Using Social Media Sites To Your Advantage

Dealing with Social Media

The emergence of a multitude of social media sites such as Facebook and Twitter materially affects brand owners.  These sites and others like them allow brand owners to potentially interact directly with their customers or potential customers.  As a result, their use is rapidly increasing.

At the same time, there are potential concerns with social media.  The concerns include but are not limited to unauthorized use and adoption of user names that incorporate brand names, the impact of unauthorized or negative publicity, potential liability relating to content posted by customers, privacy issues and numerous other issues.

Brand owners need to have monitoring procedures in place so they can respond promptly in an appropriate fashion to this type of problem.

One way of responding is to consider the intellectual property policies of the social media site in questions.  Frequently these policies will address both copyright and trade mark matters.[1]

Copyright Claims

The copyright policy will likely comply with the provisions of the Digital Millennium Copyright Act (DMCA).  However, the DMCA only applies in the US and not in Canada. The DMCA creates a safe harbor for social media site operators against copyright infringement liability, so long as they meet specific requirements.  The requirements include promptly blocking access or removing infringing material when they receive notification of an infringement claim from a copyright holder or the copyright holder’s agent. There is also a counter notification provision that offers social media site operators a safe harbor from liability to a user when the user claims that the material in question is not infringing.

The DMCA can be very helpful but it does not apply to trademarks unless a design version of the trademark, which is protected by copyright, is the subject matter of the complaint.

Trademark Claims

The trademark claims policies are designed to avoid potential liability and involvement of the social media site in third party claims.  Such policies may also give effect to the social media website operator’s own policies with respect to intellectual property.  Because there are no direct costs and the remedy is effective, they can be a trademark lawyer’s best friend.

Facebook, Twitter, Pinterest and Instagram are the most popular social media sites and it makes sense to look at the trademark claims policies for these sites. Other sites may have similar policies although some sites do not have policies but even if they do not have a policy they may consider such claims.

Facebook®

The Facebook terms of service govern its relationship with users and others who interact with Facebook. The conditions for users include a Statement of Rights and Responsibilities. By using or accessing Facebook, a user agrees to the Statement, as updated from time to time. The Statement includes the following

Protecting Other People’s Rights

We respect other people’s rights, and expect you to do the same.

1. You will not post content or take any action on Facebook that infringes or violates someone else’s rights or otherwise violates the law.
2. We can remove any content or information you post on Facebook if we believe that it violates this Statement or our policies.
3. We provide you with tools to help you protect your intellectual property rights. To learn more, visit our How to Report Claims of Intellectual Property Infringement page.
4. If we remove your content for infringing someone else’s copyright, and you believe we removed it by mistake, we will provide you with an opportunity to appeal.
5. If you repeatedly infringe other people’s intellectual property rights, we will disable your account when appropriate.[2]

Facebook outlines its procedures for reporting claims of trademark infringement on its site at Reporting Trademark Infringements.[3] The specific information required is as follows:

When submitting a claim of trademark infringement, you should include the following:

• Your complete contact information (full name, mailing address, and phone number). Note that we may provide your contact information and/or the contents of your report to the user that posted the content you’re reporting.
• The specific trademark in which you claim rights
• Your trademarked word, symbol, etc. (ex: Facebook)
• The country or countries in which you claim trademark rights
• Your trademark registration number (if available)
• The category of products and/or services for which you assert rights
• Information reasonably sufficient to permit us to locate the material on Facebook that you believe violates your trademark rights. The easiest way to do this is by providing web addresses (URLs) leading directly to the allegedly infringing content.
• A description of how you believe this content infringes your trademark
• A declaration that

1. you have a good faith belief that use of the trademark as described above, in the manner you have complained of, is not authorized by the trademark owner, its agent, or the law
   1. the information in your notice is accurate
   2. you declare under penalty of perjury, that you are the owner or authorized to act on behalf of the owner of a trademark that is allegedly infringed

• Your electronic signature or physical signature

Please note, the easiest (and fastest) method to submit a claim is by using our online form.

Twitter®

The Twitter terms of service govern a user’s access to and use of the Twitter services, and any information, text, graphics, photos or other materials uploaded, downloaded or appearing on the services.. By accessing or using the services a user agrees to be bound by the terms.[4]

The terms incorporate Twitter rules which contain the following

Trademark: We reserve the right to reclaim usernames on behalf of businesses or individuals that hold legal claim or trademark on those usernames. Accounts using business names and/or logos to mislead others may be permanently suspended.

Username Squatting: You may not engage in username squatting. Accounts that are inactive for more than six months may also be removed without further notice. Some of the factors that we take into account when determining what conduct is considered to be username squatting are:

the number of accounts created

creating accounts for the purpose of preventing others from using those account names

creating accounts for the purpose of selling those accounts

using feeds of third-party content to update and maintain accounts under the names of those third parties [5]

Twitter has a specific trademark policy which is posted on its site.[6]  Unlike the Facebook policy it appears to only be available to trademark owners who own federal or international trademark registrations.

In order to investigate trademark policy violations, Twitter requires that a trademark owner provide all of the following information:

Username of the reported account (e.g., @safety or http://www.twitter.com/safety):
Your company name:
Your company Twitter account (if there is one):
Company website:
Your trademarked word, symbol, etc. (e.g. Twitter):
Trademark registration number:
Trademark registration office (e.g., USPTO):

Note: A federal or international trademark registration number is required. If the name you are reporting is not a registered mark (e.g., a government agency or non-profit organization), please let us know:

Your first and last name:
Title:
Address:
Phone:
Fax:
Email (must be from company domain):

Description of confusion (e.g., passing off as your company, including specific descriptions of content or behavior):

Requested Action (e.g., removal of violating account or transfer of trademarked username to an existing company account):[7]

There is a separate username squatting policy[8] and parody, commentary and fan account policy.[9]

Pinterest®

The Pinterest terms of service provide that by accessing or using Pinterest products, a user agrees to be bound by the terms. Pinterest allows a user to post content, including photos, comments, and other materials. Anything that is posted or otherwise make available is referred to as “User Content.”  The Pinterest Business terms of use provide that a user agrees that any User Content that is posted to Pinterest does not and will not violate any law or infringe the rights of any third party.[10]  Pinterest reserves the right to remove or modify User Content for any reason, including User Content that it believes violates the terms or its policies.[11]

The Pinterest Acceptable Use Policy. provides a user agrees not to post User Content that, among other things, infringes any third party’s Intellectual Property Rights, privacy rights, publicity rights, or other personal or proprietary rights.[12]

The Pinterest Trademark policy states that accounts with usernames, Pin Board names, or any other content that misleads others or violates another’s trademark may be updated, transferred or permanently suspended. The policy allows for the submission of online complaints by completing a form. Pinterest reviews the submission and takes whatever action, in its sole discretion, it deems appropriate, including temporary or permanent removal of the trademark from the Pinterest site.[13] The policy appears to require that the complaint own a registered trademark.

Instagram®

The Instagram terms of use provide that by accessing or using the Instagram website, the Instagram service, or any applications (including mobile applications) made available by Instagram however accessed, a user agrees to be bound by the terms of use.[14]

The terms of use provide that a user may not post infringing, photos or other content via the Service. Instagram may, but has no obligation to, remove, edit, block, and/or monitor Content or accounts containing Content that it determines in its sole discretion violates the terms of use. [15]

The terms of use also contain the following provision

Reporting Copyright and Other IP Violations

1. We respect other people’s rights, and expect you to do the same.

2. We provide you with tools to help you protect your intellectual property rights. To learn more about how to report claims of intellectual property infringement, visit: http://help.instagram.com/customer/portal/articles/270501

3. If you repeatedly infringe other people’s intellectual property rights, we will disable your account when appropriate

An online form is available to report trademark infringement. The form appears to allow submitting a claim that is not based on a trademark registration.[16]

Preparing Complaints

Complainants should be well thought-out and prepared by a knowledgeable lawyer.  A “flaming” demand can lead to problems. Keep it short and simple.

Larger social media website operators will likely have an internal escalation process to ensure that a complaint reaches their in house counsel when they need to know. Complainants and their lawyers should be aware of this.

If there is a legitimate dispute between the trademark owner and the infringer it is not reasonable to expect that it should be adjudicated under a trademark claims policy.  Social media website operators and their counsel will be reluctant to become involved or to take sides in this sort of dispute.

Conclusion

In clear cases of trademark infringement social media site operators will frequently remove infringing content pursuant to their trademark claims policies.  Since the policies can be accessed quickly and are cost effective a trademark owner should consider them in virtually all cases in which they are available.

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

Email: mckeown@gsnh.com

These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer. © JOHN MCKEOWN