Back in June 2009, we wrote about protecting trademarks under Facebook’s new URL redesign, which permitted a member to use a personal name as part of his or her Facebook address. Aware that the redesign offered new opportunities for trademark infringement, Facebook simultaneously issued guidelines for protecting trademark rights should a Facebook owner steal a mark by using it in his or her Facebook address. It is important to note now that Facebook’s policies extend beyond the protection of intellectual property misuse in Facebook addresses. Indeed, Facebook writes that it is, in the general sense, “committed to protecting the intellectual property of third parties” and publishes guidelines and provides opportunities for intellectual property owners to protect their rights in the vast Facebook community. The focus of Facebook’s polices is copyright protection, which is to be expected; but the rules also provide protection for other kinds of intellectual property, including trademarks. But how effective are these policies? Well, we recently had the opportunity to test them.
One of our clients owns a chain (soon to be a national franchise) of ice-cream restaurants under a catchy name (sorry, we have to protect our client’s identity) for which it has a United States trademark registration. The name is so catchy, that it is currently involved in several trademark infringement disputes in different parts of the country. (Remember, a trademark owner has a duty to enforce its trademark rights.) The infringers tend to be small local ice-cream establishments whose only presence on the Internet is on Facebook. In addition to sending the infringers cease-and-desist letters and in one case filing suit against it in federal court, our client requested us to try to take down their Facebook web pages in which they freely infringe its mark. To accomplish this, we visited Facebook and followed its guidelines for filing a complaint. Within 24 hours we received a message from the Facebook User Operations Department asking us for further details about our client’s trademark rights. In response, we submitted to Facebook an explanation of how the infringer’s Facebook pages created confusion in the marketplace, a copy of our client’s trademark registration certificate, and a copy of the complaint filed against one of the infringers in federal court. Within 24 more hours, we were notified by Facebook that the infringing content was removed. We checked and, sure enough, the offending Facebook pages were no longer online.
The efficiency and speed of the Facebook intellectual property procedures were impressive. Keep this in mind if your intellectual property rights are being infringed by a Facebook member and you can demonstrate to Facebook that you own those rights. Let us know if we can help.
— Adam G. Garson, Esq.