#HacktheAct Pitch: DMCA for Trademarks (2.0) (DMTA)

Outline of policy proposal for BLIP's Hack the Act competition.

POLICY PROPOSAL: Trademark Enforcement Reform on the Internet


Topic


This proposal seeks to solve Enforcing Trademarks on the Anonymized Web.

Currently, the DMCA provides a flawed, but workable attempt at extrajudicial enforcement of copyrights on the Internet. Trademark infringement is just as common a problem, but lacks such an efficient extrajudicial process. Trademark holders are left with the unattractive options of sending a cease & desist letter (which may be ignored) or of escalating to a lawsuit (which may be unfeasible for a multitude of reasons). Adding a DMCA-style notice and takedown procedure that would apply to trademark infringement as well would streamline enforcement efforts for rights holders and also simplify infringing material removal efforts on the part of intermediaries (Facebook, etc.)


Solution


The solution Team OGLegalHackerZ proposes will solve the problem by Creating a DMCA-style Notice and Takedown Regime for Trademarks.


Background


a.     What’s the DMCA? The DMCA came about in Congress as a way to try to reach a middle ground between websites that host user-generated content (such as YouTube) and the music and movie industries. The industries are often worried about their content ending up on sites such as YouTube, but it is also important to keep those sites open to foster users’ creativity. The DMCA allows for a process, called “notice and takedown” as a whole, to try to solve this problem outside of court. It is not perfect, but it is an important part of the Internet today. Without the DMCA, YouTube, as an intermediary, could be sued for distributing infringing works that users upload.

b.     How it Works: The law creates something lawyers call a “safe harbor” for websites that host user-generated content. This means that the sites themselves generally can’t be sued for things that users upload to the sites that infringe someone’s rights. However, in order to earn this safe harbor, the sites must comply with the requirements of the DMCA.

c.     Requirements: (i) Complying with takedown notices – This means that if a website receives a takedown notice from a copyright holder that alleges infringement, it must remove access to the item(s) and then notify the user that uploaded the item. (ii) Complying with “counter-notices” – Counter-notices are notices that users file in response to a takedown of their content. A user can file a counter-notice if he or she believes that takedown was sent by mistake or that what they were doing constitutes fair use, among other things. If a user files such a counter notice, and the person who has the copyright does not sue, then the site must restore access to the item. At this point, it is up to the rights holder to escalate to a full lawsuit or not. This won’t involve the website because it is protected under the safe harbor. (iii) Designating an agent - Sites seeking to invoke the safe harbor must select an agent, meaning a person who is designated to receive takedown notices and handle them expediently. There are some specific requirements in the law regarding this. The agent must be clearly indicated on the website in question.


Problem


One of the factors that helped drive SOPA and PIPA was the possibility of the unabated proliferation of online trading in counterfeit goods.  Supporters of the bills pointed to the possibility of senior citizens being beguiled into buying fake prescription drugs, and shoddy manufacturing parts finding their way into automobiles and military vehicles. More popularly recognizable examples involve luxury goods such as handbags and sunglasses, which are frequently duped. Therefore, creating an expedited way for the legitimate holders of these rights (i.e., makers of the legitimate goods) to take down bogus posts that advertise fake goods will assist in the goal of protecting consumers while lessening the burdens on the rights holders.


Proposal


Perhaps one of the great things about the DMCA notice-and-takedown procedure is the fact that everyone on both sides of the IP debate seems to hate it. We acknowledge that the DMCA path is not a perfect solution, but few such solutions exist. The existence of the DMCA procedure has enabled a tremendous amount of innovation and creativity in the world of technology because it lets the user-generated content (UGC) industry off the hook. Without the DMCA safe harbor, sites such as YouTube could not have proceeded as boldly ahead as they have, and IP rights holders would have been forced to either sue UGC sites out of existence or stand pat while others reaped benefits of their content.


Introducing notice and takedown to the trademark world makes even more sense. Trademark has its roots in consumer protection law, and operates under the presumption that consumers deserve to know that a brand owner stands behind the product they are purchasing. Introducing this system into the trademark context both allows site owners to understand the potential demands placed on them and provides a mechanism for brand owners to have infringing content (which may pose a genuine and demonstrable risk to the public welfare) taken down. In the process, this proposal removes one justification for acts such as SOPA and PIPA.

 

Selected portions of sample statute: (Modeled after 17 USC 512(c))

(I) In general. A service provider shall not be liable for monetary relief, or, except as provided elsewhere in this statute, for injunctive or other equitable relief, for trademark infringement by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider:

(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;

(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or

(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;

(B) does not have a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and

(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the matrial that is claimed to be infringing or to be the subject of infringing activity.

(II) Designated agent. The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through its service, including on its website in a location accessible to the public, and by providing to the USPTO, the following information:

(A) the name, address, phone number, and electronic mail address of the agent.

(B) other contact information which the USPTO may deem appropriate.

The USPTO shall maintain a current directory of agents available to the public for inspection, including through the Internet in both electronic and hard copy formats, and may require payment of a fee by service providers to cover the costs of maintaining the directory.

(III) Sample Requirements of Notice:

(A) To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:

(1) A physical or electronic signature of a person authorized to act on behalf of the owner the allegedly infringed federally registered trademark.

(2) Identification of the trademark along with its federal trademark registration number.

(3) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

(4) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

(5) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the trademark owner, its agent(s), or the law, and that it is likely to cause confusion with the registered trademark.

(6) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner the allegedly infringed trademark.

(IV) Private Cause of Action

The recipient of any notification under this section made in bad faith may maintain a civil action against the violator to obtain damages in amount not greater than $X.

Notes:  

This proposal deals primarily with federally registered marks in the language above, though we discussed at length how a notice and takedown provision might potentially deal with the world beyond federally registered marks, including state registrations, common law marks, and internationally registered marks. Above all, the simplicity of having a federal registration number, which a service provider in receipt of a takedown notice could verify, greatly appealed to us.

Moreover, using federal law to enforce state or common law marks on the inherently interstate web might pose both constitutional and administraibility issues. Given that such marks are traditionally meant to be inherently limited by the geography of their area of use, a broader consideration of the law in this area might be worthwhile.

It might be possible to address the issues of international marks by requesting an international registration number (which Twitter requests as part of its own private takedown system). It might be best, however, to require some kind of international agreement, however, to gather these marks together in an appropriate, verifiable database that could then be enforced through federal law.

Conclusion

Nothing can stop an idea whose time has come.  Our proposal basically grafts the current DMCA system onto the world of trademark law. Our alternative also mirrors elements of solutions posed by Frederick Mostert and Marty Schwimmer. http://home.comcast.net/%7Ejlw28129/Mostert%20and%20Schwimmer%20vol101_no1_a14.pdf

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