Social media have transformed the way people interact in today’s society. Facebook has expanded more than five times in the previous two years to 50 million users, while Twitter has 13 million users in India. With the advent of the internet and the digitization of works through these sites, it has become relatively easy to infringe on intellectual property rights through copyright infringement, trademark infringement, patent infringement, design infringement, and service mark infringement, among other things. From a wide variety of experiences, law enforcement authorities are attempting to control such risks to intellectual property rights. The focus of this paper is on the various legal and liability issues that may arise in connection with the content on Twitter and Facebook, and it illustrates the urgent need to plan and implement laws that define and protect intellectual property as a response to technological change through relevant cases.
People are discussing, creating content about, and interacting with brands more than ever before through social media platforms. This involves Trademark Infringement, Impersonation, Parody, and Name Squatting.
The twitter policy state “A trademark policy violation occurs when a corporation or business name, logo, or other trademark-protected materials are utilized in a way that may mislead or confuse people or is exploited for financial gain. Accounts with an apparent motive to deceive others will be suspended; attempts to deceive others may result in suspension even if there is no express trademark policy violation”[i]. In the case of Oneok, Inc.v. Twitter, on September 15, 2009, natural gas distributor Oneok Inc. filed a lawsuit in federal court in Oklahoma against Twitter Inc. for direct and contributory trademark infringement. Oneok’s accusations were based on the registration and usage of the Twitter account “Oneok” to send company-related tweets by a third party. After the Twitter account was suspended, Oneok dropped the lawsuit the next day.
In the case of Tony LaRussa v. Twitter, The St. Louis Cardinals’ manager, Anthony La Russa, sued Twitter after an anonymous Twitter user claimed to be La Russa by creating an account at twitter.com/TonyLaRussa and posting updates as La Russa. La Russa’s photo was on the fake Twitter handle, along with a slew of vulgar and ostensibly Cardinals-related posts. “Bio Parodies are fun for everyone,” one sentence of the “profile” indicated it was all a fake. La Russa’s complaint alleged that “the fake Twitter page constituted trademark infringement and dilution, cybersquatting, and misappropriation of name and likeness. According to the San Francisco Chronicle, La Russa’s attorney tried to contact Twitter before filing the lawsuit but no response. Hours after the lawsuit was filed, Twitter removed the fake La Russa page and its postings”.
In the case ofMattel, Inc. and Others v Jayant Agarwalla and Others[ii], Plaintiffs claimed that defendants created an online version of their board game called SCRABULOUS, which was made available as an application on the prominent social networking website www.facebook.com. The defendants’ websites www.scrabulous.com, www.scrabulous.info, and www.scrabulous.org also marketed the online version. As a result, plaintiffs argued that adopting a misleading and confusingly similar mark for the online version of their game is infringement and passing off under section 29 of the Trade Marks Act, 1999[iii]. “The defendants were restrained from infringing the plaintiffs’ registered trademark in SCRABBLE and using the name SCRABULOUS, or any other mark deceptively or confusingly similar to SCRABBLE, in any manner, including by using it as part of domain name, or other use such as hyperlinking, meta tagging, advertisement, or any other such form of use”.
In addition to customer criticism of a business, social networking sites can lead to other difficulties such as the creation of fraudulent accounts or user identities, as well as name squatting, trademark or copyright infringement, and the selling of infringing or counterfeit goods. As a result of these increasing frequency behaviours, it is critical for rights holders to have adequate, robust rights in place to handle and manage issues quickly and efficiently.
Websites such as Facebook, Twitter, LinkedIn, and Instagram have developed sophisticated infringement reporting mechanisms that allow a trademark owner to prohibit others from using his or her mark as a username.
Platform-Specific Trademark Enforcement Mechanisms
Facebook and Instagram
Facebook and Instagram have almost standardized processes for addressing trademark, copyright, or “other legal rights” infringement. This envisages filling out an online takedown form that must include the complainant’s information[i]. Rightholders can use their preferred form of complaint to contact Facebook or Instagram’s designated agent. The online format also includes:
- Information about the mark(s) involved.
- The country of registration.
- The products or services for trademark complaints regarding fake account names or apparent infringement.
It’s also a viable option to provide a copy of the registration certificate or a link to the relevant country’s official trademark database. The sites can remove the content addressed instantly, but they usually tell the account holder with the complainant’s information to deal with it directly. If the user does not utilize the trademark in connection with the goods or services it is registered for; the social media site is likely to determine that there has been no policy violation. If the complaint is based on a trademark right in the United States, a user may contact the site if the content was taken unlawfully.
Twitter will suspend an account when “there is a clear intent to mislead others through
the unauthorized use of a trademark”.The policy further states that if “an account appears to be confusing users, but is not purposefully passing itself off as the trademarked good or service, we allow the account holder to clear up any potential confusion. We may also release a username for the trademark holder’s active use”. Similarly, Twitter has procedures in place to handle trademark infringement, copyright infringement, and the selling of counterfeit products by submitting the appropriate online takedown forms. The complainant’s full name, the rights invoked, and links to the infringing tweet, which may include a sponsored commercial tweet, must all be given.
Again[ii], The rights holder does not need to have a Twitter account to submit a takedown request and using the form over contacting Twitter’s representative is preferred. On Twitter, username squatting may be a concern. If a username contains a registered trademark, the rights holder can utilize the trademark takedown policy to recover it; however, accounts that have been dormant for more than six months may be suspended. While Twitter enables users to create parody and fan pages related to a company, they must follow specific guidelines to identify the page as a fan or parody. If they don’t, a takedown can be attempted using the recommended initial approach to the user.
LinkedIn is a popular social networking platform that allows companies to market their products and services to other businesses, possible suppliers, end users, and even prospective workers as a recruiting tool. In the case of any misuse on LinkedIn, rights holders should ensure that they monitor and enforce their rights appropriately. There are still procedures in place for removing information that infringes on a party’s trademark or copyright, as well as reporting fake profile claims. In terms of the information that must be provided, the frameworks for copyright and trademark takedowns on LinkedIn are nearly identical to those on Facebook and Instagram. One distinction is that the aggrieved account holder can file specified counter-notices in both trademark and copyright takedowns, providing the opportunity to justify their position. A rights holder has 10 business days to take official action after receiving a counter-notice; meanwhile, the content can be re-posted. As a result, rights holders may have to take action beyond the takedown processes on occasion, resorting to litigation only when absolutely required and alerting the social media sites of their actions. The offending page or account is generally suspended while additional action is taken.
Social networking platforms give a golden opportunity for any organization with IP rights to advertise their brands, trademarks, and rights to a worldwide audience. Today, all renowned social media networks, such as Facebook, Twitter, LinkedIn, and Instagram, necessitate rights holders to maintain an official page. Many larger companies also have an official YouTube account to post an official video. Potential infringers or squatters might instantly cause damage to rights holders because of the ease with which they can set up a social media account.
Read part 1 of the article here: https://www.theippress.com/?p=3342
[i] Rob White, Social media takedown: surveying the available tools, WORLDTRADEMARK REVIEW, https://www.worldtrademarkreview.com/enforcement-and-litigation/social-media-takedown-surveying-available-tools.
[ii] Rob White, Social media takedown: surveying the available tools, WORLDTRADEMARK REVIEW, https://www.worldtrademarkreview.com/enforcement-and-litigation/social-media-takedown-surveying-available-tools.
[i] Rachel Nicholas, Getting a Handle on Twitter, WIPO MAGAZINE, (June 2016), https://www.wipo.int/wipo_magazine/en/2016/03/article_0006.html.
[ii] Mattel, Inc. and Others v Jayant Agarwalla and Others, IA No. 2532/2008 in CS (OS) 344/2008).
[iii] Trade Mark Act, 1999, §29.