When discussions about piracy occur in the adult entertainment industry they usually center around the DMCA (Digital Millennium Copyright Act ) and how it really does not protect content producers. The DMCA allows for a take down notification system that, if adhered to by a content pirate, almost provides them a “license to steal.” Further, if the pirate website is registered with the US Copyright Office as an ISP they would also be provided with a safe harbor exception to the DMCA. Further, from my experience, it is almost impossible to get adult content producers to follow a regiment of copyright registration to ensure that all of their hard work is at least protected by having a registered copyrights. Since piracy has become more of a pestilence in the adult industry we have also seen new cottage industries pop up such as IP tracking and litigation against bit torrent uploaders as well as DMCA take down notice companies such as Take Down Piracy ( http://www.TakeDownPiracy.com ).
What I am surprised about is how trademark law has been overlooked in regards to protecting content. Many might be asking themselves how can I protect my videos with a trademark. My answer is the same way that Nike protects its brand with the “swoosh” or Apple does with its “bitten apple logo.” A watermarked logo inserted into your content is not only a legal deterrent to content theft but if used correctly it can also be a practical approach to make a content pirate’s job much more difficult.
There is no corresponding law in trademark to the DMCA in copyright. Meaning you cannot simply use someone trademark repeatedly and get away with it scott-free. Of course there are exceptions to using another company’s logo or trademark (fair use and by competitors to compare and contrast) but there are much less exceptions provided by the Lanham Act in regards to copying someone’s video and posting them on a bit torrent site or tube site. The Lanham Act is silent to the issue of contributory trademark infringement but courts have for years used contributory trademark infringement as a way to stop piracy.
And not only can a trademark infringement claim reach the actual pirate website it can also reach the hosting company of that infringing website.
“Liability for trademark infringement and unfair competition may be extended beyond those who actually sell goods with the infringing mark, to include those contributory infringers who knowingly cooperate in illegal and tortious activity.” J. Thomas McCarthy, McCarthy On Trademark and Unfair Competition (2002) §§ 25:17, 18, referencing Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (1924) (applying common law concept of contributory infringement).
In a case reaching back to the earliest days of the Internet, Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993) the Defendant operated a subscription computer bulletin board service that distributed unauthorized copies of copyrighted photos owned by Playboy magazine. The photos were uploaded onto the bulletin board by an end user and downloaded by other end users. The operator of the bulletin board claimed he did not upload any of the images and that he removed all of them once he became aware of the problem. In addition to granting partial summary judgment for plaintiff on its copyright claim, the court found that allowing the use of the PLAYBOY and PLAYMATE trademarks to identify files on the bulletin board containing the photographs was a trademark violation, regardless of whether the operator was aware of the presence of the marks or not.
More recently, the Ninth Circuit Court of Appeals held that an ISP may in fact be liable for contributory trademark infringement. In Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011). Plaintiff Louis Vuitton Malletier S.A. is a producer of various luxury goods. Defendant Akanoc Solutions, Inc. is web-hosting service. From 2006 to 2007, Vuitton sent eighteen notices of infringement to Akanoc documenting trademark and copyright infringement on websites hosted by Akanoc that sold counterfeit LV goods and demanding that Akanoc remove the infringing content. Akanoc completely ignored the demands of Louis Vuitton. Vuitton sued for contributory trademark infringement/counterfeiting and copyright infringement. The jury returned a verdict for Vuitton, holding Akanoc liable for willful contributory trademark and copyright infringement. The jury awarded $10,500,000 for contributory trademark infringement/counterfeiting against each of the defendants for a total of $31,500,000. The decision was affirmed on appeal.
One of the more important aspects of the Ninth Circuit’s holding was that there was no need to find that the ISP, Akanoc, had any intent to engage in trademark infringement. Vuitton only had to prove only that Akanoc “provided [its] services with actual or constructive knowledge that the users of their services were engaging in trademark infringement.” This was accomplished through the repeated notices sent by Vuitton to Akanoc making them aware of the ongoing trademark infringement.
While this is somewhat an oversimplification of the court’s lengthy holding what it does set forth is that an ISP, normally immune from a lawsuit for copyright infringement, can be made to pay if they ignore trademark infringement notices – at least in the Ninth Circuit which includes California, Nevada and Arizona, states where many of the adult content production companies are located.
From a practical standpoint what does this mean ? If you are a content retailer you should have all of your content 1) registered with the US Copyright Office 2) have a logo watermarked onto all of your content and 3) register that logo with the US Patent and Trademark Office.
With a registered trademark watermarked onto your content you will have a much stronger demand letter to send to not only the infringer but also to the ISP to make sure that your content is removed from any bit-torrent or tubesite. If the ISP ignores repeated requests or allows the content to go back up this will provide the basis for a Lanham Act lawsuit to be filed on your behalf by your attorney. It should be noted that attorney’s fees can be awarded by a judge in cases of successful Lanham Act lawsuits as well.
From a practical standpoint you can register the trademark yourself using a service such as Legal Zoom, however, I do recommend that you seek counsel on this particular type of filing since it will more than likely be litigated at some point. An experienced IP attorney will be able to strengthen the registration of the trademark so as not to leave it open to attack as a defense tactic of the ISP.
Finally, in regards to the actual watermark on the video, many adult content consumers do not care for watermarks. Obviously, this will be a decision you will need to make and balance the desires of your customers versus your company’s needs to protect your content. The suggestion I have made to other content producers is to watermark the video with a logo that fades in and out of the video, moving it from corner to corner of the video and alternating the length of time the video stays visible as well as the pattern of its appearance in your video. This will make it even more difficult for any pirate to sit and watch your content frame by frame to block or obscure your watermark to get around any potential claim of trademark infringement.