by Traverse Legal, reviewed by Enrico Schaefer - August 24, 2012 - g. Trademark Infringement on the Internet
You
may have heard that users have registered trademark terms on Twitter, and have
also impersonated celebrities or other brand names. This is a consistent and
ongoing problem for Twitter. The bigger problem, however, is Twitter's
statement with regards to liability and their simple process that is required
to be undertaken if, in fact, you want to have a trademark infringer or an
impersonator removed from their service.Well,
what are these problems? Twitter first requires that any complaint, whether
trademark or otherwise, be submitted from the domain name of the complaining
party. So, for example, if you are an attorney that represents a party that
owns www.something.com, then the attorney must be granted an email address from
www.something.com. This requires the client to provide their attorney with an
email address.
Welcome
to Trademark Law Radio, a top web resource on issues of trademark infringement,
trademark licensing, trademark protection, and trademark registration.
Hello
and thank you for listening to Traverse Legal Radio. My name is John Di Giacomo
and I am an attorney with Traverse Legal PLC, where I practice in the areas of
trademark infringement, copyright infringement, and other internet-based
intellectual property matters. Today I'd like to talk to you about Twitter's
ongoing trademark infringement problem.
You
may have heard that users have registered trademark terms on Twitter, and have
also impersonated celebrities or other brand names. This is a consistent and
ongoing problem for Twitter. The bigger problem, however, is Twitter's
statement with regards to liability and their simple process that is required
to be undertaken if, in fact, you want to have a trademark infringer or an
impersonator removed from their service.
Well,
what are these problems? Twitter first requires that any complaint, whether
trademark or otherwise, be submitted from the domain name of the complaining
party. So, for example, if you are an attorney that represents a party that
owns www.something.com, then the attorney must be granted an email address from
www.something.com. This requires the client to provide their attorney with an
email address.
Additionally,
a second problem that Twitter currently has is that it does not recognize
Common Law trademark rights. It only considers a trademark claim if the
trademark is in fact registered.
Common
Law trademark rights, as opposed to registered trademark rights, are rights
that arise out of the use of a mark in commerce. After a longstanding use of a
trademark in commerce, a person or a company may obtain trademark rights in a
term within the geographical area in which it was used. These trademark rights
are no less important or no less valid than those of a registered trademark. In
fact, registration simply grants additional benefits to a Common Law user.
In
light of these problems that Twitter has, it faces some pretty significant
claims of liability and it's likely in the future Twitter will be sued if it
does not, in fact, change its policies with regard to trademark infringement
and brand impersonation. Why is this?
Well
first, Twitter faces a claim of vicarious liability. Vicarious liability
requires a finding that the defendant, in this case Twitter, and the infringer,
in this case the user of a Twitter handle, exercise joint ownership or control
over the infringing product. Since Twitter exercises ownership and control over
the infringing product, it could be held vicariously liable because it has the
ability to shut down the infringement.
Additionally,
Twitter can be held liable for contributory trademark infringement.
Contributory trademark infringement occurs where a party continues to supply a
product or service to an infringer when it knows that that infringer is
engaging in trademark infringement. In this case, again, Twitter continues to
provide its service, the social networking service, to individuals that it
knows that are infringing upon the third party's trademarks.
Once
it has been put on notice, regardless of Twitter's policy, this duty to cease
the infringing behavior applies, otherwise Twitter will be held liable for
contributory infringement. These are just some of the ways in which Twitter
faces some liability with regard to the way that it currently handles trademark
infringement problems and brand impersonation problems.
If
you have a brand impersonation or a trademark infringement problem with regard
to Twitter, contact one of our attorneys today. Again, this is Traverse Legal
Radio and I am an attorney, John Di Giacomo. Thank you and have a good day.
You
have been listening to Trademark Law Radio.
Whether you are facing a trademark infringement, licensing, monitoring
or trademark registration issue, we have a trademark attorney ready to answer
your questions.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
