SOCIAL MEDIA LAW PAPER 3.1

Intellectual Property Issues in Social Media

These materials were prepared by Bianca L. Scheirer of Dean Palmer IP Law, Vancouver, BC, for the Continuing Legal Education Society of British Columbia, February 2011. © Bianca L. Scheirer

3.1.1

INTELLECTUAL PROPERTY ISSUES IN SOCIAL MEDIA1

I.

Introduction .......................................................................................................................................................1

II.

Copyright ............................................................................................................................................................2 A. Introduction........................................................................................................................................................................................ 2 B. File Sharing........................................................................................................................................................................................... 2 1. A&M Records v. Napster.................................................................................................................................................. 3 2. MGM Studios v. Grokster ................................................................................................................................................ 3 3. RIAA v. Limewire................................................................................................................................................................... 3 4. The Pirate Bay......................................................................................................................................................................... 3 5. YouTube.................................................................................................................................................................................... 4 C. The Relevant Copyright Law in Canada............................................................................................................................... 4 1. Introduction............................................................................................................................................................................ 4 2. Jurisdiction Issues ................................................................................................................................................................. 5 3. Private Copying ..................................................................................................................................................................... 5 4. Fair Dealing .............................................................................................................................................................................. 6 5. Conclusion ............................................................................................................................................................................... 7

III.

Trademarks.........................................................................................................................................................8 A. Introduction........................................................................................................................................................................................ 8 1. Scrabulous ................................................................................................................................................................................ 8 2. The Relevant Trade-Mark Law in Canada............................................................................................................... 8 3. Employees’ (Mis)Use of Brands..................................................................................................................................... 9 4. Generic Uses of Trade-Marks...................................................................................................................................... 10 5. Domain Names................................................................................................................................................................... 10 6. Conclusion ............................................................................................................................................................................ 10

IV.

Concluding Remarks.......................................................................................................................................10

I.

Introduction

Social media is media created online through social interaction and the exchange of user-generated content. It is distinct from and defined against traditional media such as print media and television where the publication of information goes one way. In social media, with the advance of Web 2.0 technologies, such information flows from multiple sources. Everyone with an internet connection can be a ‘publisher.’ Social media includes social networking sites such as Facebook, Twitter, MySpace, and LinkedIn, but it also includes video and file sharing sites such as YouTube, IsoHunt and The Pirate Bay, social

1

This paper was prepared by Bianca L. Scheirer of Dean Palmer IP Law, Vancouver, BC, for the Continuing Education Society of British Columbia, February 2011. This paper is presented for informational purposes only and does not constitute legal or other professional advice.

3.1.2 bookmarking sites such as Digg and Stumbleupon, wikis such as Wikipedia and Ancestry, online gaming, most blogs, and websites that contain blogs, message boards or any method for online users to contribute content (including eBay). Indeed, virtually all such sites have an interactive, collaborative element of some kind, which is what defines them as social media. For the purpose of this paper, I see social media as any online media that allows any number of users to ‘publish’, upload, download, stream or otherwise transmit any content in which intellectual property rights may subsist. Social media presents a number of challenges to intellectual property law that, prior to its propagation, has not been seen before. The same rules apply, the same legislation governs, and the same common law rights exist for those who own intellectual property. But the sheer volume of material being published on the internet, the speed at which material can be transmitted, and the vast number of individuals who can be reached around the world creates challenges for owners of intellectual property rights never known before. At the same time, this reality raises serious concerns for users of social media who can be exposed, unwittingly or otherwise, to liability for breach of intellectual property rights. Court decisions in Canada of any kind relating to intellectual property in the context of social media are, at this time, few and far between. The US and other jurisdictions have seen considerably more changes in legislation and court cases over the last ten years or so and this paper will include some of the relevant jurisprudence from those jurisdictions to underscore the issues and offer ways of thinking about them for Canadian users of social media and Canadian owners of intellectual property rights. The primary purpose of this paper, then, is merely to highlight the issues and tensions between intellectual property and social media, in particular, as they relate to the two areas that, to date, have been addressed by the courts: copyright and trade-mark.

II. A.

Copyright

Introduction

To date, copyright is the most high-profile ‘intellectual property and social media’ issue and it will likely remain that way. The plethora of cases that have arisen around the world show that so-called “user-generated content” is not the same thing as “user-created content.” Content exchanged between individuals online is not always “content generated by a user” but, rather, “content created by a copyright holder who has not authorized its generation by the user.” In other words, its publication in social media is said to constitute a breach of the holder’s copyright.

B.

File Sharing

The most prevalent and hotly contested examples of such alleged breaching is the case of file sharing. File sharing refers to the uploading and downloading of music, movies, videos, photographs, books, text, or any other data that is shared between users of the internet, commonly referred to as ‘peers.’ Current peer-to-peer (‘P2P’) file-sharing websites include MiniNova, FrostWire, uTorrent, and The Pirate Bay, but the number of such websites and networks are vast and they are constantly growing. They are mostly free and, with some exceptions, they are available world wide. The Recording Industry Association of America (the “RIAA”) and the Motion Picture Association of America (the “MPAA”), both of whom represent the major entertainment companies2 have led the efforts to try to shut down file sharing of content that infringes copyright. Over the last 10 years, they

2

Including the four biggest music entertainment copies, EMI, Sony Music Entertainment, Universal Music Group, Warner Music Group and the six biggest film companies, Walt Disney Motion Pictures Group, Sony Pictures, Paramount Pictures (owned by Viacom), 20th Century Fox, Universal Studios, and Warner Bros.

3.1.3 have sued tens of thousands of individuals and companies in the US and around the world, including some in Canada. The court decisions that have come out of it, and those similar to it around the world, illustrate the burgeoning tensions between file sharing and intellectual property law.

1.

A&M Records v. Napster

The first major file-sharing case came in the US in 2001 with A&M Records, Inc. v. Napster, Inc.3 The plaintiffs were all members of the RIAA. Napster, founded by an 18-year-old US computer science student in 1999, was an enormously popular website, unique at that time for its searchable index of downloadable music files. The US Court of Appeals for the Ninth Circuit confirmed that Napster could be held liable for contributory and vicarious infringement of the copyright of the plaintiffs to the degree that the defendant had the ability to remove the infringing material from their website. To put the case into perspective and to highlight the nature of the controversy, a consortium of 18 US copyright law professors filed an amicus curaie brief in the case taking the position that the copyright laws were not intended to protect existing business models in the face of changing technology and that, if the plaintiffs wanted copyright to extend to the suppression of new technologies, their redress was with Congress rather than the courts.4

2.

MGM Studios v. Grokster

The next big file-sharing case was MGM Studios, Inc. v. Grokster, Ltd.5 in 2005, a US Supreme Court against several peer-to-peer file-sharing sites, Grokster, Limewire (which used the popular network Gnutella) and Streamcast (the maker of Morpheus). The Court unanimously held that defendants could be liable for inducing or contributing to copyright infringement for distributing a device with the object of promoting its use to infringe copyright. However, the Court was split on the circumstances under which distribution would attract liability.

3.

RIAA v. Limewire

On October 26, 2010, in a follow-up suit applying the MGM v. Grokster ruling, the US federal court issued an injunction against the defendant Limewire forcing it to stop distributing the LimeWire software and to prevent “the searching, downloading, uploading, file trading and/or file distribution functionality, and/or all functionality” of its software.

4.

The Pirate Bay

The Pirate Bay is one of the most famous/infamous6 websites that allows users to upload and download movies, television shows, music, software, and other files. It uses bit torrents, small files that contain metadata necessary to download the data files from other users through a tracker which allows for faster download times with larger content than ordinary P2P file sharing. Its registered users can upload their own torrents and comment on others’, although registration is not necessary to download torrents. It was established in Sweden in 2003.

3

239 F.3d 1004.

4

Viewed at: http://www-personal.umich.edu/~jdlitman/briefs/Amicus.pdf

5

545 U.S. 913.

6

On its blog page dated January 12, 2011, The Pirate Bay identified its overall users as over 31 million and claimed to be among the 80 biggest websites in the world http://thepiratebay.org/blog. As of Feb. 15/11, Alexa.com listed it at number 86; China’s Baidu.com was listed at number 8 and Russia’s V Kontakte at number 39 (http://www.alexa.com/topsites/global;4).

3.1.4 In January 2008, criminal charges and civil charges filed by a group led by the International Federation of the Phonographic Industry which represents the recording industry worldwide (the “IFPI”) were filed against the four individuals behind The Pirate Bay for, among other things, assisting breach of copyright law by other persons. The joint criminal/civil trial was held in April 2009. All four individuals were found guilty of assisting copyright infringement and sentenced to one year in prison and a fine of the equivalent of over USD4,000,000.7 On appeal issued on November 26, 2010, appellate court decreased the original prison terms for three of the individuals (to 10 months, 8 months and 4 months) but increased the fine (by about 1.5%). The appeal of that decision is pending.

5.

YouTube

YouTube is currently the most popular video-sharing website in the world.8 YouTube differs from ‘file sharing’ websites in that it hosts the videos itself rather than connects users to each others’ files. But it also does not require the videos to be viewed on its own website which makes the dissemination of the videos that much more far-reaching. They can be viewed on many third-party websites, smartphones, apps, Apple TV, iPod Touch and iPhones along with any number of blogs and social networking sites such as Facebook. Inevitably some of the content uploaded to YouTube has been content unauthorized by its owner and, consequently, YouTube has been sued by several organizations for various copyright infringements. In June 2010, the US Federal Court in Viacom International Inc., v. YouTube, Inc.9 held that Google was entitled to rely on the ‘take down and notice’ provisions of the US’s Digital Millenium Copyright Act (the “DMCA”)10 and that its obligation to remove videos was limited to those videos specifically named in a notice and identified as infringing works. That is, the requirement under the DMCA that the web host have actual knowledge that it is hosting infringing material or that it be aware of facts or circumstances from which infringing activity is apparent, is applicable to each individual video. The Court dismissed Viacom’s application for summary judgment. Viacom has appealed.

C.

The Relevant Copyright Law in Canada

1.

Introduction

In Canada, as in most other jurisdictions, copyright is the right to copy and the right to authorize copying (s. 3(1)) in any material form.11 It is entirely a creature of statute; there is no common law copyright. Protections under the Copyright Act12 include the following “works” and interests: 

literary, dramatic, musical and artistic works (s. 5) (literary works include software);



a performer’s performance of a work (s. 15);

7

In a separate action, The Pirate Bay’s main internet service provider, Black Internet, was enjoined by the Stockholm district court from making available the specific works mentioned in the trial judgment and two of the individuals were enjoined from participating in the operation of The Pirate Bay’s website or its trackers. The appeals court upheld the decision.

8

As of Feb.15/11, YouTube was ranked third by Alexa (http://www.alexa.com/).

9

No. 07 Civ. 2103.

10

The DMCA incorporates and was passed along with the Online Copyright Infringement Liability Limitation Act.

11

Théberge v. Galerie d'Art du Petit Champlain Inc., [2002] S.C.J. No. 32 (S.C.C.).

12

(R.S., 1985, c. C-42).

3.1.5 

a maker of a sound recording (s. 18);



a broadcaster in a communication signal (s. 21).

The copyright holder has the sole right, “in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication” (s. 3(1)(f)). However, providing the means of communication necessary for another person to communicate the work does not infringe s. 3(1)(f) of the Act (s. 2.4(1)(b)). In the 2004 case of Society of Composers, Authors and Music Publishers of Canada v. Canadian Association of Internet Providers13 (known as ‘Tariff 22’ for the proposed tariff of that name), the Supreme Court of Canada held that internet service providers (“ISPs”) fall within the protection of s. 2.4(1)(b) “so long as the [ISP] does not itself engage in acts that relate to the content of the communication, but confines itself to providing ‘a conduit’ for information communicated by others” (at 4). Caching was also considered to be protected under s. 2.4(1)(b).

2.

Jurisdiction Issues

In Tariff 22, the Supreme Court of Canada held that “an internet communication that crosses one or more national boundaries ‘occurs’ in more than one country, at a minimum the country of transmission and the country of reception.”14 The Act applied to internet communications that had a “real and substantial connection” to Canada and the factors to consider in establishing that connection were the location of the host server, the content provider, the end user and any intermediaries. The means for connecting “are not limited to routers and other hardware, but also include all software equipment, connectivity services, hosting and other facilities and services without which such communications would not occur.”15 These principles have not been tested in the context of social media in Canada but, given the global nature of the internet, jurisdiction is likely to be a growing issue.

3.

Private Copying

Section 80(1) of the Copyright Act allows the copying of a musical work embodied in a sound recording (or a performer’s performance, etc.) onto an “audio recording medium” for the person’s private use. The reproduction must be for private use only, that is, not for sale, rental, distribution, communicating to the public, performing or causing to be performed in public (s. 80(2)).16 Section 79 defines “audio recording medium” as “a recording medium, regardless of its material form, onto which a sound recording may be reproduced and that is of a kind ordinarily used by individual consumers for that purpose, excluding any prescribed kind of recording medium.” The meaning of “audio recording medium” includes audiocassettes longer than 40 minutes, CD-Rs, CD-RWs, CD-R Audio, CD-RW Audio, and MiniDiscs but does not include blank DVDs, digital audio recorders or the removable or non-removable memory in digital audio recorders and, so far, memory in personal computers.17

13

S.C.J. No.44 (S.C.C.).

14

At para. 44.

15

At para. 92, citing the Copyright Board’s decision at 452.

16

Under s.82, manufacturers and importers of blank audio recording media are required to pay a levy set by the Copyright Board on the sale of that media.

17

Re Private Copying 2003-2004, Tariff of Levies to be Collected by CPCC (2003), 28 C.P.R. (4th) 417 (Copyright Bd.); Canadian Private Copying Collective v. Canadian Storage Media Alliance, [2005] 2 F.C.R. 654, 36 C.P.R. (4th) 289 (Fed. C.A.); Apple Canada Inc. v. Canadian Private Copying Collective, [2008] F.C.J. No.5 (Fed. C.A.).

3.1.6 Notably, the source of the material copied is not addressed by the Copyright Act. In Re Private Copying 20032004, supra, however, the Copyright Board concluded that s. 80 does not require that the copy be made from a non-infringing source and therefore the source of a music file was irrelevant and could be a pre-owned recording, a borrowed CD or a file downloaded from the internet.18 However, the Board also noted that “making a copy of a CD of the latest release by the hottest star to give to one’s friend is still an infringing action, as it is not a copy for personal use. In the same vein, distributing this same copy to friends online is prohibited.”19 In the 2004 case of BMG Canada Inc. v. John Doe,20 the Canadian Recording Industry Association (the “CRIA”), representing the largest music producers in Canada, applied for an order compelling five internet service providers (Bell, Rogers, Telus, Shaw and Vidéotron) to disclose the identity of 29 customers alleged to have infringed copyright through two peer-to-peer file sharing sites, KaZaA and imesh. The motions judge held that the ISPs were not required to disclose the information sought. He then went on to find that the plaintiffs had not established sufficient evidence that their copyright had been infringed. Further, citing Re Private Copying 2003-2004, supra as support, he stated that “downloading a song for personal use does not amount to infringement.”21 The Federal Court of Appeal22 dismissed the appeal but, in addressing the issue of whether or not downloading a song for personal use amounts to infringement, the court took issue with the fact that the motions judge did not consider whether the defendants had reproduced musical works for the sale, rental, etc. or other facts that would disallow the “private use” defence. For this reason, the court stated that the motions judge should not have made a finding as to whether or not the copyright of the plaintiffs had been infringed and stated that if the case proceeds, it should do so on the basis that no findings to date had been made on the issue of infringement.23 However, the court cited verbatim, and did not contradict, the principle stated by the motions judge that “downloading a song for personal use does not amount to copyright infringement.” Thus, based on Re Private Copying 2003-2004 and BMG Canada Inc. v. John Doe, the principle that ‘downloading a song for personal use does not amount to infringement’ remains affirmed although, as indicated by the Federal Court of Appeal, that question must be determined on the facts in each case and all of the provisions of the Copyright relating to the private use defence must be taken into account.

4.

Fair Dealing

Under s. 29 of the Copyright Act, “fair dealing for the purpose of research or private study does not infringe copyright.” In CCH Canadian Ltd. v. Law Society of Upper Canada,24 the Supreme Court of Canada held that the word “research” under s. 29 “must be given a large and liberal interpretation in order to ensure that users’ rights are not unduly constrained … and … is not limited to non-commercial or private

18

At para. 73.

19

At para. 71. The appeal to the Federal Court (in Canadian Private Copying, supra) did not address this part of the Board’s decision.

20

F.C.J. No. 525 (F.C.T.D.).

21

At para. 25.

22

[2005] F.C.J. No. 858.

23

At para. 54.

24

[2004] S.C.J. No. 12 (S.C.C.).

3.1.7 contexts.”25 Furthermore, users only need to show that their own dealings with the works were fair and for the purpose of research or private study.26 As noted in CCH, supra, the determination of fairness under s. 29 is a question of fact. The factors to be considered are: the purpose of the dealing, character of the dealing, amount of the dealing, alternatives to the dealing, the nature of the work and the effect of the dealing on the work.27 Whether the work has been published or not may be relevant.28 Under ss. 29.1 and 29.2 of the Act, fair dealing for the purpose of criticism, review, or news reporting does not infringe copyright if the source is mentioned and, if given in the source, the name of the author, performer, maker (of a sound recording) or broadcaster (of a communication signal) is mentioned. The ‘news reporting defence’ was considered in 1997 in Allen v. Toronto Star Newspapers Ltd.29 The Ontario appeals court held that the copying of a cover page which included a photograph of Sheila Copps on a HarleyDavidson was an exception under the fair dealing provisions on the basis that it was used as a news summary.30 Jim Allen was the original author of the photograph and therefore had first copyright in it, but he was found to have no copyright in the magazine cover that was copied, which was held to be a separate and distinct artistic work. The decision was based in part on the fact that the photograph had been commissioned and paid for by Saturday Night magazine whose art director made all of the decisions relating to the taking of and subject matter of the photograph and all of the decisions relating to all details of the magazine cover. The Court found that the Toronto Star had not infringed Saturday Night’s copyright either because it fell within the ‘fair dealing’ provisions of the Copyright Act, in that it was used for the purpose of presenting a news story rather than to gain an unfair commercial advantage over Allen or Saturday Night. In the context of social media, the ‘publishing’ (uploading) of photographs are so commonplace, particularly in social networking sites like Facebook as well as Flickr (which is dedicated to the storage and display of photographs) that it is an area of which both copyright holders and users of social media ought to be aware. There are no ‘private use’ exemptions as there are with a musical work; however, the fair dealing exceptions for research, private study, criticism, review, or news reporting would apply if supported by the facts.31

5.

Conclusion

So far, the key copyright cases arising out of social media to date have largely concentrated on the uploading and downloading of music, films, software and the like through file sharing networks. That is not surprising given the breadth and amount of material that can be shared over the internet

25

At para. 51.

26

At para. 63.

27

At para. 53.

28

British Oxygen Co. v. Liquid Air, Ltd., [1925] 1 Ch. 383.

29

O.J. No. 4363 (Gen. Div.).

30

Note that the test for copyright infringement is whether a person “produces or reproduces the work or any substantial part thereof” (s. 3(1) of the Copyright Act). Thus, a defendant who reproduced an entire text of an article together with critical commentary about it was found guilty of infringement (Zamacois v. Couville & Marchand (1943), 2 C.P.R. 270 (Ex.Ct.). In Allen v. Toronto Star, the entire photograph was copied.

31

Note that, under s. 13(2) of the current Copyright Act, where a photograph is ordered and paid for by some other person, that person is the first owner of the copyright unless otherwise agreed to. In the revisions proposed under the current Bill C-32, the photographer would be the first owner of copyright in the photograph.

3.1.8 through file sharing sites and the enormous interests at stake. However, for most individuals and businesses in Canada, both in the context of file sharing and otherwise, it will likely be the private use and fair dealing exemptions of the Copyright Act that will gain most of the attention as the Canadian jurisprudence begins to emerge in this area.

III. A.

Trademarks

Introduction

The unauthorized use of trade-marks, whether in the context of trade-mark infringement, passing off, or depreciation of goodwill, has been a legal problem for brand owners for a long time. The traditional way of dealing with those problems has been private and, by and large, controlled by the brand owner and kept confidential. In the context of social media, however, the problem is public and the control over the process of addressing infringement or depreciation of goodwill, indeed control over the trade-mark itself, can be far more challenging. This phenomenon is illustrated in the case of the online game ‘Scrabulous.’

1.

Scrabulous

Scrabulous, developed by two commerce graduates in India in 2005, was one of the first game apps on Facebook and it was for a while the most popular game on Facebook and other social networking sites. It is an interactive game based on the famous board game, Scrabble, owned by Hasbro in Canada and the US and by Mattel elsewhere. It has all the same features as Scrabble; the main difference is that it is in electronic form rather than physical form and, as a result, both copyright and trade-mark issues are raised. Hasbro sued the Scrabulous founders and their company in the US claiming violation of the Digital Millenium Copyright Act. Mattel sued in India. The US case settled with the game being taken down from Facebook and other sites in the US and Canada in 2008.32 In the same year, the Delhi High Court ruled that the Scrabble game itself could not be copyrighted and that Scrabulous could be offered online, but could not use the name ‘Scrabulous’ or any other similar-sounding name. The owners immediately adopted the name ‘Lexulous’ and re-launched its game and re-activated it on Facebook, with changes to some of the features. Thus, while copyright was claimed in both actions, it ended up being a trade-marks case.

2.

The Relevant Trade-Mark Law in Canada

Generally speaking, a trade-mark is a mark used by its owner for the purpose of distinguishing the owner’s wares or services from those of others (see s. 2 of the Trade-marks Act33). It is “a symbol of a connection between a source of a product and the product itself.”34 Trade-mark protection provides assurances to consumers that the products or services they purchase are coming from are those marks they have come to associate with those products and services. It tries to balance individual interests with the public interest in free and fair competition, that is, the owner’s investment in the mark with the interests of other merchants and the public generally.

32

The owners of Scrabulous had applied for the trademark with the USPTO in 2007 but they abandoned that application by express notice in 2008, no doubt as a result of the case.

33

(R.S., 1985, c. T-13).

34

Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 CPR (4th) 321 (S.C.C.).

3.1.9 The registration of a trade-mark in Canada gives the owner the exclusive right to use the trade-mark in Canada in association with the wares and/or services for which it is registered.35 Use (defined in s. 2 of the Trade-marks Act) is required to register the trade-mark (s. 16) and to maintain the registration (s. 45) because it is through use that the trade-mark becomes associated with its wares and/or services. Trade-marks must be used for the purpose of distinguishing the wares and/or services of its owner and in association with those wares/services in the normal course of trade. Use in association with wares requires that the wares be transferred in the course of trade. Trade-marks must be distinctive. That is, they must not be confused with the brands or trade-marks of others. If the owner does not take steps to prevent or stop infringements of the trade-mark, the distinctiveness of the mark could be lost and the trade-mark could then be open to challenge. Social media can increase the risk to trade-mark owners of losing distinctiveness in their marks and therefore potentially risk the trade-mark itself. That is because of the widespread dissemination of information through social media and the lack of control trade-mark owners can have over their brands, such that the distinctiveness can be eroded over time. This is a concern in part because, in trade-mark law, the public’s view about the distinctiveness in a brand can be relevant and can be brought as evidence in trade-marks litigation to support a claim that a trade-mark is or is not distinctive.

3.

Employees’ (Mis)Use of Brands

Another concern that arises is the case of employees’ use of social media to discuss their place of employment which can affect the brand recognition and the goodwill of their employer. While most of the cases seen so far fall within the rubric of employment law, defamation and even criminal law, the potential damage to trademarks and goodwill is something that trade-mark owners should be alert to and, conversely, it is something that employees should be aware of in their use of social media. There have been several cases in the US in which companies have terminated their employees on the basis of the content of their blogs. For example, in 2004, Delta Air Lines fired one of its flight attendants, Ellen Simonetti, allegedly for posting on her blog, ‘Queen of Sky,’ photographs of her posing in front of a company airplane in a company uniform which Delta Air Lines considered inappropriate.36 Simonetti sued Delta Air Lines alleging sexual discrimination and other wrongs. In 2009, two employees of Domino’s Pizza made use of a camera installed on the premises of a Domino’s Pizza outlet during one of their shifts and, wearing the Domino’s uniforms, tampered with the pizzas in disgusting ways and posted the video on YouTube, which went viral. The employees were charged criminally but the damage to the Domino’s brand was profound and immediate.37 In what appears to be the first of its kind in Canada, on October 22, 2010, the BC Labour Relations Board upheld the firing of two employees by a Mazda car dealership over comments they posted on Facebook about their employer.38

35

Note that, at common law, the protection extends only to the geographic areas where the owner has established a reputation. However, given the internet’s reach, those areas may be extensive for many brand-owners.

36

Viewed at: http://news.cnet.com/I-was-fired-for-blogging/2010-1030_3-5490836.html.

37

It was commonly reported that the YouTube video had over a million views within a few days (New York Times: http://www.nytimes.com/2009/04/16/business/media/16dominos.html). Interestingly, it was through the use of social media such as YouTube and Twitter that Domino’s Pizza made its greatest efforts to mitigate the damage to its reputation by posting its own comments and video online.

38

Lougheed Imports Ltd. (West Coast Mazda) v. United Food and Commercial Workers International Union, Local 1518, [2010] B.C.L.R.B.D. No. 190.

3.1.10 None of the employee-related cases have been trade-marks cases; however, the potential for damage to the reputation in one’s brand through social media can be far more devastating to trade-mark owners than defending, for example, a discrimination or employment law action.

4.

Generic Uses of Trade-Marks

Since trade-marks remain trade-marks only as long as they continue to distinguish the owners’ wares or services, one of the big concerns for trade-mark owners is that the trade-mark will become synonymous with the wares or service.39 When that happens, the trade-mark can be lost forever. Careless use of one’s trademarks, such as can happen more readily using social media because of people’s tendency to post relatively short and spontaneous comments (think of 140 characters per message), can result in the loss of that trademark. The concern over ‘becoming generic’ also arises in the context of wikis such as Wikipedia in which users publish information about virtually every conceivable topic, with potentially no input about the subject from the owner unless the owner knows of it. However, because of the interactive nature of social media, the trademark owner can make his or her own corrections to such entries through the same means that created the problem.

5.

Domain Names

The registration of a domain name may amount to trade-mark infringement or passing off, even where the website using that domain offers wares and services that are completely different from those with which the trade-mark is associated.40 The registrant may be required to transfer the domain name to the plaintiff.41 Social media handles such as those for Facebook and Twitter would likely fall within the same principles.

6.

Conclusion

Because social media is so ubiquitous, it would be impossible for trade-mark owners to know about every use or infringement of their trade-marks and yet it is in their best interest to keep a watchful eye by doing regular internet searches of their trade-marks or trade-names. The potential risks that social media imposes on trademark owners is mitigated somewhat by the fact that trade-mark owners themselves can use social media to remedy problems.

IV. Concluding Remarks Social media raises a number of concerns for intellectual property owners and, at the same time, intellectual property law raises just as many concerns for users of social media. It remains to be seen which of these will adapt more to the other; however, there is little doubt that they will both adapt to each other in the coming years.

39

This was a concern, for example, in the case of the Thermos product. Aladdin Industries, Inc. v. Canadian Thermos Products Ltd., [1969] 2 Ex.C.R. 80; 57 C.P.R. 230 (Exchequer Court of Canada).

40

Law Society of British Columbia v. Canada Domain Name Exchange Corp., [2004] B.C.J. No. 1692 (S.C.), aff’d [2005] B.C.J. No. 2500 (C.A.).

41

D.& A.’s Pet Food ‘N More Limited v. Seiveright c.o.b. PETS ‘N’ MORE, [2006] F.C.J. No. 243 (F.C.) and Stenner v. ScotiaMcLeod (2007), 62 C.P.R. (4th) 1 (B.C.S.C.). and related reasons (2008), 69 C.P.R. (4th) 321 (F.C.).

3.1.11 At this juncture in Canada, and to some extent in the US as well, the approach taken to balance the competing (and, in many cases, hotly disputed) interests is a cautious one, one that respects traditional rights in intellectual property but, at the same time, respects the technological innovation that threatens to erode those traditional rights. At this time, things are in flux and the new technologies, not just the existing ones but the virtually infinite ones to come, create and will continue to create ongoing challenges for intellectual property holders, users of the social media and legislators and courts alike. It makes for an interesting area in which to practice law.