I recently had success in persuading Facebook to take down a Page dedicated to criticizing a client.{*} In the process, I learned a few things about what Facebook finds persuasive in takedown requests.
The Page in question used the phrase that our client uses as a trade name and service mark--let's call it TRADEMARK--as the name of its Page. It also used the client's logo as its profile picture. The text of the Page contained rants purporting to be from a disgruntled customer.
Facebook responded to our initial takedown request by removing the profile picture, reasoning that our client owned the copyright to that image. "With respect to this entire Page," however, Facebook wrote that "we do not understand how this content may be infringing your trademark rights. The reported party appears to be using your trademark to discuss or comment upon your goods and services. Under these circumstances, this appears to be a non-infringing, nominative use of your trademark, and it’s unclear to us how the reported content would confuse people as to the source, sponsorship or affiliation of the goods and services." But they invited us to explain further.
Both trademark law and Facebook's Statement of Rights and Responsibilities are designed to prevent customer confusion. Therefore, my response made three primary arguments designed to show how allowing a gripe site named TRADEMARK would cause confusion:
1. Search Results. Searching for TRADEMARK using Facebook's search function turned up multiple results, with the infringing site listed second. Many internet users are in a hurry and do not put much effort into determining whether a page is legitimate. They may simply see the trademark that they already recognize and trust and assume that it is a legitimate page. On Facebook, they may simply click the “Like” button and move on to another page.
This, I argued, is what the federal courts call “initial interest confusion,” and it is a form of trademark infringement. “[I]nitial interest confusion occurs when the defendant uses the plaintiff’s trademark in a manner calculated to capture the initial consumer attention, even though no actual sale is finally completed as a result of the confusion.” Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002).
2. Misleading Status Updates. Once a user clicks the infringing page’s Like button—whether as a result of initial interest confusion or for any other reason—that user will thereafter receive the infringing page’s status updates as part of his or her News Feed. Those updates will be labeled as being from “TRADEMARK.” Even if the user initially recognized that the infringing page was not associated with the TRADEMARK owner—which, as explained above, is not at all likely—they very well may not remember that fact weeks or months in the future, when they receive a status update purportedly from “TRADEMARK.” And when those updates are actually filled with negative commentary and vitriol from someone with a grudge against the trademark owner, the updates are sure to be damaging to the company and potentially misleading to consumers. With hundreds of millions of people using Facebook, the potential consequences of such confusion could be devastating.
3. It's Not a Nominative Fair Use. “Nominative fair use” is a term invented by the U.S. Court of Appeals for the Ninth Circuit to describe a situation in which “the defendant uses a trademark to describe the plaintiff’s product, rather than its own.” New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992). “A finding of nominative fair use is a finding that the plaintiff has failed to show a likelihood of confusion as to sponsorship or endorsement.” Toyota Motor Sales, USA, Inc. v. Tabari, 610 F.3d 1171, 1182-83 (9th Cir. 2010).
The infringing page’s use of TRADEMARK as the title of its page is the primary thing that set it apart from the typical “gripe site” in which a disgruntled customer refers to a trademarked product or service in order to criticize it. Facebook is not like the websites PissedConsumer.com or RipoffReport.com, two “gripe sites” which have been found to have made nominative fair uses of the trademarked goods their users criticized. There, users understand from the beginning that they will encounter criticism of trademarked brands.
Facebook, on the other hand, requires its users to identify themselves and their Pages accurately. Using a trademark as the name of a Page is not the same thing as using the content of a page to criticize that brand. The Ninth Circuit made a similar point in Tabari, its most recent case on the subject.
A few days after receiving our letter, Facebook removed the infringing page for violating its Statement of Rights and Responsibilities.
To be sure, every situation is different,{*} and these arguments won't win the day in every circumstance. But this experience goes to show that an initial rejection of your takedown request is not necessarily the end of the road. Facebook will listen to your legal arguments, and familiarity with the principles of trademark law will make those arguments more persuasive.
{*} Here's where I should probably insert the disclaimer that past performance is not a guaranty of success in other cases, or something along those lines.
