This IP First Response website has been designed to help IP rights holders navigate IP infringement and enforcement by making it visible, accessible, and to provide information about the factors involved in pursuing different options. It does not provide legal, business or other professional advice, and none of the content should be regarded as recommending a specific course of action. We welcome any feedback via our IP First Response feedback form and by emailing us.
What is it?
Online platforms such as e-commerce platforms, social media sites and digital advertising providers provide an excellent mechanism to promote and sell your products to consumers around the world. However, a lot of infringing and counterfeiting activities occur in this space as well, which can undermine legitimate brands and damage their reputation. This can also include selling, reproducing or making available copies of material that is subject to copyright. The ‘intermediaries’ have a responsibility not to facilitate infringement.
If you notice infringement on a website or online platform, you can approach the owners of the site to request that they take down infringing content. To find out who owns a website, you can check their domain name's registration in the Australian and international WHOIS databases.
Most e-commerce platforms and major digital advertisers/search engine providers have a notice and take-down mechanism for handling IP complaints, including those concerning counterfeit goods and material that infringes copyright.
You can be proactive by listing your IP rights with different e-commerce platforms before anyone tries to sell counterfeit goods. Some platforms, such as Amazon and Alibaba, invite you to add your trade marks and other kinds of IP rights to a brand registry. This is used in automated checks to detect infringing goods before they are even listed for sale.
Note: It can be time-consuming for rights owners to monitor e-commerce platforms and submit IP complaints themselves. A time and cost-effective way to manage this process is often to engage IP professionals such as IP monitoring services. These IP professionals can use their experience and knowledge to identify and remove counterfeit goods across multiple online platforms. Note: Beyond online marketplaces, many other digital platforms available to Australian users (including social media platforms to which users can upload content) also offer mechanisms that copyright owners can use to address or prevent infringement. These often include complaint forms and notice and takedown processes that copyright owners can use if they believe their rights have been infringed. They may also include bespoke tools copyright owners can choose use to proactively manage and enforce their rights on those platforms. For example, automated content recognition/identification or screening tools (like YouTube Content ID or Meta Rights Manager) allow copyright owners to upload their content and find matches to content uploaded on platforms by third parties. Where matches are found, copyright owners may be able to seek to pre-emptively block or otherwise monetise the content (for example, through share of advertising revenue in some cases).
What are the benefits?
- Cost-effective.
- Often quick to action and obtain outcome.
- Simple to prepare and initiate compared to other enforcement options.
- Outcome-focused, as it targets infringing products/content directly and prevents customers making purchases/accessing the infringing content.
- Some platforms are not limited by the country the infringer is located in, due to these platforms having an international reach – while others only action takedown requests within jurisdictions in which the rights apply.
- You may not need to identify or track down the infringer yourself.
- Being able to reduce infringement and prevent sales being diverted by addressing infringement on a major sales channel.
What are the risks?
- Due to the one-off nature of this process there is a risk that the counterfeiters/infringers can return in the future. You will usually need to continuously monitor for reoccurrence.
- Online platforms can only take down infringing products or content from their platforms, and do not have power to stop the infringing behaviour itself.
- The outcome of the action can be somewhat unpredictable, as platforms will have different set of rules and procedures in dealing with complaints.
What are the possible outcomes?
The outcomes of your complaints with online platforms can vary in accordance with policy, service offerings, and the terms and conditions of each platform. Some possible outcomes include:
- Infringing products and content being removed from the platform.
- Being required to provide further information, documentation or evidence.
- Refusal to take an action, whether it is due to lack of evidence or their assessment that infringing behaviour did not take place.
What might the costs be?
Most online platforms will not charge you for making complaints or takedown requests.
However, if you engage an IP professional such as brand monitoring services or IP attorneys to act on your behalf, this will incur additional fees.
How much time might be involved?
Length of complaint processes with online platforms can vary anywhere between 1-2 days to a few months, depending on the volume of your requests, amount of supporting evidence, and terms and conditions of each platform.
Depending on how or if alleged infringer disputes the takedown request you submit, it may take considerably longer to resolve the issue.
Who can use this?
Some mechanisms offered by platforms may require you to be a seller or user with a valid account. However, access to specific services and complaint mechanisms can vary in accordance with each platform’s terms and conditions.
How much is this used?
IP Australia does not have any oversight over these processes and has no data on this point.
Who’s involved?
- IP rights owner(s).
- Websites or online platforms including e-commerce or advertising platform(s).
- Legal professionals (optional).
- IP Monitoring services (optional).
What do you need to proceed?
If you have detected infringement on an online platform, it is worth checking several platforms (such as all those listed above) to see if infringement is taking place elsewhere.
Different online platforms have different requirements for making IP complaints and takedown requests.
You will usually need:
- Evidence such as screenshots, product listings, and any other documentation that clearly demonstrates the infringement. Refer to Evidence you can collect about infringements.
- Evidence that you are the legitimate owner of the IP. Some platforms require you to have a registered IP right for you to access their brand protection and complaint mechanisms. You may consider applying for a registered IP right to access these procedures and prevent future infringements and protect your ideas, products and branding.
Note that if you do not provide sufficiently accurate information, your takedown application may be rejected and the whole process would be delayed.
For matters involving copyright infringement online, before issuing a takedown notice, copyright owners should check that the user does not have a valid reason to use the material in question (for example a valid license or a ‘fair dealing’ use permitted as an exception to copyright under the Copyright Act). More information about when using copyright material is allowed is provided on the copyright infringement page.
See also
- Prevent International Infringement | IP Australia
- Someone Is Using My IP | IP Australia
- How To Prevent Infringement Of My IP | IP Australia
- ICANN Lookup
- .au WHOIS tool: look up .au domain names | auDA
- Protecting your IP rights on e-commerce marketplaces - EUIPO
Exercise caution before making accusations of infringement
Making an unfounded claim of IP infringement can result in liability for damages. Proving infringement is an important issue that should be considered before taking legal action, including sending written demands.
Before you take any action, you should consider whether you need legal or professional advice specific to your situation. It is important to know what rights you have, what remedies are open to you, and the cost and likelihood of success. IP Australia provides information on getting professional assistance with your IP. In addition, the Institute of Patent and Trade Mark Attorneys Australia (IPTA) offers free 30 minute consultations with an attorney. Copyright owners who work in creative industries may potentially be eligible to seek low- or no-cost legal advice from the Arts Law Centre of Australia or the Australia Copyright Council.