“Trademark owners increasingly focus their injunctive efforts on stopping payment for sales of infringing goods. This can be an extremely powerful tool to combat online infringement, particularly where an anonymous infringer operates multiple accounts or is located outside the United States.”
New technologies create novel issues and inform our understanding of existing laws. The statutes that form the basis of the U.S. IP regime are decades old and, as such, could not have contemplated how technology (and technology-assisted infringement) would evolve. As a result, traditional methods of IP enforcement often lag behind the rapidly changing online environment. Though Congress has taken steps to modernize these sometimes antiquated laws—for example, the America Invents Act made significant changes to the U.S. patent system in 2016 and the Music Modernization Act updated the music licensing and royalty framework to account for digital streaming platforms like Spotify in 2018—these updates almost always function as an ex post solution to a problem that was already present. The core questions of what is “protectable,” what is “infringement” and what is “willful” in view of the fundamental shifts in technological advancement remain squarely in the gray.
IP practitioners must make innovative arguments to fit the changing technological world. Judges must grapple with how new technologies fit within the existing framework with the least disruption to legal precedent. Even when new legislation is aimed at preventing an anticipated problem, courts may look to the past for guidance on how the laws should be interpreted and applied. How do smart homes impact privacy laws? Who is responsible for infringing acts by automated robots or artificial intelligence (AI), and can that infringement ever be “knowing”? To draw the appropriate analogies or distinctions, the IP litigator needs to understand the often highly technical functions of the technology at issue to convincingly explain these functions to a judge who may be entirely unfamiliar with it. More often than not, there is no clear-cut answer and IP litigators must be creative advocates for their clients.
However, technological advances have had a significant impact on the way IP litigators investigate claims before ever stepping into a courtroom. The ubiquity and anonymity of infringement in today’s digital world have rendered traditional methods fiscally impractical and, at times, ineffectual. This article focuses on answering a threshold question in an increasingly anonymous digital world—how do you uncover the identity of a nameless infringer?
Who is the Infringer?
Perhaps nothing has affected how IP is protected and enforced more than the advent of the Internet. All lawyers undoubtedly benefit from the ease the Internet affords, but IP litigators in particular have a simultaneously beneficial and challenging relationship with online enforcement. Almost every claim that an IP litigator investigates involves the Internet, be it a competitor infringing a client’s trademark on a social media page, a user uploading a copyrighted movie to a file-sharing website, or counterfeit consumer goods being imported from overseas.
Besides providing an easily accessible platform for massive amounts of infringing material, the Internet also shrouds infringers in anonymity. This creates an early obstacle to enforcement for obvious reasons. Without sufficient identification of the infringing party, online enforcement can feel like battling a hydra—an infringer’s account or material may be deactivated, just in time for a new account or listing to pop up in its place.
The identities of online infringers are typically only known by the Internet Service Provider (ISP) platform used by the infringing party (for example, YouTube, eBay, Amazon, etc.). Given its relationship to its users, ISPs are reluctant to turn this information without a subpoena, and, traditionally, the only way to obtain a subpoena was to file a lawsuit. This created a “chicken and the egg” scenario—if an ISP requires a subpoena, which requires a lawsuit, which requires a defendant—who do you name (or direct a cease and desist letter to) if all you have is an online username?
John Doe Lawsuits
Though often outpaced by digital developments, the law is adapting to address online anonymity. One of the most common methods of uncovering an infringer’s identity is also one of the most traditional. U.S. civil procedure permits rights holders to pursue legal action against anonymous infringers by naming these entities as “John Doe” defendants. This allows the rights holder to conduct discovery to uncover the infringer’s identity, and often includes subpoenas to third-party intermediaries with whom the infringer has engaged, such as ISPs, domain registrars and shipping companies. Further, a rights holder may prove an infringer’s identity or connect an infringer’s activities across multiple platforms using circumstantial evidence, such as the use of one username on various e-commerce sites and other infringing sales patterns.
The DMCA Subpoena
If the infringing material is protected by copyright, then the Digital Millennium Copyright Act (DMCA) provides an even more straightforward route to uncovering an infringer’s identity. Besides providing a safe harbor to incentivize ISPs to implement notice-and-takedown policies, the DMCA also provides a little-known mechanism for obtaining a subpoena that does not require filing a predicate lawsuit.
When properly used, the DMCA subpoena allows a copyright owner to serve a subpoena upon an ISP for “information sufficient to identify the alleged infringer” from the ISP’s business records (17 USC § 512(f)). The subpoena may be served on the ISP at the same time as the takedown notice. To obtain the subpoena, the copyright owner must submit a request to the court that contains the following:
- A copy of the DMCA notice;
- A proposed subpoena; and
- A sworn declaration that the purpose of the subpoena is to uncover the counterfeiter’s identity and shall only be used to that end.
Provided the request meets the DMCA’s requirements, a court will issue the subpoena without requiring the copyright owner to file an actual complaint. Not only is this relatively economical, but, unlike in a John Doe lawsuit, the rights holder can jump ahead to obtain limited discovery first, which it can then use to assess whether, where and against whom to file suit.
However, like a John Doe suit, this too is an imperfect solution. Limited to instances of anonymous copyright infringement, the DMCA subpoena only requires ISPs to turn over information “sufficient to identify” the infringer. In theory, this could be as minimal as a dummy email address provided by the infringer to the ISP that is easily abandoned.
Domain Name Remedies
Sometimes relief takes precedent over the precise identity of an infringer. Where infringement occurs on a “rogue” website with an infringing domain name, a trademark owner may seek transfer or cancellation of the domain name through litigation (relying on U.S. law) or arbitration proceedings (relying on the Uniform Domain Name Dispute Resolution Policy (UDRP) or similar mechanisms). Rights holders often avail themselves of UDRP proceedings because they are significantly faster and more cost-effective than traditional litigation, though the remedy is limited to transfer of the challenged domain. Domain names may also be seized by U.S. law enforcement in criminal enforcement initiatives, such as the National Intellectual Property Rights Coordination Center’s Operation In Our Sites.
Seizure Orders and Asset Freezes
Anonymous online infringement frequently involves the sale of counterfeit or pirated goods. Because such sales can cause significant brand damage (not to mention subject consumers to health and safety risks), it can be more important to get the unauthorized goods off the market without waiting to identify the infringer. In these types of cases, a trademark owner may seek an ex parte seizure order and / or an injunction freezing payment accounts associated with infringing activity. These remedies, while extraordinary, are highly sought after because they ensure that evidence is preserved, infringing goods are removed, and monetary judgment, if ultimately awarded to the rights holder, will be satisfied.
Procedurally, the trademark owner requests an ex parte seizure order upon commencement of the suit, to prevent the defendants from concealing, destroying or otherwise disposing of the counterfeit goods, the instrumentalities used to make them, and records of the counterfeiting activities. Because ex parte seizure orders are granted without prior notice to the defendant, the trademark owner must first prove:
- An ex parte seizure order is the only adequate remedy;
- The trademark owner has not publicized the seizure;
- The trademark owner is likely to succeed on the merits of its counterfeiting claim;
- The trademark owner will suffer immediate and irreparable injury if seizure is not ordered;
- The harm to the trademark owner outweighs any legitimate interests to the defendant whose goods will be seized;
- The goods to be seized are located at the identified location; and
- The defendant would destroy, move or hide the goods if given advance notice of the seizure.
A trademark owner’s civil seizure request should be supported by affidavits with facts from the investigation. While seizure orders are relatively common throughout the U.S., some district courts are more receptive to granting such requests than others.
In addition to seizure orders, trademark owners increasingly focus their injunctive efforts on stopping payment for sales of infringing goods. In these instances, a rights holder may ask the court to issue an injunction freezing payment processing accounts (for example, PayPal) that are associated with infringing storefronts so that, if judgment is ultimately entered against the infringer, the funds in the frozen accounts can be transferred to the rights holder to satisfy the judgment. This can be an extremely powerful tool to combat online infringement, particularly where an anonymous infringer operates multiple accounts or is located outside the United States.
Technology will continue to evolve, and IP protection and enforcement must change with it. No one enforcement method will be feasible to address every infringing act. A John Doe lawsuit can be expensive and ill-suited to combat the sale of a single counterfeit good or transient listing. DMCA subpoenas require a predicate act of copyright infringement and UDRP proceedings require an infringing domain name, either of which could be missing in a given scenario. Rights owners are thus best served by implementing a flexible, multi-dimensional approach that blends both preventative and proactive enforcement measures.
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