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Cleaning Up Counterfeits by Cutting The Cash Flow From Ads

It looks like IP rights holder’s may now have more recourse against the pirates and counterfeiters than a DMCA notice or the lengthy UDRP Complaint process.  This week, just a month after the White House released its 2013 Joint Strategic Plan on Intellectual Property Enforcement, and with the support of the U.S. Interactive Advertising Bureau, eight U.S. companies that operate Internet advertising networks (Google, Microsoft, Yahoo!, Condé Nast, 24/7 Media, Adtegrity, and SpotXchange) announced committed to a set of “Best Practices Guidelines for Ad Networks to Address Piracy and Counterfeiting” which is intended to cut off the cash flow  from online ad sales to websites engaging in copyright and trademark infringement.

The general commitment made by the Ad Networks is to:

(a)  Maintain policies prohibiting websites that are principally dedicated to selling counterfeit goods or engaging in copyright piracy and have no substantial non-infringing uses from participating in the Ad Network’s advertising programs and post such policies on the Ad Network’s website;

(b)  Maintain and post these best practices guidelines on the Ad Network’s website;

(c)  Ad Network policies will include language indicating that websites should not engage in violations of law;

(d)  Participate in an ongoing dialogue with content creators, rights holders, consumer organizations, and free speech advocates.

The commitment includes the institution of a complaint process similar to the DMCA’s “notice-and-takedown” system, whereby Ad Networks will (among other things): “Accept and process valid, reasonable, and sufficiently detailed notices from rights holders or their designated agents regarding websites participating in the Ad Network alleged to be principally dedicated to selling counterfeit goods or engaging in copyright piracy and to have no substantial non-infringing uses.”  In response to such a complaint, “[a]n Ad Network may take steps including but not limited to requesting that the website no longer sell counterfeit goods or engage in copyright piracy, ceasing to place advertisements on that website (or pages within that website) until it is verified that the website (or pages within the website) is no longer selling counterfeit goods or engaging in copyright piracy, or removing the website from the Ad Network.”

Prior to this effort, while copyright owners could clean up infringing content on the Internet through the use of DMCA notices to online service providers (OSPs), and trademark owners could file UDRP complaints to have infringing domains (i.e. domain names that are the same or confusingly similar to its trademark(s)) transferred to the trademark owner, there was little recourse against websites selling counterfeit products.  It will be interesting to see if these Ad Network Best Practices have any influence on the practices of the OSPs.  Is there a Digital Trademark Act in our future?!

See Also: Google Public Policy Blog  Post

So Fly – Epstein Drangel Knocks Two Counterfeit Birds off the Web with One UDRP

Epstein Drangel received a favorable decision from the National Arbitration Forum today in Rovio Entertainment Ltd. v. Liyanghua / yanghua li / angrybirdsite, FA1304001495026 (Nat. Arb. Forum, June 18, 2013), ordering that the domain names angrybirdsmart.com and angrybirdsite.com be transferred to Rovio.

On the preliminary issue of multiple Respondents, although the WHOIS information reflected that the registrant for angrybirdsmart.com was different from the registrant for angrybirdsite.com, the Forum Panel accepted the argument that the domains were commonly owned and controlled by the same entity given that the evidence submitted by Complainant’s counsel proved that that: both websites originate in China and were selling counterfeit ANGRY BIRDS products, that until recently, both websites were identical in look feel and content, that both domains were hosted on the same web server, that the registrar for both domains was BIZCN.com, Inc., and that the banner that appears on angrybirdsite.com reading “Angry Birds Mart” is identical to the one that appeared on angrybirdsmart.com. Continue reading

Introducing uFaker!!!

The attorneys at Epstein Drangel are proud to introduce a revolutionary anti-counterfeiting system called uFaker!

uFaker is an easy to use web, mobile and social platform for identifying, reporting and combatting counterfeits.  It provides Trademark Owners with a real-time system for sharing and tracking counterfeit activity among its team of lawyers, investigators, licensees and law enforcement. uFaker also mobilizes the masses (TM Owner customers) to report counterfeits and rewards them with web-based retail discounts as a measure of appreciation and gives TM Owners the option of providing additional discounts/rewards following successful actions stemming from a uFaker report.

STOP BY BOOTH 318 @ INTA FOR A DEMO AND A CHANCE TO WIN SOME GREAT PRIZES!!!

DOWNLOAD THE APP! Our iPhone App is available for download from the iTunes App Store.

FOLLOW US ON TWITTER AND FACEBOOK! Please also stay up-to-date with breaking news by following us on Twitter: @uFaker and “liking” us on Facebook.

DESIGNS… FOR REAL?

If you go searching for fake handbags or NFL jerseys on-line you may get an early April Fools Day present. The Department of Homeland Security (“HS”) has designed and launched a website to educate consumers about all the troubles they may face if they buy “fakes”. The HS website is located at DESIGNSFAUXREAL.COM.

If HS seizes a website that sells counterfeit goods, the plan is to replace it with DESIGNSFAUXREAL.COM. There, consumers will learn the harsh realities of buying counterfeit goods. The website looks like someplace you would find the best of the best. However, the deeper you dig the more apparent it becomes that you are being played for a fool. For example, if you click on the “clothing” offer link it leads you to a special offer: “Free destroyed credit rating”. Banner ads across the top of the site’s homepage read, “Free Identity Theft with Every Purchase” and “Clearance on Your Bank Account”. When you attempt to complete your purchase the site indicates: “Really? Is this ring worth having to spend the next year and a half trying to fix the damages caused by identity theft?” The website was designed to scare, amuse and hopefully educate. Well done HS.

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