I've seen enough cases of a former franchisee not de-branding after termination as required by their Franchise Agreement to know that this is a serious problem for franchisors. I've also seen more than enough cases of startups and, shall we say, "enterprising" individuals adopting domain names and "repurposing" content in ways that directly infringe on larger brands' intellectual property rights. Some do this intentionally; others do it unintentionally. But, in either case, it is important for brand owners – and franchisors in particular (in light of their growth model and obligations to their franchisees) – to act swiftly to protect their reputations and exclusive rights.
Trademark and Copyright Monitoring is Essential
Of course, in order to address a problem, you first need to know that it exists. While egregious cases often come to a franchisor's or other brand owner's attention through the grapevine, (1) this isn't always the case, and (2) by the time this happens, much of the damage has likely already been done.
As a result, it is crucial for trademark-, copyright- and trade secret-intensive businesses to engage in active trademark monitoring and copyright monitoring strategies. By monitoring the appropriate channels, franchisors and other brand owners can spot infringement issues early, before they get out of control and cause more damage than they need to. Generally, the longer an infringer operates unchecked, the less amenable they become to a quiet and efficient resolution.
Domain Name Enforcement Under the UDRP
When a former franchisee or anyone else holds a domain name that infringes on legitimate, registered United States trademark rights, one of the most efficient ways to try to acquire the infringing domain name is by filing an action under the Uniform Domain Name Resolution Policy (UDRP).
Under the UDRP, a trademark owner can obtain an order requiring the owner of infringing domain names to give them up if they are able to present evidence of three basic factors:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complaining party has rights;
- The alleged infringer has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
The UDRP process is relatively quick, and often takes fewer than 60 days. In addition, once the possibility of a UDRP action is raised, settlement talks many times quickly come to fruition.
Copyright Enforcement Under the DMCA
When the issue is copyright infringement rather than trademark infringement, there is an even quicker option for getting the infringing content pulled offline. Under the Digital Millennium Copyright Act (DMCA), Internet Service Providers (ISPs) are required to remove content from their servers that is alleged to be infringing. For DMCA purposes, "ISPs" are broadly defined, and include websites like forums, blogs, Facebook, Twitter, and Pinterest. Virtually everything that franchisees receive from their franchisors (in terms of content: manuals, advertising copy, menus, etc.) should be protected by copyright, so the DMCA is an important tool for franchisors to protect their assets against unauthorized use or disclosure.
The issue here, however, is that DMCA takedowns apply only to the specific instance of infringement identified on the one particular website. Other instances of copyright infringement may persist (or suddenly arise), so it remains critical to diligently monitor and enforce the owner's intellectual property rights. Ultimately, copyright holders may have to chase the infringer down and seek remedies in court to stop the problem completely, but making effective use of the DMCA is a crucial first step toward protecting intellectual property online.
Jeff Fabian assists business owners in protecting their brands so that they can stay focused on running their businesses. Visit www.fabianip.com for more information, and follow Jeff on Twitter @FabianOnIP.
This article is provided for informational purposes only, and does not constitute legal advice.