1oz61wa

Chapter 5
intermediary for failure to act on a report of infringement. This mirrors the operation of the DMCA.
Although notice compliance is not codified in trademark law as it is in copyright law (with the
DMCA), except in the context of the Anti-Cybersquatting Consumer Protection Act (“ACPA”), 53
common law has begun to provide similar parameters regarding what obligations website operators
must undertake toward trademark claims, which helps to explain why many website operators have
been motivated recently to implement voluntary initiatives targeting trademark infringement. 54
C. Current and Proposed Voluntary Industry Initiatives
The Internet’s structure and breadth raises numerous challenges for traditional IP enforcement
against PFWs, including the current legal framework, jurisdictional hurdles, anonymity of operators,
high enforcement costs, and the ease with which infringing operations can be relocated and
resumed. 55 Due to these challenges, rightsholders are exploring and experimenting with new
strategies to bolster enforcement mechanisms and curb online infringement and counterfeiting,
especially potentially involving in this process intermediaries that support the operation of PFWs. 56
Some of these strategies have already shown promise as valuable tools in a multi-pronged approach
to curtailing the activities of PFWs. The implementation of these voluntary initiatives also highlights
areas for improvement and enhanced cooperation, the importance of shared responsibility
across rightsholders and relevant industries in addressing PFWs, and the continued need for
legislation to incentivize cooperation, all of which are essential in truly impacting the predatory
business practices of PFWs. 57
1. Current Initiatives
Although it is too soon to definitively conclude which approaches are most effective, many
voluntary enforcement strategies have shown promise, and should continue to serve as valuable
tools in a multi-pronged approach that includes voluntary industry initiatives. These include:
a) Online Infringement Complaint Forms and Processes
Over the last few years, many ISPs and App marketplace providers have created and implemented
online complaint forms that provide both copyright and trademark owners with a streamlined
procedure for reporting and affecting the takedown of infringing content online. 58 The availability
of this process, however, does not shift the burden of policing marks and copyrighted content from
the intellectual property owners to the ISPs or other online marketplace providers. 59 Instead,
copyright and trademark owners must still independently monitor and report infringing/counterfeit
activity and conduct follow-up as necessary, regardless of how many times infringing content or
counterfeit listings are reposted in different forms, thus increasing the potential cost of enforcement
as online marketplaces continue to multiply.
These online forms and procedures are not uniform across ISPs and online marketplace providers,
and vary in terms of efficiency and effectiveness. Some parties, like Google, 60 will conduct a
limited investigation into reasonable trademark infringement complaints and, in appropriate
circumstances, terminate repeat infringers. Other providers, like Apple, have embraced a less
aggressive approach and have instead sought to forward complaints to a developer to provide the
parties with an opportunity to reach an agreement before taking any independent action to remove
content at issue. 61
In order for copyright or trademark owners to increase the likelihood of having content or listings
at issue removed, they must review the particular ISP or marketplace provider’s posted procedures
and requirements in detail and follow any instructions stringently. Failure to do so can often result
in a delayed response or no response to a takedown request. It is also important to note that the
72