Today, many brands’ digital footprints have expanded beyond domains to include social media and mobile apps. But these channels, run as they are by many different vendors, lack central regulation. How can brand owners enforce their rights when faced with a serious infringement of their trademark in these channels?
In the first of a three-part blog series on digital rights enforcement, Stina Pilotti, CSC’s Head of Digital IP Advisory Services, looks at the challenges of social media platforms and mobile app stores.
Everyone wants to see and be seen. Social platforms like Facebook and Twitter and popular app stores such as Google Play give brands as well as people a way to raise their profiles. But unlike domain names, where years of published case law has provided fairly clear guidelines on what is acceptable and what is not, the social and mobile worlds all have their own regulations and policies and no published precedents or case law to provide guidance for brand owners facing infringements. What can you do when someone infringes on your brand in these channels?
The starting point in the U.S. is the Digital Millennium Copyright Act (DMCA), and in Europe, Article 14 of the Electronic Commerce Directive. Both pieces of legislation oblige service providers to act when someone brings to their attention a copyright infringement that has taken place on their platforms. Accordingly, most service providers in both the U.S. and Europe have procedures for DMCA takedown notices.
For other types of infringement—for example, when somebody impersonates you or uses trademark-protected content—each platform’s own policies determine what happens. It is not always clear who at the provider makes decisions about removal and suspension, and on what basis the decisions are made. The policies themselves are opaque: there is no clarity or consistency around when or why providers will take action. And because no decisions are ever published, there is no case law to follow.
The key in the first instance, then, is to be familiar with each provider’s terms and conditions. As the following summaries show, each one has nuances that brand holders should be aware of.
Twitter’s usernames or ‘handles’ are a big deal for both users and brand owners. You can request to have a username suspended based on complaints such as trademark infringement or impersonation. And as part of the suspension request it is sometimes possible to request the transfer of the username.
However, there is no general procedure for having usernames transferred—this must be part of a suspension request. Twitter can also take action against serial infringers, terminating the accounts of those it deems to be “repeat infringers.” However, there is nothing to prevent the person behind the offending account from setting up a new account with new contact details.
Facebook has a complaints process for infringing usernames but the company only “reserves the right to remove or reclaim a username if we believe it is appropriate.” While the company mentions responding to complaints about usernames that do not closely resemble a user’s actual name, there is no further guidance about Facebook’s policy.
Although its guidelines state that usernames are not transferable, Facebook’s “statement of rights and responsibilities” notes that as a user you promise that, “You will not transfer your account (including any Page or application you administer) to anyone without first getting our written permission.” This indicates that a transfer is possible under certain circumstances.
Pinterest will update, transfer or suspend usernames, Pin Board names, or any other content that has been reported as misleading or in violation of a trademark. However, like Facebook, its rules lack clarity, referring to action that it “deems appropriate.”
Apple’s App Store does not resolve infringements itself but instead uses a complaints policy in which the App Store Legal Team puts brand owners in direct contact with the provider of the disputed app.
Google recommends that brand holders contact the creator of infringing content directly or, for fraud or impersonation, get in touch with law enforcement. However, it bears mentioning that complaints made via Google’s media channels may be published on chillingeffects.org, a clearinghouse that displays cease and desist notices.
The good news for most of the online platforms is that action can be fast: complaints are often turned around in less than 48 hours.
Overall, the fragmented nature of social and mobile app spaces makes enforcement complex for brand owners. As with domain names, there is a strong argument to be made for defensive registration of usernames and handles in order to pre-empt the difficulties of enforcement.
And as always, it’s worth talking to an expert partner who knows the platforms in detail and can get to the right solutions quickly.
For more information on CSC’s enforcement services or to request a complimentary consultation with an online enforcement specialist, please visit cscglobal.com.
Further reading: This recent article in World Trademark Review explores one of the most urgent issues facing brands today: how do you protect your brand when its “digital footprint” is growing all the time?