Part 4 of 4: You Twit Face!
Protecting your IP in the World of YouTube,
Twitter and Facebook: A Practical
Protection Guide for the IP Owner
Jason R. Fulmer, Associate, Intellectual Property, Gardere Wynne Sewell
Kay Lyn Schwartz, Partner, Intellectual Property, Gardere Wynne Sewell
In 2009/2010, GSA brought GSA Forum readers a four-part series
analyzing legal issues such as antitrust, bankruptcy, immigration and, now,
intellectual property (IP) protection. These articles were written by
Gardere Wynne Sewell LLP, one of the Southwest's largest full-service law firms
providing legal services to private and public companies and individuals in areas
of energy, litigation, corporate, tax, environmental, labor and
employment, IP, governmental affairs and financial services.
While GSA does not endorse any particular perspective, we believe whether
you agree or disagree, these articles will encourage semiconductor
companies and their partners to ask and begin identifying answers to some
difficult and challenging questions.
Social media sites, such as YouTube, Twitter and Facebook,
present significant opportunity for individuals and businesses
to communicate to extensive numbers of people in ways never
before envisioned. Facebook, for example, currently boasts more than
350 million users, and conservative estimates show at least 18 million
Twitter users. These numbers are only expected to increase over
time. While these sites present tremendous growth opportunities for
businesses, they have sparked a flurry of activity among IP owners
who are scrambling to find ways to safeguard their valuable assets.
While the title of this article may appropriately describe the reaction
of an IP owner upon discovery that it has been victimized on a social
media site, there is no need to panic. There are various tools available
to the IP owner that can be used to address abusive situations.
Naturally, the first question an IP owner must ask is "How much
of this can I take?" When the answer to that question is "no more,"
the owner is invited to turn to this article—which is intended to
serve as a practical guide and resource for navigating through social
media sites, procedures that enable IP owners to address infringing
situations. While this article specifically focuses on the current
policies and procedures of YouTube, Twitter and Facebook, the
general principles and tips provided will be applicable to other social
media sites as well.
A few points to keep in mind. The IP owner always has at its
disposal the option of pursuing formal legal remedies, such as
initiating a lawsuit, to protect its valuable IP assets. But given the
significant expense, resource and time commitments associated with
litigation, the IP owner would be well-advised to consider, at least as
a first option, utilizing the dispute resolution procedures set up by the
specific social media site. Remember that each social media site (such
as Facebook and Twitter) is run by a company—not the government,
not a court. Because these are different companies, their procedures
and policies for addressing abusive situations, while similar, are not
the same. The different policies and procedures do, however, echo
a common theme of "self-interest" in that each company does not
want to be sued by IP owners over infringing content. Clearly, it is
in the companies' best interest to work with IP owners to address
acts of infringement occurring on their sites. If a site fails to act after
being put on notice of the infringing activity, the social networking
site runs the risk of being charged with being complicit in the
infringement. This provides a significant advantage to IP owners and
certainly increases the chances of getting the issue resolved quickly.
YouTube
Anytime there is an open forum inviting expression, such as with
YouTube's "self-broadcasting" site, this increases the potential for
abusive situations. Of course, despite YouTube's encouragement to
patrons to "Broadcast Yourself™," You Tube recognizes that certain
"expression" is not permitted, especially when that expression trades
on others' rights. In fact, YouTube expressly states in its Terms of
Service that it "does not permit copyright infringing activities and
infringement of IP rights on its Web site," and if such activities take
place, YouTube will remove any infringing content from the site.
Granted, most social media sites state in their Terms of Service that
the company reserves the right to make the call whether content is
infringing or not, and reserves the right to remove (or not remove)
the complained-of content. With that said, more often than not,
if the content looks to be infringing (even if it is a close call), the
company is going to remove the content due to the threat of being
sued if wrong. As such, if an IP owner finds someone else trading on
its rights on a social media site, the owner should take immediate
action. The IP owner has spent years and resources developing these
rights, and while it may be inconvenient for the IP owner to go
through the process to correct the wrong, it must be done.
The first step that the IP owner will want to take is to set up
an account with the social networking site. In most cases, this is a
free service and usually necessary to utilize the provider's dispute
mechanisms. The next step will be to determine under which
"category" the abusive conduct fits. As an example, if someone
posts on YouTube a video that is a copy of the IP owner's video, that is a
copyright violation, and the rules set out for addressing copyright
violations must then be followed. On the other hand, if someone
uses the IP owner's brand name or company identifier as a user name,
or in such a way as to cause confusion among consumers, that is a
trademark issue, and the trademark rules set out on the particular site
must be followed. Due to the relatively recent passage of the Digital
Millennium Copyright Act (DMCA)—which gives online providers
specific protections if certain rules are followed such as designating a
specific "copyright agent" to receive complaints—more sophisticated
social media sites will likely have a specific section in their Terms of
Service for addressing copyright disputes. This does not mean that
the company will not entertain requests to address other forms of IP
disputes, such as trademark and rights of privacy issues. It just means
that the procedure for addressing non-copyright disputes often will
be buried within the Terms of Service and may be difficult to find.
As an example, YouTube provides under the heading "Copyright
Infringement Notification," (http://www.youtube.com/copyright_complaint_form) a questionnaire asking "What is the issue?"
Depending on what box is checked (e.g., privacy, trademark
infringement, copyright infringement, inappropriate content
[nudity, violence], abuse/harassment, rights of publicity issues), the
IP owner is directed to the specific section of YouTube's Web site
which addresses the specific type of infringement.
Twitter
On Twitter, "You are what you Tweet." That means "What you
say and do on Twitter can and will be used against you." There is
a growing trend for not only individuals but also businesses to
use social media sites, such as Twitter and Facebook, as means for
connecting with business prospects. Like YouTube, Twitter devotes
a specific section of its site to copyright violations (http://twitter.com/tos, under "Copyright Policy"), including designating a specific
"Copyright Agent" to receive DMCA requests in accordance with
a specific DMCA procedure. One of the most common violations
occurring on Twitter's site relates to trademark and business name
squatting. According to Twitter's Trademark Policy, any use of a
company's business name, logo or other trademark-protected material
in a way that may mislead or confuse (even if it does not rise to the
level of technical "trademark infringement") constitutes a trademark
violation. In most cases, Twitter will work with an account owner to
remove the infringement and will allow the account holder to keep
his or her account. But Twitter reserves the right to permanently
suspend an account if Twitter determines (in its discretion) that there
is a "clear intent to mislead people."
If the IP owner has a Twitter account, it can use Twitter's "support
ticket" system to report trademark violations (http://twitter.zendesk.com/forums/26257/entries/18367). As an alternative, abusive
situations can be reported by sending an e-mail to terms@twitter.com along with the following information:
- Username of the violating account (or the URL to their profile
page).
- Company name/company Twitter account (if applicable).
- First and last name.
- Title.
- Address.
- Phone.
- Fax.
- Company domain address.
- Contact's company domain e-mail address.
- Trademark registration number (if applicable).
- The requested action (e.g., removal of infringing account or transfer
of trademarked username to an existing company account).
Facebook
When an individual or business signs up for a page on Facebook, the
user agrees to Facebook's Statement of Rights and Responsibilities in
which the user agrees, among other things, not to "post content or take
any action in Facebook that infringes or violates someone else's rights
or otherwise violates the law." In this agreement, it is acknowledged
that Facebook "can remove any content or information" if Facebook
believes it violates the provisions of the Statement. Like the YouTube
and Twitter policies previously described, Facebook provides separate
mechanisms for reporting copyright and non-copyright infringement
issues. For copyright infringements, the IP owner is directed to fill
out and submit an automated DMCA form (http://www.facebook.com/terms.php?ref=pf#/legal/copyright.php?copyright_notice=1).
For all other types of infringement, a different form must be filled
out and submitted (http://www.facebook.com/terms.php?ref=pf#/legal/copyright.php?noncopyright_notice=1).
In connection with Facebook's recent policy change toward user
names, Facebook has developed a specific form used to report infringing
user names (http://www.facebook.com/help/?search=username#/help/
contact.php?show_form=username_infringement).
Naturally, it is in the best interest of the provider to act quickly,
but as is the case with many providers, oftentimes, "quickly" can
take some time. Facebook provides on its Web site that "So long
as everything appears to be in order, we will promptly remove or
disable access to the [infringing] content." To this end, IP owners are
encouraged to be diligent in following up with the providers to make
sure their requests are being addressed.
Conclusion
While the advent of social networking sites has created an additional
arena that IP owners must police for infringing activity, there are
cost-effective tools provided by social media provider Web sites to
assist IP owners in protecting their rights. IP owners would be well-advised
to implement internal procedures for monitoring the content
of social networking sites, for example, by periodically searching these
sites for "keywords" attributable to the IP owner or its company. If
the IP owner finds itself in a situation involving abusive conduct by
others, the IP owner should take immediate action. As previously
described, this involves informing the provider of what IP rights are
infringed and how the content infringes those rights. The dispute
mechanisms provided by these providers are excellent, cost-effective
ways of protecting an owner's valuable IP rights. If the issues cannot
be resolved by using these mechanisms, the IP owner may be forced
to pursue other legal remedies, but such measures should only be
resorted to after fully utilizing the specific dispute procedures set out
by the providers.
About the Authors
Jason R. Fulmer and Kay Lyn Schwartz are attorneys with Gardere Wynne Sewell's
IP practice group in Dallas, Texas. You can reach them at jfulmer@gardere.com and
kschwartz@gardere.com.
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