“Social Media Infringement: How to Enforce Your Copyright and Trademark Rights”
InsideCounsel Magazine 03/15/16 By Jonathan Hudis and Hillary J. Wucherer
Social media and other forms of Internet advertising make it easy for others to copy your otherwise protected images or other content for their unauthorized postings. Searching social media, you will find countless instances of infringement, but you cannot fight them all. We offer a practical overview of strategies to enforce your intellectual property rights on social media.
Should you pursue or ignore?
When an unauthorized party uses your company’s trademarks or copyrighted works, the natural reaction is to challenge and stop the use. However, sometimes a challenge can make a martyr of a bad actor and give national exposure to an otherwise obscure and low-impact posting. Even though your company may be within its rights to challenge another’s unpermitted social media posts, this could be viewed by the public or press as a bullying tactic.
We recommend saving your resources to challenge egregious copyright and trademark infringement activities (such as counterfeiting, piracy, or infringement resulting in a loss of sales) or unauthorized posts on accounts that have a large group of followers and are confusing your customers. Additionally, some uses are permitted under the legal doctrine of “fair use” and may be difficult to challenge, such as news reporting, comparative advertising, parody, and educational uses.
Separately consider alternatives for fan pages or accounts. While technically they are infringements, takedown requests could damage customer relationships and turn prior goodwill into feelings of ungratefulness and maltreatment. Consider embracing fan-created content through a partnership (with proper monitoring and oversight) that keeps the focus on your brand or content and not on the bad actor.
Contact on file a complaint with the social media platform
Most laypeople are unfamiliar with trademark and copyright laws and are unaware that their posts are infringing. Sometimes it is best to reach out to an infringing user directly using platform-specific messaging. If that communication is rebuffed or ignored (or if the infringing use is sufficiently egregious), then consider filing a copyright or trademark complaint directly with the social media platform.
On Facebook, for example, copyright or trademark owners (or their authorized representatives) can file a complaint regarding photos, videos, wall posts, notes, shares, or files using the Help Center. You will need to provide the following information:
- rights holder information;
- your name and contact information and relationship to the rights holder;
- description of the copyright or trademark rights you believe are being infringed;
- description and location of the content you believe infringes your rights; and
- a declaration with electronic signature.
Most social media platforms do not require that a trademark be registered to file a complaint. One exception is Twitter. Its trademark policy violation form requires a trademark registration number for submission. If you need to file a complaint against a Twitter account that is using your unregistered trademark in its name or profile photo in a confusing way, then alternately you can report the account for brand impersonation.
Each takedown decision is made on a case-by-case basis at the discretion of the platform employee reviewing your complaint. There is little or no dialog after the complaint is filed, so you should be as complete as possible in the original complaint form.
File a takedown notice
The Digital Millennium Copyright Act (DMCA) also provides a notice and takedown procedure for online copyright violations. Social media platforms prefer that you use their native complaint forms for ease of processing. However, if there is no complaint form, you can send a takedown request directly to the Internet Service Provider (ISP) or platform.
First determine the ISP/platform in control of the content. Then look up the contact information for the respective DMCA agent on file with the U.S. Copyright Office at: http://copyright.gov/onlinesp/list/a_agents.html.
The ISP/platform also is required to post this information on its website (and will often include it in the Terms and Conditions or in a “Legal” section).
Next, prepare and send a takedown notice that includes all of the following:
- name and preferred contact information of the person submitting the notice;
- information about and title of the copyrighted work(s) in which you are claiming rights—attach a copy of the protected work(s) where possible;
- information about and location of the allegedly infringing material—attach a copy and/or provide website links where possible;
- statement that the notice is made with a good faith belief that the allegedly infringing use is unauthorized;
- statement that the information in the notice is accurate and that you are either the rights holder or an authorized representative; and
- signature (handwritten or electronic) with a statement that “I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.”
Please note that there is liability for knowingly making false claims in a copyright takedown request under the DMCA. Any person who knowingly and materially misrepresents in a DMCA takedown request that content or activity is infringing can be liable for damages (including costs and attorneys’ fees) incurred by the wronged party or parties.
Go to court
Trademark and copyright laws apply to social media in the same ways as they apply to traditional marketing. In problematic cases, there is the option of filing an infringement suit in court. Trademark and copyright lawsuits can be useful in egregious cases, where an injunction and the imposition of monetary damages are necessary.
Above all, remember that even though social media posts remain active on an account, most are relevant for only a short period of time. By creatively and strategically responding to infringement, your company can make infringing use a nonissue and keep focus on its own social media message.