brand, damaging your goodwill and weakening (or even losing) your mark…and Amazon Brand Registry is another tool in your arsenal to help you do that.

Although reporting alleged infringement of your brand or other violations of Amazon’s Intellectual Property (IP) policy to Amazon using the Brand Registry Report a Violation tool is not the only mechanism to enforce your rights (and you still may need to bring legal action against the alleged infringer to address infringement, especially outside of the Amazon environment), it can be an effective and much less expensive, expedited way to quickly address issues of concern on Amazon’s platform.

For example, Amazon can remove a product listing and even suspend an account due to violations of laws and/or Amazon’s policies. And, although you don’t have to have an Amazon Brand Registry user account to report alleged intellectual property infringements, it’s no doubt easier for Amazon to take action on behalf of those who have enrolled their brand(s) in the Brand Registry than for those who use the publicly available form to report. And the Brand Registry and other systems Amazon has put in place appear to be making a difference, as Amazon claims that 99% of all Amazon page views by Amazon customers landed on pages that did not receive a notice of potential infringement.

How to enroll in Amazon Brand Registry

In order to enroll your brand(s) in Amazon Brand Registry, you will need:

  1. An active registered trademark for your brand(s) in each country [2] where you wish to enroll (e.g., the United States Patent and Trademark Office (USPTO)). The mark(s) may be text-only or image-based (e.g., logo, stylized font, etc.) and needs to appear on your products or packaging. You will need to provide the following information to Amazon:
  • Your brand name that has an active registered trademark.
  • The registration number for the trademark.
  • A list of product categories (e.g., apparel, sporting goods, electronics) in which your brand should be listed.
  • A list of countries where your brand’s products are manufactured and distributed.

Note: It can take anywhere from six months to a year or more to obtain a trademark registration. Although you may be able file a trademark application yourself, trademark law and prosecution of trademark applications can be difficult to navigate. Therefore, it is advisable to work with a trademark attorney to obtain registration of your mark(s) in the United States and other countries.

2. An existing Amazon Vendor Central or Seller Central account, or create a new Amazon account for free, to sign in to Amazon Brand Registry. Using the same username and password that you use to sign in to Vendor Central or Seller Central to create your Brand Registry account ensures you get full access to the features and benefits from vendor and seller services linked to your Brand Registry account.

3. Verification that you are the rights owner or the authorized agent for the trademark.

  • Once you submit the information to Amazon Brand Registry, Amazon will attempt to reach out to a contact associated with the trademark registration you provided to Amazon (e.g., the Attorney of Record with the USPTO for the trademark registration).
  • Amazon will send a verification code to this contact, and the contact will need to provide the code to you, and you will then need to provide the code to Amazon to complete the enrolment process.
  • Once Amazon has verified the information you provided, you will get access to Amazon Brand Registry’s benefits and features that help you protect your brand.

Once you’ve enrolled your first brand with Amazon Brand Registry, you can:

  1. Add additional active trademark registrations for your already enrolled brand(s) to your Brand Registry account by logging into your account and visiting the “Update your brand profile” section via the Brand Registry Support page;
  2. Enroll additional brands at any time by clicking on Enroll a new brand from the home page of your account.
  3. Submit a request to the Brand Registry Support team to add additional representatives of that brand, including agents (e.g., trademark attorneys). All users will need to have their own Brand Registry login credentials.

Note: If you enrolled a brand in Brand Registry prior to April 30, 2017 and your brand meets eligibility requirements, you need to re-enroll your brand in the Brand Registry.

[1] Amazon also has a program called Transparency — an item-level tracing service that helps brands proactively identify and prevent counterfeits from reaching customers.

[2] Amazon currently only accepts trademark registrations that have been issued by government trademark offices in the United States, Brazil, Canada, Mexico, Australia, India, Japan, France, Germany, Italy, Spain, the United Kingdom, the European Union, and the United Arab Emirates.

URGENT REMINDER: 2017 DMCA Agent Designation – Previous Designated Agents Must Re-Register Online Before December 31, 2017

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do-it-now-1432945_1920If you operate, manage, or host a website, mobile app, blog or other digital service  that allows users (aka third parties) to post comments or upload media, such as pictures, videos or audio files, then you need to be taking advantage of the Digital Millennium Copyright Act (“DMCA”)  Safe Harbor to protect yourself from copyright infringement liability for infringing materials posted on your site by users of your service.

Last year, the U.S. Copyright Office introduced a new online DMCA Agent Directory and registration process to replace the prior paper-based system and directory for DMCA Designated Agents, which became effective on December 1, 2016.  Designating a DMCA Agent with the Copyright Office is part of the process to protect you from copyright infringement liability for third party posts (aka user-posted content) on your app/blog/website and corresponds to the DMCA Takedown Notice Procedures that should be included in the Terms of Use on your website/blog/app.  If you do not register (or re-register) a DMCA designated agent, you risk losing the safe harbor protections of Section 512 of the DMCA, leaving you potentially vulnerable to certain types of claims of copyright infringement.

 register-1627729_1280NOTE: Even if you previously designated an agent with the Copyright Office prior to December 1, 2016 (via a paper form), you will need to submit a new designation electronically using the online registration system by December 31, 2017, or your prior designation will expire and become invalid.

In order to register, you will need to create an account.  You will need to include a primary contact (with the option to include a secondary contact) when you register, and then an email will be sent to the primary contact with instructions on how to active the account.  Once the account is activated, you will be able to complete the DMCA designed agent registration process.

You will need to register the following information:

  • Full Legal Name of Service Provider (legal entity name) and related contact information
  • Alternative Name(s) of Service Provider (including all names under which the service provider is doing business, such as domain name(s), blog or mobile app name(s), assumed/trade name(s), etc.)
    • NOTE: Separate legal entities are not considered alternate names. Related or affiliated service providers that are separate legal entities (e.g., corporate parents and subsidiaries) are considered separate service providers, and each must have its own separate designation.
  • Name of Agent Designated to Receive Notification of Claimed Infringement (which can be the name of an individual or a specific position or title [e.g., Copyright Manager, VP Legal Affairs, or General Counsel] or a specific department [e.g., Copyright Compliance Department] or third-party entity [e.g., ACME Takedown Service] rather than an individually named person as the agent…which may be preferable to avoid having to update the form if the named individual should ever leave the company) and related contact information
  • Pay the Fee (the current registration fee to designate an agent, or amend or resubmit a designation is $6.00 per service provider, with no additional fee for any alternate names)

In addition to registering a designated agent, you will also need to post copyright infringement notice provisions on your site and comply with the DMCA takedown and notice procedures. Click on the following links for more information about the DMCA Safe Harbors and what you need to do to benefit from them, as well as DMCA Designated Agent FAQs.

Renewal Requirements. In an attempt to ensure that the DMCA Agent Directory contains accurate and up-to-date information, your agent designation will expire and become invalid three years after it is registered (or last amended) with the U.S. Copyright Office, unless you renew it prior to the expiration for another three-year period. The online system will send renewal reminders to the primary and secondary contacts, service provider, and designated agent listed in your account 90 days, 60 days, 30 days, and 7 days prior to your renewal deadline.

IMPORTANT NOTICE: 2017 DMCA Agent Designation – Previous Designated Agents Must Re-Register Online Before December 31, 2017

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do-it-now-1432945_1920If you operate, manage, or host a website, mobile app, blog or other digital service  that allows users (aka third parties) to post comments or upload media, such as pictures, videos or audio files, then you need to be taking advantage of the Digital Millennium Copyright Act (“DMCA”)  Safe Harbor to protect yourself from copyright infringement liability for infringing materials posted on your site by users of your service.

The U.S. Copyright Office recently introduced a new online DMCA Agent Directory and registration process to replace the prior paper-based system and directory for DMCA Designated Agents, which became effective on December 1, 2016.  Designating a DMCA Agent with the Copyright Office is part of the process to protect you from copyright infringement liability for third party posts (aka user-posted content) on your app/blog/website and corresponds to the DMCA Takedown Notice Procedures that should be included in the Terms of Use on your website/blog/app.  If you do not register (or re-register) a DMCA designated agent, you risk losing the safe harbor protections of Section 512 of the DMCA, leaving you potentially vulnerable to certain types of claims of copyright infringement.

 register-1627729_1280NOTE: Even if you previously designated an agent with the Copyright Office prior to December 1, 2016 (via a paper form), you will need to submit a new designation electronically using the online registration system by December 31, 2017, or your prior designation will expire and become invalid.

In order to register, you will need to create an account.  You will need to include a primary contact (with the option to include a secondary contact) when you register, and then an email will be sent to the primary contact with instructions on how to active the account.  Once the account is activated, you will be able to complete the DMCA designed agent registration process.

You will need to register the following information:

  • Full Legal Name of Service Provider (legal entity name) and related contact information
  • Alternative Name(s) of Service Provider (including all names under which the service provider is doing business, such as domain name(s), blog or mobile app name(s), assumed/trade name(s), etc.)
    • NOTE: Separate legal entities are not considered alternate names. Related or affiliated service providers that are separate legal entities (e.g., corporate parents and subsidiaries) are considered separate service providers, and each must have its own separate designation.
  • Name of Agent Designated to Receive Notification of Claimed Infringement (which can be the name of an individual or a specific position or title [e.g., Copyright Manager, VP Legal Affairs, or General Counsel] or a specific department [e.g., Copyright Compliance Department] or third-party entity [e.g., ACME Takedown Service] rather than an individually named person as the agent…which may be preferable to avoid having to update the form if the named individual should ever leave the company) and related contact information
  • Pay the Fee (the current registration fee to designate an agent, or amend or resubmit a designation is $6.00 per service provider, with no additional fee for any alternate names)

In addition to registering a designated agent, you will also need to post copyright infringement notice provisions on your site and comply with the DMCA takedown and notice procedures. Click on the following links for more information about the DMCA Safe Harbors and what you need to do to benefit from them, as well as DMCA Designated Agent FAQs.

Renewal Requirements. In an attempt to ensure that the DMCA Agent Directory contains accurate and up-to-date information, your agent designation will expire and become invalid three years after it is registered (or last amended) with the U.S. Copyright Office, unless you renew it prior to the expiration for another three-year period. The online system will send renewal reminders to the primary and secondary contacts, service provider, and designated agent listed in your account 90 days, 60 days, 30 days, and 7 days prior to your renewal deadline.

The Digital Millennium Copyright Act (DMCA) Safe Harbor

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email-826333_1280The Digital Millennium Copyright Act (“DMCA”) is an amendment to the U.S. Copyright Act (i.e., the federal copyright law) signed into effect in October 1998 that, among other things, provides certain limitations on the liability of online service providers (“Provider(s)”) for acts of copyright infringement by third parties.

The DMCA actually contains two types of liability limitations:

The first (Section 512(d)) protects a Provider that unknowingly provides a link to infringing copyrighted material located on another site.

The second (Section 512(c)) , which we discuss in more detail here, limits the liability of Providers that store copyrighted materials on a system or network they control or operate if (among other things), (i) such storage was directed by a third-party user, (ii) the service provider has designated an agent (also referred to as a “take-down agent”) to receive notifications of claimed infringement, and (iii) the service provider has both registered the agent’s contact information with the U.S. Copyright Office and publicly provided such information on its website.

It is important to note that, because the DMCA protects against claims of copyright infringement and not other types of wrongdoing, it will not help against claims of infringement concerning trademarks or service marks, stolen trade secrets, or other types of intellectual property.  The DMCA is also not relevant to claims of defamation, although a Provider may have protection for defamatory statements made by third parties under Section 230 of the Communications Decency Act.

The DMCA Safe Harbor

The DMCA is a “safe-harbor” is an exception to the general rule that a Provider is liable for acts of infringement committed by its users. Because the DMCA is intended to protect Providers from inadvertent infringement by third parties, it will not help in a situation where the Provider itself is accused of infringement (i.e., where the Provider posts infringing copyrighted content), or where the Provider knows content it hosts infringes a copyright.

Because the DMCA can be an absolute defense to liability for copyright infringement by a third party, registering a take-down agent may even prevent someone from suing the Provider for infringement in the first place.

Online Service Providers

In essence, you qualify as a Provider and are eligible for protection under the DMCA if you operate, manage or host a website, blog, mobile app, social media platform, portal, game, or other digital service that allows users (aka third parties) to upload or post content. That can include the following activities:

  • Allowing users to post comments or review, or respond to discussion threads
  • Allowing users to upload media, such as pictures, .gifs, videos or audio files

The above is true because the definition of “infringe” or “infringement” is very broad and captures many activities. For example, if your site allows users to submit a thumbnail sized avatar in connection with the user’s comment and the user chooses an image that infringes a third-party’s copyright, you can be liable. Knowledge or intent are not relevant for purposes of liability for infringement under the copyright law; so, you can be held responsible for copyright infringement even if you have no idea these activities are going on (and, if you have not registered a DMCA agent, even if you take down the offending material immediately after being notified!).

How to Benefit from the DMCA Safe Harbor Provisions

In order to enjoy the benefits of the safe-harbor provisions, a Provider must comply with a few administrative requirements:

  1. Designate a copyright take-down agent to receive DMCA takedown notices.

In order to designate an agent, a Provider must create an account, provide some basic information (the Provider’s legal name, alternatives names for the Provider, the name or title of the Provider’s agent designated to receive infringement claim notices, and related contact information) and pay a filing fee (currently $6 to designate an agent, or amend or resubmit a designation, for an unlimited number of alternative names, websites, etc. for the Provider). The U.S. Copyright Office maintains an official list of designated agents, which allows a person who believes his or her work is being infringed to quickly send a takedown notice.

  1. Adopt a copyright infringement policy and notify site users.

The Provider must publish a statement on its website to provide notice to the site users of its copyright infringement policies, the consequences of repeated infringing activity, and advising users of the takedown agent’s contact information. Many people include a DMCA policy in their terms of service, but it may also be placed in a separate document.

  1. Watch for and properly comply with any notice of claimed infringement received.

A person claiming infringement must provide the Provider a written notice that substantially meets the following requirements:

  • A detailed description of the copyrighted work(s) allegedly being infringed;
  • A description (such as the subdomain link) of the location on the site where the   allegedly infringing content appears reasonably sufficient to permit the Provider to locate the material;
  • The claimant’s contact information, including name, address, telephone number, and, if available, email address;
  • A statement that the claimant has a good faith belief that the allegedly infringing use is not authorized by the claimant as the copyright owner, by the claimant’s agent, or by law;
  • A statement affirming that, under penalty of perjury, the information in the notice is accurate and that the claimant is, or is authorized to act on behalf of, the copyright owner; and
  • A physical or electronic signature of the copyright owner or someone authorized on the owner’s behalf to assert infringement of copyright and to submit the statement.

Remember that the DMCA protects only against copyright infringement, not against other types of accused wrongdoing. Therefore, a Provider must be careful to make sure any notice it receives alleges a copyright infringement and not some other type of wrong doing.

Also note that not all cease and desist letters or takedown notices will be proper, and a Provider is not under a legal obligation to comply with notices that do not substantially meet the above requirements.

If a takedown notice does not meet the requirements, a Provider should respond to the party who submitted the takedown notice, state that the notice does not comply with the DMCA requirements, and inform the complainant that he may resubmit a takedown notice that substantially complies with the DMCA requirements.

If a takedown notice does meet the requirements, a Provider should promptly:

  1. remove or disable access to the material that is claimed to be infringing;
  2. notify the complainant that the material has been removed; and
  3. notify the allegedly infringing party that the material has been removed so that he may file a counter-notice.

Often, a potentially offending user will not file a counter-notice, but if he or she does, a proper counter-notice must contain substantially the following information:

  • The alleged infringer’s name, address, phone number
  • Identification of the material and its location before removal
  • A statement under penalty of perjury that the material was removed by mistake or misidentification
  • The alleged infringer’s consent to local federal court jurisdiction, or if overseas, to an appropriate judicial body
  • A physical or electronic signature of the alleged infringer

If the counter-notice meets these specifications, the Provider should forward the counter-notice to the person who claimed infringement. That person must then file a lawsuit within 10 business days of the Provider’s notice to the complainant of the counter-notice; otherwise, the Provider should reinstate the disputed material within 10-14 business days after sending the counter-notice to the complainant.

While there is no requirement under the DMCA for a Provider to remove any material(s), the receipt of a valid takedown notice acts to give the Provider notice of the allegedly infringing activity, and therefore ineligible for limited liability. The Provider may then face liability for continuing to host the material.

Consult a qualified attorney if you are unsure of what the notice or demand letter is alleging or if you have questions about whether you must comply with a takedown notice or how you should comply with the takedown notice.

I didn’t register a DMCA takedown agent and now someone has filed a copyright infringement lawsuit against me. Am I out of luck?

In order to benefit from the safe harbor protections, a Provider must register a DMCA agent prior to an allegation of infringement which it wishes to defeat with the registration.

Even if a Provider has not registered a DMCA agent, it may still be able to defend against a claim on the merits of the alleged infringement. For example, if the amount of supposedly infringing material is small or is posted in a way meant to be educational and includes a citation for the material, you may have a defense under the fair use doctrine (although a fair use defense may not apply depending on the facts of each particular situation). Some cases also indicate that a defense may exist by asserting that infringing third-party posts are simply not the responsibility of the Provider. However, if a Provider has not registered under the DMCA, it will not be able to claim that it was unaware of the infringing activity or that it quickly removed the offending material.