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Facebook Infringement: Facebook Commerce and IP Tool

By John DiGiacomo

John DiGiacomo: Hey everyone. My name is John DiGiacomo, I’m an attorney with Revision Legal and I want to talk to you this Friday about something that is new from Facebook. It is the Commerce & Ads IP tool and the purpose of this tool is to allow brand owners, typically trademark owners to search their brand in Facebook Ads, marketplace posts, group sale posts, and to more easily report instances of trademark infringement or other sorts of infringement as they identify those through their own searches through this new tool.

John DiGiacomo: And before I talk about the actual tool, I want to back up a bit and talk about service providers generally and how they manage content moderation. And there are two major pieces of law that apply to service providers when they undertake this role to moderate content. The first is Section 230 of the Communications Decency Act. Section 230 says that a service provider is not a speaker in some sense of the content being posted by its users and there therefore it cannot be held liable for the tortious content that is uploaded to the service by its users.

John DiGiacomo: That means that if I upload some defamatory statement on Facebook where I say my neighbor ate a dog, that’s just not Facebook’s problem, it’s my problem. And because of section 230 Facebook doesn’t really have to do anything about that at all. But companies like Facebook have established moderation teams because if they don’t try to at least curtail some of this type of nefarious behavior, the platform starts to look like the Mos Eisley Cantina, a place of scum and villainy, and no one wants to be on a platform like that. So Facebook has undertaken and other service providers have undertaken these duties, which they don’t actually have to moderate this content.

John DiGiacomo: From the IP side, there’s also the Digital Millennium Copyright Act and the DMCA as it’s called, allows a safe harbor to Facebook for the uploading of infringing content. And what that means is that Facebook only has to remove content when it’s notified by a DMCA, a take down or by actual knowledge of infringement occurring on its platform. If it doesn’t receive those notices, it cannot be held liable, or what we call secondarily liable for copyright infringement through its platform.

John DiGiacomo: And then from the trademark side, there’s really no safe harbor. Trademark law says that if you are indicating the origin or source of goods or services in a way that confuses the consumer, you can be held liable for direct trademark infringement. And if you’re making money off of trademark infringement or if you’re facilitating it, you can also held liable for what we call vicarious infringement or contributory liability.

John DiGiacomo: So these are the main three areas that a service provider like Facebook tries to deal with when they undertake a policy for moderating content. And some of these service providers have gotten really good at this. They have now artificial intelligence search tools, which you can upload an image if you’re a brand owner and they might search for your logo. Other platforms like Facebook are allowing direct search within their results across the entire platform, which gives brand owners an additional tool to search for instances of infringement. And they’ve really tried to use technology and not people, to help curtail these instances of infringement on their platforms.

John DiGiacomo: So Facebook’s new tool, this Commerce & Ads IP tool allows a brand owner and like I said, typically a trademark owner to search for infringement across the entire Facebook platform, identify that infringement and then inform Facebook that the infringement needs to be removed from the platform.

John DiGiacomo: So let’s look at the tool, as of right now it’s just an application and I haven’t seen what actually the tool looks like, but as you can see on the screen here, it’s a application to get access to the tool. It requires certain information such as your name, the brand or company that you are, it also asks for your Facebook or Instagram profile. It asks for your trademark registration number, your trademark jurisdiction and it also asks you to provide a direct link to your trademark registration or upload a PDF showing that you actually have a trademark registration.

John DiGiacomo: So it looks a lot like Amazon’s Brand Registry application and in practice it’ll be interesting to see how the tool actually works. When we figure out more about the tool we will certainly let you know. In the meantime, we recommend if you are a brand owner, to sign up for this tool so that you can begin searching Facebook to determine whether or not there’s wide-scale infringement occurring of your trademark or your brand, and you have to do it yourself, unfortunately, as of right now, the brand owner must do it directly. It cannot be done by an agent or an attorney like me. So if you are a brand owner, like I said, we recommend that you go to the website. I’ll drop a link in the video description, go to the website, fill out the form, get into the system, perform some searches. If you see some wide-scale infringement, definitely contact your attorney. My name is John DiGiacomo. Thanks for listening. Happy Friday and have a great weekend. Thank you.

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