Consider your options

You’ve worked hard to build your business. Made sacrifices to get it to where it is. And then all of a sudden, you’ve discovered someone online might be infringing on your IP. In the heat of the moment it can be easy to immediately think of going straight to court and sue them for everything you can. But it makes sense to first consider options.

To begin ask yourself some questions:

  • What IP is being infringed?
  • What is the value of that IP?
  • Who is it that you believe is infringing your IP?
  • What evidence do you have that the infringement has occurred?

Although taking strong action might be tempting, it may not be your best option. Consider the cost of pursuing compared to the possible lost income. Or perhaps seek an opportunity to offer a licence agreement and create a new revenue stream.

But if taking action against the potential infringer is the way forward then there are a number of steps you should take.

Avoid making a groundless complaint

If you think your intellectual property has been infringed, first ensure you have a sufficient factual and legal basis before making a complaint.

The Copyright Act, Trade Marks Act, Designs Act and Patents Act all prohibit the making of groundless threats of infringement. In fact recipients of groundless threats, demands or complaints about copyright infringement can take court action against those making the threat or demand. Seek advice from an IP professional to reduce the risk of being liable for groundless threats.

Making a complaint

Assuming there are grounds for making a complaint, the complaint should first be made directly to the party responsible for the infringement. This may stop the infringing behaviour without involving third parties unnecessarily.

If you are having trouble finding their details you can check who registered their domain name by searching the Australian and international WHOIS databases.

If the party responsible for the infringement is located outside of Australia, this will be more complicated. Australian law might not apply to the conduct or may not be enforceable where they are located. You may need to work with lawyers in the relevant country to act on your behalf. Often Australian lawyers will refer you to their counterparts internationally. 

Some providers, including ISPs and hosting providers, will pass on legal correspondence to the user responsible for the infringement for you or give you the contact details of the infringer.

If the infringer can’t be contacted or identified, you may need to engage an investigator or IP professional to explore other or legal avenues.

Taking action through third parties

Where it is not possible or practical to contact the infringing party directly, you could contact third parties whose services are used as part of the infringement.

For example, if the infringement is taking place on social media, mobile app marketplace or an eCommerce website, review the provider's terms and conditions and any intellectual property policy published on its website. 

If the provider has a formal copyright takedown procedure you can report the content directly to the website. You can also lodge a report to their payment service providers if their services are being used to process payments for the infringing content.


Alternative Dispute Resolution

A cheaper and faster option to resolve your dispute compared to formal legal proceedings may be to seek out Alternative Dispute Resolution (ADR) services. ADR can include mediation, arbitration or expert determination to enable parties to efficiently reach a resolution without the need for litigation. 

The World Intellectual Property Organization (WIPO) provides a range of ADR services for disputes that go across international borders. For disputes with other Australian based parties also consider contacting the Resolution Institute, Australian Small Business and Family Enterprise Ombudsman or the Mediator Standards Board to find local qualified providers.

For more information on enforcing your IP and other legal options see our section on IP Infringement.