Policing your trademarks is as important as registering them. Policing requires that the trademark and other rights owners monitor the world of commerce to ensure that others are not stealing their intellectual property and, if so, take immediate action against infringers. Many corporations zealously defend their trademark portfolios. Here’s but one example.
In a recent article at Wired.com, The Free Wheeling, Copyright-Infringing World of Custom-Printed Tees, Roger Sollenberge writes about the efforts of Exurbia Film to police intellectual property rights for the 1974 cult horror classic, The Texas Chainsaw Massacre. The Texas Chainsaw portfolio included more than 20 trademarks, both words and images. Exurbia’s task was to develop the franchise, strike deals for TV series, movies, “graphic novels, barbecue sauce and experiential products such as escape rooms and haunted houses.” It was also tasked to police counterfeits. It’s not hard to imagine the difficulty of policing an iconic “horror” trademark, particularly during the Halloween season.
Daniel Sahad, one of Exurbia’s agents, devoted much of his time to finding and reporting counterfeit products in a gigantic real-life game of whack-a-mole:
Exurbia has filed more than 50 notices with eBay, more than 75 with Amazon, and more than 500 with Etsy, asking the sites to remove items that violated Chainsaw trademarks. The sites removed infringing items within a week or so; but if another bogus design appeared, Exurbia had to find it, document it, and file another notice …. Over time, the problem grew worse: Sahad sent 649 takedown notices to Redbubble [an Australian company] and its subsidiary Teepublic in 2019.
The volume of work required Exurbia to increase its staff to eight full-time employees for “searching, verifying, documenting, tracking down unknown companies, consulting lawyers, and submitting notices to website operators”. Exurbia also learned that many of the companies infringing the Texas chainsaw trademarks were based overseas so there was little they could do.
A large portion of this infringing activity is fueled by a “weakness” in the Digital Millennium Copyright Act (DMCA) safe-harbor provisions, which insulate website owners from liability for copyright infringement by participants in online communities. We have written about this in other contexts. Couple this with the explosive growth of the printing on-demand industry (e.g., Teespring, Teepublic, and many others), you have a formula for easy IP infringement. Some argue that if not for the DMCA protection, the print-on-demand industry would be far weaker than it is.
Today, [print-on-demand sites] are pillars of a multibillion-dollar global industry, with product lines extending from T-shirts and hoodies to underwear, posters, mugs, housewares, backpacks, coozies, wristbands, and even jewelry.
No longer can rights owners police their property by chasing after local chain stores or their national buyers. “Now there are effectively millions of independent retailers designing merchandise every day” participating in a multi-billion-dollar industry in which IP infringement appears to be the norm, not the exception. Litigation is, of course, one solution, but rights owners cannot litigate against all infringers, there are just too many. And the administrative and legal costs would be huge.
The ultimate solution may reside in Congress. Copyright hearings began in 2020. Hearing participants have called for a revision of the “safe-harbor” provisions. Thom Tillis (R-NC) was on record stating that “[a]lmost every single thing about the internet has changed over the past 22 years, and the law simply hasn’t kept pace.” One participant has proposed a “notice and stay down” system, making Internet hosts responsible for keeping infringing works completely off their platforms. Whether that is possible in view of the technological requirements has been a matter of debate. Large platforms, Google and Facebook, can surely afford the required technology, but small platforms are at a disadvantage. The trick will be to find a solution that works for everyone, big and small, and which also protects rights owners and users.
Whether revisions to the DMCA occur this year is doubtful in view of the pandemic issues, which has sucked the life out of many initiatives. Nonetheless, we will continue to monitor these issues for our readers.
–Adam G. Garson, Esq.