On-line Copyright and Trademark Enforcement: Why Registration of Your Intellectual Property is Critical

By Eric Perrott, Esq.

As many successful online entrepreneurs have found out, with success comes copycats, especially on marketplaces like Etsy, eBay, and Amazon.  With access to platforms that allow anyone to easily set up an on-line store and sell goods, on-line infringement and counter-fitting of trademarks and copyrights has become a rampant problem. The single most effective step that you can take to protect against these pop-up infringers is to register your intellectual property with the U.S. Copyright Office (copyrights) and the USPTO (trademarks). With a copyright and/or trademark registration in hand, enforcing your rights through take-down notices to marketplaces and cease and desist letters to infringers will become easier and more cost effective.

Let’s start by looking at copyright protection.

Why Should I Register My Copyrights?

Perhaps the most rampant type of copyright infringement on platforms such as Etsy and Amazon is when someone designs some sort of art or logo for an article of clothing.  If you are creating and selling clothing with a design element, that design element should be protected with a copyright registration.  As a designer, you may know that a copyright is a bundle of exclusive rights that you receive when you create a “creative work.” While facts and ideas can’t be copyrighted, the “unique expression” of an idea can be copyrighted. This includes everything from books to artwork to music to computer code.  You receive a copyright in your work the minute you create it – no registration is technically needed. However, without registering your designs with the Copyright Office, you will find it very difficult to enforce your valuable rights and prevent others from using your designs.  This is because many infringers are under the false impression that you need an actual registration to enforce your copyright, and, many Web platforms (such as Amazon) typically require a registration to remove infringing works.

Copyright Registrations Help With Enforcement

Dealing with competing designers and shops that steal your designs is a frustrating and time consuming process. However, there is a process called the Digital Millennium Copyright Act’s Take-down Notice Procedure (the “DMCA Take-down Notice”) that allows copyright owners to request that infringing material being sold on a website be taken down. All of the major marketplaces accept DMCA Take-Down Notices and will respond quickly once you prove that you are the actual owner of the copyrighted work. A copyright registration certificate is the most effective way to show that you are the owner of the copyrighted work and to have a marketplace like Etsy, Amazon, eBay, etc. remove infringing listings.

That said, once you submit a DMCA Take-down Notice, the alleged infringer will have a chance to respond. If they do, they may be able to re-list their listings unless you sue them in a federal court. That leads us to the other benefits of a copyright registration, which includes the ability to sue in a federal court.

Other Benefits to Copyright Registration

The biggest benefit to registering your copyrighted work is that the registration provides notice to the rest of the world that the work is protected under copyright law and that you are the owner of that work. However, sometimes a lawsuit is needed to protect your rights and you can only file an infringement lawsuit if you have a copyright registration. As an incentive to register your designs, if you registered before an infringement takes place (or if you register within 3 months of publishing your work), you may seek statutory damages and attorney’s fees.

Statutory damages are monetary damages that can be levied against an infringer that are usually much higher than the actual damages, i.e. sales lost to the infringer. Copyright laws allow for statutory damages between $750 and $30,000 in damages for each infringing work at the discretion of the court. If the infringement was deliberate, or “willful” then the court may award up to $150,000 per work. This is often much higher than the actual amount that you may have lost because of the infringer’s sale of copied work.

From both an enforcement and litigation perspective, the potential for statutory damages and attorney’s fees increases the chances of successfully protecting your designs before needed to litigate. If litigation is necessary, however, statutory damages and attorney’s fees allows designers to mitigate the cost of the lawsuit and potential win statutory damages to remedy the harm caused by the infringing designs.

Trademarks – Building Your Brand

When it comes to t-shirt designs, a copyrighted design has a narrow scope of protection. You can only enforce your copyright against “substantially similar” designs. A trademark registration, however, enjoys a much wider scope of protection. You cannot get a trademark in an merely ornamental design –however, you can use your design as a logo on the tag and/or packaging of your products and start gaining trademark protection. As you continue to use your trademark on your products, customers will start to recognize the design as an indicator that you or your store is the maker of products bearing that design. Once this occurs, then you are able to prevent others from using designs and trademarks that are “confusingly similar” to your trademark, because customers would be confused into thinking that you were the one who made that product.

For trademark and copyright registrations, it is rarely an “either/or” situation. Depending on your overall goals, both trademark registrations and copyright registrations help to maximize the protection of your valuable intellectual property rights. An experienced intellectual property attorney can help devise a budget-conscious strategy to make sure your design’s don’t get “ripped off” and give you the tools to effectively stop them if they do.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.