Seeking Quick Relief for Trademark Claims on Social Media Sites

Variations of this fact pattern abound on social media sites. Perhaps your client has just built a major state-of-the-art business center and then a local real estate agent starts a Facebook page corresponding to the name of the building. Is he expressing his participation in the community your client is trying to create or is he simply trying to co-opt those efforts for his own financial gain? Another client finally decides to enter the world of social media and is “shocked” to discover that a brand enthusiast has already adopted its trademark as his Twitter handle. And a third client discovers that its trademark is being misused on a social media site in an unsavory way.

Trademark and the Internet

Policing and enforcing trademark rights in social media requires a brand owner to reexamine some of the basic premises about infringement. It is black letter law that trademark maintenance requires a trademark owner to maintain control over the quality of the goods and services associated with its mark. In the infringement context, this has generally been interpreted as an obligation to prevent any uses that are inconsistent with the brand's image. However, social media has altered this fundamental assumption. Trademark owners that try to control their brand image by stifling discourse or criticism or even parody can quickly become labeled as trademark bullies.

This was not the case 30 years ago. For instance, there were often conflicts between the host of a beloved late night show and his loyal fan base over what was viewed by the studio and the late night host as blatant trademark infringement. While the individual fans who were treated as infringers rather than praised for their brand devotion no doubt felt they were being manhandled by the studio and their hero host, these fans lacked the resources to meaningfully respond to the studio or its star.

Trademark owners continued to hold the upper hand even through the early days of the Internet. The trademark bar was initially surprised by the intense push back it received from the Internet community, which was not particularly offended by the registration of domain names corresponding to famous trademarks. To these early adopters, the less restrictions the better. Period. Nevertheless, as late as 2000, trademark owners continued to enjoy the upper hand in the debate about the use of trademarks on the Internet when ICANN adopted the Uniform Dispute Resolution Policy (UDRP) which gave brand owners access to a quick and cost-efficient procedure to stop abusive domain name registrations.

Since 2000, however, the pendulum has begun to reverse. In 2000, the concept of a trademark bully was unknown. However, in the last 14 years, there have been multiple instances of a trademark owner being embarrassed by its allegedly overzealous assertion of trademark rights. This has been no more evident than on social media sites where all pages and postings have equal ability to attract hits, and it is the perceived value of their content that drives traffic. Facebook, Twitter and other social media sites recognize this power and have therefore been reluctant to place any unnecessary burdens on what may be published. It is not a coincidence that almost every social media network began by focusing on individual members and only later added business memberships, almost as if doing so was an afterthought.

This is not to suggest that the early social media sites did not care about intellectual property. They recognized that content was critical to their endeavor. For that reason, it is not at all surprising that no social media company was ever found to be ineligible for immunity under the Digital Millennium Copyright Act (DMCA) for failure to include the required statutory language in its Terms of Use. In exchange for appointing a person to be the recipient of DMCA complaints and promptly responding to requests to remove postings that infringed a copyright, the publisher would not be liable for such content. See , 17 U.S.C. '512. However, the DMCA is limited to claims arising out of copyright. (“A service provider shall not be liable for monetary relief ' for infringement of copyright '.”) Id. (emphasis added).

In those early years, social media sites only seemed to recognize the concerns of copyright owners. For many years, one could not even find trademark grievance forms on social media sites; it was as if these sites were saying: “If we don't recognize an avenue for filing a trademark grievance then there won't be any trademark grievances.” See generally, S Feingold & H Hogan, Unique Online Trademark Issues, Chapter 7.XIVB.1 at 430 ' 431, Intellectual Property Law in Cyberspace 2d ed. (editor G. Peter Albert Jr.) (BNA 2011).

Today, Twitter, Facebook, Flicker, Foursquare and TripAdvisor all have easily findable trademark grievance forms. However, providing a form does not ensure a prompt response, or even a consistent evenhanded review. For many years, it was an open secret that the most effective means for addressing a problem on a social media site was to have an inside contact at that company. While that trend seems to be on the downside, it remains the experience of many that social media sites are ' by and large ' typically unresponsive to the standard trademark complaint.

The CrossFit Case

With this background, let's return to Jenni Alvies. Apparently CrossFit did not learn of Ms. Alvies until almost two years after she began her blogging and Facebook-related activities. At that time, a paralegal at CrossFit contacted her and demanded she stop using the CrossFit mark in the name of her blog and her Facebook page. This paralegal also began posting negative comments about the content provided by Ms. Alvies and ultimately forced her to alter her domain name and blog name twice. But that was not enough. CrossFit then demanded that Ms. Alvies remove two years of posts that made use of its name.

This course of conduct reflects the “old school” of trademark enforcement ' the brand belongs to the brand owner and is subject to its absolute control. It is of no consequence that the CrossFit brand may have been thought by some to stand for a no centralized community that included those who were proud that their perceptions of fitness were often at odds with the more traditional views. One cannot help but wonder whether Ms. Alvies was a concern because her approach was inconsistent with CrossFit's program, or that she was implementing it better and with more flair than some of the authorized trainers.

In short, CrossFit emerges as a trademark owner who was not going to tolerate any misuse of its mark according to its own standards.

As discussed above, social media sites do not make it easy for a trademark owner to enforce its trademark rights. The policies are extremely vague and essentially give these social media sites the ability to use broad subjective power to decide whose trademark rights, and under what conditions, they will enforce.

No doubt recognizing these difficulties, CrossFit sent Facebook a DMCA take down notice, claiming that certain content posted by Ms. Alvies infringed its copyright. Facebook complied. CrossFit eventually commenced an action for, inter alia, trademark infringement. In response, Ms. Alvies filed a counterclaim asserting that CrossFit violated '512(f)(2) when it filed its DMCA take down notice.

CrossFit filed a motion to dismiss this counterclaim. While not contesting that they improperly filed a DMCA take down notice based on trademark claims, CrossFit argued that was not relevant because Facebook also has a trademark take down notice. This defense was, to anyone who has filed a trademark complaint with Facebook before, somewhat contradictory. The whole reason CrossFit relied on the DMCA in this case was to bypass the Facebook trademark complaint process.

On Jan. 22, 2014, the U.S. District Court for Northern California denied this portion of the motion to dismiss, finding that it was impossible for it to determine at this stage in the litigation if and how Facebook would have responded to a trademark claim request. CrossFit, Inc. v Alvies, Civ. 13-3771 (N.D. Cal. Jan. 22, 2014).

Conclusion

This decision underscores the risks that a company takes when it tries to package its trademark claim in copyright wrapping. The DMCA clearly provides that a party who certifies the truth of its take down notice is liable for any damages incurred by the alleged infringer, including the alleged infringers' attorney's fees and costs. In this case, Ms. Alvies may also have a claim for lost profits based on her health shake business. Thus, even if we assume that CrossFit had a proper trademark claim against Ms. Alvies, CrossFit has placed the value of that judgment at risk by its aggressive behavior.

The CrossFit decision is a cautionary tale that applies to the multitude of companies who have no doubt successfully employed the same strategy used by CrossFit without incident.

Stephen W. Feingold is a member of the Editorial Board of our LJn sibling newsletter the Intellectual Property Law Strategist and a partner in the New York office of Kilpatrick Townsend & Stockton, LLP. His practice includes creating and implementing Internet enforcement strategies.

In April 2011 Jenni Alvies ' a stay at home mom with four children ' started the blog “crossfitmamas.blgspot.com” and a Facebook page “CrossFit Mamas.” She used both social media sites to post information about high intensity workout routines and gathered a small following of women who would add comments about their own favorite exercise routines. In an effort to cover the cost of these sites (and no doubt to try to profit from her efforts), she also sold health shakes and smoothies and participated in the Google AdWords program.

CrossFit was formed in 2000 and licenses its name to gyms and certifies trainers. CrossFit promotes a “decentralized approach” consistent with an “virtual community Internet model” which allows for individual approaches. See, CrossFit Definition, Wikipedia, (last viewed May 23, 2014). There is a perception among at least some of its members and leaders that CrossFit is contrary to traditional views about exercise and wellness. Id.

How should CrossFit respond to Jenni Alvies? Is what she is doing consistent with the spirit of CrossFit and in essence an extension of what is going on within the CrossFit community? Or is Ms. Alvies trying to “rip off” CrossFit for her own financial benefit?

Variations of this fact pattern abound on social media sites. Perhaps your client has just built a major state-of-the-art business center and then a local real estate agent starts a Facebook page corresponding to the name of the building. Is he expressing his participation in the community your client is trying to create or is he simply trying to co-opt those efforts for his own financial gain? Another client finally decides to enter the world of social media and is “shocked” to discover that a brand enthusiast has already adopted its trademark as his Twitter handle. And a third client discovers that its trademark is being misused on a social media site in an unsavory way.

Trademark and the Internet

Policing and enforcing trademark rights in social media requires a brand owner to reexamine some of the basic premises about infringement. It is black letter law that trademark maintenance requires a trademark owner to maintain control over the quality of the goods and services associated with its mark. In the infringement context, this has generally been interpreted as an obligation to prevent any uses that are inconsistent with the brand's image. However, social media has altered this fundamental assumption. Trademark owners that try to control their brand image by stifling discourse or criticism or even parody can quickly become labeled as trademark bullies.

This was not the case 30 years ago. For instance, there were often conflicts between the host of a beloved late night show and his loyal fan base over what was viewed by the studio and the late night host as blatant trademark infringement. While the individual fans who were treated as infringers rather than praised for their brand devotion no doubt felt they were being manhandled by the studio and their hero host, these fans lacked the resources to meaningfully respond to the studio or its star.

Trademark owners continued to hold the upper hand even through the early days of the Internet. The trademark bar was initially surprised by the intense push back it received from the Internet community, which was not particularly offended by the registration of domain names corresponding to famous trademarks. To these early adopters, the less restrictions the better. Period. Nevertheless, as late as 2000, trademark owners continued to enjoy the upper hand in the debate about the use of trademarks on the Internet when ICANN adopted the Uniform Dispute Resolution Policy (UDRP) which gave brand owners access to a quick and cost-efficient procedure to stop abusive domain name registrations.

Since 2000, however, the pendulum has begun to reverse. In 2000, the concept of a trademark bully was unknown. However, in the last 14 years, there have been multiple instances of a trademark owner being embarrassed by its allegedly overzealous assertion of trademark rights. This has been no more evident than on social media sites where all pages and postings have equal ability to attract hits, and it is the perceived value of their content that drives traffic. Facebook, Twitter and other social media sites recognize this power and have therefore been reluctant to place any unnecessary burdens on what may be published. It is not a coincidence that almost every social media network began by focusing on individual members and only later added business memberships, almost as if doing so was an afterthought.

This is not to suggest that the early social media sites did not care about intellectual property. They recognized that content was critical to their endeavor. For that reason, it is not at all surprising that no social media company was ever found to be ineligible for immunity under the Digital Millennium Copyright Act (DMCA) for failure to include the required statutory language in its Terms of Use. In exchange for appointing a person to be the recipient of DMCA complaints and promptly responding to requests to remove postings that infringed a copyright, the publisher would not be liable for such content. See , 17 U.S.C. '512. However, the DMCA is limited to claims arising out of copyright. (“A service provider shall not be liable for monetary relief ' for infringement of copyright '.”) Id. (emphasis added).

In those early years, social media sites only seemed to recognize the concerns of copyright owners. For many years, one could not even find trademark grievance forms on social media sites; it was as if these sites were saying: “If we don't recognize an avenue for filing a trademark grievance then there won't be any trademark grievances.” See generally, S Feingold & H Hogan, Unique Online Trademark Issues, Chapter 7.XIVB.1 at 430 ' 431, Intellectual Property Law in Cyberspace 2d ed. (editor G. Peter Albert Jr.) (BNA 2011).

Today, Twitter, Facebook, Flicker, Foursquare and TripAdvisor all have easily findable trademark grievance forms. However, providing a form does not ensure a prompt response, or even a consistent evenhanded review. For many years, it was an open secret that the most effective means for addressing a problem on a social media site was to have an inside contact at that company. While that trend seems to be on the downside, it remains the experience of many that social media sites are ' by and large ' typically unresponsive to the standard trademark complaint.

The CrossFit Case

With this background, let's return to Jenni Alvies. Apparently CrossFit did not learn of Ms. Alvies until almost two years after she began her blogging and Facebook-related activities. At that time, a paralegal at CrossFit contacted her and demanded she stop using the CrossFit mark in the name of her blog and her Facebook page. This paralegal also began posting negative comments about the content provided by Ms. Alvies and ultimately forced her to alter her domain name and blog name twice. But that was not enough. CrossFit then demanded that Ms. Alvies remove two years of posts that made use of its name.

This course of conduct reflects the “old school” of trademark enforcement ' the brand belongs to the brand owner and is subject to its absolute control. It is of no consequence that the CrossFit brand may have been thought by some to stand for a no centralized community that included those who were proud that their perceptions of fitness were often at odds with the more traditional views. One cannot help but wonder whether Ms. Alvies was a concern because her approach was inconsistent with CrossFit's program, or that she was implementing it better and with more flair than some of the authorized trainers.

In short, CrossFit emerges as a trademark owner who was not going to tolerate any misuse of its mark according to its own standards.

As discussed above, social media sites do not make it easy for a trademark owner to enforce its trademark rights. The policies are extremely vague and essentially give these social media sites the ability to use broad subjective power to decide whose trademark rights, and under what conditions, they will enforce.

No doubt recognizing these difficulties, CrossFit sent Facebook a DMCA take down notice, claiming that certain content posted by Ms. Alvies infringed its copyright. Facebook complied. CrossFit eventually commenced an action for, inter alia, trademark infringement. In response, Ms. Alvies filed a counterclaim asserting that CrossFit violated '512(f)(2) when it filed its DMCA take down notice.

CrossFit filed a motion to dismiss this counterclaim. While not contesting that they improperly filed a DMCA take down notice based on trademark claims, CrossFit argued that was not relevant because Facebook also has a trademark take down notice. This defense was, to anyone who has filed a trademark complaint with Facebook before, somewhat contradictory. The whole reason CrossFit relied on the DMCA in this case was to bypass the Facebook trademark complaint process.

On Jan. 22, 2014, the U.S. District Court for Northern California denied this portion of the motion to dismiss, finding that it was impossible for it to determine at this stage in the litigation if and how Facebook would have responded to a trademark claim request. CrossFit, Inc. v Alvies, Civ. 13-3771 (N.D. Cal. Jan. 22, 2014).

Conclusion

This decision underscores the risks that a company takes when it tries to package its trademark claim in copyright wrapping. The DMCA clearly provides that a party who certifies the truth of its take down notice is liable for any damages incurred by the alleged infringer, including the alleged infringers' attorney's fees and costs. In this case, Ms. Alvies may also have a claim for lost profits based on her health shake business. Thus, even if we assume that CrossFit had a proper trademark claim against Ms. Alvies, CrossFit has placed the value of that judgment at risk by its aggressive behavior.

The CrossFit decision is a cautionary tale that applies to the multitude of companies who have no doubt successfully employed the same strategy used by CrossFit without incident.

Stephen W. Feingold is a member of the Editorial Board of our LJn sibling newsletter the Intellectual Property Law Strategist and a partner in the New York office of Kilpatrick Townsend & Stockton, LLP. His practice includes creating and implementing Internet enforcement strategies.