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gary-m-schuster-smallThe internet is sprawling, boundless and seemingly chaotic and amoral, with websites beyond counting and many devoted to gambling, pornography and other subjects unfit for polite company. But it is not utterly lawless. A year ago I blogged about success we had using a quick arbitration proceeding to recover a domain name from a cybersquatter.

Nearly the size of the entire internet, Facebook, the social media juggernaut, reported that as of May 1, 2013, it had 1.11 billion users. However, we recently learned that Facebook also has its rules, and it is possible to use them.

A business client complained to us that someone had created a Facebook page having a name virtually identical to our client’s own Facebook page. People looking for Our Facebook Page could easily come upon this Other Facebook Page, and what they would find there would not be good for our client’s business. The Other Facebook Page made criticized and fun of our client’s business, and had posts making fun of both celebrities and private citizens. There were also photos of both celebrities and private citizens, very likely used without permission. Those posts could lead to complaints against our client, or even legal claims. The person who controlled the Other Facebook Page also appeared to be making disparaging posts on Our Facebook Page.

They are not easy to find, but Facebook has procedures for filing various kinds of complaints.

There are different procedures for bullying, hate speech, fake accounts, fake IDs, pornography, and other kinds of bad behavior. Under the circumstances I focused on “Intellectual Property Issues,” which cover trademarks and copyrights. Our client’s complaint concerned his business name and brand, which is to say, his trademark. A trademark is used to identify the source and quality of goods or services. Read here about the differences between patents, trademarks and copyrights.

The Facebook procedure required that before filing a complaint with Facebook, I try to resolve the issues with the other party, so I drafted a fairly standard trademark cease and desist letter containing the following complaints:

  • Because the name of the Other Facebook Page was virtually identical with that of Our Facebook Page, there is substantial likelihood for confusion by users of Facebook as to the source of the page and the identity of the owner.
  • The similarity of names suggests to the public an association, affiliation, endorsement or other connection with my client, when in fact there is none.
  • The unauthorized use of our client’s trademark dilutes the trademark.
  • The Other Facebook Page makes unauthorized use of the names and likenesses of both celebrities and private citizens, often exposing them to ridicule, contempt, scorn, reproach, or indignity. These actions might be attributed to our client and expose our client to the risk of legal action for infringement of the rights of privacy and publicity, defamation and other claims.
  • The person who created the Other Facebook Page posted on Our Facebook Page many comments and images which tend to expose our client to ridicule, contempt, scorn, reproach, or indignity, all of which tarnishes and causes damage to our client’s reputation and business.

Because this was Facebook, an interesting twist was that neither I nor my client could determine the person who actually owned or managed the Other Facebook Page. I could not mail the cease and desist letter to a person. Instead, I sent the letter by private Facebook message. This actually worked, resulting in a small change within hours. The Other Facebook Page now contained a short notice saying it was not affiliated with our client. However, the trademark was still being used without permission, and the disparaging and risky materials remained. I had to take the next step of filing a complaint with Facebook.

The complaint is filed using an online, fill-in-the-spaces form. Within 24 hours I received from Facebook 3 brief questions which I promptly answered. Within 24 hours after that I received from Facebook the following message: “We have removed or disabled access to the third-party or user-generated content you have reported to us for violating our Statement of Rights and Responsibilities.” Victory! I checked, and the Other Facebook Page could not be found.

Before you start firing off cease and desist letters, you should be aware of a risk which I discussed with my client before proceeding. You can Google it: “Cease and Desist Backfire.” Sometimes recipients of cease and desist letters retaliate, publicly, massively, embarrassingly or even doing harm. In the case above, the owner of the Other Facebook Page posted my entire letter on the Other Facebook Page, saying “Looks like I got somebody mad!” (He did have the good sense to omit my name and contact information.) That backfire was quite tolerable, but other examples of backfire are more severe, and frequently entertaining (as long as it isn’t you). You should not rush into cease and desist letters without first considering the possibility of backfire.

Gary Schuster is Senior Counsel on the Business & Estates Team. He can be reached by phone at 845-778-2121 toll free or 845-778-2121 and by email.

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