Readers of our blog may remember Leonard Barshack as the co-founder of Bigfoot, a popular Internet mail forwarding service that launched in 1995. Barshack, a resident of Sun Valley, Idaho, recently became well-known once again for his role as plaintiff in Barshack v. Twitter, a suit filed in Idaho’s Blaine County District Court on May 6, 2013 against Twitter and Sun Valley Company, the owner of Sun Valley Resort.

According to the complaint, Barshack began using the Twitter handle “@SunValley” for personal use back in April 2008. Although not the most avid tweeter, Barshack used his handle to tweet on a variety of topics, including skiing—even skiing at co-defendant Sun Valley Company’s resort. According to some accounts, Barshack’s long-term plan for his Twitter account was to use it to promote local businesses in Sun Valley, Idaho. But in October 2012, Twitter notified Barshack that it had “received a valid report and determined that [Barshack’s] account, @SunValley, is engaged in non-parody impersonation,” and re-assigned his account to the potentially less aesthetically pleasing @sunvalley_.

Over the next few months, Barshack contacted Twitter multiple times by mail, the contents of which are attached as an exhibit to Barshack’s complaint. According to Barshack, the only response he received from Twitter was a boilerplate message that included a copy of Sun Valley Resort’s original report of impersonation, which is also included in the complaint’s exhibits. Ultimately, Barshack and his attorney and wife Erin Smith filed suit in May 2013, demanding that Twitter return the @SunValley handle to Barshack.

Barshack’s complaint seeks an injunction prohibiting Twitter from permitting Sun Valley Company to use the @SunValley handle and demands that Twitter return the handle to Barshack. In addition, the complaint alleges breach of contract and breach of good faith and fair dealing by Twitter. According to Barshack’s May 30, 2013 tweet from his new Twitter account bearing the handle @IWasSunValley, Barshack “granted extensions to both SVC and Twitter until mid-june [sic] for them to reply.” The Twitter tagline for Barshack’s @IWasSunValley account reads: “Fighting Evil and Arrogance for as long as I can remember.

The exhibits attached to Barshack’s complaint show that Twitter’s original decision to re-assign the @SunValley handle to Sun Valley Company was based on Twitter’s trademark and impersonation policies. Twitter’s trademark policy prohibits the use of trademarked material that is intended to mislead or confuse, or has the effect of misleading or confusing others, but, significantly, the policy permits the use of “another’s trademark in a way that has nothing to do with the product or service for which the trademark was granted.” In parallel, Twitter’s impersonation policy prohibits “accounts portraying another person in a confusing or deceptive manner” but permits accounts in which “the user shares [the name of the person being impersonated] but has no other commonalities” or for which “the profile clearly states it is not affiliated with or connected to any similarly-named individuals.”

In Sun Valley Resort’s original October 2012 report to Twitter concerning the @SunValley handle, Sun Valley Resort alleged that Barshack’s @SunValley account was “using artwork from our trademarked Logo along with wrod [sic] mark of Sun Valley,” and that Sun Valley Resort “would like to use this username on Twitter.” One of the pieces of artwork at issue was an illustration of a “sun representing a human face or an animal”; the other was “a sun positioned above and to the right side of the words ‘Sun Valley’.” Barshack’s complaint argues that many local businesses in Sun Valley, Idaho use a similar illustration to promote their companies, and that the trademark registration for the only logo he used—the illustration of the “sun representing a human face or an animal”—had expired due to non-renewal. The complaint further argues that Barshack’s Twitter account had neither the intention nor the effect of deceiving, misleading or confusing others into thinking that the account was operated by Sun Valley Resort, which could be a critical point if Sun Valley Company were to respond with an allegation of infringement of either federal or common law trademark rights.

It is unclear how Barshack intends to use the @SunValley handle if it is ultimately re-assigned to him. Barshack reportedly has stated that if he does reacquire the handle, it would not be for sale (and note that Twitter’s username squatting policy already prohibits attempts “to sell, buy, or solicit other forms of payment in exchange for usernames”). Regardless of the outcome, Barshack v. Twitter may be one of the first cases of its kind in which a user has formally filed suit against Twitter for re-assigning the user’s handle to someone else, and the case underscores the fact that in the world of social media, even if you grab your username first, you might not always be able to keep it.

Last year, the Internet Corporation for Assigned Names and Numbers (ICANN) received over 1,900 applications for new generic top-level domains (gTLDs), including multiple applications for popular domains like .app, .inc, .art, .shop and .music. More than seven hundred applications have now passed an initial evaluation. If no further issues arise for those applications, ICANN anticipates that some of the new gTLDs could go live in the next few months.

Although the new gTLD program will provide businesses with more opportunities to register for industry-specific Internet addresses (such as domain names ending in .search, .map, .book and .app), the gTLD expansion will also create significant opportunities for bad-faith registration of second-level domain names (e.g., [TRADEMARK].[new gTLD]). Anticipating this problem, ICANN designed “rights protection mechanisms,” discussed in further detail below, to preempt or curtail some bad-faith behavior. The immense number of new gTLDs that are expected to go live, however, creates practical complications for trademark owners—particularly companies that have a large number of trademarks. In considering whether to take advantage of the rights protection mechanisms, such companies may want to focus their efforts on protecting a smaller number of key brands.

DETERRING CYBERSQUATTING

ICANN has established a Trademark Clearinghouse, which plays a central role in ICANN’s rights protection mechanisms. Anyone who has protectable rights in a trademark can seek to record that trademark in the Clearinghouse for a fee of approximately $145 per trademark record per year. The Clearinghouse will verify each submission and will function as a repository of verified records. The new gTLD registries will use the verified records in the Clearinghouse in connection with two rights protection mechanisms.

First, each new gTLD registry must provide an initial sunrise period for a minimum of 30 days for anyone who has a verified trademark record in the Clearinghouse and who can demonstrate use of that trademark. During this period, qualifying trademark owners may preregister for second-level domain names that match their verified trademarks (e.g., [VERIFIEDTRADEMARK].[new gTLD]). Verification in the Clearinghouse does not guarantee allocation of a second-level domain name, however, because there may be multiple qualified trademark owners. Disputes regarding sunrise registrations will be resolved according to each registry’s dispute resolution process.

Second, for a minimum of 90 days immediately after a registry opens a new gTLD to the public for general registration, the registry must provide a trademark claims notice to anyone seeking to register a second-level domain name that matches a Clearinghouse record. The notice will list the owner, trademark, jurisdiction(s) and goods and/or services. The domain name applicant may proceed with the second-level domain name registration, but only after acknowledging receipt of the notice. If the domain name applicant proceeds with the registration, the trademark owner will be notified of the registration. The trademark owner will not be able to block the registration, but will be able to file a Uniform Rapid Suspension System (URS) or Uniform Domain Name Dispute Resolution Policy (UDRP) action to suspend or obtain the domain name. In such proceedings, the trademark claims notice could make it difficult for a cybersquatter to plead innocent.

DECISION TIME FOR TRADEMARK OWNERS

Trademark owners who want to assure maximum protection for their marks need to act now. Not only is the verification pace in the Clearinghouse expected to slow down as the volume of submissions increases, it is anticipated that some of the new gTLDs could go live as early as late summer. Trademark owners whose records have not been verified by the Clearinghouse when the first new gTLDs are launched will not be able to take advantage of the corresponding sunrise periods and will not receive notices if someone applies to register a second-level domain name that matches their trademark.

In the latest issue of Socially Aware, our Burton Award-winning guide to the law and business of social media, we look at recent First Amendment, intellectual property, labor and privacy law developments affecting corporate users of social media and the Internet. We also recap major events from 2012 that have had a substantial impact on social media law, and we take a look at some of the big numbers racked up by social media companies over the past year.

To read the latest issue of our newsletter, click here.

For an archive of previous issues of Socially Aware, click here.

BitTorrent, the peer-to-peer (P2P) file-sharing system that enables the quick downloading of large files, has sparked another novel controversy stemming from copyright-infringement claims brought against its users. Users take advantage of the BitTorrent sharing system to anonymously access popular media such as books and movies. That anonymity is unlikely to last long for users who are alleged to have downloaded copyrighted material. Last month, Judge Sweet, a federal judge in the Southern District of New York (SDNY), held that an anonymous P2P user has no First Amendment right to quash a subpoena seeking her identity where the plaintiff had no other means to effectively identify the defendant.

In John Wiley & Sons Inc. v. Does Nos. 1-35, the plaintiff (Wiley), a publisher of books and journal articles, alleged that unidentified “John Does” used BitTorrent to illegally copy and distribute Wiley’s copyrighted works and infringe on Wiley’s trademarks. Wiley sued 35 defendants known only by their “John Doe Numbers” and Internet Protocol (IP) addresses. Seeking to identify the Does, Wiley moved for court-issued subpoenas to be served on various Internet service providers (ISPs), ordering them to supply identifying information corresponding to the Does’ IP addresses. In an attempt to maintain her anonymity and avoid liability, one of the 35 Does, then known only as John Doe No. 25 (“Doe 25”) or IP Address 74.68.143.193, moved to quash a subpoena served on her ISP, Time Warner Cable.

Wiley reflects a new wave of litigation in which copyright holders have shifted from suing host sites to focusing on individual users of P2P networks. The mere fact that copyrighted material is downloaded from a particular IP address may be insufficient to prove that the P2P network user is the infringer. An IP address typically provides only the location at which one of any number of devices may be used by any number of individuals (in fact, Doe No. 25 contended that her ex-husband, not she, downloaded the infringing works). If a motion to quash is granted, the account holder’s identity is not revealed, and the claim is effectively dead.

In considering whether to grant an anonymous account holder’s motion to quash a subpoena, courts balance the user’s First Amendment right to act anonymously with the plaintiff’s right to pursue its claims.

Anonymous users can rely on a line of precedent that extends the First Amendment’s protections to online expression. And under Rule 45 of the Federal Rules of Civil Procedure, a court must quash a subpoena if it requires disclosure of protected matter. Thus, to the extent that anonymity is protected by the First Amendment, courts will quash subpoenas designed to breach anonymity.

On the other hand, plaintiffs pursuing their claims can point to precedent holding that the First Amendment may not be used to encroach upon the intellectual property rights of others.

To balance these competing principles and determine whether certain actions trigger First Amendment protection, courts weigh the five factors set out in Sony Music Entertainment Inc. v. Does 1-40:

  • whether the plaintiff has made a concrete showing of actionable harm;
  • the specificity of the discovery request;
  • the absence of alternative means by which to obtain the subpoenaed information;
  • a central need for the data; and
  • the party’s expectation of privacy.

In Wiley, each of these five factors weighed in favor of disclosure of the defendant’s identity. Wiley pled a sufficiently specific claim of copyright infringement, and, without a subpoena, Wiley would have no other effective way to identify potential infringers of Wiley’s intellectual property rights.

At least five other courts within the SDNY have denied motions to quash in similar litigations involving defendants accused of infringing Wiley’s copyrights via BitTorrent. Going forward, so long as copyright holders can satisfy the Sony five-factor test, they will be able to rely on cases like Wiley to ferret out copyright infringers.

In a string of cases against Google, approximately 20 separate plaintiffs have claimed that, through advertisements on its AdWords service, Google engaged in trademark infringement. These claims have been based on Google allowing its advertisers to use their competitors’ trademarks in Google-generated online advertisements. In a recent decision emerging from these cases, CYBERsitter v. Google, the U.S. District Court for the Central District of California found that Section 230 of the Communications Decency Act (CDA) provides protection for Google against some of the plaintiff’s state law claims.

As we have discussed previously (see here and here), Section 230 states that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” The Section 230 safe harbor immunizes websites from liability for content created by users, as long as the website did not “materially contribute” to the development or creation of the content. An important limitation on this safe harbor, however, is that it shall not “be construed to limit or expand any law pertaining to intellectual property.”

In the CYBERsitter case, plaintiff CYBERsitter, which sells an Internet content-filtering program, sued Google for selling and displaying advertisements incorporating the CYBERsitter trademark to ContentWatch, one of CYBERsitter’s competitors. CYBERsitter’s complaint alleged that Google had violated numerous federal and California laws by, first, selling the right to use CYBERsitter’s trademark to ContentWatch and, second, permitting and encouraging ContentWatch to use the CYBERsitter mark in Google’s AdWords advertising. Specifically, CYBERsitter’s complaint included the following claims: Trademark infringement, contributory trademark infringement, false advertising, unfair competition and unjust enrichment.

Google filed a motion to dismiss, arguing that Section 230 of the CDA shielded it from liability for CYBERsitter’s state law claims. The court agreed with Google for the state law claims of trademark infringement, contributory trademark infringement, unfair competition and unjust enrichment, but only to the extent that these claims sought to hold Google liable for the infringing content of the advertisements. The court, however, did not discuss the apparent inapplicability of the Section 230 safe harbor to trademark claims. As noted above, Section 230 does not apply to intellectual property claims and, despite the fact that trademarks are a form of intellectual property, the court applied Section 230 without further note. This is because the Ninth Circuit has held that the term “intellectual property” in Section 230 of the CDA refers to federal intellectual property law and therefore state intellectual property law claims are not excluded from the safe harbor. The Ninth Circuit, however, appears to be an outlier with this interpretation; decisions from other circuit courts suggest disagreement with the Ninth Circuit’s approach, and district courts outside the Ninth Circuit have not followed the Ninth Circuit’s lead.

Google was not let off the hook entirely with regard to the plaintiff’s state trademark law claims. In dismissing the trademark infringement and contributory trademark infringement claims, the court distinguished between Google’s liability for the content of the advertisements and its liability for its potentially tortious conduct unrelated to the content of the advertisements. The court refused to dismiss these claims to the extent they sought to hold Google liable for selling to third parties the right to use CYBERsitter’s trademark, and for encouraging and facilitating third parties to use CYBERsitter’s trademark, without CYBERsitter’s authorization. Because such action by Google has nothing to do with the online content of the advertisements, the court held that Section 230 is inapplicable.

The court also found that CYBERsitter’s false advertising claim was not barred by Section 230 because Google may have “materially contributed” to the content of the advertisements and, therefore, under Section 230 would have been an “information content provider” and not immune from liability. Prof. Eric Goldman, who blogs frequently on CDA-related matters, has pointed out an apparent inconsistency in the CYBERsitter court’s reasoning, noting that Google did not materially contribute to the content of the advertisements for the purposes of the trademark infringement, contributory infringement, unfair competition and unjust enrichment claims, but that Google might have done so for the purposes of the false advertising claim.

CYBERsitter highlights at least two key points for website operators, bloggers, and other providers of interactive computer services. First, at least in the Ninth Circuit, but not necessarily in other circuits, the Section 230 safe harbor provides protection from state intellectual property law claims with regard to user-generated content. Second, to be protected under the Section 230 safe harbor, the service provider must not have created the content and it must not have materially contributed to such content’s creation.

Popular online marketplace CafePress.com suffered a legal setback recently when a U.S. District Court in the Southern District of New York denied CafePress’s motion for summary judgment against claims of trademark infringement. CafePress operates an online “print on demand” service that allows users to upload designs which CafePress then prints on a variety of items. The users receive a share of the money that CafePress makes when it sells items displaying the users’ designs. These items include everything from coffee mugs and beer steins to iPhone cases and flip-flops. In 2009, guitar neck manufacturer Born to Rock Design Incorporated (BTR), which owns a federal registration for the trademark “Born to Rock,” sent a letter to CafePress asking the site to stop selling merchandise displaying the mark. Since 2003, CafePress had produced a number of different items displaying the “Born to Rock” phrase, all based on designs provided by users. These designs included the following:

After CafePress refused to remove user designs incorporating the phrase, BTR filed a complaint for, among other things, trademark infringement. Following discovery, CafePress filed a motion for summary judgment, arguing that the “Born to Rock” designs were not used in commerce (an element of trademark infringement) and that, even if they were, CafePress’s use was “fair use”—i.e., a descriptive or ornamental use of the phrase “Born to Rock” in a non-trademark sense.  The court struck down the first argument outright, stating that CafePress was being “facetious” in arguing that it did not use the mark in commerce given that CafePress actually imprints the designs on merchandise and ships that merchandise to customers. In considering the fair use argument, the court acknowledged that certain uses of the “Born to Rock” designs may constitute non-trademark fair use (e.g. “Born to Ride / Born to Rock”), but concluded that CafePress could not rely on fair use as a blanket defense for all of the designs.

Legal scholar Eric Goldman has pointed out that CafePress can raise other, stronger arguments in the future, including that the trademark is invalid and that consumers were not likely to be confused by CafePress’s use of the mark. Nonetheless, the district court’s denial of summary judgment does send a message to trademark holders: you can sue online service providers for trademark infringement based on user-generated content and you just might win.  The Digital Millennium Copyright Act (DMCA) creates a safe harbor for online service providers who promptly remove user-generated copyright-infringing content after receiving takedown notices, but there is no equivalent safe harbor for content that infringes trademarks (although chillingeffects.org, a website devoted to the DMCA, does note that “in the absence of any caselaw on the subject, should a trademark holder bring a claim for contributory infringement, an [online service provider] might be able to mount a valid defense by analogy to [DMCA] section 512(c).”).

Social media sites in particular may be easy targets for trademark claims based on user-generated content. Such sites often host “community pages” that serve as fan pages for brands without any authorization from the companies involved (for example, compare this official Facebook page established by a trademark holder with this community page run by a fan). In the wake of the case against CafePress, social media sites and other websites that host user-generated content should be aware of these trademark-related risks and the fact that the DMCA safe harbors do not apply to trademark claims.