Advertising Compliance Service

GROWING POPULARITY OF SOCIAL NETWORKING WEBSITES

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, an incomparable branding opportunity. But, with every opportunity comes some risks, in particular from a trademark protection standpoint. Having consumers communicate about brands is a benefit for companies; but what if the consumers engage in unauthorized trademark use? In particular, 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 assist brand owners in protecting their marks on these sites so that they can continue to leverage the power of social networks with some peace of mind.

Note: This article was originally published in the INTA Bulletin, and is reprinted with permission.

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; other steps might also be considered, like sending a cease and desist letter. However, most social networking websites offer important tools that brand owners can use to address infringement without going through the considerable time and expense generally 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, as news of a lawsuit could bring bad press.

Indeed, 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 fans, Coca-Cola contacted the two fans 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. (See Abbey Klaassen, How Two Coke Fans Brought the Brand to Facebook Fame, ADVERTISING AGE, March 16, 2009, available at http://adage.com/digital/article?article_id=135238 (subscription required).)

Step Two: Be Proactive

Companies not yet familiar with social media networks should take the time to get familiar with these sites, and consider some proactive steps they can take to 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 consider what account names (and even defensive account names) they want to obtain through the sites before those names are obtained by third parties.

A company that will soon be releasing a new key product, for example, might consider not only creating a Twitter account for its company name (www.twitter.com/mycompany), but also opening an account for the product name (www.twitter.com/greatnewproduct). Companies may want to do the same for their more prominent existing brands as well. Registering these names with Twitter will keep the names away from third parties, and could reduce the costs of protection and enforcement. Note that inactive user names may be removed or suspended, so it can be important to maintain some presence on the accounts you have created.

Step Three: The Proper Party to Pursue Is Not Necessarily the Website

Although the easiest party to find is typically the social media website host, suing that entity may not be the wisest step. Most social media sites (which are 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).)

Indeed, those 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 mis- representation 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 Doe lawsuit, to find out the identity of the user who created the infringement? (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.) In some instances, the user may have left clues 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 offer considerable cost savings over 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 Policy 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." (Twitter Support: Trademark Policy, http://help.twitter.com/entries/18367-trademark-policy (last accessed March 31, 2010).)

Brand owners should be aware that 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, 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 complaining business, 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 Facebook user. Facebook Copyright Policy, www.facebook.com/legal/ copyright.php (last accessed March 31, 2010).

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 and, if the problem persists, 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 to help a company protect its brand. There could be some situations where the 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 United States for infringement occurring in a social networking context.

For example, in TDC International Corp. v. Burnham, the defendant had been enjoined from using 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 defendant's use of this Twitter account name as "most troubling," and ordered defendant to show cause why he should not be held in contempt. On March 3, 2010, the court ordered the defendant to pay plaintiff a civil penalty of $100 per day until defendant fully complies with the injunction. After the defendant failed to comply with the injunction and failed to 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.

Not only does the company have to be careful not to alienate its most committed fans, but the company must weigh the possibility that significant negative publicity could result from taking an aggressive approach against an individual. In some cases, a lawsuit will result in far greater publicity to the problem the company is hoping to bury. 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. 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. (See Andy Greenberg, The Streisand Effect, FORBES, May 11, 2007, available at www.forbes.com/2007/05/10/streisand-digg-web-tech-cx_ag_0511streisand.html.)

CONCLUSION

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.

NOTE: Although every effort has been made to verify the accuracy of items carried in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

LAWYER's REFERENCE SERVICE

Abbey Klaassen, How Two Coke Fans Brought the Brand to Facebook Fame, ADVERTISING AGE, March 16, 2009, available at http://adage.com/digital/article?article_id=135238 (subscription required).

Andy Greenberg, The Streisand Effect, FORBES, May 11, 2007, available at www.forbes.com/2007/05/10/streisand-digg-web-tech-cx_ag_0511streisand.html.

La Russa v. Twitter, Inc., Case No. CV-09-2503 (N.D.C.A. June 5, 2009).

Oneok, Inc. v. Twitter, Inc., Case No. 4:09-cv-00597 (N.D.O.K. Sept. 15, 2009).

Streisand v. Adelman, Case No. SC 077257 (Cal. Super. Ct. Dec. 31, 2003).

TDC International Corp. v. Burnham, Case No. 08-CV-14792, 2010 WL 330374 (E.D. Mich. Jan. 21, 2010).

Tiffany Inc. v. eBay, Inc., 576 F. Supp. 2d 463, 504-06 (S.D.N.Y. 2008).

Twitter Support: Trademark Policy, http://help.twitter.com/entries/18367-trademark-policy (last accessed March 31, 2010).

________________

* Liisa M. Thomas is a partner in Winston & Strawn's advertising, marketing and entertainment law group with a particular emphasis on privacy and direct-to-consumer communication laws. She is an adjunct professor at John Marshall Law School, teaching courses on international privacy law, co-chair of the American Bar Association Intellectual Property Section Committee on Promotions and Marketing Law, and an active member of the International Trademark Association. Liisa is a member of the Advertising Compliance Service Editorial Advisory Board. Ms. Thomas is a member of the INTA Bulletin Features Subcommittee.

Robert H. Newman is an associate in Winston & Strawn's advertising, marketing and entertainment law group. He is co-chair of the American Bar Association Litigation Section Internet and Privacy Subcommittee and Annual Review vice-chair of the American Bar Association Intellectual Property Section Copyright Division.

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