For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Wednesday, 16 March 2011

Damsel in distress and loss of Facebook

The IPKat, being an inherently gallant Kat, is always moved by entreaties from damsels in distress. One such damsel has emailed him in some anxiety, seeking his advice. She writes:
"My client's business Facebook page has just been removed. When my client asked why, she was told that her page had been "reported for Trade Mark reasons". The Facebook User Operations message went on to say that, when Facebook receives a proper claim of IP infringement, it promptly removes or disables access to the allegedly infringing content --- and, if they believe that the claim has been made under false pretenses, they contact a lawyer etc to discuss the issue with them.

Facebook refuses to talk to me, even though I'm my client's trade mark representative, since it claims that it will only talk to the people responsible for the page. A request was made to see the "proper claim for IP infringement" in order to address this problem, but none was forthcoming.

I believe that a competitor of my client is responsible.

Have you any ideas as to how to address this issue, since my client is losing a considerable amount of business as a result of this".
The IPKat has already listed some legal and practical steps which, he thinks, might be worth pursuing -- but since he hasn't advised on one of these problems before it struck him that it might be a good idea to invoke the combined brainpower of his readers. The distressed damsel agreed -- so do let us know what you think!

Facebook terms and conditions here
Damsels in distress here
Damsons in distress here
Loss of Face here

12 comments:

Harvey Carpenter said...

Um, if facebook are refusing to send him stuff, why doesn't he just get the client to request it?...

Jeremy said...

@Harvey -- that's the easy bit. But what then ...?

Antony Gallafent said...

In my experience the eBay VeRO program is similar. In that program there appears little right of reply or ability to force the complaining party to prove their assertions even to the extent of divulging the application or registration/grant number of the right asserted to exist.

Anonymous said...

Surely "what then" entirely depends on what the complaint is?

Thomas said...

The key is probably section 512(c) of the U.S. Copyright Act. For a brief treatment of its application at eBay, see http://tinyurl.com/4ossq5p

Andy J said...

It is interesting that in their t&cs, Facebook deal with copyright issues via DMCA and its takedown procedure (unsurprising given that it is an American company) but allegations of other IP infringement are dealt with via their own generic reporting procedure. Given the territorial nature of trademarks and the different legal approaches to them in the US and the EU this seems somewhat arbitrary to say the least. Furthermore, whilst the safe harbor concept makes sense for copyright, where there can be secondary infringement, it makes much less sense where trademarks are concerned. (s10(5) of TMA 1994 notwithstanding)

Anonymous said...

Could Facebook not be considered a joint tortfeasor under S71 TMA in this case?

Might a communication without prejudice on that basis prompt their legal team to start speaking with the damsel?

The Bright Spark said...

Coincidentally, I have just published an article on this subject. The article refers to litigation in the US over precisely this point, and also to the 'Facebook Principles' which might be relevant in a case like this.

Kharol said...

Well, when it comes to speed and cost efficiency it's usually more about psychology and a couple of calls (instead of e-mails and letters).
From the legal side first thing seems to be to discover the complaining party, because those are the people to sue for lost profit and possibly further damages.
In case of lack of due diligence on facebook's side they could of course have a monetary liability as well. In some legislations it's fairly difficult to escape such collateral damages through general terms of conduct (e.g. Germany, but the European branch of facebook resides in Ireland.)
Somewhat sideways it may of course be useful to review the content of the - now offline - page for potential issues (requires existence of a copy somewhere, but that's what I'd expect of a commercial account...). If there was a potential issue it may be easier to just open a new account.

Anonymous said...

That's a new one... I'd need to review Facebook's T's and C's to understand the nature of a FB complaint but this sounds not unlike Quads 4 Kids. Can a complaint to FB be an actionable threat? Quite possibly.

It sounds a little heavy to say get a Norwich Pharmacal order to disclose who made the complaint to FB, but the page may be sufficiently important to warrant it.

Anonymous said...

I meant S21 TMA of course (unjustified threats).

e.g. FB pulled the page on the basis of a TM claim = provides a presumption of validity of the TM claim = amounts to circumstances required for a TM infringement action = threat?

Is there such a thing as an 'indirect' threat under S21?

Does the FB page complained of fall under the S21(c) exemption in this case?

...merely musing aloud, here.

James St.Ville said...

The answer may be an application for an interim injunction restraining the complaining party’s activities as unjustifiable threats of infringement proceedings and an interim mandatory order for the complaint to be withdrawn. Pumfrey J made such an order in Quads4kids v. Campbell [2006] InfoTLR 338.

Mr Campbell made a series of complaints to eBay through its Verified Rights Owner (VeRO) programme saying that dirt bikes sold by its competitor, Quads 4 Kids, infringed a series of unexamined Community registered designs. Some of the designs registered appeared to be distinctly ‘old’. The idea appeared to be to get all competitors off the market before Christmas.

Pumfrey J held that there was a seriously triable issue that the compliant made to eBay amounted to an actionable threat of design right infringement proceedings. He granted both prohibitory injunctions and mandatory injunctions ordering Campbell to ‘execute all such documents and do all such acts as are necessary to withdraw the notifications made to eBay’. This seemed to be sufficient to free the market up and persuade eBay not to take down further listings of products from eBay.

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