February 25, 2011
Business Sues Facebook to Restore Its Fan Page--Complexions v. Complexions Day Spa
By Eric Goldman
Complexions Inc. v. Complexions Day Spa and Wellness Center, Inc., 1:11-cv-00197-GLS -DRH (NDNY complaint filed Feb. 18, 2011)
The primary litigants are two identically named but geographically separated day spas. It appears they are colliding online. This type of trademark clash (the Internet overlaid on geographically separate businesses) is as old as the Internet; my favorite early case of this genre is Bensusan Restaurant Corp., v. King, 937 F. Supp. 295 (S.D.N.Y.1996) (the "Blue Note" case). As those disputes go, this one looks run-of-the-mill.
The clash has spilled over to Facebook, and that's where things get more interesting. The plaintiff (who is seeking a declaratory judgment, so it is the alleged junior trademark user) maintained a Facebook fan page with 1,000 fans. In January, the DJ defendant sent a takedown notice asserting the fan page violated its copyright (the complaint says "copyright", but I wonder if it meant "trademark"), which prompted Facebook to take down the page. The DJ plaintiff (para. 85) wants the page back: "Plaintiff is entitled to injunctive relief restoring its Facebook Page to the Facebook Social Networking Site."
This request raises an issue that seems to be cropping up with increasing frequency: IP owner sends takedown notice, website acts on takedown notice, and alleged infringer seeks injunctive relief ordering the website to restore the status quo. I explored the issue in some detail in my post on Amaretto Ranch Breedables v. Ozimals.
The issue is so interesting because the DJ plaintiff's desired relief should be categorically unavailable. A court can't order a web service to restore an user's account/content for at least two independent reasons. First, such an order clearly violates the First Amendment-- the order would impermissibly circumscribe the service's freedom of speech and the press. Second, even if you don't want to get into the constitutional debate, IMO Congress resolved this issue in 47 USC 230(c)(2), which immunizes websites' "filtering" decisions. If Facebook takes down a fan page because it thinks the page is trademark infringing, 230(c)(2) says Facebook still has the full editorial discretion not to publish the page even if it later learns that the page wasn't trademark infringing at all.
A court *can* order the IP owner to stop sending takedown notices. See, e.g., Biosafe-Hawks, Design Furnishings, and Amaretto. My hope is that a web service would listen carefully to such orders in deciding if/how to remediate its prior responses to the takedown notices. My hope is that web services would also build in enough due process to their private adjudicatory processes so its users can fairly combat false takedown notices without needing judicial intervention at all. However, it remains fair game for the web service to make "bad" choices on both fronts, though we as consumers should draw our own conclusions about those who do.
The Complexions lawsuit has another interesting twist regarding the Facebook fan page. The DJ plaintiff alleges that the DJ defendant sent friend/fan requests to the fans on the DJ plaintiff's fan page, thus engaging in false advertising by trying to poach the fans who didn't realize the litigants were different businesses. To my knowledge, this is the first lawsuit battling over poached Facebook fans. I'm sure it won't be the last.
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