Five Steps to Protect Your Trademarks in the Web 2.0 World
Liisa M. Thomas and Robert H. Newman, Winston & Strawn LLP, Chicago, Illinois, USA explore the steps that trademark owners can take to protect their marks on increasingly popular social networking websites. This article was adapted with permission from the INTA Bulletin (Vol. 65, No. 10, May 15, 2010; Copyright 2010 the International Trademark Association).
One aspect of Web 2.0 (a term often used to refer to the new features and interactivity available on the Internet today) is the growing popularity of social networking websites like Facebook, YouTube and Twitter, which allow content sharing and online interaction between individuals. These sites can also allow brands to interact directly with consumers presenting an incomparable branding opportunity. But, with every opportunity there are risks, particularly from a trademark protection standpoint. Having consumers communicate about brands is a benefit for companies; but what if consumers engage in unauthorized trademark use? A company is unlikely to be pleased if a Facebook user obtains a Facebook URL that contains its mark (www.facebook/com/yourmark) or a Twitter account with the company name (www.twitter.com/yourbrand).
The five steps outlined below can help brand owners protect their marks on social networking sites so they can continue to leverage the power of these networks with some peace of mind.
Step one: Don’t panic
When confronting new media, companies often presume that trademark problems caused by the media are as new as the media itself. Generally, however, while the media may be new, the problem is not. In the case of a user account on Facebook that appears to be your brand – but really is not – this may be a straightforward issue of trademark infringement. The question then becomes: what tool in a company’s arsenal should be used to combat the problem?
It may be possible to bring a trademark infringement lawsuit based on a likelihood of confusion; or simply to send a cease and desist letter. However, most social networking websites offer tools that brand owners can use to address infringement without going to the considerable time and expense associated with traditional trademark enforcement strategies.
The most important thing, when first confronting a trademark issue created in a social media network, is not to overreact. Just because someone includes your company’s name or brand in a Facebook post or Twitter message (known as a “tweet”) does not mean you need to send that person a cease and desist letter threatening to bring suit. Even in instances where litigation might be warranted, a company should think twice before suing their biggest fans - news of a lawsuit could bring bad press.
In many cases, threats may not be necessary. For example, when Coca-Cola discovered that a Coca-Cola Facebook page started by two fans had obtained millions of other fans, it contacted the two initiators and agreed to partner in the management of the Coca-Cola Facebook page. The page has since grown to be one of the most popular pages on Facebook.
Step two: Be proactive
Companies not yet familiar with social media networks should take the time to become familiar with these sites, and to consider how they can protect their brands. Since third parties can secure account names or “vanity URLs” through social network websites (www.facebook.com/mybestbrand, for example), companies should identify the account names (and even defensive account names) they want to obtain through the sites before they are obtained by third parties.
A company that is set to release a new key product, for example, might consider creating both a Twitter account for its company name (www.twitter.com/mycompany), and an account for the product name (www.twitter.com/greatnewproduct). Companies may also want to do the same for their more prominent existing brands. Registering these names with Twitter keeps them out of the reach of third parties, and could reduce costs of protection and enforcement. It is important, however, to maintain some presence on these accounts as inactive user names may be removed or suspended.
Step three: The proper party to pursue is not necessarily the website
Although the easiest party to identify is typically the social media website host, suing that entity may not be the wisest step. Most social media sites (typically located in the United States), will argue that they are shielded from liability because they were not the party involved in the creation of the infringing content. These arguments have often been upheld in similar circumstances. For example, in Tiffany Inc. v. eBay, Inc., the court concluded that although eBay had “generalized” knowledge of counterfeit sales of Tiffany jewelry on its website, such generalized knowledge was insufficient to impose upon eBay an affirmative duty to remedy the problem. 576 F. Supp. 2d 463, 504-06 (S.D.N.Y. 2008).
Trademark owners that have pursued social media providers directly have generally not advanced very far. For example, after he discovered a fake Twitter profile had been created for him, well-known U.S. baseball team manager Tony La Russa sued Twitter for trademark infringement, cybersquatting, invasion of privacy, intentional misrepresentation and misappropriation of name and likeness. La Russa v. Twitter, Inc., Case No. CV-09-2503 (N.D.C.A. June 5, 2009). Mr. La Russa voluntarily dismissed his complaint with prejudice shortly after filing. And when natural gas distributor Oneok, Inc. sued Twitter for trademark infringement for permitting a third party’s registration of the user name ONEOK, the case was voluntarily dismissed the next day. Oneok, Inc. v. Twitter, Inc., Case No. 4:09-cv-00597 (N.D.O.K. Sept. 15, 2009).
Step four: Leverage the tools provided by the site
So, if the party to pursue is not the website, what can a brand owner do, short of filing a John Doe1 lawsuit, to find out the identity of the user who created the infringement? (In some instances, the user may have left clues as to his or her identify in the account’s publicly available content. Absent such clues, most major social networking sites have procedures in place to help address allegations of trademark infringement. Using these tools can be considerably more cost-effective than litigation.
Of particular help is the broad definition the sites often use for what constitutes a “trademark violation.” A violation can constitute more than just traditional trademark infringement. For example, violations of Twitter’s terms include not just trademark infringement, but also impersonation and name squatting (i.e., when one party creates a Twitter account using the name of a third party without the third party’s permission). In particular, Twitter’s Trademark Policy2 states that “Accounts with clear INTENT to mislead others will be immediately suspended; even if there is no trademark infringement, attempts to mislead others are tantamount to business impersonation.”
In assessing whether its policy has been violated, Twitter distinguishes between: (1) “News feed accounts,” (2) “accounts created to help a community or provide information,” and (3) accounts with a “clear intent to mislead people.” News feed accounts are required to clearly designate that they are aggregating news about a company. They are not permitted to use the company’s logos and “must clearly designate non-affiliation with the entity represented in the news feed to avoid suspension.” Accounts created to help a community or provide information “will be contacted with the appropriate steps required to keep the account.” If Twitter determines there is a clear intent to mislead people into believing an account is affiliated with a business that has submitted a complaint, the account will be permanently suspended.
Similarly, Facebook provides an “automated IP infringement form” by which an aggrieved trademark owner can report claims of trademark infringement by a Facebook3 user. Facebook states that it “will promptly remove or disable access” to the infringing content, “will also notify the user,” and “will terminate repeat infringers when appropriate.” Facebook also indicates that if a third-party application contains infringing content, the trademark owner should first contact the developer via direct message. If the problem persists the trademark owner should contact Facebook, which, “as a courtesy… will try to assist… when a developer does not comply with its legal obligations relating to content issues.”
Step Five: Use Traditional Enforcement Strategies
As illustrated above, there can be limits to what a social media site will do in helping a company to protect its brand. There could be some situations where a brand owner will need to take more aggressive and traditional steps to ensure protection on social networking websites. These could include sending a cease and desist letter to the account holder, or even filing suit. To date, few lawsuits have been brought – and fully litigated – in the U.S. for infringement occurring in a social networking context.
For example, in TDC International Corp. v. Burnham, the defendant had been enjoined from using the plaintiff’s mark, EZ MOVING/MOVING AND STORAGE, but nevertheless created a Twitter account under the name “EZMovingStorage.” Case No. 08-CV-14792, 2010 WL 330374 (E.D. Mich. Jan. 21, 2010). The District Court for the Eastern District of Michigan characterized the defendant’s use of this Twitter account name as “most troubling,” and ordered the defendant to show cause as to why he should not be held in contempt. On March 3, 2010, the court ordered the defendant to pay the plaintiff a civil penalty of $100 per day until the defendant fully complied with the injunction. When the defendant failed to comply with the injunction and did not attend a Show Cause Hearing, the court issued a warrant for the defendant’s arrest on April 6, 2010.
Although traditional enforcement mechanisms can be effective, companies should always carefully evaluate the extent of the threat before filing suit against an individual, especially in the online context. The company has to be careful not to alienate its most committed fans and must weigh the possibility that significant negative publicity could result from taking an aggressive approach against an individual. In some cases, a lawsuit will give a problem the company is hoping to bury far greater publicity. For example, when Barbara Streisand discovered that photographs of her home had been posted online as part of an environmental survey, she sued the owner of the website for invasion of privacy 4. Streisand v. Adelman, Case No. SC 077257 (Cal. Super. Ct. Dec. 31, 2003). Prior to her filing the lawsuit, the website had received very few hits, but the publicity surrounding the complaint resulted in more than a million visitors to the website.
Companies that find themselves facing potential trademark infringements in the new online world of social media networks – or that wish to take proactive steps to avoid them before they occur –would be well served to familiarize themselves with the brand protection tools afforded by the social networking sites. Other proactive steps include obtaining branded accounts before an infringer does, and keeping in mind that traditional types of enforcement (such as trademark infringement litigation) may also be available if you discover that a third party has infringed your mark on a social networking site.
1 In a John Doe lawsuit, a plaintiff sues an anonymous defendant or “John Doe,” and then uses the court’s power to try to identify the defendant.)
2 Twitter Support: Trademark Policy (last accessed March 31, 2010).
3 Facebook Copyright Policy (last accessed March 31, 2010).
4 See Andy Greenberg, The Streisand Effect, FORBES, May 11, 2007.