Websites call for DMCA style safe harbour for trademark disputes


Websites call for DMCA style safe harbour for trademark disputes

Denys Prykhodov /

Online platforms including Etsy, Kickstarter and Shapeways have urged US Congress to introduce a law for trademarks that has similar provisions to the Digital Millennium Copyright Act.

Under US law, ISPs are currently granted a safe harbour provision in matters relating to copyright infringing material posted online but no such provision exists for trademark disputes.

On Friday, October 16, the online retailers demanded a similar law for websites facing trademark claims, which will free them from liability of infringement if a user of the service posts an infringing product.

The group, which also includes social networks Foursquare and Meetup, was responding to a call last month from Danny Marti, an intellectual property enforcement coordinator at the Office of Management and Budget at the White House, for interested parties to contribute ideas on how to improve enforcement of IP rights in the US.

Marti said: “The Obama administration is committed to continuing to be vigilant in addressing threats to IP that jeopardise our status as the world’s leader  for innovation and creativity.”

The management and budget office is in the final year of its Joint Strategic Plan on Intellectual Property Enforcement. Marti has been consulting with stakeholders on how to improve the enforcement of IP for the 2016-2019 strategic plan. The consultation period ended October 16.

The group said: “As online content grows and brings about more disputes, it is necessary to consider expanding existing safe harbours or creating new ones for trademarks.

“A statutory safe harbour could also encourage the creation of publicly accessible case law regarding trademarks. Currently, the vast majority of these disputes are resolved privately without public scrutiny. ISPs are largely left to create their own patchwork of policies, hoping that their decisions strike a reasonable balance between enforcement and expression.”

At the moment, the lack of provision means that many ISPs may err on the side of caution and remove material even though it may be protected under fair use, the group said, adding that the uncertainty has negative implications for free speech rights.

An example it cites is of an abusive demand is by Republican presidential candidate Ben Carson who demanded online retailer removed any merchandise bearing his registered trademarks.

In July, Etsy released its first transparency report which highlighted the number of products removed and of what type of infringement had occurred.

The retailer said it removed almost 7,000 products, 40% of which were based on trademark infringing grounds.

Etsy; Kickstarter Shapeways; DMCA; safe harbour; ISPs; copyright; trademarks;

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