Let’s say that you’re a creative person, someone who specializes in some sort of artistic work, such as drawing, painting, digital design, sculpture, or video. And you’re one of the lucky few who has parlayed that into a successful business, selling t-shirts, mugs, prints, and other items featuring your work.
One day, you discover that someone has set up an e-commerce site that is selling unauthorized copies of your work. Worse yet, you do some digging, and discover that they’re located overseas, and they’re having the items drop-shipped from a manufacturer in China. They aren’t utilizing Amazon or Etsy or another American-based company that you can submit an IP infringement claim to. With their operations based entirely outside the jurisdiction of the United States, you can’t sue them.
What do you do? First, you should contact an intellectual property attorney. We have handled cases like this before, and can maximize your chances of stopping the infringer. To learn how the Law Office of Michael O’Brien can help, contact us at (916) 760-8265, or send us a message using our contact form.
But there are a few other things you can do to help protect against unlicensed use of your art and other intellectual property.
First, ensure that you are an actual rightsholder—that your creation is actually protected.
Sit down for a moment and look at the nature of what the creation you wish to protect. In all likelihood, the right you’re trying to assert is copyright, which protects creative works, such as a drawing or a photograph. Visual creative works are something that are fixed and identifiable and can be disseminated through tangible mediums. Common examples include art printed on a t-shirt or the side of a coffee cup, or a digital photograph.
If your work is tangible in this fashion, then good news, you can probably take steps to protect it from unauthorized use.
However, perhaps the work in question is a funny saying that you coined, or an idea you haven’t yet developed in a meaningful way (i.e. “A few months ago I got a fantastic idea that’s going to make me millions!”). Bad news: these are not creative works. In the case of a saying or phrase, it may be possible to trademark it. However, this requires a fair amount of time and money, and in the end, you may not be successful. And if you don’t currently have a trademark, you don’t have a means of stopping others from using ‘your’ phrase in commercial contexts.
If your work is tangible, then file a copyright application.
In the United States, copyright protection is automatically granted to any piece of work when it’s brought into existence in a tangible medium. The moment this blog post was written, it was protected against unauthorized use.
This prompts the obvious question: Why bother with the hassle of filing a copyright application for a piece of work? Well, a registered copyright has several benefits over non-registered copyright. Filing a copyright claim creates a public record of your work that makes it easier to establish your ownership of said work. If someone alleges they own your work, the Copyright Office’s records can be used to establish that they’re wrong.
More importantly, in order to file an infringement lawsuit in the United States, you must have a registered copyright. In addition, if you register your copyright prior to infringement, or within three months of publishing your work, you can sue an infringer for statutory damages, attorney’s fees, and other legal costs. Even better, registration permits you to file a request with U.S. Customs and Border Protection to prevent the importation of infringing works into the United States.
Of course, in the scenario we described above, the infringer isn’t located in the United States, so you can’t sue them. And perhaps Customs isn’t being as effective as you would like. What then?
With copyright registration in hand, you can lean on Visa, Mastercard, and other credit card companies to stop the infringer from taking payment.
A decade or so ago, rightsholders to popular media, such as music and movies, started getting frustrated with credit card companies and payment processors. These companies were happily collecting transaction fees for payments to copyright infringers—online companies selling unauthorized MP3s and video files, and file-sharing sites that accepted donations.
Given the billions of dollars that makes its way into the pockets of media companies via credit card transactions, these companies were well positioned to lean on payment processors a bit. They could threaten the involvement of lawyers, or even quietly suggest, “It’d be a shame if we encouraged retailers to stop accepting your credit card.”
Consequently, credit card companies and payment processors like PayPal implemented policies allowing rightsholders to request that infringers be blocked from accepting payments. By having your work registered with the Copyright Office, it’s very easy to assert that you are the rightsholder, and demonstrate to a credit card company that they are processing payments for a counterfeiter.
You may not be able to sue an overseas counterfeiter of your creative works. But by disrupting the profitability of their business model, the problem will go away on its own.
This scenario is emblematic of the fact that by properly asserting your intellectual property rights—via patent, copyright, or trademark—you can often find ways to stop infringement without having to resort to expensive lawsuits. For assistance in protecting your intellectual property against counterfeiting, contact the Law Office of Michael O’Brien by calling (916) 760-8265, or send us a message using our contact form.