Bar News - June 21, 2017
Intellectual Property Law: Policing Trademarks on Social Media
By: Steven E. Grill
The use of social media to promote brands and sell goods and services continues to grow at an explosive rate, creating new types of problems for trademark owners.
Counterfeit goods appear for sale on Craigslist. A competitor posts on Facebook with a confusingly similar name. Famous trademarks are diluted by use in Twitter hashtags. These and many other problematic scenarios have become relatively common. In today’s world, policing trademarks thus requires monitoring social media and taking action whenever possible.
Some monitoring steps are basic and easy, such as setting up alerts on major websites so that notice will be provided whenever certain keywords are used. Many trademark owners, however, do not have either the resources or the expertise to develop a thorough and effective monitoring program. Fortunately, a cottage industry has developed; many companies (including law firms) now offer monitoring services. It is worth researching the options and putting into place at least some form of monitoring.
Once offending content is located, the next step is to determine what action to take. Pursuing social media infringers can be difficult. It may be impossible to determine the identity of the parties responsible without a great deal of effort. Such parties, moreover, may be outside of the United States, making legal action impractical or prohibitively expensive.
Fortunately, it is usually possible to have the offending posts removed without a great deal of trouble. Most website operators will cooperate when a trademark owner notifies them of improper postings on their websites. This may be a matter of self-interest, because (unlike the protection afforded to website operators with respect to copyright infringement under the Digital Millennium Copyright Act) there is no statutory “safe harbor” protection for website operators who allow their sites to be used by trademark infringers. Thus, although case law is not fully developed, it is likely that the owners of social media sites – like other website operators – who knowingly allow their sites to be used by infringers or counterfeiters, or who fail to remove the offending content after notice from trademark owners, can be held liable for contributory trademark infringement. See Tiffany (NJ) Inc. v. eBay Inc. (2nd Cir. 2008); Louis Vuitton Malletier S.A. v. Akanoc Solutions Inc. (9th Cir. 2011).
The last thing an operator of a social media site wants is to find itself in the middle of litigation, even as a third-party witness, let alone as a defendant in a proceeding seeking injunctive relief or damages.
Major social media sites such as Facebook, Twitter, LinkedIn and Instagram all have online infringement notification processes that allow trademark owners to submit claims of infringement. In most cases, a properly documented claim will result in removal of the offending content. This will usually be enough to prevent real damage, especially when the infringement is identified early.
Steve Grill is a shareholder in Devine Millimet’s Manchester office. He helps clients resolve difficult business and financial disputes and focuses his practice on telecommunications, technology and intellectual property issues.