7 Feb
2017

Social media takedown: surveying the available tools

Even with official pages in place and an internal social media policy to ensure the positive management of complaints or negative press, social media inevitably also poses IP challenges. As it is free and fast to set up a social media account, potential infringers or squatters can quickly cause damage to rights holders.

For all companies with IP rights, social media sites provide valuable opportunities to promote their brands, images and rights to a global audience. Today, it is essential for rights holders to have an official page on all recognised social media platforms, including Facebook, Twitter, LinkedIn and Instagram. Many larger brands also operate an official YouTube channel with authorised content derived from the company.

Even with official pages in place and an internal social media policy to ensure the positive management of complaints or negative press, social media inevitably also poses IP challenges. As it is free and fast to set up a social media account, potential infringers or squatters can quickly cause damage to rights holders.

In addition to issues of consumer criticism of a brand, social media sites can give rise to other potential problems, such as:

  • fake account or user names and name squatting;
  • misappropriation of a company’s trademark or copyright; and
  • the sale of infringing or counterfeit goods.

As a result of these increasingly common practices, it is vital for rights holders to have sufficient, robust rights in place to address issues promptly and to manage them effectively. Luckily, most popular social media sites have policies in place to deal with parasitic practices in order to protect IP rights. These policies are provided under the terms of the social media sites, to which users must adhere. If a social media site user breaches the terms, the site can take steps to remove the infringing content or, for serious or repeat offenders, can disable or terminate the user’s account.

Although social media sites do use internal measures to detect some types of infringement (eg, copyright or counterfeit products), these general safeguards inevitably fall short of protecting rights holders from the specific issues faced by their business. Therefore, it is recommended that the rights holder or its representative should monitor sites carefully and take appropriate steps to have content taken down.

Takedown solutions

The policies for aggrieved rights holders are often referred to as ‘takedown’ solutions. All of the social media sites discussed here recommend that rights holders first contact the relevant account holder to request removal of the content before submitting a takedown request. Given the numerous examples of negative press arising out of heavy-handed cease and desist letters in these situations, it is important that any contact is dealt with sensitively and in accordance with the rights holder’s existing social media policy, if any.

If this approach does not yield the desired results, takedown procedures provide a vehicle for addressing the breach. This chapter concentrates on the trademark takedown policies and tools available on social media platforms Facebook, Instagram, Twitter and LinkedIn, as well as looking at copyright takedowns and Weibo in China.

Facebook and Instagram

Facebook and Instagram have virtually identical policies for reporting violations or infringements of trademarks, copyright or “other legal rights”. In all cases, this involves completing an online takedown form which must include the details of the complainant, the IP right relied on, the ownership and links to the offending use and why it creates confusion or infringes. The form can be completed by the rights holder or its authorised agent. While a rights holder can choose to contact Facebook or Instagram’s designated agent with the claim details, the sites encourage use of the online form as the most efficient method of complaint. It is not necessary for a rights holder to have a Facebook or Instagram account in order to file a takedown form.

For trademark complaints regarding fake account names or straight infringement, the online form also requires details of the mark(s) involved, the country of registration and the goods or services. It is also recommended to provide a copy of the registration certificate or link to the official trademark database of the relevant country. The sites can immediately remove content subject, but will usually notify the account holder of the complainant’s details so that it can deal directly with it. If the user is not using the trademark in regard to the goods or services for which it is registered, the social media site is likely to conclude that no policy breach has occurred. If the complaint is based on a US trademark right, a user may contact the site if it believes that the content was removed incorrectly.

These sites also have specific forms for complaining about counterfeit goods being sold via a user account which infringe a registered mark. Details of the IP right relied on and the offending content must be reported with a declaration under penalty of perjury for falsely claiming that something is counterfeit. Therefore, care must be taken to ensure that the items concerned are in fact counterfeit. Of course, should the policy submission fail, the rights holder can pursue litigation if the infringing content remains. However, this should be a last resort.

The other legal rights that may be relied on could include registered or unregistered design rights where an infringing product is being offered. Alternatively, unregistered trademark rights could be utilised if a user is misrepresenting itself as being connected to or approved by a brand, thus causing or likely to cause damage to the brand reputation.

Where a more ambiguous unregistered right is relied on, more detail will be needed and it may be harder to effect a takedown. This highlights the importance of securing registered IP rights where possible.

The sites also set out provisions for submitting a takedown request based on copyright – for example, for the use of copyrighted images or videos. This must be made under Section 512(3) of the Digital Millennium Copyright Act and should contain full details of the date of creation and ownership of the copyright work claimed to be breached.

The owner of the disputed account can file a counter-notice if it believes the copyright claim to have been made in error or that the material has been misidentified. Following receipt of a counter-notice, if the rights holder does not notify Facebook or Instagram within 10 to 14 business days that it has filed a court action seeking to restrain the infringing activity, the social media site will restore the contested content.

Twitter

Similarly, Twitter has policies to address the abuse of trademark rights, copyright and the sale of counterfeit goods through submission of the relevant online takedown forms. Full details of the complainant, the rights relied on and links to the offending tweet, which can include a promoted ad tweet, must be provided.

Again, the rights holder need not have a Twitter account to file a takedown form, and use of the form is recommended above contact with Twitter’s agent. Twitter states that any trademark action may be limited to a particular jurisdiction if the rights relied on are, for example, valid only in one country, or may be limited or rejected if different goods or services are at issue from those covered in the trademark registration. In some cases, Twitter may give the user an opportunity to comply with its policies before suspending an account.

Twitter includes a specific policy and form for misuse of a registered trademark in ads that mislead or confuse users. Pending marks are not sufficient under this heading, but they can be logged under the brand impersonation takedown form. This again stresses the importance of ensuring that a rights holder has sufficient registered protection in place.

Username squatting can be an issue on Twitter. If a username contains a registered trademark, the rights holder can attempt to recover it through the trademark takedown policy, although accounts that are inactive for more than six months can be suspended. While Twitter allows users to have parody and fan pages which may relate to a brand, for example, they must comply with rules to indicate that the page is a fan or parody site. If they do not, a takedown, following the recommended initial approach to the user, can be pursued.

In all cases, offenders may have their account suspended and may be removed from the Twitter ad platform, particularly if they are found to have violated the counterfeit goods policy.

On Twitter, if relying on the copyright takedown policy, Section 512(3) of the Digital Millennium Copyright Act applies. Interestingly, offending content will be shown in the user’s feed as having been withheld or removed as a result of a report by a copyright owner. Therefore, this can be a useful deterrent to third parties thinking of using a company’s IP right, demonstrating that the holder monitors and enforces its rights.

Copyright complaints on Twitter are publicly available through a database on Lumen, albeit with personal information removed. While this can show third parties how well and how regularly a rights holder polices its rights, care must be taken with regard to the content of complaints.

LinkedIn

LinkedIn is an important social media site through which businesses can promote their goods and services to other businesses, potential suppliers, end consumers and even prospective employees as a recruitment tool. Rights holders should therefore ensure that they monitor and enforce their rights accordingly in the event of any misuse on LinkedIn. In this regard, there are still policies for removal of material that breaches a party’s trademark or copyright, as well as complaining about false profile claims.

The requirements concerning copyright and trademark takedowns on LinkedIn are effectively the same as those under Facebook and Instagram with regard to the details to be submitted. However, one point of difference is that specific counter-notices can be filed by the aggrieved account holder in both trademark and copyright takedowns, offering them a chance to defend their position.

Again, on receiving a counter-notice, a rights holder has 10 business days to commence formal action; otherwise, the material can be re-posted. Therefore, rights holders may sometimes need to escalate action beyond the takedown procedures, resorting to litigation only if truly necessary and notifying the social media sites that this has been done. The offending page or account is then usually suspended pending the outcome of further action.

Weibo

Chinese social media site Weibo involves its own considerations as to social media takedowns. According to Article 36 of the Tort Law, the key statute for rights holders to request social media takedowns: “A network user or network service provider who infringes upon the civil right or interest of another person through a network shall assume the tort liability.” The rights holder can notify Weibo to delete, block or disconnect a user’s infringing content. Should the provider fail to take steps in a timely manner, it shall be jointly and severally liable alongside the account holder.

As Weibo faces fierce competition in the social media market, it has been prompted to protect its reputation for the sake of its own development. One of the motivations for this is to be seen to fight IP infringement and to protect rights holders.

Weibo is active in IP rights protection and provides convenient channels for rights holders to enforce their rights. Any rights holder – whether owning a trademark, copyright or design – is entitled to file a takedown on Weibo. The rights holder must prove that it owns the rights and that the offending Weibo user has infringed its rights.

From the rights holder’s perspective, the Weibo takedown procedure has five steps:

  • File a complaint with the relevant details of the rights relied on and offending content.
  • Await acceptance of the complaint.
  • Upload certificates of rights and any evidence.
  • Await examination by Weibo.
  • Await publication of the decision.

The whole procedure can easily be carried out by following the guidelines published on Weibo through the appropriate online forms.

Rights holders face three main challenges in regard to social media sites in China:

  • the cost of the complaint;
  • the burden of finding information regarding the infringement; and
  • difficulties in proving infringement.

These challenges are primarily caused by the huge amount and variety of information, and its reliability. Further, although Weibo will remove infringing content when rights exist and are proven, it still protects its users where possible, since these are its most valuable asset. Therefore, rights holders must be fully prepared for users to defend their position and for Weibo to protect them. In addition, for foreign rights holders, the differences in law and language can be a challenge. Consequently, the recommended practice for foreign rights holders is to appoint a professional Chinese IP practice to deal with infringement on social media in China in a proper and efficient manner.

Comment

All the major social media sites have takedown tools available through easy-to-use online forms, most with no fee payable. These provide rights holders with recourse to official channels to submit a complaint to protect their rights should a direct approach fail. Social media platforms are often put in a difficult position because they are neutral, global, spaces. For example, if a big brand claims infringement and the user files a counter notice claiming they have the right to use the mark in that particular country, the social media sites have to accept submissions at face value.

Despite this, rights holders should bear the following tips in mind:

  • Start with a sensitively worded direct approach to the social media user before considering a takedown.
  • Audit trademark rights to ensure that key brands are registered in core territories and for all goods or services of interest. Focus on securing protection in China to support your takedowns. Social media sites are more likely to remove offending material if a complaint is based on registered rights.
  • Register your brands as usernames or account names on social media sites, even if this is done defensively.
  • If relying on unregistered or other legal rights in a takedown, include as much detail as possible.
  • Develop a company policy for prioritising social media takedowns. For instance, it is sensible to put pages or posts promoting the sale of counterfeit goods with a high volume of trade ahead of a copyright takedown for misuse of an image – clearly, the former results in greater risk of significant damage and losses to the rights holder than the latter.
  • If the complaint involves suspected counterfeit goods, conduct proper investigations and test purchases to ensure the goods are definitely counterfeit before submitting any takedown. A false claim can lead to a charge of perjury under US law.
  • For copyright complaints, file solid evidence of the date of creation and the ownership of relevant materials to support a takedown. The better supported a rights holder’s rights, the more likely that the social media site will take down the content.

As society’s reliance on and connection with social media grows, so the enforcement and protection of IP rights on such sites will need to develop, requiring rights holders to be vigilant in policing their rights. For those serious about preserving their IP rights in the social media environment, internal policies for monitoring and prioritising the most damaging issues will be essential for online brand enforcement. No doubt the frequency of takedown actions will increase in line with demand for social media sites, thus sending a strong message to would-be infringers and name squatters.

Lane IP

2 Throgmorton Avenue

London EC2N 2DG

United Kingdom

Tel +44 20 3714 9490

Fax +44 20 7374 8552

Web www.laneip.co.uk

Rob White
Senior associate

[email protected]

Rob White has worked in the trademark field since 2000, including over six years at a leading London practice, becoming fully qualified in 2006. He is experienced in managing portfolios of both small companies and those with wider global interests in terms of their prosecution, monitoring and enforcement, and has been involved in drafting and negotiating settlement agreements, oppositions and website and domain name actions. Mr White has worked with clients in a number of sectors, including entertainment, sports, retail, gambling and insurance.

Mr White holds an LLB hons and an LLM in intellectual property. He is a UK trademark attorney and a European trademark attorney, and has published articles and case commentaries in various publications.