On Trademarks – Infringement and Social Media
A client recently came to me with a trademark problem. The client was a small-but-growing company that was trying to expand and formalize its social media presence. It had discovered that its trademark was already taken on a popular social media platform. Despite the fact that the other user had not posted in years and appeared to be a phishing site, the platform would not remove the other user, and my client was struggling to get anyone’s attention through the platform’s online submission forms.
This is a common problem. We all know about the explosion in use of social media by both individuals (including but not limited to those infamous millennials) and companies. But not every company has its usernames, channels, handles, and pages perfectly coordinated with its trademarks and branding campaign. As they try to do so, they often encounter existing users employing the same or similar marks, whether those users are outright infringers, bona fide users, or somewhere in between.
The process to try to address these existing users is far from certain and often frustrating for clients. You may be familiar with the Digital Millennium Copyright Act, often referred to as the “DMCA.” The DMCA was enacted in 1998 to, among other things, provide a procedure for copyright owners to report infringement on the internet and a safe harbor for internet service providers who comply with the procedure. This has resulted in a uniform, streamlined process to stop and “take down” infringing uses of copyrights across more or less all social media platforms. But the DMCA only applies to copyrights, not trademarks.
I conducted a very non-scientific survey of a dozen of the most popular social media sites to determine (1) whether they had a process for reporting trademark infringement and (2) whether those processes were similar across the various platforms. The answer is that most but not all of the twelve sites had a process in place, but, for those that did, the process was not at all uniform. Thus, unlike for copyright infringement, a trademark owner dealing with an infringing username (or other form of trademark infringement) faces a different process and potentially different outcome depending on the particular social media site in question.
During my “investigation,” I was also reminded of another issue I had previously encountered with the procedures for reporting and taking down infringing trademarks on social media sites. The online submission forms used by many of the platforms contain, without explanation, a field for the registration number of the trademark in question. These sites thus require, or at least appear to require, that the trademark at issue be registered. As you may know, trademark rights accrue based on “use in commerce,” not based on registration. Federal registration provides certain benefits, but it not required to assert trademark infringement. An unsophisticated owner of an unregistered trademark could easily be led to believe that he or she had no rights to stop an infringing user on the site in question.
There are, of course, benefits and burdens to establishing a more uniform process for trademark owners to report and redress infringement on social media platforms. Of course, any mandated or voluntary process would have to provide some incentive – negative or positive – to encourage adoption and compliance by social media platforms. In the case of the DMCA, that incentive was a safe harbor from secondary liability. Such a safe harbor could also work in the trademark context, but – and this is a potential topic for another column – the threat of secondary liability for copyright infringement in the late 1990s was more profound than it is for trademark infringement today.
The benefits of a uniform process would include increased transparency to rights holders and content creators regarding procedures and outcomes, as well as increased legal certainty for social media platforms considering whether they may face liability in a particular situation. Such a process could also provide the benefit of an improved procedure for purported infringers to submit a “counter-notice” justifying their use.
On the burden side are a number of legitimate arguments that revolve around the central point that a more formalized process is not necessarily a better process – for the platform, the claimant, or the alleged infringer. For example, a DMCA-like process would put the platform in an adjudicative position in highly fact-specific, territory-specific disputes that may turn on whether the purported owner or the purported infringer is “using the mark in commerce” (which is likely one of the reasons why the platforms prefer registered marks).
In sum, a trademark owner like my client who is trying to remove and/or take over an infringing username faces a process which, for better or for worse, is neither perfect nor uniform across the ever-increasing spectrum of social media platforms. Time will tell if we ever see a Digital Millennium Trademark Act.