ECA

Dealing with online infringement

27.02.2020 IP Australia

You’ve worked hard to build your business. Made sacrifices to get it to where it is. Then you discover someone online might be infringing on your IP. In the heat of the moment, it can be easy to think of going straight to court.
This article isn’t intended to talk you out of protecting your business. You just need to consider your options first.

 

To begin, ask yourself some questions:

  • What IP is being infringed?
  • What is the value of that IP?
  • Who is it that you believe is infringing your IP?
  • What evidence do you have that the infringement has occurred?
Although taking strong action might be tempting, it may not be your best option. In fact, recipients of groundless threats, demands or complaints about copyright infringement can take court action against those making the threat or demand. Also consider the cost of pursuing compared to the possible lost income. Or perhaps seek an opportunity to offer a licence agreement and create a new revenue stream.

But if taking action against the potential infringer is the way forward then there are a number of steps you should take.

Assuming there are grounds for making a complaint, the complaint should first be made directly to the party responsible for the infringement. If you are having trouble finding their details you can check who registered their domain name by searching the international WHOIS databases.

You may need to work with lawyers in the relevant country to act on your behalf. Often Australian lawyers will refer you to their counterparts internationally. If the infringer can’t be contacted or identified, you may need to engage an investigator or IP professional to explore other or legal avenues.

Where it is not possible or practical to contact the infringing party directly, you could contact third parties whose services are used as part of the infringement. For example, if the infringement is taking place on social media, mobile app marketplace or an eCommerce website, review the provider's terms and conditions and any intellectual property policy published on its website.

If the provider has a formal copyright takedown procedure you can report the content directly to the website. You can also lodge a report to their payment service providers if their services are being used to process payments for the infringing content.

A cheaper and faster option to resolve your dispute compared to formal legal proceedings may be to seek out Alternative Dispute Resolution (ADR) services, these include mediation, arbitration or expert determination without the need for litigation. The World Intellectual Property Organization (WIPO) provides a range of ADR services for disputes that go across international borders.

For more information on enforcing your IP and other legal options see our section on IP Infringement.

 
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