Novel Remedies for Intellectual Property Rights Infringement Online

Abstract

The paper explores the failure of traditional civil remedies, as well as newer “three strikes” and Internet filtering remedies, to tackle intellectual property rights infringement on the Internet. Although the “three strikes” and Internet filtering/blocking measures were introduced in response to inadequacy of traditional remedies, over the decade of practical applications they have not achieved significant success, as well.
Principal socio-legal reasons for such failures are reviewed and analyzed. Main reasons are found to be that traditional remedies and first generation new remedies are tailored to “offline” environment. Existing remedies are more suited to traditional legal interactions, where the parties are clearly identifiable and jurisdictional collisions are well defined. The way of action of existing remedies is inherently offline. They are ill adapted to the requirements of the online environment, such as difficulty to identify anonymous parties in multiplejurisdictions, and hence, high enforcement costs, as well as legal and technological complexity. It should be noted that online environment requires swift enforcement in view of the dynamic technological change. Based on this analysis, key features of the efficient online remedy design are identified.
In the second part of the paper, a case study of successful enforcement of trademark rights online is presented. Example of rare success in enforcing legal liability for infringement of intellectual property rights is the special remedy of domain name seizure and takeover, implemented through the alternative and online dispute resolution procedure – the Uniform Domain Name Dispute Resolution Policy (UDRP). Domain seizure/takeover remedy implemented through the existing UDRP system works at the supranational level and successfully operates as an online instrument dealing with trademark rights infringement in the domain names. The author considers expansion of this special remedy and the domain seizure through the UDRP to cover copyright and related rights infringement as a viable addition to the existing remedies for the rights holders to deal with the online infringements. The former (that is a special sanction of domain seizure and take-over) may be relatively easily adopted by the judiciary both as an interim measure and as a final remedy; however, this would address only part of the challenges that enforcement of intellectual property rights faces online. Only the combination of the special sanctions and the online dispute resolution mechanism, capable to enforce such sanctions, address most inadequacies of traditional offline remedies (especially high cost, slowness and complexity, competence of the dispute resolution authority, as well as risks of political and legal abuses). This may be achieved through expansion of the existing UDRP system; however, it may need an additional supranational legal framework.
The paper recognizes limitations of any rights enforcement instruments online, which are predefined by the nature of the online environment – its extraterritorial nature and span over jurisdictions, which may willingly tolerate infringement of intellectual property rights. These limitations would set the limits over the effectiveness of the novel remedies.
Nevertheless, the domain seizure and take-over sanction made available for other infringements of the intellectual property rights online (chiefly copyright and related rights infringement) and enforced through relatively easily expandable UDRP system would complement the existing offline remedies and would expand the enforcement instrumentary for the rights holders, thus, enabling marginalization of the most popular intellectual property rights infringements online.