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August 14, 2012
No Liability for Takedown Notice that Results in Termination of Facebook Page -- Lown Cos. v. Piggy Paint
[Post by Venkat Balasubramani, with comments from Eric]
Lown Companies v. Piggy Paint, LLC, 1:11-cv-911 (W.D. Mich.; Aug. 9, 2012)
Lown and Piggy Paint are squabbling over “piggy paint” trademarks. Lown has a registration for “PIGGY POLISH,” and alleges that defendants’ “PIGGY PAINT NATURAL AS MUD” brand infringes on Lown’s mark. The court doesn’t explain the reasons for this, but the marks in question are for nail polish products. Pigs and nail polish don’t have a natural association in my mind from a branding standpoint, but I’m no branding expert. [Eric's observation: I'm not sure Venkat is an expert in nail polish, either.]
In response to the trademark infringement claims asserted by Lown, Piggy Paint asserted counterclaims based on Lown’s complaint to Facebook that apparently resulted in the “removal” of Piggy Paint’s Facebook page. Interestingly, Piggy Paint’s Facebook page had some 19,000 fans. The court describes Lown’s complaint as having requested removal of Piggy Paint’s page on the grounds of “copyright infringement.”
Tortious Interference: The court says that Piggy Paint’s counterclaim allegations do not state a tortious interference claim:
Piggy Paint has not shown any valid business expectancy. Although Piggy Paint alleges that it had 19,000 fans of the page, Piggy Paint has not and cannot show that the removal of the facebook page – which did not offer any means of placing orders or doing business – resulted in the loss of any business.
The court also says that there’s no malice on the part of Lown because it acted with “a desire to protect its own mark.”
Conversion: The court also says that there’s no conversion claim. Piggy Paint’s conversion argument was convoluted, and based on the theory that Lown wrongfully “exercised control over [Piggy Paint’s] mark . . . by removing [Piggy Paint’s] page from Facebook.” The obvious problem with this argument is that Facebook and not Lown was the one who removed the page.
Not to belittle the products or brands involved, but how in the heck did Piggy Paint amass 19,000 Facebook fans? Anyway, this dispute is a great reminder that brand pages and anything similar on a third party platform are not assets you should ever (ever) bank on. (Twitter caused a media dustup when it suspended then reinstated the account of a British reporter based on a complaint from NBC.) Facebook has its own processes for when and how it responds to complaints, but regardless of whether its reaction was over protective or under protective of rights, it is insulated and can’t be held liable. (See the Complexions case, among others.)
It’s not easy to hold the party who sends the takedown notice liable, either. The court rightly treats the Facebook page as something that doesn’t support a tortious interference claim. The Phonedog case, which is still pending, came to a different conclusion, although the facts were slightly different and the case dealt with Twitter followers. (A part of the ongoing struggle in the courts as to how to treat social media assets. See also Eagle v. Morgan, Maremont v. SF Design Group, and the OMGFacts case.)
Interestingly, the court notes that Lown sent a "copyright" takedown notice. This raises the question of whether Piggy Paint could have asserted a claim under Section 512(f) for sending a wrongful takedown notice. Even assuming that Piggy Paint could have argued that the takedown notice should be covered under Section 512(f), given the high bar for liability under Section 512(f), a mistaken takedown notice would be unlikely to support liability.
In any event, damages would likely be difficult to prove, and plaintiffs don't often win these types of cases. See the Ground Zero museum case, the Pandora jewelry case, among others linked below. Ordonez v. Icon Sky is a rare case where damages were awarded for a takedown request that disrupted someone's web presence. This case and Ordonez may have reached different results because this case was contested and did not involve a default judgment. Another possibility is that the judge gave short shrift to the potential for commerce on a Facebook "fan" page as opposed to a more traditional web presence; or that the Ordonez case involved a model, whose web presence would ostensibly be more important to booking gigs and generating revenue. Either way, this case's result is probably in the mainstream and the Ordonez result seems like an outlier regarding damages for disruption of a web presence.
* 512(f) Plaintiff Can't Get Discovery to Back Up His Allegations of Bogus Takedowns--Ouellette v. Viacom
* Court Awards Damages for Wrongful Disruption of Web Presence -- Ordonez v. Icon Sky Holdings
* Web Vendor Dispute Gets Ugly--Ground Zero Museum v. Wilson
* 17 USC 512(f) Preempts State Law Claims Over Bogus Copyright Takedown Notices
* Advertiser Fails in Suit Against Trademark Owner over Google Trademark Complaint--Pandora Jewelers v. Pandora Jewelry
* 17 USC 512(f) Claim Against "Twilight" Studio Survives Motion to Dismiss--Smith v. Summit Entertainment
* Business Sues Facebook to Restore Its Fan Page--Complexions v. Complexions Day Spa
* Furniture Retailer Enjoined from Sending eBay VeRO Notices--Design Furnishings v. Zen Path
* Copyright Owner Enjoined from Sending DMCA Takedown Notices--Biosafe-One v. Hawks
* Allegedly Wrong VeRO Notice of Claimed Infringement Not Actionable--Dudnikov v. MGA Entertainment
This is a breezy opinion that isn't likely to persuade other judges. However, the core ruling on the tortious interference claim goes right to the heart of the battle over social media accounts. As Venkat notes, the judge says:
Although Piggy Paint alleges that it had 19,000 "fans" of the page, Piggy Paint has not and cannot show that the removal of the facebook page — which did not offer any means of placing orders or doing business — resulted in the loss of any business
Let's assume this is true and Piggy Paint can't prove any actual lost sales from the page's takedown. Even so, the Facebook page was clearly a major part of Piggy Paint's relationship with its customer base, and the page takedown unquestionably disrupts that relationship and Piggy Paint's ability to keep in touch with its audience. At minimum, the judge was quite tone-deaf to the practical implications of this page's takedown. But if disrupting a communication channel between a business and its fans isn't a legal problem, then a lot of the other social media account battles should fail as well. For example, this thinking moots the Phonedog case because the continued patronage of the account's followers is the only real asset at issue.
Venkat is also right that businesses are constantly at peril that their cyberspace presence on third party websites will simply vanish. For more on this, see my article on 47 USC 230(c)(2) and online account termination. In particular, I'm nervous about all of the businesses heavily investing in their Facebook pages. Don't go crying to the lawyers if those pages go POOF.