Too easy: IP infringement via non-harmonised platforms
Social media platforms are the most widely-discussed online area in terms of intellectual property infringement, after Internet domain names. Platforms such as Twitter, Facebook, Linkedin, YouTube and others are designed to encourage people to ‘share’. They allow you to share stories about the places you have visited, work you have done, photos you have taken and the ideas you have.
This enables people to express themselves, and to see what others are doing. The aim is to encourage everybody to share and enhance interaction.
The social media sites are easy to use: a user name and an email address are sufficient for creating an account. Additionally, policies are presented and guarantees are provided to gain confidence and encourage use of the system. Confidentiality of personal information is guaranteed, and the content provided by the user is shared with people the user specifies. The user is not even obliged to provide his or her real name.
However, this simple signing-up system and anonymity have created a safe harbour for people acting in bad faith (or, at least, for people not acting in good faith). These problems are not new: after the advent of the Internet, such actions appeared first on chat channels, then in domain names and, more recently, in social media.
Each platform has its own policies and dispute resolution mechanisms to deal with malicious acts. These tend to seek to balance the protection of personal/commercial rights with freedom of thought and expression. However, implementation and interpretation of the body of rules set by these mechanisms show differences which may lead to making the nature of every breach and measure unique as a result.
Historically, infringements of IP rights have been the most severe in Internet domain names. The universal structure of the Internet and the insufficiency of international judicial cooperation gave rise to the concept of the Uniform Domain Name Dispute Resolution Policy (UDRP) system.
“EACH PLATFORM HAS ITS OWN POLICIES AND DISPUTE RESOLUTION MECHANISMS TO DEAL WITH MALICIOUS ACTS. THESE TEND TO SEEK TO BALANCE THE PROTECTION OF PERSONAL/COMMERCIAL RIGHTS WITH FREEDOM OF THOUGHT AND EXPRESSION.”
Established to fight against the increasing number of infringement actions, UDRP has provided solutions to many problems since it entered into force in 1999.
However, it is to be noted that the rules relating to the UDRP process are relevant solely to domain names—sub-domain names are left out of its scope. Meanwhile, the strictness of bad faith criteria, and the panellist fee of $1,500, have influenced registration trends.
Systems for domain names have developed differently in national applications but the results have always been the same. For example, Turkey has determined a hybrid system in domain name registration, where ‘.gen.tr’ domain names are acquired by the domain name holders on a first-come, first-served basis. In order to acquire a ‘.com.tr’ domain name, your trademark application, trade name, or name/surname should match the intended domain name.
In practice, an application for a trademark is sufficient (instead of a full trademark registration), in accordance with the principle of non-aggravating procedures. But domain names have now begun to be acquired simply by filing a trademark application, as upon the rejection of a trademark a new application may be re-filed in order to maintain the domain name right.
Unfortunately, it has been very difficult to resist this activity, because a dispute resolution mechanism has still not been introduced, even though it was specified in the original policies 10 years ago. Instead, it is necessary to file a lawsuit to claim a right. This process is time-consuming, since the court needs to know the fate of the trademark application to decide on the case.
Domain names that are acquired without submission of documents also become attractive because of the inadequacy of dispute resolution. Additionally, the attitude of the ‘.nic.tr’ management in concrete cases has allowed an increase in these actions.
For example, a complaint filed against a ‘.gen.tr’ domain name has been rejected based on the ground that the domain name has been assigned in the correct way (on a first-come, first-served basis) despite the favourable UDRP decision from the same owner and for the same name with the ‘.com’ extension.
Likewise, another complaint has been rejected by stating that the domain name will be registered on a first-come, first-served basis when there are owners of two identical trademarks engaged in commercial activity in different sectors.
However, when one of the indications is a trade name and the other is a trademark, there have been situations in which the objection has been accepted and the domain name transferred, on the grounds that the application date of the trademark is earlier than that of the trade name.
Nevertheless, transfer of a domain name registered for a trade name is not permitted to be to a trademark owner in accordance with a mutual agreement. It is compulsory for a domain name registered on basis of a trade name to continue its existence with the trade name right.
On the other hand, when the complaint is related to the banking sector, a domain name registered with the ‘.gen.tr’ extension is treated as a public security matter and transferred upon complaint. These uncertainties and inconsistencies in the policies have unfortunately created favourable grounds for infringement of rights and have significantly damaged the reputation of domain names with ‘.tr’ extensions.
While these problems continue in relation to domain names, trademark infringements on social media sites, whose popularity is on the rise, have increased immensely. And for some reason, people often believe that it is easy to get away with infringement in this context.
These platforms have taken measures against such infringement actions by indicating them in their terms and policies. Although all of them differ, almost all of them protect IP rights. However, infringements evolve in a way that accords with these rules. There are a few concrete cases to refer to.
Within the framework of Twitter policies, all users should respect third party IP rights. It is communicated to all users in advance that accounts will be deactivated for transgression of the policies. However there are techniques that are used to bypass the rules. Attempts to infringe, as we have experienced, include registering the name but not entering any content, putting in a different photograph or entering irrelevant content.
Twitter has so far closed all of these accounts without any hesitation. In one case, a user attempted to get around it by adding the following note below the account: ‘unofficial account—made by the brand’s fans’. At this point, the complaint was rejected on the grounds that there will not be any likelihood of third party confusion.
This interpretation has also directed the actions of people acting ‘not in good faith’. The abovementioned notes are added for the registered accounts and the body of rules is started to be bypassed. The friends of people who re-tweet the tweets of a person using @brand do not see this detailed explanation.
Consequently, users suppose that the account is genuine and are mistaken about the actual publisher of the tweets. This may be challenging for reputable/ well-known trademark owners. Additionally, the fact that Twitter does not interfere with the tweets sent and the examples of national law being insufficient in collecting evidence have increased the number of libels made via Twitter in the last two years.
Facebook contains a similar body of policies for complaints. Facebook closes account names and community pages if they lead to a likelihood of confusion in accordance with these policies.
However if it is a Facebook ‘group’, it does not interfere with the content on the grounds that it is a platform created for people to share ideas. But most of the users do not recognise the difference between a Community page and a Facebook group. Therefore, this policy of Facebook has allowed users acting ‘not in good faith’ to bypass the policies and direct their actions to Facebook groups.
Blogger
Blogger’s approach is rather strict regarding account names, since the purpose of the existence of a blog site is the content provided by users, and users who do not serve this purpose pollute the site. Even if the logo of the trademark is used as a photograph and the account name is identical, if there is no infringement in the content that will give rise to a likelihood of confusion (for example, if there is no content), no action is taken.
.brand
There is also the prospect of .brand domain names, which may lead to much more complicated challenges for trademark owners than a few social media platforms. For although a ‘trademark clearinghouse’ system will be set up, rights holders will no doubt experience new infringement scenarios as a result of registration of the new generic top-level domains.
