Cat and mouse: how rights holders chase online infringers
Uhthoff, Gómez Vega & Uhthoff
The anonymity offered by the Internet is a significant lure for infringers. However, despite the online landscape being largely ungoverned, Mexican rights holders can still take steps to protect their intellectual property The Internet is a remarkable tool used to obtain all kinds of data from around the world and transmit information without frontiers. However, users need to remain vigilant and ensure that their online freedom is not violating another party’s IP rights. When it comes to navigating the Internet, the core concepts of intellectual property should still apply.
The initial issue with the borderless Internet is that when an IP violation does occur, the jurisdictional boundaries are undefined. There is no single forum that determines which country has jurisdiction over the involved parties if they are located in different territories.
Trademarks are a crucial concern for rights holders. Many brand owners suffer online counterfeiting problems where third parties take advantage of the ability to market non-original goods online while maintaining a low profile.
Counterfeiters can engage in e-commerce without detection from rights holders, which are unable to determine where the counterfeiters are established or the origin of the products being sold.
For these reasons, it is extremely difficult to enforce IP rights online and almost impossible to locate infringers and bring them to justice.
Most online infringement occurs through e-commerce. Website owners can sell all sorts of goods with no knowledge of whether they are original or fake. These days, most e-commerce platforms have a claims process, whereby affected rights holders may request the withdrawal of merchandise that they consider to be counterfeit.
Despite this, online claims proceedings are usually inter partes (ie, the authorities are not involved) due to a lack of regulation. In addition, taking action in this way can be a lengthy process and rights holders may not obtain the desired outcome or succeed in removing all of the infringing goods from the contested websites.
Infringement occurs not only via e-commerce websites, but also through social media networks such as Twitter, Facebook and Instagram. Here, individuals may advertise counterfeit goods or even make use of trademarks without having obtained prior authorisation from the rights holders. In fact, a third party can create an account under the name of a registered trademark without the owner’s approval.
Most social media networks also have a claims process. For example, Instagram created the so-called ‘verified badge’ which is represented by a blue tick alongside the account name, enabling users to connect with authentic accounts.
However, the verified badge is mostly granted to famous people or things (eg, celebrities, brands and athletes). An interested person or brand cannot request the verified badge, as this is granted subjectively by Instagram.
“Many companies are creating and utilising technical means to protect their intellectual property and online content, including through watermarking or encrypting files.”
Finally, rights holders face the threat of online copyright infringement. Internet users can download software, music, videos, images and other data from websites with no authorisation for providing such content. As a result, the unauthorised copying of content online is a major problem and results in the loss of millions of dollars for rights holders.
The most well-known case of unauthorised music downloading relates to Napster.
Napster was created as a music file distribution service in MP3 format. It began as an exchange platform through which people could share their MP3 files with other users without paying royalties to the copyright owners or licensers. This sparked protests, initially from copyright protection institutions and later from the owners and creators of the shared files.
In 2000 several record companies and artists, including Metallica’s Lars Ulrich, sued Napster for copyright infringement. In 2001 the court ordered the platform’s closure in an effort to prevent further infringement. However, following Napster’s popularity, similar platforms (eg, KaZaA, LimeWire and Emule) were created to take its place.
Today, alternative music platforms such as Spotify and iTunes enable users to store millions of music tracks on their mobile devices. In exchange, they must pay for use of the platform. Alternatively, where the platform is free, advertising space is sold to cover the cost of paying the corresponding royalties to the copyright owners.
Due to the threat of trademark, copyright and all kinds of data infringement on the Internet, many companies are creating and utilising technical means to protect their intellectual property and online content, including through watermarking or encrypting files.
The Mexican authorities need to take a deep look into these matters in order to regulate online use and prevent the violation of IP rights. Further, they should execute agreements with other countries in order to be able to penalise infringers, regardless of their location.
In the meantime, rights holders should seek advice from specialised attorneys on the necessary steps to tackle online infringement and implement a successful anti-counterfeiting programme.
While most social media networks have a claims process for reporting infringement, Instagram also identifies the authentic accounts of famous people and well-known brands with a verified badge.
Carolina Ponce started her legal practice as a civil and commercial litigator in 2006 and joined Uhthoff, Gómez Vega & Uhthoff in 2008. With more than nine years’ experience in intellectual property, she collaborates within the trademark team, advising clients in filing, prosecution and litigation strategies in Mexico and globally. She also manages the IP portfolios of some of Mexico’s most important companies. Ms Ponce is an active member of the Mexican Association for the Protection of Intellectual Property and is involved in the Trademark Committee, with a special focus on the preparation of guidelines for the novelty exam. In addition, she is an active member of the International Trademark Association, where she has assisted and moderated roundtables in past years.