Businesses are beginning to fully realize the immense marketing power of Facebook and other social media platforms. Users of these sites often log on daily to share personal information, pictures and videos, and informal product reviews and endorsements, presenting businesses with tremendous opportunities to engage and communicate directly with their customers. However, brand managers need to understand the dangers presented by this kind of communication and user-generated content. Users can infringe on the intellectual property rights of organizations, potentially reaching millions of users and diluting brands with the click of a button. Monitoring and protecting trademark rights on social media sites such as Facebook is a critical element in every brand management strategy.
Trademark infringement on Facebook can arise in several ways. First, Facebook allows users to select “vanity URLs,” which are words appended to the end of the www.facebook.com URL (for instance: www.facebook.com/your.company.name). A company seeking to develop their own Facebook presence for the first time may find that another unauthorized user is squatting on the company’s vanity URL using the company’s trademark. Also, unauthorized users might use a company’s trademarked logo or slogan in violation of the company’s intellectual property rights. Finally, a company may find that a Facebook App is misappropriating the company’s trademark by creating a Facebook application that purports to be sponsored or developed by the company itself.
So what does a company do when they discover its mark is being infringed? Unlike copyright, which provides for a specific procedure to address infringement of copyrighted material on the Internet (see our other post on the Digital Millennium Copyright Act (“DMCA”)), trademark law has no such scheme to address online infringement. However, Facebook has set up an internal procedure that essentially mimics the take down notices required by the DMCA. Using Facebook’s Notice of Intellectual Property Infringement (non-Copyright Claim) form, brand owners can notify Facebook of most alleged infringing activity occurring on the site. Facebook then will review the request and will remove or disable access to the content should they find that there is evidence of infringement. However, in the case of infringement in an App, Facebook takes no responsibility since Apps are hosted on the developer’s sites and not within the Facebook servers. In these situations, the trademark owner must contact the developer directly to engage in traditional trademark dispute procedures.
In any case, it is advisable for companies to understand how their trademark rights are being infringed before making use of either method to address an alleged infringement. Further, even if a business uses Facebook’s built-in claim form to report trademark infringement, it still may make sense to contact the infringer directly in some cases in order to prevent future infringing conduct.