We have an mobile app on Google Play Store and there is another app that infringes our copyright. We've sent a legal request to Google and the infringed app has been taken down. However, the developer of the removed app sent a counter notice (which contains false information) and now Google requires us to "file an action seeking a court order to restrain the counter notifier's allegedly infringing activity". Otherwise, Google will reinstate the removed app.
Both we and the other developer are non-US-based companies. What should be the easy way for us to do this ? I doubt that the other developer will go to the US if there is a court order and the case will probably end after we send Google the document it needs.
I am not sure there is an “easy way” to handle this, but if you want the infringing app to be taken down you have a couple of options. You could first attempt to reach a business resolution with the owner of the other app, which is the cheapest and fastest way to come to a resolution. But if things don’t work out or if you are already passed this stage, you’ll need to file an action seeking a court order to restrain the counter notifier's allegedly infringing activity, just as Google suggested. Whatever you plan on sending Google is nice, but Google is not going to risk potential liability on your behalf. After 14 days of the receipt of the counter notice, Google must replace the allegedly infringing material that it removed or it is potentially subject to liability, unless it receives word from you that you have filed an action seeking a court order to restrain the counter notifier’s infringing activity. 17 U.S.C. 512 (g)(2)(C). Once again, Google is not going to take a risk for you, you need to follow the proper procedures set forth in the DMCA, which in this case means filing an action. If you are outside of the 14 days, the infringing app will remain on Google’s site until you take action.
I strongly recommend that you reach out to an attorney to further discuss this matter and to help you with filing an action, if that is the route you so choose. The DMCA, or Digital Millennium Copyright Act can be tricky to navigate. The above is just general guidance and is not to be construed as legal advice; an attorney really needs to know all of the facts before truly giving legal advice on your issue. Hope this helps!
The first next step is to have the matter properly analyzed by IP counsel so all the facts are crystal clear. Then once it is determined that you have a legit case it might make sense to have a lawyer send them a cease & desist letter maybe with a demand. It might be best for this letter to come from legal counsel that is local to where this entity resides so they know they can be held accountable where they eat and sleep. Whether the US is the best jurisdiction to bring any legal action requires more facts. Remember too that if they are based somewhere that is not respectful of IP laws enforcement may simply not be possible or incredibly onerous.
Further, there may be wisdom in hiring US counsel to file and docket a case but wait to serve the summons this way you can show that a case was filed, but it will not actually move forward until the affidavit of service is on file with the court. This of course will cost you money and it has to be worth that effort.
In any case, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
If you have a case you wish to bring in the US you will have to hire US IP counsel to evaluate it, the jurisdiction over the defendant, and other relevant facts to see if it is possible.
Your first step should be to retain an experienced US Copyright Litigation attorney to determine the best venue to bring the action against the infringing competitor. It is likely that you will have various forums to choose from. You copyright attorneys can prepare a Cease and desist letter with or without the appropriate Complaint and send it to the infringing competitor. There are both legal and business considerations as to how to proceed, which are better discussed with your Copyright Litigation counsel, in confidence.
For more detailed advice, I recommend that you contact an experienced Copyright/IP Litigation attorney to advise you in confidence about your options and potential costs. Many IP specialty firms, like ours, offer an initial free conference by telephone, video conference or in person if you are available locally and would be happy to speak with you. Call and speak with an experienced Copyright Litigation attorney who can assist you.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
As my colleagues note, filing a copyright infringement lawsuit [likely in the Northern District of California] and then providing Google with evidence of the filing will persuade Google to keep the allegedly infringing application off Google Play.
Your own California-licensed intellectual property attorney, however, must first evaluate the merits of your infringement claim -- which will take some time, cost you quite a bit of money and may result in a conclusion you don't like. That analysis, however, is necessary.
If you're doing business as a company then only a licensed attorney may file the lawsuit -- you cannot do so yourself.
And note: Even if the other party does not contest the infringement claim the court will still perform an infringement analysis before entering a default judgment in your favor [an analyis that may not go your way -- which means your attorney cannot simply file a bare-bones complaint but rather one that fully supports the infringement claim]. If the code for your application was written outside the U.S. then you do not need a U.S. copyright registration before filing the lawsuit. If you don't have one, however, you're not entitled to have your attorneys' fees paid by the other side or awarded any statutory damages.
So ... considering all the above, you need to budget for many tens of thousands of dollars in attorneys' fees. You then need to balance those [high] fees and the [moderate?] risk of not getting a positive outcome against the [low?] cost of having the allegedly infringing application remain on Google Play.
In short: It's not enough to be right -- even when right one still must sometimes tolerate others being wrong. Good luck.
The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
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