Germany’s DeNIC offers (a bit) more privacy for some registrants

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With the increasing focus on privacy in Europe, and ongoing challenges to the US-European “Privacy Shield” agreement, domain name registrants from Europe see domain names as (yet another) weak link in privacy rights. They wouldn’t be wrong in that – in order to protect domain name registrants in the case of the failure of a domain name registrar, all registrars are required to put the underlying registrant data in escrow with an accredited data escrow provider. Until recently, however, the only ICANN-approved data escrow provider has been the US company Iron Mountain, and as a result all of the agreements (and the underlying data) were subject to US law. That, of course, means they were subject to US law enforcement and civil litigation demands as well.

That has recently changed. According to heise online (in German), DeNIC, the German company in charge of the .de country level domain, has recently been accredited by ICANN as a third party data escrow provider for registrar data. DeNIC’s accreditation provides a European alternative to Iron Mountain, and provides some assurances that European data remains in Europe subject to European privacy laws. While that’s an improvement, domain registries must also escrow data, and there’s only a single provider for those services as well (can you guess who that might be?). DeNIC, looking to close that weak link in data protection, is actively seeking accreditation there as well.

While this particular service may not impact US business to any great extent, it does demonstrate an increasing interest in European alternatives under the current political climate. No doubt companies like XING (a German LinkedIn alternative) and UK online bookseller Wordery will seek to capitalize on increasing European concern over US service providers.

At the rate things are going, US disregard for privacy may create the European Internet champions that European lawmakers could not.

For more on DeNIC’s accreditation and continuing efforts, see this press release.

DMCA – After the counternotice

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Sometimes throwing down the gauntlet does more harm than good

Once the counter notice is sent things get tricky – many customers think that, having sent the counter notice, the materials can be returned to the website immediately, but that’s not true. The materials must remain offline for ten days after receipt of a valid counter notice, whether they are infringing or not. This provision is definitely favorable to copyright holders, and annoying to those who have to work around the removal for that ten day period. That waiting period can be particularly impactful when the content is timely, since that ten day window can be just enough to ensure that the content is irrelevant by the time it can be returned to the website. Not surprisingly, we see a lot of questionable DMCA notices during tight political races.

Even more important to remember, if you’re the one sending the counter notice, is that you are essentially throwing down the gauntlet and daring the other party to sue you, since that’s the only way to prevent the return of the materials to the website. Before sending that counter notice, you might want to consider long and hard whether (1) the other party is likely to sue and (2) whether you can afford to defend yourself (and deal with months or even years of legal aggravation) just so that you can use that photo of a kitten cuddling with a hamster on your blog. All kidding aside, lawsuits are painful and expensive, and potential damages for copyright cases can be astronomical, so sometimes it’s better to fold even if you are in the right.

Having received the valid counter notice, the hosting provider will forward it back to the sender of the original notice, which starts the clock ticking on the ten day waiting period. At that point the copyright holder has to either sue or accept that the materials will be put back online. While the law tends to be on the side of a valid copyright holder, the same caveats as above apply – lawsuits are an expensive and messy way to resolve a dispute, and collecting on a large judgment from a blogger with an audience of his mother and three of his best acquaintances may be more trouble than it’s worth. Just today I received a withdrawal of a counter notice against a very large company, which strongly suggests that, rather than sue a small website operator, the company reached out and came to an amicable resolution of the copyright dispute.

That being said, sometimes a lawsuit is the only way to ensure the continued removal of the material. Once the lawsuit is filed, the provider of the notice must provide proof of the lawsuit to the web host, who will forward it to the customer. At that point the web host’s job is done, at least until the lawsuit is complete months or years down the line.

DMCA – The takedown notice

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Since we’re on the topic of the DMCA, I thought I’d put together a primer on the DMCA takedown and notice procedures. As I mentioned in my last post, the takedown procedure offers a quick way for copyright holders to have their materials taken offline while reducing the risk for internet hosts and service providers – with caveats. We’ll cover the caveats later, but for now we’ll focus on the takedown notice, which notifies the host or ISP that there is infringing material on a website which they host. The takedown notice is addressed to the service provider, not the actual infringer, and will be forwarded by the service provider to its customer.

The takedown notice must include the following:

(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

This is pretty easy – anything which you intend to be a signature can be your signature. A scan will do, your name typed and preceded by /s/, just your name, or, in the right circumstances, even an “X” will do. As long as it can be construed as a signature it will probably suffice.

(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

This is the stuff you want removed, typically in the form of a URL leading directly to the infringing material. If there are too many to list, you can reduce it down to a reasonable sized list, but remember the host should be able to find those materials reasonably quickly – you can’t just point to the home page and say “it’s here” unless the entire home page is a copy of your materials. If the infringement is only a small portion of the page or site, consider providing a pdf with the infringing materials circled or highlighted.
Don’t list your own copyrighted materials here, or you risk having them removed. That’s like what my brother did a few years back when he called the city to have a car towed and inadvertently reported his own car, then in an effort to correct it he reported his car again. He then had to move his car. Don’t do it.

(iii) 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.

In most cases, this is where you’ll provide links which show your materials in their original location. Again, a host should be able to look at the pages listed under (ii) then look at the list under (iii) and, without too much effort, see what is allegedly infringing. Use a list of URLs where needed, and an attachment showing the exact location of the original photo or text can be helpful where appropriate.
If your content isn’t online, provide enough information for the host to verify in some way that the materials are yours. I’ve seen links to books on Amazon, citations for published papers, and even scans of documents attached to DMCA notices – as long as the host has something credible to rely on it should suffice, and if it doesn’t they’ll likely let you know so you can supplement the notice with additional materials.

(iv) 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.

This should be pretty self-evident, but it should really be more than just a reply-to address in an e-mailed complaint. A DMCA notice with contact information which is intended to avoid disclosing the identity of the complainant may be ignored by some service providers.

(v) 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 copyright owner, its agent, or the law.
(vi) 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 of an exclusive right that is allegedly infringed.

These two requirements seem to confuse people, but in reality it’s easy (and required). You simply have to parrot these two lines in your notice, e.g. “I have a good faith belief …” and “The information in this notification …” Whether you think it makes sense or not, these two statements are required, and leaving them out (or creatively rewriting them) can render the notice ineffective.

You can find a sample letter at EPIC and a host of other sites, or you can look through Lumen’s database of DMCA notices for thousands of examples, good and bad.

Some people (often attorneys) feel the need to lard up their notices with everything from copyright registration information to all sorts of creative reservations of rights or nasty threats. None of that is necessary, and much of it is superfluous. If the notice is proper, in order to benefit from the immunity provisions, an ISP has to either remove the materials or ask for clarification (if certain elements are present but the notice is not entirely in compliance with the law). If the notice is non-compliant it can, and probably will, be ignored.

Think your DMCA designated agent is set? Think again.

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Many businesses strive for an interactive website, but interactivity brings with it the risk that someone else’s posting will create legal risk. Fortunately, a number of laws help shield the website operator from risk, most important among them the Digital Millennium Copyright Act (DMCA)

The DMCA, or more specifically the DMCA “notice and takedown” procedure, protects businesses from copyright liability for content posted to their website by third parties. Essentially, website owners and operators who register with the US Copyright Office and follow the takedown procedure are granted immunity from copyright lawsuits as long as they were not actively involved in posting from the alleged infringement. This protection can be invaluable, given the potentially high cost of even inadvertent copyright infringement.

Key to DMCA protection is the designation of an agent with the US Copyright Office – without an agent, even companies which follow the procedure are not immune from liability. Under the original system, companies completed a paper form which was scanned and put online. Although it’s called a “directory,” the old list was really just a database of scanned forms, many handwritten and some illegible. Since the designations never expired, designations for long-inactive websites remained online well past the expiration dates of the underlying business ventures. Starting December 1, 2016 there’s a new directory which will replace the previous forms. In order to populate the directory, companies will be required to file electronic designations (along with a new, increased fee) by no later than December 31, 2017, after which all registrations under the old system will expire. Under the new rules, registrations must be renewed every three years.

Some have criticized this as a money grab on the part of the US Copyright Office and, frankly, I tend to agree. That being said, anyone who has ever filled out or tried to read the scanned “Interim Designation of Copyright Agent” has to agree that the procedure was in need of an overhaul. It’s hardly surprising that the government would want industry to pay.

For more information, see the US Copyright office’s website.

Which symbol do I use for my trademark?

™? ®? ℠? ©? Ever wonder what all those brand name symbols mean? Here is the simple lowdown.

The ® indicates that a trademark is registered with the United States Patent and Trademark Office (USPTO). It should only be used after you have received confirmation from the USPTO that your mark has been registered.

The ™ and ℠ symbols can be used when a trademark is not registered (whether or not an application for registration is pending). These symbols are a way for a trademark owner to claim proprietary rights in a mark even though the mark is not registered. The difference between the two is that ℠ stands for “service mark” and indicates that the trademark identifies a service, as opposed to a good, whereas the ™ symbol, which stands for “trademark”, is commonly used for both goods or services.

The © symbol is for copyrights, not trademarks.

Proper Trademark Use Can Be Tricky

It is important to use your trademarks properly. Improper use can lead to loss of trademark protection. The first and easiest step in proper use is to always use the correct identifying symbol after your trademark. If the trademark is not yet registered, use the ™ symbol to put the public on notice of your trademark. The ™ symbol can be used at any time, even if you have no intention of ever applying for a federal trademark registration. It should also be used after you apply for federal registration up through the time of actual registration. Once the trademark has been granted federal registration, you may begin to use the ® symbol. The ® indicates that the trademark is registered with the United States Patent and Trademark Office. Therefore the ® symbol should not be used prior to registration.

The second step is trickier, but is just as important. It has to do with grammar, so it might be time to brush up on those grammar rules you learned in school. A trademark must only be used as a proper adjective to identify the particular brand of product or service that your company is selling. It should never be used as a descriptive adjective, a noun, or a verb, or used in the possessive or plural. Examples of the proper use of a trademark are: “Protect your cuts with Band-Aid® brand adhesive bandages” and “Xerox® copiers produce great color copies”. In both these cases, the trademark brand name is used as a proper adjective and with the ® symbol. Examples of improper uses of trademarks are: “Protect your cuts with Band-Aids” (here it is being used as a noun and in the plural form, both big no-no’s); “Xerox this document” (verb); “Xerox copies are the best” (descriptive adjective); “Xerox’s high quality” (possessive noun). All the aforementioned uses are improper and put the trademark at risk of losing its protection. You should have your company’s website, advertising materials, and packaging reviewed for proper trademark use and marking. You should also monitor third party uses of your trademark to ensure that others use your mark properly. Many companies have Trademark Use Guidelines posted on their websites that provide instruction to third parties as to permissible uses of the company’s trademarks.

Ironically, the more successful and widely-known a trademark becomes, the more at risk it is of becoming “generic” and losing its protective registration. As mentioned in my previous post, many product words that we commonly use, such as granola and trampoline, were once protected trademarks. The owners of such trademarks lost their protection due to wide-spread use of the trademarks to identify the product rather than the brand. Once the Patent and Trademark Office determines that a trademark has become generic, the trademark loses its protection and can thereafter be used by anyone to describe the type of product associated with the brand name. If your brand name becomes generic through improper use, a competitor can petition the Patent and Trademark Office to cancel your registration, and your brand name could suffer the same fate.

Protecting and Maintaining Your Trademark Registration

The battle to protect your trademark does not end with federal trademark registration. Once registered, you have to be vigilant about protecting the trademark from misuse, or risk losing the trademark’s protected status. The better the brand name, the easier it will be to protect it from improper use by others.

Protection begins with your own use of the mark. In order to maintain a federal registration, you have to actually use your mark in commerce; you cannot simply register it and keep it for possible future use. If you don’t use it, a third party (e.g. a competitor that thinks you came up with a great brand name and wants to use it for their own products) can seek to cancel your registration for non-use and then register it as their own brand name. It is important that you not only continue to use your trademark, but that you use it properly. I will discuss proper trademark use in a later post.

Additionally, certain documents must be filed periodically with the Patent and Trademark Office (the “USPTO”) to maintain a trademark registration. These documents essentially provide a mechanism of proof to the USPTO that you have been continuing to use the trademark in interstate commerce. If the deadline for filing a maintenance document passes, you will lose your registration. If you buy or sell a trademark (e.g. pursuant to the sale of a business or an inter-company agreement between related companies) or grant or take a security interest in a trademark or change the name or address of your company, you should update the ownership records with the USPTO. It is important to keep the trademark registration’s contact information up to date with the USPTO. However, the USPTO will not send you reminders about filing deadlines, so it is incumbent on the trademark owner to keep track of filing deadlines.

It is also important that you prohibit others from using your trademark improperly and without your consent. You should actively pursue any third parties who infringe your trademarks. Sometimes you will find out about an infringement in an ordinary Google search or because one of your customers tells you that they found a competitor’s website when they were looking for yours. There are also trademark watchdog services that will send you notices about potentially infringing marks. If you have a valuable trademark that is frequently infringed, a watchdog service may be a worthwhile investment.

If you are lucky enough to have a brand name that becomes extremely well-known, it may be eligible for status as a “famous” mark. Famous marks come with their own set of privileges as well as challenges. While afforded certain special protections against infringement, famous marks are sometimes vulnerable to becoming generic (and losing their registered status) through unchecked misuse. Examples of once-famous trademarks that lost their trademark registrations are aspirin, cellophane, thermos, escalator, zipper, and yo-yo. All of these once-famous trademarks are now generic names used to describe the product. Most of these were lost as a result of under-policing the misuse of the name by third parties and probably by the owners (and their employees) themselves. But while under-policing can lead to loss of the registration, over-policing can be costly too in terms of legal fees, watchdog service fees, and public image. Finding the right balance is important to ensure long-lasting protection while keeping costs to a minimum.

The Importance of Registering Brand Names with the USPTO

Federal trademark registration is not required to establish rights in a brand name. So why bother? In short, because registering a brand name with the United States Patent and Trademark Office (“USPTO”) affords it many advantages, and considering how valuable brand names are to a business, federal registration of trademarks is a relatively inexpensive and straightforward process and one that every owner of a brand name should consider.

A brand name, also know as a mark, can generally be registered with the USPTO as long as two conditions are met: (1) the mark does not conflict with a pre-existing mark and (2) the owner of the mark uses it in interstate commerce to identify a product or service. (Use in interstate commerce means that the mark is advertised to the public in more than one state. State registration is also available as an alternative to federal registration if the mark is only being used in one state.)

There are many benefits of federal trademark registration. The following is my top 10 list of reasons to apply for registration.
1. Notice to others of claim of ownership, which helps to discourage others from using the same or confusingly similar marks.
2. Nationwide protection, even if the mark is only used in a couple of states.
3. Evidence of ownership and validity of the trademark, which grants the owner the exclusive right to use the trademark in commerce in connection with the goods or services identified in the trademark registration.
4. After five years of continuous use following registration, the mark becomes eligible for broader protection through the granting of “incontestable” status.
5. Presumption of the date of first use of the mark. Although the first person to actually use a brand name in commerce is the rightful owner regardless of whether the mark is registered, demonstrating first use without registration can be difficult.
6. The right to bring an action for infringement in federal court under the Lanham Act. The Lanham Act allows the trademark owner to seek to recover its attorneys fees and treble damages. Without federal registration, a trademark owner is limited to bringing a state common law action.
7. The right to use the ® symbol. (Prior to registration, owners may use the ™ or ℠ symbol to claim common law rights of ownership.)
8. Protection against the registration with the USPTO of confusingly similar marks.
9. Registration can be used as a basis for registering the mark in other countries, which can facilitate world-wide protection as the business expands globally.
10. Registration may be filed with the US Customs Service to prevent importation of infringing foreign goods.

Choosing the Right Brand Name

For the next few weeks I will be reviving a series I did several years ago on some trademark basics and common issues. This series is meant to familiarize business owners with the basics of US trademark law and the important role that brand names and trademark registration play in the success of a business.

Choosing a good brand name is the first step in identifying your unique product or service and protecting your business against competitors using confusingly similar brand names. Not all brand names are created equal. Successful brand name protection begins with choosing a “good” brand name.

The best brand names are those that are words that were unknown prior to their use with the goods or services. These are known as “coined marks.” Examples of well-known coined marks are Xerox, Exxon, and Kodak. Coined marks are the easiest to register and enjoy the broadest protection.

The next best brand names are known as “arbitrary marks.” Arbitrary marks are real words that have no connection to the product or service it is identifying. Examples of well-known arbitrary marks are Apple for computers, Shell for petroleum products, and Amazon for online bookstores.

Next in line are “suggestive marks,” which are real words that suggest certain features or qualities about the product or service, such as Coffee-mate creamer and Airbus airplanes.

A descriptive mark (i.e. one that very obviously describes the product) is the least desirable and, unfortunately for many businesses, one of the more popular kinds chosen. Descriptive marks often prove difficult to register. Even when they are successfully registered, they offer the least amount of protection.

Last in line are generic terms, which are terms that refer to the class of product (such as “cola” or “software”) rather than a particular brand. These terms cannot be granted federal registration and enjoy no protection.

It is also important to remember that a company’s business name is not a trademark unless is it also (and separately) used to identify products or services. If a name merely identifies the company, it is not a trademark and cannot be registered with the federal trademark office. That said, for many companies, their company name is also the brand name of the company’s main product or service. Accordingly, when choosing a name for your company that you intend to have double as the company’s brand name, you want to make sure it does not infringe someone else’s brand name. As with any brand name, before selecting a name for your company, it is a good idea to conduct a comprehensive trademark search to make sure there are no potential conflicts.