Brand Protection Today Article 7: Anti-Social Behavior
Brand Protection Today – A Series from InfoLawGroup
At InfoLawGroup, we recognize that communication technology is changing at a furious pace and the need to protect brands is greater and more complicated than ever. We deal with these issues in our daily practice and are sharing insights in this multi-part series on Brand Protection. Please subscribe HERE to receive InfoLawGroup Insights.
Brand Protection Today
Article 7: Anti-Social Behavior
by W. Scott Blackmer & Sara Skinner Chubb
In our series of articles on contemporary brand protection, we have posted explainers on choosing your mark, using the right tools to monitor and protect your mark, running a brand protection program, assessing potential challenges in the market, taking action when you discover infringement, and making the most of the UDRP.
Trademark misappropriation on social media and apps presents some of the same risks as with domain names: diversion of traffic, brand dilution, potential misuse for phishing and fraud schemes, and the loss of trademark rights if you fail to take appropriate enforcement steps. The temptations to take advantage of your brand through these channels are powerful, as the global online marketplace is now predominantly social and mobile. The “bad guys,” as with domain names, may be located anywhere in the world and hide their tracks well. And monitoring and enforcement are even more difficult for social media and apps than for domain names. There is no single registry, no uniform set of ICANN “WhoIs” rules. There is no equivalent of the UDRP. You are dealing with multiple social media platforms and app stores, each with its own policies and contractual terms of use. Apart from those contracts, the legal standards and remedies you can call upon may depend very much on where those platforms or app stores are physically hosted and where the defendants reside. In some cases, notifying the platform suffices; in others, litigation is necessary.
Examples
Impersonation. An early case involved Tony La Russa, manager of the St. Louis Cardinals, who really didn’t like the vulgar content of a fake Twitter page attributed to him in 2009 that included his photo. (They never figured out who posted it.) Even though Twitter promptly took it down at his request, he sued Twitter for trademark infringement and misappropriation of likeness and then dismissed the lawsuit a month later after reaching a settlement on undisclosed terms. But we don’t all have the clout of Tony La Russa.
Dilution and Negative Press. “No more social distancing. No more masks. It is time to party!” That was the message posted by the unknown account holder with the Instagram handle <asu_covid.parties>. Arizona State University, which holds the trademark ASU, thought it was a poor message to propagate as students were returning to campus in August 2020. The page included the ASU logo and school colors and referred to the COVID-19 pandemic as “a big fat hoax.” According to ASU, there were indications that the content originated with a Russian disinformation campaign. Instagram took the page down after several weeks – and after ASU filed a lawsuit for trademark infringement and dilution.
International Complications. Recourse to the courts is more feasible, of course, where all the parties are in the same country. We are aware of instances where scammers set up Mexican versions of social media pages using the names of well-known US companies and employed them for competitive advertising or, worse, fraud or phishing schemes across borders. It is not always a quick process for the authentic company to get the page taken down, trying to present sufficient proof to the platform that the person who set up the site is not authorized. In some instances, that person claims to be a local reseller or repair facility with a legal right to use the mark even without a license, and the social media operator may tell the trademark owner that it should make its complaint to a court instead.
Scams. Often, scams involve linking social media pages or apps to website domain names that misappropriate trademarks; one lends credibility to the other. For example, CNH Industrial America (which owns the CASE IH trademark for tractors and other agricultural equipment) used a UDRP proceeding to obtain an order transferring the domain name <agencia-caseih.com>. It had been used for a website linked to a Facebook profile falsely purporting to describe a Case IH dealer in Mexico. In fact, the site advertised a competitor’s goods and services. UDRP was available for the domain name but not, of course, for the Facebook page. But with a UDRP decision in hand, it is much easier to go back to the social media operator with a takedown request.
It Happens With Apps, Too. Infringement is possible with apps as well, and such allegations are also found in recent litigation. In December 2020, PNC Bank sued Plaid, a fintech app developer, for creating APIs (interface software) designed for PNC customers, on the ground that they misuse the PNC logos and confuse customers as to whether they are on a PNC or third-party platform when they are accessing data about their accounts on their smartphones. This is an example of how trademarks can be involved when apps link and use data from other apps and sites, an issue that must increasingly be taken into account in licensing.
Platform Policies
Recent announcements on Facebook’s website illustrate this dangerous trend of cross-channel impersonation. One concerns a lawsuit that Facebook filed in 2020 in Arizona: “We regularly scan for domain names and apps that infringe our trademarks to protect people from abuse. We found that Namecheap’s proxy service, Whoisguard, registered or used 45 domain names that impersonated Facebook and our services, such as instagrambusinesshelp.com, facebo0k-login.com and whatsappdownload.site.” Another 2020 lawsuit in Virginia is aimed at a proxy service “impersonating the Facebook family of apps such as facebook-verify-inc.com, instagramhjack.com, and videocall-whatsapp.com.”
All of the major social media platforms (including Facebook, YouTube, Twitter, LinkedIn, and Instagram) have online trademark infringement notification forms. They may allow you to detail your claim to trademark use if you do not have a registered trademark, but don’t expect much help from the social media operator (or an unchallenged response from the offender) if you are relying on an unregistered, common-law trademark claim – another good reason to get your mark registered! The platform’s policy gives a good idea of what to expect from the social media operator. Here is YouTube’s, for example:
“YouTube is not in a position to mediate trademark disputes between creators and trademark owners. YouTube is willing to perform a limited investigation of reasonable complaints and will remove content in clear cases of infringement. Abuse of our legal process may result in termination of your YouTube channel.”
Similarly, Facebook advises as follows:
“Facebook can’t adjudicate disputes between third parties, and so we wouldn’t be in a position to act on trademark reports that require an in-depth trademark analysis or a real-world dispute outside of Facebook.”
Content removal on social media platforms is a process, and it’s a much easier process if you have a registered mark and solid proof of trademark infringement – on the page, in the profile, and in the hashtag or handle.
What You Can Do
As you can see, social media and mobile apps pose creative and varying threats for brand protection. To help avoid becoming a cautionary tale like the stories described above, here are some tips for protecting your brand in this evolving space:
Protect your brand from the inside. On occasion, damage to a company’s brand can occur from within the company, whether intentional or accidental. Maintain a social media policy for those who manage your company’s social media accounts that sets forth requirements and standards around who is permitted to post, what sorts of posts are appropriate, and any required approval procedures. Consider having your social media policy reference or incorporate your brand’s style guide and best practices for use of your trademarks, logos and other important components of your brand’s identity.
Secure account credentials. Another step to protect your brand from the inside is to ensure social media account credentials are properly secured, including limits on who has access to the credentials, where passwords are stored and what devices can be used to access those accounts. Account hijacking and the offensive content that often follows can lead to lost followers and brand damage.
Monitor hashtags. Routinely monitor hashtags that incorporate your brand name or slogans, especially those that may intentionally differ slightly from those that you use in an attempt to confuse consumers and trade on your goodwill (e.g. #Acme_Sneakers instead of #AcmeSneakers). There are many vendors that offer options for hashtag monitoring that you can incorporate into your brand protection program. Likewise, monitor for accounts that may use variations of your brand name or slogans.
Mark your pages official. Numerous platforms offer the option to mark your page as “verified,” typically with a blue checkmark. This will help your consumers understand whether they are actually interacting with you or an unaffiliated third party.
Use the mobile app store resources. Social platforms and online marketplaces aren’t the only platforms that offer tools for brand protection. Both Apple and Google offer mechanisms for companies to report infringing app content within each platform’s app marketplace.
Don’t forget about other sites and platforms. Keep an eye on any platforms where you do not have an official presence. Not every platform makes sense for a company to maintain an account, but you should monitor those where you may not have an official presence to ensure bad actors aren’t impersonating you or engaging in fraudulent behavior that involves your brand or your goods and services.
Register your trademarks. We’ve discussed a number of reasons why trademark registrations are a vital tool for brand protection. When your mark is being infringed in the social and mobile spaces, having a trademark registration in hand can make enforcement easier.
Monitoring and enforcement against trademark abuse in social media and apps may feel like playing Whack-a-Mole, but it is necessary. Successful trademarks will continue to attract imitation for competitive advantage and more insidious purposes. To protect the brand, we need to bring law to this frontier. (Cue Western theme and fade to commercial.)
Join us next week to wrap-up our Brand Protection series as we journey deeper into emerging technologies to discuss how blockchain can play a role in brand protection.
Originally published by InfoLawGroup LLP. If you would like to receive regular emails from us, in which we share updates and our take on current legal news, please subscribe to InfoLawGroup’s Insights HERE.