Online Trademark & Copyright Infringement & U.S. Customs and Border Protection – This is a seizure!
One of the options for intellectual property owners to take when their goods, services, trademarks and copyrights are infringed is to seize infringing goods. This blog talks about this generally. In this day and age with almost anyone being able to sell products in their own online store the opportunity fort counterfeits abound. Some of the top categories of counterfeit infringement items according to the Department of Homeland Security are:
- Consumer electronics
- Sporting goods
- Personal care items
- Fake branded clothing
- Replica watches
- Rolling papers
This, of course, is not an exclusive list of infringing items.
DMCA seizure provision
The United States Department of Homeland Security (“DHHS”) reports on seizures of devices that violate the
According to 17 U.S.C. 1201 (the anti-circumvention section):
“(2) No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that (A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title; (B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or (C) is marketed by that person or another acting in concert with that person with that person's knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.” As noted in one case from the Northern District of California (SF and bay area): “Plaintiff must then show …… to prevail on the section 1201(a)(2) claim. As defined in section 1201(a), “to ‘circumvent a technological measure' means to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner.” 17 U.S.C. § 1201(a)(3)(A).
CSS is a “technological measure” that effectively controls access to copyrighted DVD content and RealDVD permits the access of that content without the authority of the copyright owner. RealDVD products are designed primarily for circumvention of that technology, as Real has admitted its intent upon initial development was to create a software product that copies DVDs to computer hard drives so that the user does not need the physical DVD to watch the content. This unauthorized access infringes the Studios' rights because it entails accessing content without the authority of the copyright owner,
See Realnetworks, Inc. v. DVD Copy Control Ass'n, 641 F. Supp. 2d 913, 932–33 (N.D. Cal. 2009). This case also discussed the user backup exception and the “ fair use” doctrine: “D. “Fair Use” Defense “Real puts forth numerous arguments as to why neither the Studios nor the DVD CCA have a legal right to prevent consumers from making personal or “backup” copies of DVDs using the RealDVD products. The court considers *941 the various iterations of these arguments together and places them under the rubric of a “fair use” defense. Real contends the Studios are attempting to secure an exclusive right not expressly granted by copyright law. Real cites to the DMCA section 1201(c), which provides that “[n]othing in this section shall affect rights, remedies, limitations, or defenses to copyright infringement, including fair use, under this title.” 17 U.S.C. § 1201(c)(1). Real argues that the Studios' rights under sections 1201(a) and (b) are therefore limited in that they exclude the rights preserved to others under the doctrine of fair use, as an affirmative defense to copyright infringement. See 17 U.S.C. § 106 (granting copyright holder exclusive right to make copies of its work) & § 107 (“the fair use of a copyrighted work … is not an infringement of copyright.”). In terms of case law, Real relies on Sony Corp. of Am. v. Universal City Studios, 464 U.S. 417, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984), for the proposition that creating a personal backup copy of a purchased DVD is a fair use.”
The U.S. Customs and Border Protection (“CPB”) has noted that DMCA anti-circumvention devices may include:
- Mod chips for gaming counsels
- Blue ray rippers
- Pirating streaming boxes
- Other devices
Seizure of these items are possible.
Seizure of Copyright infringing materials under Section § 509 Seizure and forfeiture
(a) All copies or phonorecords manufactured, reproduced, distributed, sold, or otherwise used, intended for use, or possessed with intent to use in violation of section 506(a), and all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced, and all electronic, mechanical, or other devices for manufacturing, reproducing, or assembling such copies or phonorecords may be seized and forfeited to the United States.
(b) The applicable procedures relating to
(i) the seizure, summary and judicial forfeiture, and condemnation of vessels, vehicles, merchandise, and baggage for violations of the customs laws contained in title 19,
(ii) the disposition of such vessels, vehicles, merchandise, and baggage or the proceeds from the sale thereof,
(iii) the remission or mitigation of such forfeiture,
(iv) the compromise of claims, and
(v) the award of compensation to informers in respect of such forfeitures, shall apply to seizures and forfeitures incurred, or alleged to have been incurred, under the provisions of this section, insofar as applicable and not inconsistent with the provisions of this section; except that such duties as are imposed upon any officer or employee of the Treasury Department or any other person with respect to the seizure and forfeiture of vessels, vehicles, merchandise, and baggage under the provisions of the customs laws contained in title 19 shall be performed with respect to seizure and forfeiture of all articles described in subsection (a) by such officers, agents, or other persons as may be authorized or designated for that purpose by the Attorney General.
What is a 17 U.S.C. 512(f) misrepresentation claim?
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Combating Online Infringements and Counterfeits Act COCIA
Another intellectual property statute with a seizure provision is the COCIA.
According to wikipedia:
“United States Senate Bill S.3804, known as the Combating Online Infringement and Counterfeits Act (COICA) was a bill introduced by Senator Patrick Leahy (D-VT) on September 20, 2010. It proposed amendments to Chapter 113 of Title 18 of the United States Code that would authorize the Attorney General to bring an in rem action against any domain name found “dedicated to infringing activities”, as defined within the text of the bill. Upon bringing such an action, and obtaining an order for relief, the registrar of, or registry affiliated with, the infringing domain would be compelled to “suspend operation of and lock the domain name.”
See our video on
Contact an Intellectual Property Infringement Law Firm
If you are dealing with a DMCA, COCIA, copyright or trademark counterfeit product or service situation, call us to discuss your case at (877) 276-5084. There are serious damages and penalties for copyright and trademark counterfeiting so contact us today.