If you own various forms of intellectual property (“IP”), like copyrights, trademarks or patents, you must be careful to monitor the marketplace, media and journals, and official government websites to identify infringement or potential infringement of your rights. Infringement means any breach of the rights conferred on IP owners by the various statutes. For example, a copyright is infringed if another copies or uses the original work of authorship without permission or license. Failure to police your IP rights can be dangerous because there are certain legal doctrines that will deem IP rights lost if they are not policed and protected. An example here might be the loss of a trademark that becomes generic when the consuming public comes to identify the trademark as the word or phrase that applies to an industry or type of product. Zipper is a famous example of a trademark lost to this type of genericide.
Spotting IP Infringement
In simple terms, spotting IP infringement and policing your IP rights is about monitoring — monitoring the marketplace, monitoring the media and social media, monitoring official IP filings and monitoring your competitors. Ideally, one or more members of your staff should be tasked with this sort of monitoring. Alternatively, companies who specialize in this sort of IP monitoring can be hired. The task of monitoring is made easier with the internet. Word searches can be input into search engines that can bring up your IP. Searches can also be specifically targeted to online sales platforms like Amazon. The internet can also be used for keeping tabs on your competitors and potential competitors with respect to their new products and their new IP launches. Likewise, the internet can be used to locate references to your IP in media reports, entertainment uploads and academic journals.
Further, the US Patent & Trademark Office regularly publishes information about new patent and trademark applications that have been filed. These publications should be routinely reviewed by IP owners to ensure that no application infringes or potentially infringes on existing IP rights.
If your IP has international scope and reach, then these forms of monitoring must be undertaken on a world-wide scale.
What to Do
When policing your IP rights, you must act quickly and consistently. If you uncover potential IP infringement, the first step is to send a notice or letter demanding that the infringer stop infringing. These are generally called cease and desist letters. Every time you discover infringement or potential infringement, a cease and desist letter should be sent. Why every time? If the matter ends up in litigation, you want to be able to present to the court a pile of cease and desist letters demonstrating that you actively police your IP rights and take them seriously. This prevents potential infringers from arguing abandonment or some sort of license-by-conduct or license-by-neglect. Cease and desist letters also prevent the recipients from arguing that they “did not know.” Cease and desist letters also allow an IP owner to argue that recipients have engaged in willful infringement which can enhance the money damages that can be recovered in infringement litigation.
In addition to contacting the infringer with a cease and desist letter, if the infringement is occurring online, the owner of the website should be sent what is called a “take down notice.” These notices are the first step in having infringing content removed. This is particularly effective with online sales platforms.
Other steps that should be taken to protect your IP rights include:
- Consistently using and applying IP symbols to your products and in correspondence — like the circle C symbol for copyrights
- Registering your IP with relevant governmental agencies — like with the US Customs office for enhanced protection from trademark counterfeiting
The final step for protecting your IP rights is to initiate various types of infringement litigation. This might involve filing a challenge with the US Patent & Trademark Office related to an IP application or filing infringement litigation in federal court.