DISCOVERING ONLINE INFRINGEMENTS – WHAT CAN YOU DO?

Mark Heritage

Mark Heritage is an assistant solicitor at ACID Accredited Law Firm Hammonds, which provides advice on the full range of intellectual property rights and their enforcement

The increasing centrality of the world-wide web to modern business clearly affords designers great opportunities to advertise their products and talent and expand their business. However, it also provides a ready route for copyists to disseminate infri ngements globally at the touch of a button, and too many designers have heard of (or been the victim of) online copying, which might range from plagiarism of marketing text, images or other materials, to unauthorised trade mark or brand use, or outright copying of product design.

So what can you do if you find infringements of your IP online? The standard approach is to target the individual or company known (or suspected) to be behind the posting of the infringing material online with a cease and desist letter. However, it can prove difficult to achieve results with this method, as often the infringer (who can be based abroad) has taken steps to obscure their identity, or simply does not respond, requiring further costly enforcement action. However, a more creative approach, involving the relevant website “host”, can yield results. By way of background, a domain name (i.e. and internet address in the format “www”….. .com, or .co.uk, etc) is registered by a “registrant” with a “registrar”, who distributes domain names. Once the domain is registered, the website and online materials accessible through are then “hosted” (i.e. brought onto the world-wide web, so as to be accessible by internet users) by a “host” provider.

What is not commonly known is that there are frequently express provisions in the host’s standard terms with the registrant which entitle the host to suspend its hosting. These are essentially designed to protect the host from liability. However, usefully for designers, they often include circumstances in which material provided for hosting infringes one or more IP rights or is generally “unlawful” (although the precise terms vary from host to host).

If the host can be satisfied such material has been provided for hosting by the registrant, they may suspend hosting as a defensive step. If this is done, internet users trying to access the website at that domain should receive the familiar white screen and the message that the website is “unavailable”, or be taken to a holding page. In either case, online access to the website effectively becomes impossible and the “flow” of infringements into the public domain is halted.

Therefore, combining a cease and desist letter to the host with a cease and desist letter to the registrant can allow online infringements to be attacked from both the “top-down” and “bottom-up”, increasing the chances of early success.

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