Rulings on trademark infringements are unusual enough to be mentioned. On November 28 last year, the Paris Court of First Instance took a decision on this subject that deserves to be examined. The case opposed a Facebook user to Telfrance - the owner of the "PLUS BELLE LA VIE" trademark.
The court considered that using the "PLUS BELLE LA VIE" trademark on a public Facebook page dedicated to this French TV series did not constitute an infringement, in that the trademark was not used in a normal course of business, as web users did not use it for professional or business purposes.
This was the first time a French court had to rule on the use of usernames in social networks. The decision actually clarified the notion of use in the context of common business life.
In fact, the development of web 2.0 has raised a great number of conflicts between trademark law and usernames on social networks. Using such networks is a rather risky endeavor for trademark owners, as there is a major risk that their marks will be used without permission on social media pages. The publication of comments, which is standard and essential practice on all social networks, may be strongly detrimental to a trademark's reputation, and an increasing number of free-riding or disparagement cases are being reported. But what is truly detrimental to a trademark is that social networks such as Facebook, Twitter, YouTube or Dailymotion allow users to freely create usernames, on a first-come first-served basis, which is prejudicial to the mark, as it opens the way to unauthorized reuses.
Trademark protection on social networks is not always efficiently guaranteed by positive law, and particularly by infringement actions. In actual fact, the conditions for admissibility of such actions have been increasingly restrictive since the major Google judgment by the European Court of Justice of 23 March 2010 on the use of keywords (adwords), and even more so since the decision of 28 November last year, which is a good illustration.
Trademark law provides for such protections as infringement actions, but there is also room in this context for application of the general principles of civil liability, as exemplified in actions for unfair competition or commercial free riding. In such cases, the fault is defined as a hindrance to fair practices between competitors through imitation of somebody else's trademark with a view to creating a possibility of misleading the public (free riding; disparagement; bellitlement; injury to reputation on the web (e-reputation)).
The LOPPSI 2 law of 14 March 2011 has created the "digital identity theft" offence, as provided by article 226-4-1 of the Criminal Code. The offence is characterized by any use of a third party's identity, or of any data items that can be used to identify said third party (IP address, e-mail address, username) and causes an unlawful attack on this person's honor, reputation or recognition.
Litigation is virtually non-existent on social networks. This is because most of these networks' terms and conditions include a great number of provisions that prohibit any breach of trademark law. Examples include: online claims system; complaint filing; or notification procedures in case of a breach of intellectual property rights (designations differ according to the network). However, all social networks largely allow for the right to freedom of expression and parody, which allows a great number of users to create web accounts specifically for parody, comments or fans.
It should also be stressed that, since social networks are based on strong interactivity and solidarity between members, one should carefully calibrate his reaction by anticipating the impact such reaction may induce, so as to avoid generating a negative buzz on social networks.
The number of trademark abuses on social networks is so high that the following rules have become essential for all trademark owners:
- Make sure that your action is clearly substantiated and properly targeted, so as to avoid any inappropriateness or irrelevance. An action is substantiated when it can be demonstrated that there is a confusion as to the origin of the services, or disparagement that goes beyond simply giving an opinion, or a breach of the essential functions of the trademark, as defined by OHIM.
- Anticipate any negative buzz effect.
- But also identify the responsibilities of the various players involved - i.e.: social network, account users, third parties posting messages on a public Facebook page, etc. In practice, the authors of illegal contents are difficult to identify. This is why a distinction should be made between the party that publishes, and the party that hosts the content at issue. In fact, the hoster has a subsidiary responsibility under article 6-I of the French law of 2004 on confidence in the digital economy (LCEN) if it can be proven that "while it was aware of the illegal character of the content, it did not take prompt action to remove, or make it impossible to access the respective data.