Tim Lince

This week YouTube is celebrating its 10th anniversary, meaning that trademark counsel have now spent a decade policing brand and content use on the platform. The in-house counsel who heads up YouTube’s trademark and anti-counterfeiting policies admits that finding the correct balance between alleviating brand owner concerns and protecting the free speech of its users is a challenge, although she notes that the two concepts are not mutually exclusive.

It is difficult to remember a time when YouTube did not exist on the Internet. While the first video was uploaded a decade ago, the website was purchased by Google 18 months later and soon established itself as the leading platform for online video content, with 300 hours of video now uploaded every minute. For trademark counsel this has presented challenges and, in the latest WTR Global Trademark Benchmarking Survey, YouTube was ranked above Facebook and Twitter as the social network deemed ‘most challenging’ by in-house counsel.

Reflecting on this, Emily Burns, senior trademark counsel at Google, tells World Trademark Review that she acknowledges the challenge facing brand owners, saying: “When you combine a platform used for both commercial and free speech purposes, with brand protection concerns, and this all against the backdrop of supporting a free and open Internet, there are going to be challenges in balancing each of these desires. We very much believe in both free expression and robust protections for IP, and don’t believe either needs to be sacrificed in the name of the other. It is about balancing the concerns of content creators (both big and not-so-big), brand owners and our YouTube user community. Ultimately, a free and open Internet is good for all of them.”

To address the balance, YouTube has implemented and refined its tools for tackling IP infringement (especially since Google’s acquisition in 2006). You can still view the earliest version of YouTube’s copyright infringement page from April 2006, which only allowed complaints to be sent by written communication. Notable developments since then include the introduction of a ‘Content ID’ system to automatically flag audio copyright infringement and a more reactive approach to the reporting of trademark infringement (including the ability to submit IP complaints online!). “YouTube has made so many amazing developments in the last 10 years,” Burns says. “We are really at the forefront of offering online solutions to brand owners who were concerned about trademark infringement and counterfeit activity on our platform.”

Going into specifics, she expands: “Trademark complaints are manually reviewed in the order we receive them, and we work hard to process complaints as soon as possible. We prioritise counterfeit complaints for review, and we’re proud to have an average processing time of 24 hours for those complaints - videos that violate our counterfeit policy are removed and YouTube accounts that are dedicated to the sale of counterfeit goods are closed in their entirety. For trademark complaints, the processing time can vary depending on the trademark and the nature of the complaint. However, we strongly encourage brand owners to reach out to the uploader or content creator directly. We often find that when the rights holder does this, it results in a solution that is better for the trademark owner, the content creator and the YouTube community.”

Looking forward, the creation of a ‘.youtube’ gTLD could fundamentally change the YouTube proposition. Whilst Burns says Google “doesn’t have any details” on plans for that specific gTLD string, the application states that its sole purpose is to host select YouTube channels’ digital content, rather than open the string to all users. The string is just one of the 101 that Google originally applied for. There are currently 43 non-contested strings associated with the company, including ‘.ads’, ‘.app’, ‘.channel’ ‘.free’, ‘.here’, ‘.home’, ‘.new’ and ‘.page’, adding to the mountain of new gTLDs that brand owners need to police. Burns, however, has some words of comfort for brand owners currently experiencing “domain fatigue” from the ongoing gTLD rollout, expanding on the specific trademark protection mechanisms Google is implementing: “Google's new gTLD registries will comply will all ICANN rights protection mechanisms, including a 60-day sunrise period for trademark owners prior to general registration. Additionally, Google is voluntarily offering a permanent trademark ‘Claims Service’ which provides notice to potential registrants when a domain matches a mark in the Trademark Clearinghouse (TMCH), and acts as a free monitoring mechanism for such rights holders should the registrant proceed with the registration. Our service will incorporate the ‘enhanced’ claims mechanism, permitting brand owners to monitor up to 50 previously abused trademark variants per TMCH entry. Google also intends to set domain prices in a way that is conscientious of our fellow brand owners' budgets, and doesn't charge premiums for sunrise or defensive registrations.”

The fact that Google is taking brand protection seriously during the gTLD rollout is certainly positive, and will lessen the burden currently being experienced by brand owners. However, Burns is keen that lines of dialogue remain open, concluding: “Our outreach efforts to the brand owner community are always ongoing. We seek out and receive feedback on how our complaint processes are working, what types of infringements are concerning to brand owners, and make changes to our policies and processes as needed.”

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