Bogus Takedowns

Your source for the truth about the Copyright and Trademark infringement takedowns.

Fight an eBay Vero Suspension - Fight a fraudulent website takedown - Know your legal rights

                    

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If your internet auction or website has been "taken down" by a party who claims you infringed on their copyright or trademark then you have come to the right place. Many of these takedowns are based on legitimate claims of infringement, but an ever growing percentage of them are bogus, fraudulent, unlawful and are likely actionable in a court of law. Hundreds of thousands of Americans make their living via ecommerce. These takedowns can bring your business to a halt and cause you lost profits and endless frustration. You can fight back against these cyber-bullies if you arm yourself with the right knowledge.

This website will help you:

bullet_12.gif Understand why your auction or website was take down so abruptly and without warning.

bullet_12_1.gif How to restore your internet site or auction

bullet_12_2.gif How to prevent a future takedown.

bullet_12_2.gif Understand the ebay VERO program and learn how not to be a victim of its misuse.

bullet_12_3.gif Explore the merits of a lawsuit against the perpetrator of the bogus/fraudulent takedown.

 Copyright & Trademark Law  . . . . . .you need to know the basics

Most website and auction takedowns start with an allegation that you have infringed on a copyright or trademark. Therefore you need to understand the basic definitions of  "Copyright" and "Trademark". Keep in mind that the definitions below are basic and the law of copyrights and trademarks can fill up an entire text book.

What is a Copyright ?

Copyright is a law that gives you ownership over the things you create. A copyright is a legal right granted to creators of such things as books, music, paintings, photographs, software, radio and television broadcasts and movies. The holder of a copyright has exclusive rights to profit from his/her work and to control the copying of that work. Copyrights are valid for varying amounts of time and these time periods are usually very long and can be 95 years in duration or longer. Copyright law does not protect ideas, facts, procedures or concepts.

The "First Sale" doctrine places common sense limits on the control a copyright owner has over his creations. This doctrine provides that a purchaser of legitimate copyrighted material (i.e. a book or DVD movie) is entitled to resell that particular item without liability for copyright infringement. However, you are prohibited from making copies of that book or movie, without permission of the copyright owner, and selling it for profit. That would be the purest form of copyright infringement.

Penalties for copyright infringement can include triple damages above and beyond actual damages and payment of plaintiff's attorney's fees. Criminal penalties can be imposed on the person who commits wholesale pirating of copyrighted materials. If you are convicted in a criminal copyright infringement case you can face heavy fines and prison time.

 

What is a Trademark?

A "trademark" is a symbol, logo, phrase, image, design, shape of goods, packaging or combination of colors which is used to identify a particular product offered by a particular manufacturer. A trademark can be registered or unregistered and most common consumer and industrial products that bear a trademark are registered with the government. A trademark is considered a type of intellectual property and the registered owner of a trademark has the right of exclusive use of the trademark in relation to the product for which it is registered. Unlike a copyright, a trademark must be maintained through actual use and enforcement or the rights to it will cease.

The owner of a registered trademark can sue to prevent its unauthorized use or to prevent the use of a similar mark. With regard to similar trademarks the test is always whether a consumer of the goods will be confused as to the identity of the source or origin.

Under the "Fair Use Doctrine" you can use the trademarked name of the item you are selling - i.e. you can use Coke if you are selling a Coke item.

 

Digital Millenium Copyright Act (DMCA) - here is where problems begin

The DMCA is at the heart of the bogus takedown problem. The law was enacted by congress in 1998 in response to the growing amount of displayed and reproduced copyrighted material on the internet. It was designed to encourage cooperation between copyright owners and Internet Service Providers (ISP's). It protects an ISP from copyright infringement liability if it responds expediously to remove allegedly infringing material. This shield from liability is called "safe harbor" protection. The ebay "Vero" program is based on the DMCA and will be discussed below in more detail.

Here is a sequence of events that demonstrates how the DMCA is designed to work (in the real world):

  1. A website owner posts copyrighted material such as a picture, video clip or short story on his website.

  2. The owner of the copyrighted material sees that his material is being posted without his prior permission and wants the infringing material to be removed.

  3. The copyright owner contacts the service provider (most likely a web hosting company in this situation) and provides the following information: (a) name, address and electronic signature of complaining party; (b) the infringing materials and their internet location; (c) sufficient information to identify the copyrighted material; (d) a statement by the owner that it has a good faith belief that there is no legal basis for the use of the materials complained of, and; (e) a statement of the accuracy of the notice and, under penalty of perjury, that the complaining party is authorized to act on the behalf of the owner.

  4. The service provider receives the notice of claimed infringement and disables the website promptly. This prompt action will protect the ISP from a copyright infringement lawsuit by the copyright owner pursuant to the safe harbor provisions of the DMCA. The ISP does not have to investigate to determine whether the material was truly infringing.

  5. The service provider will then notify the website owner of the action taken. The DMCA requires service providers to notify subscribers if their materials have been removed and to provide them with an opportunity to send written notice to the service provider stating that the material has been wrongly removed.

  6. The subscriber has the option of filing a counter-notice if he/she feels the takedown was done unfairly. If the subscriber provides a proper and timely "counter-notice" claiming the material does not infringe copyrights, the service provider must then promptly notify the claiming party of the individual's objection. If the copyright owner does not bring a lawsuit in district court within 14 days, the service provider is then required to restore the material to it location on its network.

As you can see, an ISP has a huge incentive (protection from a lawsuit) to follow the DMCA and take down your website upon notice from a complaining party.

 

eBay's "Verified Rights Owners Program" (VERO)

eBay's VERO program was implemented to allow eBay to comply with the DMCA. The notice, counter-notice and takedown procedures mirror the procedures spelled out in the DMCA.

Here is how it works (or should work in the real world):

  1. A copyright owner sees his material being sold on eBay without his consent. This could be an unauthorized reproduction of a painting, a book, purse, a song or a video.

  2. The copyright owner contacts eBay and asks that the infringing material be removed. eBay directs him to this link which explains how to get an item removed (taken down) via the VERO program. A "Notice of Claimed Infringement" (NOCI) form can be downloaded from this site and completed and faxed back to eBay. Take a look at the form here. Notice that the rights owner is signing the form under penalty of perjury that he has a good faith belief that the items identified are infringing on the owners copyright.

  3. eBay receives the completed NOCI form and proceeds to take down the auction that contains the infringing material. eBay sends an email to the eBay seller informing him that the auction was taken down because it contained material that infringed on another party's copyright. This "take down" is considered a black mark on your account and if you accumulate enough of them your account may get suspended. eBay is under no duty to, and never does, investigate if the auction was actually infringing.

  4. If you believe that the takedown was in error (and that your auction was not infringing) then you can file a counter notice with eBay. You can request a counter notice by emailing eBay at vero@ebay.com or rswebhelp@ebay.com. By filing this form you certify under penalty of perjury that your items were not infringing. By signing the form you also consent to federal court jurisdiction and service of process in the federal court district where your address is. eBay will reinstate the auction after 10 days if they do not receive a response from the reporting party indicating they have filed an action seeking a court order to restrain you from relisting your items. If your auction is reinstated the black mark on your account is removed. See this eBay link for more detail on the counter notice procedure.

Please be certain that your auction did not contain infringing material before you file a counter notice. If you were selling infringing items such as reproductions of videos or music than you risk being sued.

As you can see it is an easy process to get your auction restored by filing a counter notice. It is also a "must do" procedure to get rid of the negative mark on your account. In most cases eBay will not inform you of the counter-notice procedure. Filing a counter-notice just generates more work for eBay. They would rather you contact the copyright holder and work things out. eBay remembers all of your takedowns and they are cumulative. Accounts have been suspended for months for 3 uncontested VERO takedowns.

TIP:
TIP:

Under no circumstances should you relist an auction until eBay tells you it is okay to do so. Otherwise you risk account suspension.

The Takedown based on Trademark Infringement (beware of this tactic!)

It is becoming more common for eBay auction takedowns to be based on alleged "Trademark Infringement". This is a big problem because the DMCA does not apply to trademarks, only copyrights, and therefore there is no provision to contest a takedown by filing a counter-notice with eBay. eBay recommends that you contact the trademark holder to work out a solution. Therefore the only recourse for those falsely accused of trademark infringement is to beg for mercy from the accuser. eBay will send you the contact information of the reporting party, usually an email address and a telephone number, and then you are on your own.

If you don't like the idea of kissing someone's butt for permission to relist your item there is one more avenue of recourse for the trademark takedown situation and that is a lawsuit and/or threat of filing a lawsuit.....more on that below.

How to Prevent a takedown:

There are a few things you can do to reduce the chances your auction will be the victim of a take down. You should always take your own picture of the item in your auction. Using someone else's picture in your auction listing can be a copyright violation in itself. If you have a receipt, owner's manual or sales literature for the item you should include it in the auction listing picture. Whatever you item or product is, if it is genuine, then say so in the listing. Be certain that your item is not infringing. Just because you got a great deal on that DeWalt drill at the flea market doesn't mean that it isn't a cheap knock-off from China that will be spotted instantly be a Dewalt company representative searching the web for fakes.

The Truth about many takedowns:

Takedowns based on alleged copyright or trademark infringement are often bogus, fraudulent and an abuse of the law. This is unfortunate, but it is just the way things work in the real world. The abuses I have seen are simply astonishing. This happens despite the DMCA provision prohibiting a party from making knowing material misrepresentations that a material or activity is infringing. The First Sale Doctrine means nothing to these folks either. Here are the likely reasons your legitimate non-infringing website or auction was taken down:

bullet_12.gif Some companies want to control who sells their product

bullet_12_4.gif To keep sellers from competing with authorized dealers.

bullet_12_5.gif Many companies know that the average small seller will not bother, or know how to, fight a bogus takedown.

bullet_12_6.gif Other eBay sellers and competitors will file fake NOCI forms with eBay to eliminate competition.

bullet_12_7.gif Many companies don't want to distinguish between obvious fakes and genuine items and thus adopt a "take them all down" approach.

bullet_12_8.gif Lawyers hired by companies to police the internet for fakes like to file takedown notices to increase their billable hours.

bullet_12_9.gif The DMCA makes it easy for unscrupulous individuals to file fraudulent takedowns.

Some companies use automated "robots" to search the web for infringing material and subsequently file erroneous takedown notices often identifying the wrong party or materials.

 

Fight back with a lawsuit:

Your story might go like this: Some arrogant and obnoxious company or other miscreant filed a take down notice against your auction or website. They did not care that the item in your auction was obviously 100% genuine or that your website did not contain any infringing content. They didn’t bother to conduct even the most minimal inquiry to determine if your content was infringing. Poof! You were taken down. Now what?

You have a few options including threatening to file and actually filing a lawsuit against the lowlife who is responsible for the bogus takedown.

A few things first......

If the takedown was based on copyright infringement then file a counter-notice. Better yet, reference DMCA section 512(f) in your counter-notice. This section states

“Any person who knowingly materially misrepresents under [17 U.S.C § 512] that material or activity is infringing….shall be liable for any damages, including costs and attorney’s fees, incurred by the alleged infringer…who is injured by such misrepresentation, as a result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing…”

Often the counter-notice will get into the hands of the complaining party. Including this language will show that you are aware of your legal rights.

Here are some examples of a properly drafted counter-notice.

It is important to note that the counter-notice procedure is only available if the takedown was based on copyright infringement. For trademark infringement this option does not exist because the DMCA in not applicable to trademarks. Sending a counter-notice in response to a trademark takedown will have no effect.

You can file a lawsuit (or threaten one) in response to a copyright or trademark takedown. Your chances of success are greater in trademark takedown suit because the DMCA may provide protection to the lowlife who filed the copyright based takedown see DMCA § 512(c)(3)(A)  If the lowlife who filed a copyright takedown against you has a “good faith belief” that your material or content was infringing then he is immune from lawsuit. A “Good Faith Belief” can be objective or subjective and depending which way a court interprets this can very important see Rossi v. Motion Picture Association of America.

File a Lawsuit

If you show the other side that you know the law they are more likely to back off.

Many of these bogus takedowns can support a lawsuit with the following causes of action:

1. Intentional Interference with Contractual Relations.

2. Intentional Interference with Prospective Business Advantage

3. Intentional Infliction of Emotional Distress

4. Violation of  DMCA section 512(f) (for copyright takedowns only)

5. Libel and defamation.

6. State Deceptive and Unfair Trade Practices statutes (most states have these laws)

Click here to see the elements of each of these causes of action

As I have stated above, it makes a huge difference if the takedown filed against you was based on copyright infringement or trademark infringement. The DMCA does not apply to trademark infringement and therefore the perpetrator of a trademark takedown cannot hide behind the "Good Faith Belief" protections that the DMCA provides. If someone lodged a trademark takedown against me and the material/item in question was obviously non-infringing I would be salivating at the prospect of suing the little [expletive] who filed the takedown. I would take him to the cleaners. Here are some sample letters to send to the company/individual who fraudulently takes down your material/item. Some of the letters can be used in eBay trademark based takedowns as well. These sample letters illustrate how the causes of action listed above (i.e. interference with contractual relations) can apply to a bogus takedown situation.

If you incurred damages due to a bogus takedown, such as lost sales, then you should mention these damages in your letter. Damages of this nature will make the prospect of a lawsuit a more attractive proposition. Is is not unusual for an eBay account to be down for days or even weeks after a counter-notice is sent to eBay. In severe cases an eBay account could be suspended for months due to the accumulation of previous copyright or trademark based takedowns.

Although copyright takedowns can often be resolved by filing a counter-notice there still exists the problem of repeated takedowns from the same reporting party. So, for example, if you are selling one Zippo lighter a week from a collection you acquired, Zippo can file a copyright takedown with eBay every time you list one (Zippo is known for takedowns). Repeated takedowns like this can be a monster problem and can cost you lost time and lost sales. They only way to stop this is to let the reporting party know that you are fully aware of your legal rights and are ready to enforce them in a court of law. In some cases an actual lawsuit is necessary to stop such nonsense.

Feel free to use one of these sample letters as a starting point and tailor it to your own situation. Often if the other party knows there is a chance of an actual lawsuit he may back down and leave you alone. You need to show the other side you have an understanding of your legal rights and that you are willing to enforce them. Send your letter via certified mail to the attention of the correct individual. If the complaining party is a large corporation with a legal department then you should address the letter to that department. Only the most stubborn and ignorant complaining party will allow a takedown incident to blossom into a lawsuit. A properly drafted letter detailing you legal positions can be the most cost effective way to resolve a bogus takedown.

If your letter is ignored then you will have to seriously consider a lawsuit. This is especially true if you rely on the internet for income and the takedown is causing you lost sales. I would recommend finding an attorney to take the case for you on a contingency basis. If you have evidence of damages such as lost sales it may be easier to find an attorney to take the case. Also, if the attorney is aware that punitive damages and attorneys fees are potentially recoverable he may be more interested in the case.

It is possible to file a lawsuit yourself but this is not easy primarily because you must decide (1) if the case can be filed in federal or state court, (2) how to properly draft a complaint, (3) choose between jury trial and bench trial, (4) determine which causes of action can be used in the case, (5) if the court has jurisdiction over the defendant. There are many other considerations besides these and sorting them out may be overwhelming if you have little knowledge of the law and court systems. You are welcome to email me if you have problems and I will try to direct you to the best sources for answers and help.

If you are contemplating pursuing a lawsuit you should take a look at this complaint. This is a well drafted complaint. It also details the typical situation where a corporation is attempting to eliminate competition from a small eBay seller by fraudulently using the eBay Vero system. This case was brought in federal court. A complaint for a case filed in state court would look similar.

TIP:

If you exchange emails with the complaining party be sure to save them all. If you talk to the complaining party by phone (not recommeneded) it is a good idea to record the conversation. Be very careful what you say when communicating with the other side. Do not admit to any wrong doing. Be polite and professional. Also, if the other party threatens you legally or demands money from you do not be intimidated. Most of the threats I have seen in these situations are baseless.

Damage Awards by Juries                                                              

A successful law suit will not only compensate you for your lost sales and other related damages, but can inflict punishment on the defendant in the form of "Punitive Damages". If you and/or your lawyer can articulate your bogus takedown story sufficiently so that the jury feels your anger and pain then you may be the recipient of a very large monetary judgment. Remember, you are the small business person trying to carve out a small living with internet sales and the party who fraudulently took down your auction/website is a big arrogant corporation with an overpaid CEO. Juries do not look kindly upon these type of defendants.

 

Resources & Help

Please send me an email at BogusTakedowns@Gmail.com if you are contemplating filing your own lawsuit and need any direction. Also, feel free to send comments about this site so it can be improved. Thanks, Greg.

 

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