When Social Media Takedown Notices Aren’t Enough
Social media usage has exploded in recent years and has permanently transformed the way products and services are marketed and sold. Social media platforms include many different online destinations such as social networking sites, blogging sites, and rating and review sites. The availability and proliferation of so many online destinations has expanded the opportunities for businesses and brand owners to market and sell their products or services in ever new and exciting ways. However, these opportunities come with inevitable legal and practical challenges, including how to deal with online content that infringes the intellectual property ("IP") rights of others.
Two of the most prolific types of IP infringement on social media websites are copyright and trademark infringement. In some cases, the copyright or trademark owner can simply contact the account holder who posted or otherwise published the infringing content and request that they remove it. What happens if they refuse though? Nearly all social media sites have established policies and procedures to deal with IP infringing content and most work the same way.
For trademark infringing content, there is no statutory equivalent of the DMCA's takedown process. Despite this, however, most social media websites use the same or similar procedures to those used under the DMCA and require trademark owners to provide the same types of information. Many social media companies, such as Facebook, Instagram, and Twitter, additionally request the trademark owner's U.S. or foreign trademark registration number. Of course, this can only be provided if the trademark at issue is already registered (and registration is important not just to support the takedown notice but also for many other practical and legal reasons).
Once the required online form is submitted or the copyright or trademark owner has sent the appropriate takedown notice to the DCMA agent, the social media website should remove the alleged infringing content. How quickly or slowly this happens (or in some cases doesn't happen) depends on the website and there are numerous potential problems owners can encounter from this point forward.
One such problem is that of repeat offenders. Most social media websites take the position that they are obligated to remove only the content specified in each separate takedown notice. As such, even if a takedown notice is successful, it only results in removal of the content specified in each notice. This can allow infringers to re-post the same or similar content already removed, post other infringing content, or open other accounts on the same website to post the same or other content. Copyright and trademark owners are then forced to play legal "whack-a-mole" by sending multiple takedown notices. In some cases, they must do this over long periods of time and there may be no permanent resolution achieved through the takedown process.
For trademark owners, another problem is that certain social media websites prefer or in some cases require the trademark at issue to be already registered in order to submit a takedown notice. For example, Twitter's online form requires trademark owners or their authorized agents to enter the trademark's registration number and states that it "should correspond to an active and officially registered trademark. Pending trademarks are not sufficient" (see https://help.twitter.com/forms/trademark). Twitter does, however, allow owners of unregistered trademarks to file a "brand impersonation report" using a different form.
For copyright owners, another issue is the ability for the alleged infringer to use the DMCA's counter-notice process and potentially force the copyright owner to file a lawsuit. Once a copyright owner (or their agent) files a takedown notice and the alleged infringer is informed of the removed content, they can send a "counter-notification" to the social media website, swearing under penalty of perjury that they believe the content at issue is not infringing (see 17 U.S.C. § 512(g)(3)). The social media website is then supposed to notify the copyright owner of this and replace the removed content within 10-14 business days, unless it first gets notice from the copyright owner that a lawsuit seeking injunctive relief has been filed against the alleged infringer. This scenario creates a host of potential legal issues, the first of which is the requirement of filing for and obtaining a copyright registration (or being refused one) before the copyright owner can sue the alleged infringer in federal court (see 17 U.S.C. § 411(a)).
Additionally, copyright owners must ensure that each takedown notice they submit is based on a "good faith belief" that the alleged infringer's use of the owner's copyrighted content is unauthorized and unlawful (see 17 U.S.C. § 512(c)(3)). This belief should be formed after considering, among other things, whether the alleged infringer's use constitutes fair use under the First Amendment. Copyright owners should also be aware that the DMCA provides for civil liability for anyone who knowingly misrepresents in a takedown notice that the alleged infringer's content or activity is infringing (see 17 U.S.C. § 512(f)).
Once a copyright or trademark owner encounters any one or more of the above problems (among others), it can be difficult to achieve the intended goal without the assistance of an experienced attorney. Experienced IP attorneys can work with the owner to register any copyrights and trademarks not already registered, craft an effective strategy to achieve the owner's goals, and determine important threshold issues. These can include issues such as enforceability of the copyrights or trademarks at issue and whether the allegedly infringing social media activities constitute legally actionable infringement or something else such as First Amendment protected activity. Smart copyright and trademark owners will want to make these determinations before acting.
About the author: Michael B. Dvoren is a partner and intellectual property attorney at the Phoenix law firm of Jaburg Wilk, where he assists clients with various intellectual property matters, including protection, enforcement, litigation and transactions.
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