8. Trademark Protections from Brandjacking and Cybersquatting in Social Networks
Generally speaking, “brandjacking” (a clever neologism combining the words “brand” and “hijacking”) is the action of acquiring or assuming the online identity of another for purposes of capturing that person’s or business’s brand equity.
You do not want your company’s image (or message) to be hijacked by spammers, brandjackers, cybersquatters, impersonators, or competitors.
Brandjackers operate in a variety of ways, usually by attempting to leverage the reputation of their target for their own gain, or working to destroy the reputation of their target for malicious reasons. Regardless of the brandjacker’s motive (be it financial or otherwise), the effect on the victim’s brand can be quite devastating, causing significant PR and financial damage, including lost clients, sales, and market share (and potential stock price plummet for public companies), and an erosion of a brand’s reputation and goodwill.
Cybersquatting, or domain squatting, is a similar tactic employed to misappropriate another’s brand equity. Cybersquatting is usually defined as the registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. Cybersquatting can also wreak havoc on a company looking to “own” a certain domain (in connection with a new product release, for example) only to find that the domain is already being “squatted” upon (and being ransomed by the cybersquatter).
This chapter discusses strategies and best practices for minimizing your exposure to these risks, as well as available remedies should you find yourself the victim of brandjacking or cybersquatting. In particular, this chapter examines the platform-specific complaint mechanisms to remove brand-damaging activity, and details additional redress available to companies under the federal Lanham (Trademark) Act, which includes the Anticybersquatting Consumer Protection Act.
Notable Cases of Brandjacking and Cybersquatting
One of the more well-publicized cases of brandjacking involved the manager of the St. Louis Cardinals, Tony La Russa. On May 6, 2009, La Russa filed a lawsuit1 against Twitter, alleging that the company allowed an imposter to register the domain, twitter.com/TonyLaRussa, which contained an unauthorized photograph of La Russa and written statements impliedly written by La Russa, when in fact they were not. According to the complaint, the tweets originating from this handle were derogatory and demeaning, and therefore damaged La Russa’s trademark rights in his name. One tweet, for example, following the death of two Cardinals pitchers, stated that there were no drunk-driving incidents on the St. Louis Cardinals’ latest road trip. (The case settled within a month, and the real Tony La Russa appears to now “own” the @TonyLaRussa handle.)
Businesses, of course, are also susceptible to brandjacking and cybersquatting on social networking sites. BP, for instance, found itself the target of a fake Twitter account (http://twitter.com/BPGlobalPR) (see Figure 8.1) that was created in response to the damage caused by the 2010 Gulf of Mexico oil spill. The spoof account includes BP’s logo, soiled with oil dripping down its side, and regular tweets such as the following:
• “Very excited to report that there is a Sheen in the Gulf of Mexico!”
• “BP never used false numbers to downplay the severity of the spill. Also, it happened like 100 years ago, get over it.”
Figure 8.1 Spoof BP Twitter page.
This spoofed account has more than 150,000 followers (that is, approximately 120,000 more than the official BP America twitter account) as of the time of this writing.
Netflix’s recent pricing fiasco also included a comical Twitter account blunder. In 2011, Netflix, the popular DVD-by-mail and online streaming service company, announced that it was increasing its combo plan from $10 per month to $16 per month. Following a huge uproar among its customers (and a 50% drop in its stock price), Netflix decided that it would split the DVD and streaming businesses into two separate entities, forcing customers who wanted both services to maintain two accounts, one for the DVD service (to be named Qwikster) and the other for the streaming service. Miscalculating the anger that this decision would incite, and the power of social media to communicate customer dissatisfaction and ridicule, Netflix was inundated with a vocal online backlash. To exacerbate matters, before introducing its new DVD service, Netflix failed to secure the Twitter handle for Qwikster—which Netflix later discovered was already being used by a pot-smoking Elmo posting obscene tweets (see Figure 8.2). Suffice it to say that Qwikster was quickly abandoned. Lesson: Be sure to secure your Twitter handle (and other social media account names) before launching a new product or business.
Figure 8.2 Netflix must have been quite surprised to learn that its new product’s eponymous Twitter handle, @Qwikster was already taken by “Elmo,” who now apparently tweets from @ThisBeQwikster.
Similarly, in June 2011, Coventry First, a “leading company in the life settlement industry” sued anonymous individuals (or group of individuals) tweeting from the @coventryfirst twitter account.2 Coventry apparently became the target of this twitterjacking because of its (to some, controversial) alleged business practices: buying life insurance policies and receiving payment of the insurance proceeds (hopefully at a profit) when the insured dies.
The complaint claimed, among other things, that by establishing and using the domain, twitter.com/coventryfirst, the defendants infringed Coventry First’s trademark rights. Approximately one month after filing suit, Coventry withdrew its case. As to the Twitter account holder (“Doe”), this person added a parody disclaimer, and an “in” to the username (see Figure 8.3), to keep from running afoul of Twitter’s parody guidelines, which requires, among other things, that a username not be the exact name of the subject of the parody.3
Figure 8.3 Coventry First “parody site”
Likewise, in 2009, ONEOK, Inc., a natural gas distributor and Fortune 500 company, also found itself the victim of twitterjacking. After unsuccessfully attempting to have the twitter account @ONEOK transferred to it, ONEOK, Inc. sued Twitter for trademark infringement for assigning this twitter handle to a third party.4 According to the complaint, the ONEOK Twitter account holder had tweeted at least twice with information regarding ONEOK, Inc., passing off such tweets to unsuspecting recipients as official company statements. The day after filing the complaint, ONEOK, Inc. voluntarily dismissed its action against Twitter, and the Twitter account was transferred to the company.
As the above cases suggest, businesses that become victims of username jacking have several options available to protect their valuable trademarks, including reporting violations to the social media platforms themselves, and (as necessary) filing suit under the Lanham (Trademark) Act for trademark infringement and cybersquatting. These options are discussed in detail in the following sections.
At the time of this writing, Twitter no longer verifies Twitter accounts.5 Previously, in an effort to prevent imposter accounts, Twitter used a Verified Accounts system to establish the authenticity of identities on Twitter. An account that was verified indicated that Twitter had contacted the person/entity the account is representing and had verified their authenticity so that “users can trust that a legitimate source is authoring their tweets.”
Currently, if a person or company is being impersonated, Twitter requests that users submit a ticket request to report the impersonation. Nonparody impersonations are a violation of the Twitter rules and might result in permanent account suspension, but parody, commentary, and fan accounts are allowed, provided, among other things, that:
• The username is not the exact name of the subject of the parody, commentary, or fandom. (The account should include a qualifier such as not, fake, or fan.)
• The profile name should not list the exact name of the subject without some other qualifying word, such as not, fake, or fan.
• The bio should include a statement to distinguish it from the real identity, such as “This is a parody,” “This is a fan page,” or “This is not affiliated with.”
• The account should not, through private or public communication with other users, try to deceive or mislead others about the account creator’s real identity.6
Trademark Infringement Under the Lanham Act
The Lanham (Trademark) Act7 embodies federal trademark law in the United States. Under Section 32 of the Act (which applies to federally registered marks), one is liable for trademark infringement if he or she, without the consent of the trademark owner, “... use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services ...[in which] such use is likely to cause confusion, or to cause mistake, or to deceive.”8
Similarly, under Section 43(a) of the Act (which applies equally to registered and unregistered marks), one is liable for trademark infringement if he or she “uses in commerce” another’s mark “on or in connection with any goods or services” where such use is likely to cause confusion, mistake, or deception regarding the “affiliation, connection, or association” of that person with the markholder, or as to the “origin, sponsorship, or approval” of that person’s “goods, services, or commercial activities.”9
The key issue in a trademark dispute is whether the unauthorized use of another’s mark is likely to cause confusion as to the source, sponsorship or affiliation of the goods or services in question. Generally, courts consider the following factors (often referred to as the Polaroid factors10), or similar factors, when assessing likelihood of consumer confusion:
• The strength of the plaintiff’s mark
• The similarity of the marks at issue
• The degree to which the products or services compete
• The likelihood that the plaintiff will “bridge the gap” and offer a product or service similar to the defendant’s in the reasonably near future
• Actual confusion between the products or services
• Good faith on the defendant’s part in selecting its name or mark
• The quality of the defendant’s products or services (that is, whether the plaintiff’s reputation could be jeopardized by virtue of the fact that the defendant’s product is of inferior quality)
• The sophistication of the buyers in the relevant market
Note
Under the Lanham Act, one is liable for trademark infringement if he or she “use[s] in commerce” the mark of another, without the owner’s permission. In several jurisdictions,11 the casual use of another’s trademark on a personal social media sites (or elsewhere) does not constitute “use in commerce,” absent a showing that the party is using the mark to sell goods or services. In jurisdictions applying this rule, brands may have little recourse other than lodging platform-specific complaint and takedown requests to obtain removal of an infringing social media user name, account name or handle, as court relief will most likely prove unavailing.
In New York City Triathlon, LLC v. NYC Triathlon Club, Inc.,12 the U.S. District Court for the Southern District of New York granted a preliminary injunction prohibiting the seller of triathlon equipment from using three proposed marks: NYC Triathlon Club, NYC Tri Club, and New York City Triathlon Club. These marks were prohibited because they would likely cause consumer confusion with (and therefore be infringing of) New York City Triathlon, LLC’s preexisting marks: NEW YORK CITY TRIATHLON, NYC TRIATHLON, and NYC TRI.
The court concluded that New York City Triathlon, LLC was likely to succeed on the merits of its claim under Section 43(a) of the Lanham Act. Based on that decision, the court forbade NYC Triathlon Club, Inc. from using the marks “as a domain name on the Internet, or in any other way that is likely to cause confusion with Plaintiff or its trade name and trademarks.”13
After learning that NYC Triathlon Club, Inc. had failed to “totally deactivate” its Twitter account, the court renewed its order:
Legal Insight
To avoid appearing as a corporate bully, brands should carefully consider the option of not reclaiming their usernames on social media pages, particularly if the page creator is a brand-friendly “evangelist” with many thousand followers. Coca-Cola’s success with its Facebook page, which was created by two fans of Coca-Cola (and not the company itself), is a model in social media risk management.
Although Facebook’s terms prohibit users from creating a branded Facebook page unless authorized by or associated with the brand, Coca-Cola elected not to close the page, but to keep it open and partner with both page founders, given the extraordinary popularity of the fan page.15 Coca-Cola’s social savvy paid off: The page repeatedly is ranked in the top 20 most popular Facebook pages in the world, and as of the date of this writing has more than 36 million followers.
Conversely, Chick-fil-A, the second-largest fast-food chicken restaurant chain in the United States and the owner of the federally registered trademark EAT MOR CHIKIN, did not fare so well when seeking to protect its intellectual property interests in our current social media climate. According to an Associated Press article,16 in October 2011, Chick-fil-A sent Bo Muller-Moore, creator of the EAT MORE KALE t-shirts, a cease and desist letter demanding that he stop using the phrase and transfer his website to Chick-fil-A.
Instead of backing down, Muller-Moore turned to social media and the press to defend his right to use the EAT MORE KALE slogan. In addition to creating a Facebook page (Protect “Eat More Kale”) (which has more than 1,000 likes and more than 900 talking abouts), Mr. Muller-Moore’s supporters created a petition on Change.org titled “Chick-fil-A: Stop Bullying Small Business Owners,” which has more than 29,000 signatures. (See Figure 8.4.) Given the significant public and viral backlash that can arise from too aggressive trademark enforcement actions, companies should carefully weigh the benefits of such actions against the potentially sizeable negative impact on the company’s reputation and consumer goodwill.
Figure 8.4 Small business owner takes to the social media street to defend his EAT MORE KALE slogan against larger corporate trademark owner.
Likewise, in Black Sheep Television, Ltd. v. The Town of Islip,17 the U.S. District Court for the Eastern District of New York granted a preliminary injunction prohibiting Black Sheep Television—an airport information website operator that provides information and services to travelers of Macarthur Airport, formerly known as Islip Airport—from using several of its Twitter accounts that were similar to trademarks owned by the town of Islip. In particular, following failed negotiations between the parties, Black Sheep registered several domain names (for example, macarthurairport.com and islipairport.com) and reserved @FlyLIMA, @IslipAirport, @MacArthurAirprt, and @ISPAirport as Twitter addresses. Although Islip filed a complaint through Twitter’s internal trademark infringement complaint mechanism seeking removal of all four imposter accounts, Twitter removed just one. In holding that the Town of Islip was likely to succeed on the merits of its claim that its marks were unlawfully incorporated into Black Sheep’s Twitter accounts, the court ordered as follows:
Legal Insight
On November 21, 2011, the German pharmaceutical company Merck KGaA (Merck) brought legal action in the New York State Supreme Court seeking an order requiring Facebook to disclose the circumstances leading to the “apparent takeover of its Facebook page.”19
According to the legal papers filed in the case, Merck entered into an agreement with Facebook for the exclusive rights to facebook.com/merck in March 2010. However, when Merck checked the site in late 2011, it discovered that it had lost control of the page, and that content on the site now belonged to its U.S. rival, Merck & Co.
Merck claimed that the social network “is an important marketing device [and] the page is of great value.” To determine its potential claims in a lawsuit against Merck & Co (for instance, for breach of contract, contractual interference with actual and prospective business relations, and/or civil theft), Merck sought prelitigation disclosure from Facebook “to determine the nature of the misconduct...and to identify the proper defendant or defendants.”
This will be an interesting case to follow; it might offer important guidance regarding the legal remedies available for trademark infringement on social networks.
The Anticybersquatting Consumer Protection Act (ACPA)
The Anticybersquatting Consumer Protection Act (ACPA)20 is a 1999 amendment to the Lanham Act that targets cybersquatting. An ACPA violation occurs when a domain name registrant registers, uses, or traffics in a domain name that is identical or confusingly similar to or dilutive of a distinctive or famous21 trademark, with bad faith intent to profit from the goodwill associated with the trademark.
Note
“Cybersquatting” occurs when an “individual other than the trademark owner registers a domain name similar or identical to the trademark and ‘then attempts to profit from this by either ransoming the domain name back to the trademark holder or by using the domain name to divert business from the trademark holder to the domain name holder.’”22 Methods of cybersquatting include registration of another’s mark (and spelling variations thereof, so-called “typosquatting”) as a domain name; registration of another’s mark with an extension other than “.com”; and registration of another’s mark as part of a domain name.
In determining whether the domain name registrant has a bad faith intent to profit (unlike in the Lanham Act, the ACPA does not require “use in commerce”), a court may consider the following nonexclusive (and nonexhaustive) factors:
• The registrant’s trademark or other intellectual property rights, if any, in the domain name.
• Whether the domain name consists of the registrant’s legal or common name (for example, Senator John McCain may not monopolize a LinkedIn URL taken by another individual legitimately so named).
• The registrant’s prior use, if any, of the domain name in connection with the bona fide offering of goods or services.
• The registrant’s bona fide noncommercial or fair use of the mark in a site accessible by the domain name (for example, comparative advertising, comment, criticism, parody, and news reporting).
• The registrant’s intent to divert customers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.
• The registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used, or having an intent to use, the mark in a legitimate site.
• The registrant’s providing material and misleading false contact information when applying for the registration of the domain name.
• The registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others.
• The extent to which the mark in the domain name registration is distinctive or famous.23
Legal Insight
The ACPA does not prevent the fair use of trademarks or any use protected by the First Amendment, including criticism, parody, or gripe sites. Mayflower Transit, LLC v. Prince24 is a good example. The defendant (Dr. Brett Prince) claimed that his personal property was lost in a moving incident involving Mayflower Transit, LLC. Afterward, Prince registered the Internet domain name mayflowervanlinebeware.com and posted a website at this address. The home page is headlined “Beware of Lincoln Storage Warehouse. Beware of Mayflower Van Line,” and states, “If you are thinking about moving or had a bad experience moving with Mayflower Van Lines or Lincoln Storage Warehouses then please read on and reply to me at the following email address: [email protected].”
A link to another page warned, “Unless you’re willing to risk a total loss of your possessions, do not do business with Lincoln Storage Warehouses or Mayflower Van Lines. What happened to me can and will happen to you! Don’t be their next victim!”
The court granted summary judgment in favor of Prince after finding that Prince did not have a bad faith intent to profit from Mayflower Transit, when he registered the domain name. The court dismissed Mayflower Transit’s ACPA claim, too.
“The totality of circumstances in this case demonstrate that Defendant’s motive for registering the disputed domain names and posting his criticism was to express his customer dissatisfaction through the medium of the Internet. Defendant’s ‘cyber-griping’ is a far cry from the ‘squatting’ activity made illegal by the ACPA, in which a person purchases numerous domain names of prominent companies cheaply with the purpose of selling the domain names at a higher price to those companies. Whereas Defendant’s activity may be actionable under other statutory provisions, a question the Court need not decide today, it is clear that these actions do not fall within the ambit of the ACPA.”25
In Grooms et al. v. Legge et al.,26 James Grooms (together with his girlfriend and their sport apparel company) sued the Legges (husband and wife) and their competing company for trademark infringement and cybersquatting in violation of the ACPA. Grooms created the name Knukle Inc. and some initial drawings, which combined the name Knukle Inc and a symbol representing brass knuckles. Knukle was deliberately misspelled by omitting the letter c and turning the second k backward. The name and these drawings gave rise to a line of apparel and accessories targeted at fans of extreme sports and mixed martial arts. Grooms reserved the domain name knuckleinc.com (Knukle website), and subsequently filed a federal intent to use trademark application for the mark Knukle (with the second k turned backward).
According to the allegations in the complaint, after a failed attempt at forming a partnership with the Legges, the plaintiffs learned that the Legges were covertly starting their own company also around a line of apparel targeting fans of extreme sports and mixed martial arts. The Legges allegedly planned to market the apparel with the brand name Knukle Inc (with the second k turned forward) (the Knukle Two mark).
Likewise, shortly after the breakdown of the parties’ relationship, the plaintiffs discovered a new website had been posted at knukleinc.com, but that they were unable to log on to the website as the site owner. Plaintiffs also noticed that the Knukle Inc. Facebook and MySpace pages began receiving postings calling the plaintiffs imposters and that the pages contained information that could only be known by someone with intimate knowledge of the business relationship between the parties.
Since the dissolution of the business relationship, the Legges promoted their products using the Knukle Two mark and the Knukle website. Other than the orientation of the second k in Knukle, the Knukle Two mark is presented on the same-color merchandise, written in the same font, written in the same color, and accompanied by the same designs and symbols as plaintiffs’ mark.
On March 11, 2009, plaintiffs filed a complaint in federal court alleging 15 claims for relief, including counts for unfair competition and false designation of origin of goods under Section 43(a) of Lanham Act and for cybersquatting in violation of Section 43(d) of the Lanham Act. More particularly, plaintiffs alleged that the defendants, with bad intent, committed cyberpiracy by registering, trafficking, and using the Knukle website. Plaintiffs further alleged that the bad intent is evidenced by the conversion of the domain name knukleinc.com and use of the Knukle Two mark.
The court granted a preliminary injunction prohibiting the defendants from using knukleinc.com, the Knukle name, the Knukle marks or substantially similar marks (whether on the World Wide Web, Facebook, MySpace, or traditional media channels). The court found that the plaintiffs were likely to succeed on the merits of their trademark infringement and cybersquatting claims. As to the latter claim, the court observed the following:
Post-Domain Path Names and the ACPA
Are personalized social media subdomains (for example, twitter.com/Pepsi) covered by the ACPA? Surprisingly, the answer (currently, at least) is most likely no, because usernames, which appear in the post-domain path of a URL, are not technically domain names under the ACPA.
Note
The ACPA defines the term domain name as “any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.”28 Likewise, a post-domain path is the text after the .com in a URL.
“Pepsi” is therefore the post-domain path in twitter.com/Pepsi, whereas “twitter.com” is the domain name.
In 2003, the U.S. Court of Appeals for the Sixth Circuit stated in Interactive Products Corp. v. a2z Mobile Office Solutions, Inc.29 that “because post-domain paths do not typically signify source, it is unlikely that the presence of another’s trademark in a post-domain path of a URL would ever violate trademark law.”
In a2z Mobile Office Solutions, Inc., the trademark at issue was LapTraveler and the allegedly infringing address was:
a2zsolutions.com/desks/floor/laptraveler/dkfl-lt.htm
The court held that such use of the trademark was a purely technical non-infringing use, rather than a “trademark use”—that is, a use that identifies the source of a product or service.
Since the Sixth Circuit’s a2z Mobile Office Solutions opinion, other jurisdictions have considered whether post-domain paths of a URL enjoy trademark protection, but never specifically in the context of those for social media networking sites. In Knight-McConnell v. Cummins,30 for example, a New York federal district court found that defendant’s use of the plaintiff’s name in the post-domain path of a URL and placement of those URLs using the plaintiff’s name in the post-domain paths on chat forums and search engines do not give rise to any source confusion.
It is unlikely that the post-domain path of a URL would be deemed a domain name for purposes of the ACPA. Technically, the post-domain path is not a registered domain with a registrar and is merely, as the a2z Mobile Office Solutions court explained, the manner in which website’s data is organized within the host computer’s files.
Of course, the a2z Mobile Office Solutions case applies only in states within the Sixth Circuit (that is, Kentucky, Michigan, Ohio, and Tennessee) and in other jurisdictions where courts have issued similar rulings.
Nevertheless, bringing a successful username-jacking claim under the ACPA as it relates to screen names and post-domain paths on social media networking sites might still prove to be a viable option for the following reasons:
• The increasing association of a company’s brand with social media networking site’s post-domain paths (that is, the increasing tendency to identify a URL’s post-domain path as a signifier of source rather than merely of how the website’s data is organized within the host computer’s files)
• The fact that sites such as Twitter and Facebook (which capitalize on making post-domain paths valuable, meaningful, and “brand”-identifying) were launched after the enactment of the ACPA.
Absent definitive guidance from other courts in others jurisdictions, whether the registration of usernames on social networking sites can ever be deemed to enjoy ACPA protection remains an open (if only slight) question.
Platform-Specific Trademark Enforcement Mechanisms
Recognizing the value of online brand protection for their customers, the major social sites have adopted various trademark policies. Perhaps the simplest and most cost-effective way to protect one’s brand on social networking sites is to directly utilize the site’s dispute resolutions mechanisms, and request removal of infringing materials.
Twitter Policies
Twitter’s current Trademark Policy states the following:
Twitter asserts it may take several actions after reviewing reports of violations of its Trademark Policy, including the following:
• If a clear intent to mislead others through the unauthorized use of a trademark is found, Twitter will suspend the account and notify the account holder.
• If it is determined that an account appears to be confusing users, but is not purposefully passing itself off as the trademarked good or service, Twitter will give the account holder an opportunity to clear up any potential confusion. Twitter may also release a username for the trademark holder’s active use.
Further, Twitter specifically prohibits “username squatting,” warning users that accounts that are “inactive for more than 6 months may also be removed without further notice.”32 Twitter states that it considers the following factors in determining whether username squatting is occurring: (i) the number of accounts created; (ii) whether the accounts were created for the purpose of preventing others from using those account names; (iii) whether the accounts were created for the purpose of selling those accounts (which Twitter proscribes); and (iv) whether feeds of third-party content are being used to update and maintain accounts under the names of those third parties.
LinkedIn Policies
LinkedIn also requires that its users not “[u]pload, post, email, InMail, transmit or otherwise make available or initiate any content that ... [i]nfringes upon patents, trademarks, trade secrets, copyrights or other proprietary rights.”33
In response to alleged trademark (or other IP) violations, LinkedIn may:
• Remove or disable access to specified content appearing on its website upon receipt of a verified notice asserting that the content infringes IP rights, is inaccurate, or is otherwise unlawful.
• Disable and/or terminate the accounts of users who may infringe or repeatedly infringe the IP rights of others, or who otherwise post inaccurate or unlawful content.
Facebook Policies
For its part, Facebook also reserves the right to remove or reclaim a username if it believes appropriate, “such as when a trademark owner complains about a username that does not closely relate to a user’s actual name.”34 Further, Facebook adopted its own intellectual property policy, which includes the following:
The automated IP infringement form is shown in Figure 8.5.
Figure 8.5 Facebook encourages brands to report claims of trademark infringement by using its automated IP infringement form.
The exact extent and manner in which Facebook will enforce these terms has yet to be seen. Regarding trademark infringement, for instance, will a common law mark or pending trademark application be sufficient to trigger removal, or must the challenger own a valid federally registered mark? Likewise, will Facebook protect marks registered overseas, or only those marks registered in the United States? Will all permutations of a registered mark be protected (for example, different spellings or the addition of generic terms), or will Facebook protect exact matches only? These questions have not yet been answered.
In light of these uncertainties, relying solely on the brand-protection tools offered by social networks will most likely not prove sufficient. Companies should take additional proactive steps to protect their brands online, including obtaining branded accounts (with reasonable number of username variants) before a would-be infringer.
In addition, should companies find themselves the victims of trademark infringement in a social media networking site, they should consider pursuing claims for trademark infringement and cyberpiracy under Sections 43(a) and 43(d) of the Lanham Act.
Companies may also be authorized to “seize” domain names that sell counterfeit goods. On September 20, 2011, for example, the luxury brand Chanel brought a complaint36 against 1,000 “John Doe” defendants who operated websites selling Chanel knock-offs. Chanel claimed that the defendants violated Sections 43(a) and 43(d) of the Lanham Act. The U.S. District Court for the District of Nevada first entered an initial temporary restraining order (TRO)37—that is, an emergency order entered against a party without advance notice prohibiting certain conduct—and a preliminary injunction (PI)38—that is, an order entered against a party after that party has had an opportunity to be heard—against 400 domain names. Then, on November 14, 2011, the Nevada court granted Chanel’s second application for a TRO and PI against an additional 228 domain names.39
The court prohibited the defendants from using any Chanel marks or selling any Chanel products and (quite remarkably) directed the top-level domain name registries to change the registrar of record for the domain names to GoDaddy (to ensure that none of the sites can be accessed). The court’s order also required Google, Bing, Yahoo!, Facebook, Google+, and Twitter to “de-index and/or remove [the suspect domain names] from any search results pages.”40
Apart from the technical problems posed by this order—how exactly does one de-index domains from Twitter’s index, for example—it remains to be seen whether Google and Bing will comply with this order (assuming they are properly subject to the order at all). The extent to which de-indexing and removing potentially infringing user-posted links from the Web and social media sites is an effective (let alone feasible) means for companies to combat trademark is also an open question.
Uniform Domain Name Dispute Resolution
Instead of filing suit in federal court under the ACPA, a trademark owner may pursue a claim under the Uniform Domain Name Dispute Resolution Policy (UDRP).41 The UDRP is administered by the Internet Corporation for Assigned Names and Numbers (ICANN), which is a nonprofit organization responsible for assigning unique names and numbers used on the Internet, such as domain names. The UDRP, to which all domain name registrants agree to upon registration, allows a trademark owner to challenge domain name registrations in proceedings that are generally quicker and cheaper for trademark owners than an ACPA lawsuit.
Generally speaking, the UDRP allows trademark owners to request arbitration for a quick resolution of a domain-name suit, foregoing the need for (in traditional litigation) civil discovery. The UDRP will award the domain name to the trademark owner if he or she can prove that: (i) the domain name is identical or confusingly similar to the owner’s mark; (ii) the current owner of the domain name has no right to or legitimate interest in the domain name; and (iii) the current owner of the domain name has registered the domain name, and is using it in bad faith.
Despite these advantages, the UDRP has several important limitations. Most notably, the only remedies available under the UDRP are cancellation of the domain name or transfer of the domain name registration. Further, trademark owners who find success in an administrative proceeding under the UDRP do not automatically shield themselves from later suit in federal court.
For example, in AirFX.com v. AirFX, LLC,42 the U.S. District Court for the District of Arizona allowed AirFX.com’s “reverse domain name hijacking”43 claim under the ACPA44 to proceed, despite the prior ruling before the UDRP against it. In this case, AirFX.com purchased the domain name airfx.com intending to use it in a business venture marketing a wind tunnel for skydivers to practice aerial stunts.
Note
“Cybersquatters who violate the ACPA are said to hijack a domain name from someone who, because of his trademark ownership, would normally be expected to possess the right to use that domain name. Conversely, if a trademark owner ‘overreaches’ when exercising his ACPA rights, he ‘reverse hijacks’ the domain name from the person who registered it.”45
AirFX, LLC (the defendant company—a motorcycle retailer) owned the federally registered trademark AIRFX for shock absorbers and suspension systems for vehicles. Although AirFX, LLC was successful in its UDRP claim (which ordered the transfer of airfx.com to it), the federal court refused to dismiss plaintiff’s reverse hijacking claim on the basis that “any decision made by a panel under the UDRP is no more than an agreed-upon administration that is not given any deference under the ACPA.”46 In other words, a federal court is not bound by, and is free to ignore decisions by the UDRP.
Note
The AirFX case is an important reminder that although UDRP proceedings are cheaper and faster, such cases could lead to reverse domain name hijacking claims under the ACPA, potentially turning a qualified victory into a certain loss.
Companies that find themselves the victim of trademark infringements on social media sites—or that wish to take proactive steps to avoid such infringements before they occur—have a number of weapons to protect their brand. While the leading social networking sites offer some brand protection remedies, they are limited. It is important that you obtain branded accounts (with a reasonable number of username variants) before a would-be infringer beats you to the punch. Companies who are the victims of username jacking should also consider pursuing claims for trademark infringement, unfair competition, false designation of origin, and cybersquatting. Figure 8.6 summarizes practical steps companies should consider to protect their brands.
Figure 8.6 Social Media Legal Tips Regarding Trademark Protection.
Chapter 8 Endnotes
1 La Russa v. Twitter, Inc. and Does 1-25, Case No. CGC-09-488101, Superior Court of California, County of San Francisco (May 6, 2009); case subsequently removed to federal court on June 5, 2009. The case was settled in June 2009.
2 Coventry First, LLC v. Does 1-10, Case No. 2:11-CV-03700-JS (E.D. Penn. Jun. 7, 2011)
3 Twitter, Inc.’s Parody, Commentary, and Fan Accounts Policy, available at https://support.twitter.com/articles/106373-parody-commentary-and-fan-accounts-policy
4 ONEOK, Inc. v. Twitter, Inc., Case No. 4:09-CV-00597-TCK –TLW (N.D. Ok. Sep. 15, 2009)
5 Twitter, Inc.’s About Verified Accounts, available at https://support.twitter.com/groups/31-twitter-basics/topics/111-features/articles/119135-about-verified-accounts
6 Twitter, Inc.’s Parody, Commentary, and Fan Accounts Policy, available at https://support.twitter.com/articles/106373-parody-commentary-and-fan-accounts-policy
7 15 U.S.C. Chapter 22
8 15 USC § 1114(1)(a)
9 Section 43(a) of Lanham Act, codified at 15 U.S.C. §1125(a)
10 Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961), cert. denied, 368 U.S. 820 (1961)
11 Jurisdictions which apply a limiting interpretation of the “use in commerce” to assess trademark infringement include the Second Circuit (covering Kentucky, Michigan, Ohio and Tennessee) and the Eighth Circuit (covering Arkansas, Iowa, Minnesota, Missouri, Nebraska, North Dakota, and South Dakota).
12 See Decision and Order Granting Plaintiff’s Motion for a Preliminary Injunction (McMahon, J.) (Document No. 10) (Mar. 9, 2010), in The New York City Triathlon, LLC v. NYC Triathlon Club, Inc., Case No. 1:10-CV-01464-CM-THK (S.D. N.Y. Feb. 22, 2010).
13 Id.
14 See Decision and Order Granting Plaintiff’s Motion to Enforce The Preliminary Injunction and Denying Defendant’s Motion to Vacate the Preliminary Injunction (McMahon, J.) (Document No. 44-2) (May 4, 2010), in The New York City Triathlon, LLC v. NYC Triathlon Club, Inc., Case No. 1:10-CV-01464-CM-THK (S.D. N.Y. Feb. 22, 2010).
15 Abbey Klaassen, “How Two Coke Fans Brought the Brand to Facebook Fame,” Advertising Age (March 16, 2009), available at http://adage.com/article/digital/coke-fans-brought-brand-facebook-fame/135238/
16 http://hosted.ap.org/dynamic/stories/U/US_KALE_VS_CHIKIN?SITE=NYSAR&SECTION=HOME&TEMPLATE=DEFAULT
17 Black Sheep Television, Ltd. v. The Town of Islip, Case No. 2:10-CV-04926-LDW-ARL (E.D. N.Y. Oct. 26, 2010)
18 Order Granting Preliminary Injunction (Wexler, J.) (Document No. 22) (Dec. 6, 2010), in Black Sheep Television, Ltd. v. The Town of Islip, Case No. 2:10-CV-04926-LDW-ARL (E.D. N.Y. Oct. 26, 2010)
19 In the Matter of Merck KGaA, Index No. 11113215, Supreme Court of State of New York (Nov. 21, 2011). A copy of the proposed Order to Show Cause for Pre-Action Disclosure is available at http://iapps.courts.state.ny.us/iscroll/C_PDF?CatID=711057&CID=113215-2011&FName=0.
20 15 U.S.C. § 1125(d) (Section 43(d) of the Lanham Act)
21 A trademark is famous if the owner can prove that the mark “is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” See 15 U.S.C. § 1125(c)(2)(A).
22 Verizon California Inc. v. Online NIC Inc., 2008 WL 5352022 (N.D. Cal. Dec. 19, 2008)
23 15 U.S.C. § 1125(d)(1)(B)(i)(I)-(IX)
24 Mayflower Transit, LLC v. Prince, 314 F. Supp. 2d 362 (D.N.J 2004)
25 Id. at 369
26 Grooms et al. v. Legge et al., Case No. 3:09-CV-489-IEG-POR (S.D. Cal. Mar, 11, 2009)
27 Order Granting in Part the Preliminary Injunction, (Gonzalez, J.) (Document No. 51) (Apr. 8, 2009), in Grooms et al. v. Legge et al., 09-CV-489-IEG-POR (S.D. Cal. Mar, 11, 2009)
28 15 U.S.C. § 1127
29 Interactive Products Corp. v. a2z Mobile Office Solutions, Inc. et al., 326 F.3d 687 (6th Cir. 2003); Also see Nagler v. Garcia, 370 Fed. Appx. 678, 2010 FED App. 0195N (6th Cir. 2010) (Where plaintiff-physician owned trademark of weight-loss system called Diet Result, the Appeals Court held that defendant did not commit trademark infringement by website that did not mention the Diet Results weight-loss program but had a page at the address www.beautyinaflash.com/dietresults.html.)
30 Knight-McConnell v. Cummins, 2004 U.S. Dist. LEXIS 14746 (S.D. N.Y.)
31 Twitter, Inc.’s Trademark Policy (last revised 2/14/12), available at http://support.twitter.com/articles/18367-trademark-policy
32 See the Twitter Rules, available at https://support.twitter.com/articles/18311-the-twitter-rules#
33 LinkedIn Corporation’s User Agreement (last revised 6/16/11), available at http://www.linkedin.com/static?key=user_agreement&trk=hb_ft_userag
34 Facebook’s Statement of Rights and Responsibilities (last revised 4/26/11), available at http://www.facebook.com/terms.php?ref=pf
35 Facebook’s How to Report Claims of Intellectual Property Infringement page, available at http://www.facebook.com/legal/copyright.php?howto_report
36 Chanel, Inc. v. Does 1-1000 et al., Case No. 2:11-CV-01508-KJD-PAL (D. Nev. Sept. 20, 2011)
37 Order Granting Plaintiff’s Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction, (Dawson, J.) (Document No. 10) (Sept. 26, 2011), in Chanel, Inc. v. Does 1-1000 et al., Case No. 2:11-CV-01508-KJD-PAL (D. Nev. Sept. 20, 2011)
38 Order Granting Plaintiff’s Application for Entry of Preliminary Injunction, (Dawson, J.) (Document No. 22) (Oct. 11, 2011), in Chanel, Inc. v. Does 1-1000 et al., Case No. 2:11-CV-01508-KJD-PAL (D. Nev. Sept. 20, 2011)
39 Order Granting Plaintiff’s Second Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction, (Dawson, J.) (Document No. 37) (Nov. 14, 2011), in Chanel, Inc. v. Does 1-1000 et al., Case No. 2:11-CV-01508-KJD-PAL (D. Nev. Sept. 20, 2011)
40 Id.
41 A copy of ICANN’s Uniform Domain-Name Dispute Resolution Policy is available at http://www.icann.org/en/dndr/udrp/policy.htm.
42 See Order Denying Defendant’s Motion to Dismiss (Martone, J.) (Document No. 19) (Oct. 20, 2011), in AirFX.com v. AirFX, LLC, Case No. 2:11-CV-01064-PHX-FJM (D. Ariz. May 27, 2011).
43 Id.
44 Subsection 1114(2)(D)(v) of the ACPA provides:
“A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.”
45 Order Denying Defendant’s Motion to Dismiss (Martone, J.) (Document No. 19) (Oct. 20, 2011), in AirFX.com v. AirFX, LLC, Case No. 2:11-CV-01064-PHX-FJM (D. Ariz. May 27, 2011)
46 Order Denying Defendant’s Motion to Dismiss (Martone, J.) (Document No. 19) (Oct. 20, 2011), in AirFX.com v. AirFX, LLC, supra, citing Barcelona.com v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617 (4th Cir. 2003)