Protecting Your Online Business and Assets in the Age of COVID-19
By Procopio Partner Lisel M. Ferguson
With COVID-19 prompting stay-at-home orders from state and local officials across the United States, both business owners and consumers are online more than ever. This new normal means businesses must make greater use of the internet to grow sales and provide services. What many companies don’t realize is how easy it is to protect their online brands, products, publications and service if intellectual property (IP) protection is in place before infringement occurs. However, if this protection is not in place, your business is left with an uphill climb to establish the protection needed to stop infringers.
In order to protect your companies’ products, brands, publications, and services you need to have trademarks, copyrights and patents. While there are limited common law protections for trademarks and copyrights, it is best to have formal Country Registrations. Most countries have formal protection for trademarks, copyrights and patents. A formal Registration of a copyright, trademark or patent will enable the holder to have infringing domain names, websites, products and services removed from the internet.
Most social media and sales platforms have formal processes by which the owner of Registered IP can file a takedown request to have infringing items removed. However, if the IP is not registered or patented in the majority of cases, these takedown options are not available.
Why is protection your IP so important? Below are just a few scenarios where protecting your IP will help to protect your internet business.
Retrieval of Domain Names
If you have a trademark registration, you have a good chance of retrieving your domain name from someone who is infringing upon it. You can start with a demand letter to the infringer indicating that they are infringing upon your registered trademark by their use of it in a domain name. If the demand letter does not result in the return of the domain, a complaint can be filed pursuant the Uniform Domain Name Dispute Resolution (UDRP) Policy, which is run by the World Intellectual Property Organization (WIPO). In order to do this you must have a registered trademark and establish that the infringer has squatted on your domain name in bad faith.
Infringement of Your Brand
Let’s say someone infringes on your brand and places it on their website to draw away business, or uses your images or text to unfairly compete. If you have registered trademarks, copyrights or even sometimes patents, most internet service providers have processes by which you can have these infringements taken down. Just a few of these providers with such processes include Amazon®, eBay®, Facebook®, Instagram®, YouTube®, and Tik Tok®.
Infringement of Your Website
If someone copies your website or its content, you need a registration to protect it as you have no standing to pursue litigation without a formal registration from the U.S. Copyright Office. Furthermore, while everyone is afforded common law copyrights in their creation, the owner is not entitled to statutory damages or attorneys’ fees if the infringement occurs before the registration is issues.
In short, if you protect your IP from the start, you will have the tools to combat infringers as you build your online business.
Lisel M. Ferguson counsels clients on patent, trademark and copyright prosecution worldwide, and intellectual property litigation throughout the United States. She is the co-leader of Procopio's Sports and Active Lifestyle Practice Group and has been named a Top Attorney in San Diego County for Intellectual Property by San Diego Magazine. Lisel’s practice focuses on computer hardware and software, sporting goods, apparel, Internet, entertainment, medical devices, agricultural products and services, and consumer goods. She has experience working with Federal Litigation, Trademark Trial and Appeal Board (TTAB) actions, Uniform Domain-Name Dispute Resolution Policy (UDRP) actions, domain name disputes and Internet law. She is experienced in handling all aspects of intellectual property; in addition to protection and enforcement she has experience with customs, negotiating and drafting licenses and royalty agreements worldwide, with clients from Asia, Mexico, Chile, Australia, Canada, the European Union and the United Kingdom.