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Friday - 12 April 2019

Facebook Sues Over Trade Mark Infringement

Why is Facebook Suing Over Trade Mark Infringement and Cybersquatting?

Legal action and Facebook is nothing new, but why – and who - is the social media giant suing over trademark infringement and cybersquatting? At the start of this month, Facebook released a short blog post confirming it was taking legal action against a small cluster of Chinese websites. This legal move was prompted by the fact that these websites were selling fake accounts, followers and likes on Facebook and its sister company Instagram. 

In the blog post entitled Cracking Down on the Sale of Fake Accounts, Likes and Followers, the company said it was enforcing its “rights under US intellectual property law” based on the websites “illegal use” of its trade marks and brand. It concluded by saying: “Inauthentic activity has no place on our platform. That’s why we devote significant resources to detecting and stopping this behaviour, including disabling millions of fake accounts every day. Today’s lawsuit is one more step in our ongoing efforts to protect people on Facebook and Instagram.”

What is Trade Mark Infringement?

Trade Mark infringement is the unauthorised use of a trade mark by a company offering a related or competing service or product. That being said, it’s important to know that a trade mark need not be identical to constitute an infringement. It comes down to whether the use of the trade mark is likely to confuse consumers. In this case, the explicit use of the word ‘Facebook’ in the domain names, along with the fact that the sites were offering fake accounts, likes and followers (a breach of Facebook’s terms of service) was deemed sufficient for the company to decide to take action.

What is Cybersquatting?

Cybersquatting is defined under US federal law as the practice of registering, selling or using a domain name with the intention of profiting from a trade mark belonging to someone else. In the case of this particular lawsuit, Facebook is alleging that the companies in question are using its trade marks by using web addresses such as ‘facebook88.net’, ‘myfacebook.cc’ and ‘infacebook.cc’. By using the ‘Facebook’ name, these sites are attempting to profit from the goodwill and reputation that has been built up in the brand.

The Facebook Lawsuit

The lawsuit that Facebook has filed alleges that four Chinese companies and three individuals based in China have been operating a number of websites since 2017, and that by promoting the sale of bogus accounts it is infringing Facebook’s trade marks and terms of service. The companies implicated are Xiu Network (Shenzhen) Science and Technology Company, Xiu Feishu Science and Technology Company, Xiufei Book Technology Co. and Home Network (Fujian) Technology Co. Ltd.

Facebook is asking for the companies to be banned from creating misleading sites and fake accounts, and for the profits derived from the activity to be awarded to Facebook along with $100,000 for every infringing domain name.

The lawsuit is an unusual move for the company, which already purges millions of fake accounts every day; 2.1billion were disabled between January and September 2018 by its own account. So, the move to file a lawsuit is likely due to the extent of infringement in this particular instance. Regardless of the outcome, other companies operating in the same manner would be wise to keep a close eye on the verdict. In issuing of the lawsuit, Facebook is sending a clear message that illegal activity will not be tolerated.

Mathys & Squire is one of Europe’s most highly regarded intellectual property firms. Contact us to find out how we can help ensure your business grows legally, and how we can help enforce your intellectual property rights.

About the author

Laura West

Managing Associate

Laura works with her clients to ensure that their IP strategy fits closely with the overall business strategy and aims to provide legal advice that has a strong commercial foundation. She has worked with a wide range of clients including those in the fashion, media, medical, construction, engineering and service-based sectors. She also works closely with Customs and Trading Standards in assisting her clients to protect against counterfeit goods.