The Digital Millennium Copyright Act (DMCA) establishes a process whereby copyright owners can notify online service providers such as Amazon about infringing material and request that it be taken down. Such infringing material can include product images, logos (which may be eligible for trademark protection), and texts used on listings. According to the U.S. Copyright Office:
Once the online service provider has received a compliant notice, it must act expeditiously to remove or disable access to the infringing material. The service provider must then promptly notify the user that originally uploaded the material that it has been removed.
If the user believes that the material was removed as a result of mistake or misidentification of the material, the user may submit a counter-notice requesting the reinstatement of the material.
When a counter-notice is submitted, the only remedy left for the copyright owner is to file a lawsuit against the infringer. If no lawsuit is filed, the platform must reinstate the material. Unfortunately, infringers have picked up on two things. First, submitting an acceptable counter-notice is easy. Two, filing a lawsuit in the United States is a costly endeavor that most copyright owners cannot realistically undertake.
There are of course sellers on platforms such as Amazon that get hit with takedown notices despite not violating anyone’s copyright. Due process demands that they be allowed to respond to takedown notices. The fact that counter-notices are submitted under penalty of perjury in theory provides a meaningful safeguard.
In practice, however, the existing mechanism is ill-suited to deal with what is arguably the most problematic group of sellers from an copyright infringement perspective: China-based counterfeiters and other-bad faith actors who piggyback on the intellectual property of others. Safely outside the reach of U.S. courts, they can copy-paste counter-notice templates, and falsely claim that they have a good faith belief that they are not infringing on anyone’s copyright, with nothing to fear.
This is yet another example of how unlevel the playing field is when it comes to competition from China. Counterfeiters and other bad-faith actors get to avail themselves of all the benefits of selling on platforms like Amazon, but do not really have to worry about following the rules.
Of course, on occasion copyright owners will sue, in which case the platform will keep the infringing material down. Depending on the circumstances, the infringer may be exposed to monetary penalties. But faced with a lawsuit in U.S. court, infringers may simply ignore the proceeding and any resulting judgment. Sure, they may face difficulties if they still want to sell on a U.S. platform, but it is unlikely that they will have any assets seized. And, if they really want to sell online again, they can just form a new company and no one in the United States will be any the wiser. In fact, foreseeing such scenarios, infringers may already be operating using various entities.
Though we certainly want to call attention to this unfairness, what is most important is for us to warn brand owners and stress the importance of registering copyrights. It is true that copyright vests at the time a work is created, without a need for registration. However, in order to sue for copyright infringement, the copyright in question must be registered.
The prospect of registering copyrights for all your advertising material may be daunting. However, by incorporating IP protection considerations into business strategies from the start, you can take some steps to help yourself. Where one image will do instead of two, that will help from an IP perspective. The same goes for replicating certain language across product listings, rather than entirely customizing each one.
And registering copyrights will not only give you the option of suing. By registering your copyright, you can reduce the chance of a counter-notice, or even an infringement in the first place. Savvy infringers will know that your options are very limited if your copyright is not registered. On the other hand, the existence of a registration might give infringers pause, since they know you will have the option of filing suit.
It is rough out there: Register your copyrights now.