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The fight against piracy and counterfeiting online without the help of courts

In this article, for copyright holders - owners of online projects and businesses that are present online, we present our manual for combating violators before going to court.

Also, the material will be relevant after the cancellation of the epidemic, because the violators will not disappear with the virus, and resorting to the help of ships has always been a long, expensive and often ineffective one.



We’ll clarify right away that this material should not be taken as legal advice for all occasions. If the situation is complicated, for example, there is no evidence, there are disputed issues regarding the person who owns the rights to the intellectual property, you have been presented with a counterclaim, etc., you need to seek qualified help.

Step 1


First you need to decide what kind of intellectual property you own. Most often, rights to works (texts, photographs, video, audio, design, etc.) and trademarks (signs used to individualize goods and services) are violated.

Step 2


Make sure that you can confirm that you have rights to the disputed object.

Trademark . If you produce goods or provide services under a specific designation (name, slogan, logo), you must register such a designation as a trademark. We recommend registering it as a trademark even before the active use and promotion of your brand on the market. The registration procedure is not quick - 7-8 months, but in Rospatent the option of expedited consideration of the application for 2 months is available.

Copyright. If you are the author of the original content, that is, yourself, without copying other people's objects, you wrote an article, took a photo, made a film, created a presentation, you will need to prove that you are the author of a particular work or received rights from the author.

This can be done using modern means, for example, by publishing a work in social networks. If a work was created by order, for example, you ordered the text for your blog from a copywriter, you can use the copyright contract agreement as evidence of your rights to the created work. The more evidence that is gathered, the better. In the future, they will need to be used when sending claims to the violator or in court.

Step 3


Enforcement


Consider the general methods of protecting violated rights that can be used both in relation to works and trademarks.

Preliminary stage

The very first action is fixing the fact of violation. There are several ways to do this.

Web-Archive

On the service, you can see how the site looked for a specific date. Even if the violator deleted the illegal content or counterfeit goods from the site, using the web archive it will be possible to confirm that there was a violation.

Using the WaybackMachine example, we show how easily and quickly you can record a violation of your right.

We go to the site archive.org

This is the first page of the site:


Site archive.org

In the search bar, paste the address of the site we are interested in and press Enter: The



web archive displays a temporary feed, moving along which you can see how the site looked on a specific date.



We select the date and time of interest to us. For example, February 18, 2020.



And we see what the site looked like on February 18, 2020:



Screenshots


If your task is not only to eliminate the violation, but also to receive compensation, you need to take screenshots of pages with an illegally placed trademark or work. Recently, courts have accepted screenshots as valid evidence without problems, but we recommend using them in cases where the price of the dispute is not high, and if later this information can be easily checked on the source’s website.

Notarization of site inspection


Since notarization of a site inspection is not cheap, it makes sense to do it only if you require compensation from the violator for more than 1 million rubles. It is not necessary to certify all pages of the site. If the site is a catalog of goods that are counterfeit, it is enough to certify the page with the contact information of the site owner, details, pages with counterfeit goods, pages with placing orders. When fixing copyright infringement, certify the pages that contain illegal content. Additionally, it is worth making a certification of the page with information about the owners of the site on the Whois service (www.nic.ru/whois/).

Since not all notaries can promptly certify a site during a period of unfavorable sanitary and epidemiological situation in Russia, you should contact the notaries on duty: www.mgnp.info/dezhurnye-notarialnye-kontory . On average, the cost of notarization of a site, depending on the number of pages to be certified, is 20-30 thousand rubles. You can assure not only the pages of the site, but also the correspondence in instant messengers and e-mail, pages on social networks, videos posted on an online platform.

The next stage - Preparation and dispatch of claims


After the evidence is collected, you can begin to send out “letters of happiness”.
We have prepared claim templates (links lead to Google Drive) in relation to trademarks and copyrights , which you can use when you discover a violation of your rights.

To whom should claims and claims for the removal of counterfeit information be sent?

  • domain owners
  • hosting providers
  • website owners, including online stores,
  • social network administrations
  • domain name registrars
  • partners and clients of the offender.

Claim to the violator - the owner of the site who posted the illegal content
Find out who the domain belongs to using the Whois service and send a pre-trial claim to the administrator (owner) of the domain.

If you want to indicate the amount of civil liability in the letter with links to Art. 1301, 1406.1, 1515 of the Civil Code of the Russian Federation, perhaps, it is not worth quoting these texts in full. As in the case of the Criminal Code, the offender is mainly interested in “how much they will give”, and not as it happens. It makes sense to direct the claim immediately to the “maximum speed”, indicating the most serious consequences. After all, having read the fine “from 10,000 rubles”, violators will not take your demands seriously.

We send the letter according to the contact details of the violator indicated on the site, and in case of their absence it is possible to notify the violator by learning the contact details from the hosting provider or domain name registrar of the violator. It is also possible to determine who is the registrar or hosting provider of the website on Whois.

Those who violate intellectual property rights are not always aware that this cannot be done, and that in this way they violate someone else's rights. It is possible that one appeal will be enough to correct the situation and stop the violation.

Case study: My Nutritionist found that competitors have released apps with names that match his trademark. We managed to contact the leadership of competitors and promptly convince to rename applications without going to court.

In the same way, it was possible to remove pirated distributions from torrent sites www.torrentino.com and rutracker , a detailed synopsis of the "Pan or Miss" training from a well-known media resource, and the illegal sale of a video course on the website of an online store was stopped.

Sometimes pirated content is uploaded to file hosting services (Yandex.Disk, Mail.ru Cloud, etc.). File hosting administrations usually delete these files on demand.

Contact to information intermediaries


In cases where it is not possible to build a constructive dialogue with the violator, you should contact information intermediaries.

Who are media intermediaries?

In accordance with Art. 1253.1 of the Civil Code, information intermediaries are:

  • persons who provide information on the Internet (Internet providers);
  • persons providing the opportunity to post information and links to it on the Internet. This numerous category includes the administration of social networks, media platforms, search engines, contextual advertising services and administrators of other sites that in one way or another allow users to publish any content;
  • persons providing access to the material on the Internet. These are hosting providers that provide the technical ability to post materials on the Internet.

The good news is that information intermediaries are responsible for violating exclusive rights on a common basis, like other violators.

In this case, the information intermediary providing the opportunity to post material is released from liability only if the following conditions are met at the same time:

  • he did not have information that the material he posted was used unlawfully;
  • in case of receiving a claim or a statement from the copyright holder about the violation of exclusive rights with reference to the violating content, he took timely and sufficient measures to stop the violation of exclusive rights.

Thus, sending information intermediaries, on whose resources illegal material is posted, claims obliges them to take measures to eliminate illegal content on pain of bringing to civil liability on an equal basis with the violator. So, in case A56-108483 / 2017, the court held the hosting provider liable for the refusal to satisfy the claim of the copyright holder for the suppression of the offense. Since the hosting provider did not restrict access to the site with information about counterfeit goods at the request of the copyright holder, the court sought compensation from the information intermediary in favor of the copyright holder in the amount of 400,000 rubles.

Ways to interact with other information intermediaries


First, you should familiarize yourself with the functionality of such resources in terms of eliminating violations of exclusive rights. Most popular social networks, product and other aggregators, media platforms and other services have their own complaint forms. We recommend that you use them in the first place, and only if there is no effect, send claims in the above order, since allegations of violation of exclusive rights in the form of services are processed much faster.

The following are examples of forms to eliminate infringing content on popular Internet resources:


In our experience, the Tilda Publishing site builder also always promptly responds to claims of copyright holders and blocks access to information the placement of which is unlawful.

Search results and contextual advertising


You can affect the display of search results in search engines. So, we were able to achieve removal from the results of the issuance of the trademark name of the customer site of its direct competitor. To do this, we sent a complaint about contextual advertising in the Yandex search engine to the administration of the search engine, after which the unfair advertisement was deleted.

If the complaint through the use of the forms provided by the services does not have an effect or if these forms are not available, it is recommended that you send such information intermediaries in a manner similar to the procedure for sending claims to the hosting provider.

We interact with hosting providers and domain name registrars


At the moment, the judicial practice of holding hosting providers accountable for violation of exclusive rights on an equal footing with violators has already been fully formed: if the copyright holder proves that the hosting provider has been notified that the material it is posting is being misused, and that after receiving if the rightholder’s statements on elimination of violations were not taken appropriate measures, then the courts exact from them the same compensation as from the pirates themselves.

So, in one of the cases, the Intellectual Property Rights Court recognized the actions of the hosting provider, which refused to block the site in the domain name of which the plaintiff's trademark was used, was unlawful. As a result, the hosting provider was held liable in the form of compensation in favor of the plaintiff in the amount of 50,000 rubles ( Resolution of the Intellectual Property Court of 12/26/2019 No. 01-1287 / 2019 in case No. 40-260917 / 2018).

This practice has a positive effect on the speed and results of the response of hosting providers to their claims. If earlier many hosting providers were limited to formal unsubscribes and sending the text of the claim of the copyright holder to the infringer, now it is increasingly possible to block infringing content without going to court. Thus, we managed to remove dozens of links to sites illegally using the MedBooking trademark by sending appropriate letters to hosting providers.

Rules for registration and claim


To achieve the greatest effect when conducting claims work with hosting providers, it is recommended to include the following information in the claim:

  • information about the copyright holder,
  • information confirming the exclusive right of the copyright holder;
  • , ;
  • - ;
  • , .

If the sender of the claim is an individual, you must also submit your consent to the processing of personal data.

The claim can be sent by registered mail with a description of the attachment or, which is simpler and faster, by e-mail indicated on the official website of the hosting provider. To ensure that your claim has been received and reviewed, we recommend that you use both methods.
Thus, the right holder has an evidence base confirming the fact of notification of the information intermediary in the event of a trial, as well as the likelihood of a positive reaction of the information intermediary.

In addition, through registrars of domain names, it is possible to introduce preliminary measures against the offender. The websites of most registrars have special sections devoted to preliminary measures for identifying violations. For example, such a section is on the REG.RU domain name registrar website: www.reg.ru/support/abuse/copyright .

The instructions for sending a claim must be viewed on the website of the particular registrar. Most often, a complaint with the application of a judicial power of attorney with a request to restrict access to the resource for a period before filing a lawsuit with a court is sufficient. After that, the registrar sends a complaint to the site administrator. If the response of the site owner does not contain convincing arguments against your position, the registrar will restrict access to the site.

Domain Dispute Center


In our practice, we have repeatedly succeeded in achieving the free transfer of a domain name occupied by unscrupulous persons. So, a Russian software developer who owns the trademark “INFOSTROY / INFOSTROY” faced with the registration of a trademark as a domain name. For the transfer of a domain name, the violator demanded 40,000 euros. It was decided to seek the transfer of the domain name out of court in the regional accredited arbitration center for domain disputes - Asian Domain Name Dispute Resolution Center through established administrative procedures. As a result, the arbitration center issued a decision on the free transfer of the domain name of the Russian company.

Protecting a personalized brand or product


If the violator uses the image of the person associated with the product or brand, or the video sequence with such a person without the use of intellectual property rights, the brand owner still has the opportunity to eliminate such an act of unfair competition. According to Art. 152.1 of the Civil Code, the use of the image of a citizen is allowed only with his consent. Cases where the image of a citizen may be used without consent are limited to the following:

  • use of the image is carried out in state, public or other public interests;
  • , , , (, , , , , ) , ;
  • .

In most cases, when using images or video sequences in bad faith with a person identified with a product or brand, the above circumstances are absent, therefore a citizen has the right to demand the removal of such an image and suppression of further use. In order to apply this mechanism, it is enough for the citizen to send a claim to the violator and the information intermediary, setting out in it the circumstances surrounding the violation, the requirement to delete his image and attach a copy of the identity document.

The mechanism described in this section is practically applicable and effective: for example, by contacting the Avito administration, we removed ads for the sale of video courses that violate the copyright of Maria Seliverstova. The reason for removing the content was the argument about using the client’s image in the body of the ad. In this case, it was not necessary to provide additional arguments and evidence confirming the fact of copyright infringement on the client’s video course and the ownership of the copyright on the specified course for the client.

Bonus


There is another non-trivial way to deal with pirated content. Since most of the sites that make publicly available someone else's intellectual property exist through advertising of online casinos and bookmakers, in certain cases, you can complain to the FAS for violating the law on advertising.

Under Russian law, advertising of a bookmaker is allowed in strictly limited cases (the full list is in article 27 of the Federal Law on Advertising). If the organization advertises through the Internet site, then this site should be registered as a network publication specializing in materials and messages of a sports-physical nature. Obviously, such a registration with a company hosting pirated content is far from always available. Check if the site is registered as a network publication on the site of Roskomnadzor. If such registration is not available, you can threaten the violator with a complaint to the Federal Antimonopoly Service and a fine of up to 400 thousand rubles if the content that you own is not voluntarily removed from the site.

If the site has online casino ads or it is included when viewing content, then you can contact Roskomnadzor with a complaint through the form on the site. Online casinos are prohibited in the Russian Federation, therefore sites with their advertising are blocked out of court. Roskomnadzor forwards the received complaint for consideration to the Federal Tax Service, which makes a decision on entering the site in the register of sites with prohibited information (usually within 24 hours, less often 7 days if an examination is necessary). After the site is blacklisted, it will be blocked for 24 hours if the site owner does not manage to remove the advertisement.

This way of dealing with violators is suitable when, for some reason, you cannot or are hard enough to prove that you have rights to a disputed object or the fact of violation.

In the end


There are other ways to protect violated rights, for example, applying to Rospotrebnadzor, law enforcement agencies, the Federal Customs Service, however, administrative procedures take a lot of time and have certain specifics, which in practice makes it difficult to apply such methods of protection to persons who do not have the appropriate qualifications.

In addition to the above active actions to eliminate offenses, you can just prepare for court, collect evidence, for example, evidence that the object of intellectual rights is not just used by the violator, but used to make a profit. This information will later help you recover a substantial amount of compensation. In any case, evidence should be collected before submitting a claim or deciding to apply, otherwise the violator can destroy the traces of the offense.

So, in some cases, you can protect your rights to intellectual property without having to turn to lawyers and courts. The rather simple steps described by us will help to deal with violators of your rights even in closed courts.

Add to bookmarks to quickly find the right links for preparing a complaint.

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