Sidewiki, a new functionality available on the Google toolbar, allows Internet users to annotate comments on websites. You can see how Sidewiki works and what an annotated site looks like by going to Google’s Sidewiki page here. In fact, your website may already have been annotated without your knowledge — however, to find out, you’ll need to download the Google toolbar.
Most website comments annotated with Sidewiki that I saw in a quick, wildly unrepresentative and unscientific survey I conducted are precisely that — commentary, either praising or respectfully responding to the content on the site. However, it is easy to imagine Sidewiki being used for competitive, abusive or deceptive purposes. For example, a competitor could trash a site’s products and services or post links to its own site in an effort to divert traffic. Or (as happened recently with Apple and other high-profile sites), a nattering nabob of negativism could simply post pejorative comments without any type of economic agenda whatsoever. All of this raises a host of intellectual property and brand abuse issues for site owners.
Google posts an inconspicuous content policy which prohibits “unlawful” activities using Sidewiki as well as copyright infringement and “unwanted promotional or commercial content” (whatever that means). The Google Webmaster also allows a site owner to claim the topmost spot in the Sidewiki annotations, and Google provides a generic form for parties to complain about objectionable use of its products and services. Still, there is no clear way for a site owner to compel Google to cede back control of its real estate (if indeed the site as displayed through a browser enabled with the Google toolbar can even be likened to real estate).
Sidewiki is obviously too new a service for there to be any law on its use and abuse. Once again, a leap in new media technology has outpaced judges and legislators. Still, since I can’t resist plunging into uncharted waters, I offer a few preliminary thoughts below on intellectual property (IP) and other legal issues that both site owners and Sidewiki commenters should consider.
1. Copyright Infringement. It’s possible that some level of annotation, if substantial and creative enough, could result in the creation of an unauthorized derivative work (modification) of the website or specific website pages. (Web copy is protectable by copyright.) If so, this would be copyright infringement, since the ability to create derivative works is one of the exclusive rights of a copyright holder. A similar argument has been used, with occasional success, against some types of website framing.
Of course, commentary, particularly for non-commercial purposes, is one of the touchstones of fair use, so an infringement case would probably not succeed (either because of the lack of genuine modification or a fair use defense) against most run-of-the-mill commenters. Still, site owners concerned about voluminous Sidewiki comments may want to consider registering their copyrights in their site content, if they have not already done so, since registration is necessary to file suit under the U.S. Copyright Act and to avail oneself of the full panoply of legal remedies (including statutory damages) provided in the Act.
Another copyright issue that site owners should be aware of is the possibility that content posted via Sidewiki may itself infringe a third party’s copyright, in which case the site owner may find itself receiving Digital Millennium Copyright Act take-down notices. However, as mentioned above, the site owner has no real ability to take down objectionable Sidewiki annotations and can only contact Google. In this situation, all the site owner can do is file a complaint with Google and advise the copyright owner to do the same.
2. Trademark Infringement/Dilution and Unfair Competition. It’s possible to construct a creative argument that annotating a site with Sidewiki involves using the site owner’s trademarks (certainly its URL and arguably also other trademarks appearing on the annotated pages, as well as any trademarks used in the comments themselves). If this use is in commerce, i.e., in connection with an offering of goods or services for sale, and is likely to confuse or deceive consumers as to who is providing what goods or services, or suggests some level of sponsorship, affiliation, endorsement, etc., there may be trademark infringement and unfair competition under the federal Lanham Act as well as under applicable state laws.
Showing a likelihood of confusion (the touchstone of a Lanham Act infringement and unfair competition case) will likely to be difficult with Sidewiki. The site owner would have the strongest case where the Sidewiki commenter is a competitor, does not make its separate identity clear, and tries to capitalize somehow on the site owner’s brand in order to divert traffic to its own site. However, where the content or context of the comment make it clear that the commenter is unassociated with the site owner and the commenter does not use the site owner’s trademarks in its annotations or otherwise try to pass itself off as the site owner, making the case will be next to impossible.
Even in the “strongest case” scenario, the site owner will have to tackle the issues of whether the commenter has made commercial use of its marks (this point will be easier to argue if the marks actually appear in the comments themselves) and whether “initial interest confusion” is sufficient confusion for Lanham Act purposes. To explain the latter issue, once an Internet user goes to a competitor’s site via a link provided by the competitor in its comment, they will know, before making any purchase, that they are not dealing with the trademark owner. Having said that, some persons “initially confused” and diverted in this manner may not return to the original site. The legal question is whether this type of confusion is enough to support an infringement or unfair competition claim.
The “initial interest confusion” issue, as well as what constitutes use of a mark in commerce, were both litigated over the past decade in cases examining the use of trademarks as Google search terms and the embedding of trademarks as metatags. Unfortunately, there are no settled answers, although courts in the federal Ninth Circuit (the West Coast states, plus Alaska and Hawaii) are more sympathetic to arguments based on initial interest confusion. Whether you are a site owner or a commenter, therefore, knowing the law in your federal circuit is important.
Finally, where abusive, competitive or otherwise objectionable Sidewiki comments are posted on a site for an extremely well-known brand (such as Apple, Pepsi or Cadillac), the site ower may be able to claim trademark dilution in violation of the Trademark Act. Trademark dilution requires the use in commerce of a famous trademark or a near-identical mark in a manner that is likely to blur or tarnish the mark, whether or not there is any similarity between the goods or services or any likelihood of confusion. It therefore sidesteps the whole confusion issue discussed in the infringement and unfair competition scenario.
However, dilution does require use of the famous mark together with an offering of goods or services, so although a Sidewiki commenter’s choice of where to place their annotations (on the trademark owner’s site) may count against them somewhat, a dilution claim is an unlikely remedy against authentic commentary, critical or otherwise, that is not connected with the promotion of another product, service or website.
3. FTC Endorsement Guidelines. On October 5, the Federal Trade Commission (FTC) issued its final revised Guides Concerning the Use of Endorsements and Testimonials in Advertising, the first rewrite of the Guides since 1980. Under the revised rules, which went into effect on December 1, 2009, companies that make payments or give free products to bloggers and other online commenters in order to generate positive buzz or favorable reviews for their products will now have to monitor closely the statements and claims made about the products and ensure that these relationships, if material, are clearly and conspicuously disclosed. Otherwise, they will face liability for unfair or deceptive advertising practices under Section 5 of the FTC Act, even if they do not control what the bloggers say (or, indeed, whether they say anything).
The bloggers themselves will face similar liability for false or misleading statements and non-disclosure of material connections. Furthermore, according the Guides, a company employee who posts messages on an online message board promoting the company’s product (a common practice) must clearly and conspicuously disclose his or her relationship to the company. Violations are punishable by civil penalties of up to $11,000 per violation. For a more detailed discussion of the FTC Endorsement Guidelines, please see my prior blog post.
What this means is that whether you are (1) a Sidewiki commenter being incentivized to post favorably on a website or trash a competitor’s site, or (2) a site owner or an employee or agent of a site owner posting favorable comments in response to negative Sidewiki remarks posted by someone else, you MUST disclose these connections. Knowing when to disclose is critical because, in the absence of any clear ability to force Google to remove objectionable comments, claiming the top spot on Sidewiki and posting responses to negative comments are indispensable elements of a Sidewiki brand management strategy. (New York’s attorney-general has also brought administrative proceedings against companies which tried to drum up favorable buzz by having their employees make anonymous posts in Internet chatrooms and public forums.)
If you have reason to believe that objectionable comments posted on your site via Sidewiki are being sponsored somehow by an undisclosed competitor or other third party, you should consider playing the UDAP (unfair or deceptive advertising practices) card by threatening to report the matter to the FTC and/or your state AG.
4. Terms of Use. Another option for site owners is to prohibit Sidewiki annotations, or perhaps certain categories of Sidewiki annotations (such as abusive or disparaging comments or comments that use your trademarks), in your website terms of use. Insofar as the terms of use create a binding, enforceable contract between the site owner and its users (which will generally be the case as long as they’re easily noticeable when accessing the site and don’t hold consumers to any unconscionable obligations), then making Sidewiki posts in violation of the terms of use will give the site owner a claim for breach of contract. You might also have a claim for trespass to computer chattels, since your site has been accessed for the purpose of etching on it in violation of your terms of use, although many courts will reject this claim in the absence of some excessive load on the site’s technical infrastructure that has the potential to exclude or disrupt other users.
There are two drawbacks to the terms of use approach. First, opposing this new social media technology may make you seem intolerant of free discourse and criticism (of course, the logical response here is “Do it on your own site!”). Secondly, for the reasons already mentioned, your ability to enforce the contract (other than through legal action) is limited, and appearing to tolerate numerous violations of your terms of use may hurt you in the cases you do want to prosecute. Since filing a complaint with Google for every single Sidewiki comment seems impractical and a waste of resources, it’s probably better to prohibit only those Sidewiki comments that are definably objectionable or use your intellectual property.
5. Other Legal Issues. A site owner might be able to proceed against particularly wrongful commenters (e.g., those who make false or deceptive claims or blatantly infringe the site owner’s intellectual property rights) for the state-law tort of tortious interference with prospective economic relations. Advertising-related causes of action under a state-law trade libel or unfair competition theory or the federal Lanham Act are also a possibility where the comments are false, deceptive or misleading (not to mention governmental action against UDAP, discussed in item #3 above). Site owners may be given some latitude by the courts in these cases due to the placement of the objectionable commentary; on a gut level, other things being equal, it would seem less wrongful on someone else’s website.
As the discussion above indicates, the legal landscape is hazy and will take time to resolve. Vigilance, therefore, is key. Website owners concerned about protecting their brands should claim the top spot for their sites on Sidewiki, monitor the other comments that are being posted, and make responses (with the disclosures required by the FTC) where appropriate. Site owners should also consider what type of approach to Sidewiki they wish to take in their terms of use. Finally, as with other forms of unwelcome commentary on the web, brand owners must weigh the benefits of cleansing their sites against the legal costs involved as well as the risk of enhancing the cachet of Sidewiki commenters they pursue.
Thank you, Google, for doing what you do so well — giving us intellectual property and new media lawyers tons to think and write about.