KnowEm, the company working to help brands manage their identity across the social web, announced the public launch of a new Enterprise Dashboard designed to help brands protect their trademarks and intellectual property in the ever-changing social media landscape.

The dashboard gives social media and IP legal teams a centralized location to monitor and manage their social media identities. With just a few clicks a marketing manager or lawyer can see exactly where a certain trademark or name is secured, and where it’s still unclaimed and vulnerable. KnowEm takes the process a step farther by automatically securing names, even creating profiles, wherever needed.

KnowEm’s database contains over 5,000 social networks around the world  — from Mexico Diario to the Netherlands’ Hyves — and is growing on a daily basis as new social sites emerge. As a result, businesses can be sure their trademarked terms are reserved and protected in global sites today and tomorrow.

The enterprise dashboard was previously available in a limited invitation-only beta, during which time KnowEm collaborated with key clients, including Continental Airlines, Yahoo, and Flickr. For example, Continental has been using the dashboard to protect their brand trademarks and reserve their profiles on emerging social networks.

“While Twitter and Facebook are obvious places to check your brand identity, globally much of the social web is unchartered territory. It’s critical that we control our trademarked terms and brand identities throughout each network,” said Lora O’Riordan, Social Media Manager at Continental Airlines. “KnowEm’s service has become an important part of our social media strategy, ensuring we protect our property and opening our eyes to new opportunities for consumer engagement.”

In addition, the new dashboard enables brands to stay on top of the buzz surrounding their brand and industry on the social web. KnowEm’s brand alert monitoring system tracks each mention of a brand name, username, or keyword across 5,000+ social networks. The service breaks down the data into meaningful charts, such as social mentions by network, author, or geographic location, and reports can be emailed on a weekly, daily, or almost hourly basis. As a result, businesses can better understand who’s talking about their brand, where, and when.

To date the KnowEm team has helped to reserve over 500,000 profiles and reported back to clients on over 60,000 issues of squatting and misrepresentation of a brand, username or trademarked term.

InformationWeek reports SB 1411, which has been approved by the California Senate and the Assembly and now awaits the signature of Governor Arnold Schwarzenegger, makes it a misdemeanor “to knowingly and without consent credibly impersonate another person through or on an Internet Web site or by other electronic means with the intent to harm, intimidate, threaten or defraud another person.”

There are laws for every possible thing under the sun. Do we need another law? Many argue there are sufficient laws in place that already make impersonation illegal. Will a law that directly addresses the issue of social media identity theft stop others from doing it? Maybe. Are there instances where it is OK to impersonate another person or corporation? Apparently it is acceptable like in the BP case where  someone created a mock Twitter account.

I know I don’t want anyone stealing my online identity so I’ve done things to prevent that as much as I can. However it is still possible to create a persona that is mine and make a mockery out if it. That is not OK with me. Do you think there should be a law that prohibits social media identity theft?

We also made a little interface change to our initial search page.  Rather then search our entire database of almost 500 social networks right from the start, we have limited the initial search to the top 20 social networks as well as the top 8 domain extensions. You will notice the tabs at the top which will take you into deeper searches of both, over 400 social media sites and over 40 different domain types.

Things have been very busy with everyone at team KnowEm.  So far our second year in business has been a very interesting one – from sending out a cease and desist to a company that copied our site right down the meta tags to hiring our 30th employee. We continue to grow and build the best set of tools for companies, individuals and brands to make sure they are secure on the social web.

We have another big announcement coming soon, so be sure to check back, become a fan on Facebook, or follow us on twitter so you will know when our next big announcement hits!

To your success,

Michael Streko & Barry Wise

Founders,
KnowEm LLC

The latest European Court of Justice (ECJ) ruling in a dispute about Google’s AdWords service and trademarks is instructive for multinational brand owners and their customers. In the matter of Portakabin Ltd., Portakabin BV v. Primakabin BV, the ECJ again addressed the liability of third parties who choose keywords that are identical or similar to a proprietor’s registered trademarks. Under the facts of this case, Portakabin Ltd., a manufacturer and supplier of mobile buildings, owns a Benelux trademark registration for the mark PORTAKABIN designating metal and non-metal buildings, parts and building materials. Portakabin BV is a subsidiary of Portakabin Ltd. that sells the goods designated by the mark PORTAKABIN pursuant to a trademark license from its parent (the parties hereinafter are collectively “Portakabin”). Primakabin, being unrelated to either Portakabin entity, sells and leases new and second-hand mobile buildings, including those manufactured by Portakabin.

Both Portakabin and Primakabin offer their goods for sale on their respective websites. In order to advertise its products, Primakabin purchased the keywords “portakabin”, “portacabin” and “portocabin” using Google’s AdWords referencing service. Portakabin brought an action against Primakabin in which it sought an order requiring Primakabin to cease all use of marks and/or signs identical or similar to the registered mark PORTAKABIN, including the purchased keywords.

In the July 8, 2010 decision, the ECJ affirmed Portakabin’s standing to bring actions under  Article 5 of Directive 89/104 to prevent third parties from unauthorized use of marks that are identical with, or similar to, the owner’s trademarks and used to designate goods and/or services that are identical to those for which the trademark is registered (consistent with the ECJ’s March 23, 2010 ruling in Google France, in which  Louis Vuitton pursued a finding of primary trademark infringement against Google for making keywords available to advertisers that included marks identical to Louis Vuitton’s registered marks). The ECJ, however, punted to the national courts the determination of whether or not there was, in fact, a use by advertisers of signs identical with, or similar to, trademarks as keywords for an internet referencing service which could be regarded as having been made in accordance with honest practices in industrial or commercial matters (as “use” is understood within the terms of Article 6 of Directive 89/104).

The ECJ further deferred to the national courts the question of a “legitimate reason” under Article 7 of Directive 89/104 by which a trademark owner is justified in opposing an advertiser’s use of a sign that is identical with, or similar to, the owner’s trademark (such as the impression of an economic link between the trademark owner and the advertiser or use that is seriously detrimental to the reputation of the mark). In assessing whether or not such a legitimate reason exists, the ECJ provides the following guidelines:

(1)    The national court cannot find that the ad gives the impression that the reseller and the trademark owner are economically linked, or that the ad is seriously detrimental to the reputation of that mark, merely on the basis that an advertiser uses another person’s trademark with additional wording indicating that the goods in question are being resold, such as ‘used’ or ‘second-hand’.

Comment:
This is consistent with current commercial practices for traders in the second-hand market and further consistent with established principles of trademark exhaustion.

(2)    The national court is obliged to find that there is such a legitimate reason where the reseller, without the consent of the owner of the trademark that it uses in the context of advertising for its resale activities, has removed reference to that trademark from the goods, manufactured and placed on the market by that proprietor, and replaced it with a label bearing the reseller’s name, thereby concealing the trademark.

Comment:
This opens up questions of unfair competition in a number of jurisdictions even if there is no literal trademark infringement.

(3)    The national court is obliged to find that a specialist reseller of second-hand goods under another person’s trademark cannot be prohibited from using that mark to advertise to the public its resale activities which include, in addition to the sale of second-hand goods under that mark, the sale of other second-hand goods, unless the sale of those other goods, in the light of their volume, their presentation or their poor quality, risks seriously damaging the image which the trademark owner has succeeded in creating for its mark.

Comment:
This affects the predictability of an infringement ruling in a trademark owner’s favor in cases involving keywords and comparable internet referencing services. The judgments rendered shall be highly fact specific, and to an extent subjective in view of a national court’s own precedents and preferences.

The Portakabin decision, reviewed in concert with the Google France decision, leads the way for a highly-anticipated trifecta of related decisions upon resolution of Interflora Inc & another v Marks and Spencer Plc & another [2010] EWHC 925 (Ch). Google France established that an internet service referencing provider (such as Google) is not primarily liable for trademark infringement for simply sorting keywords that are identical with one or more trademarks (the organizing of the display of advertisements on the basis of those keywords does not constitute “use” of those marks within the meaning of Articles 5(1) and (2) of Directive 89/104). Portakabin further outlines the defenses that a reseller may have when that reseller buys keywords designating the second hand products and establishes advertisements on the basis of such purchased keywords. The crucial question is whether a third party’s ad ameliorates the primary function of origin that trademarks serve to consumers. What activity, or combination of activities, engaged in by an advertiser rise to the level of actionable “use”?

Further guidance on the overall advertiser activity that could constitute “use” under the Directives is expected in the pending case of Interflora Inc & another v Marks and Spencer Plc & another [2010] EWHC 925 (Ch). Initially presented with ten questions on the concept of “use” under the Directives, the Google France decision answered all but the following four queries:

(1) Where a trader which is a competitor of the proprietor of a registered trade mark and which sells goods and provides services identical to those covered by the trade mark via its website

(i) selects a sign which is identical (in accordance with the Court’s ruling in Case C-291/00) with the trade mark as a keyword for a search engine operator’s sponsored link service,

(ii) nominates the sign as a keyword,

(iii) associates the sign with the URL of its website,

(iv) sets the cost per click that it will pay in relation to that keyword,

(v) schedules the timing of the display of the sponsored link and

(vi) uses the sign in business correspondence relating to the invoicing and payment of fees or the management of its account with the search engine operator, but the sponsored link does not itself include the sign or any similar sign,

do any or all of these acts constitute ‘use’ of the sign by the competitor within the meaning of Article 5(1)(a) of  the Trade Marks Directive and Article 9(1)(a) of the CTM Regulation?

(2) Is any such use ‘in relation to’ goods and services identical to those for which the trade mark is registered within the meaning of Article 5(1) (a) of the Trade Marks Directive and Article 9(1) (a) of the CTM Regulation?

(3) Does any such use fall within the scope of either or both of:

(a) Article 5(1)(a) of the Trade Marks Directive and Article 9(1)(a) of the CTM Regulation; and

(b) assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(1)(c) of the CTM Regulation?

(4) Does it make any difference to the answer to question 3 above if:

(a) the presentation of the competitor’s sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor’s commercial network contrary to the fact; or

(b) the search engine operator does not permit trade mark proprietors in the relevant Member State of the Community to block the selection of signs identical to their trademarks as keywords by other parties?”

Both European and US-based multinational brand owners are encouraged to keep abreast of the Interflora decision. The  “trifecta” will be instructive for creating a global branding strategy in concert with teams of legal, marketing and IT specialists to enhance brand value and ensure resources are expended on true counterfeiting enterprises rather than the resellers that positively influence brand recognition within underserved market segments.

Kelly Merkel, Esq, is the Director of Patents and a Senior Associate at Wolfe, LPA, a certified woman-owned law firm specializing in intellectual property, new media and internet law and outsourcing counseling for corporate clients. Ms. Merkel wishes to thank Wolfe Associate Matthew Russotti, Esq. for his assistance in researching this article.

Yiid has long been recognized as a leader in the social media space, especially in Germany, where its parent company Ekaabo GmbH is headquartered.  Yiid’s service provides a central location for users to discover new social networks, connect with friends and manage their online identity.

Since both KnowEm and Yiid are highly recognizable brands in social media, a cooperative partnership just seemed natural.

The tongue and cheek microblog authors are posting tweets such as “If we had a dollar for every complaint about this oil spill, it wouldn’t compare to our current fortune. Oil is a lucrative industry!” Which of course alarms any followers who don’t realize this is a spoofed account.

The fact that some people think its real speaks volumes about how vulnerable any company is from this type of impostor fraud. The fraudulent account demonstrates how difficult it is for companies to maintain a controlled online presence with the proliferation of social media. It’s the wild wild web out there and any company that sits idly waiting for someone to snap up their intellectual property or variations of their brand will face an oil spill of a time slopping up their damaged reputation.

Robert Siciliano, Identity Theft Expert and CEO of IDTheftSecurity.com, discusses social media scams on Fox Boston.

The tweetup is an informal get-together where we can talk about IP issues, cybersquatting, trademark misrepresentation, social media identity theft, and just about anything else you feel like discussing.  We’re very happy to be in Boston for the INTA Annual Meeting this year, and we’d like to thank the organizers Rob and Nils for inviting us to sponsor the tweetup.  If you’re at the INTA Meeting, or are simply interested in trademark and intellectual property issues in social media, let us know if you’re around.  We’d love to see you there!

The stolen Facebook identities are offered for sale at between $25 to $45 per 1,000 accounts, making them go for as little as $0.025 per username.  But imagine if one of those stolen names was the name of your brand or trademark term?  How valuable is it for you to control your name on the web? Now think about the intellectual property value being lost, and how much it might cost in legal fees to wrestle it back under your control.

At KnowEm we often see brandjacked names in social media being used to hawk counterfeit products or promote affiliate links to questionable landing pages which are obviously not under the company’s control.   Someone will register a brand name on a popular social media site (and there are hundreds of them) and then use it for their own purposes.  After all, if you were a consumer and saw a brand name you were researching had an account on Twitter, wouldn’t you just assume it was that brand, and trust any links they published?  Thousands of people do every day.

Even if the Facebook hacker’s claims aren’t legitimate, social media identity theft is a real threat and should be a major concern for anyone using a unique name on the web. And after all, isn’t that everyone?

Whether you use Facebook, Twitter or FourSquare (or none of the above), you need to protect your name on all social media websites.  Our America Online screen names were all that we cared about ten years ago.  Five years ago, all we cared about was our Myspace profile name.  Then Facebook.  Then Twitter.  Now FourSquare.  Which will be the next big site tomorrow?  Today there are thousands of startups vying to be the next big social website.  Currently there are hundreds of sites gaining traction.  Will one of these be the next big thing?  Of course.  And there is no way to tell right now which one it will be.

I advise IP attorneys for a living and stress more than anything else that securing your client’s name on every possible site is the best thing you can do for them.  Some make money pursuing cybersquatters and negotiating purchases of user names.  But seriously, what could take a few minutes now can leave you to much more important tasks. And who doesn’t want to be the hero?

Rob Holmes is the CEO of IPCybercrime.com LLC, a full service trademark investigative agency.

How It Started

KnowEm started as a service that would claim your username, trademark, brand or identity on 120 social media sites.  Almost instantly we were contacted by companies who were looking for a more robust service that would also fill out all complete profile information and continue doing so on an ongoing basis as new social media sites were released.

As an answer to this business need, on May 15th 2009 we launched our beta Enterprise Dashboard.  As of today, we’ve been able to use this dashboard to help our clients (ranging from local businesses to the Fortune 500) secure over 500,000 profiles as well as detect over 30,000 cases of brand squatting or trademark infringement. We’re extremely proud to report that all this work  has been completed by our local in-house staff.  Since security and privacy are our biggest concerns at KnowEm, we will never trust your sensitive data to any 3rd party, and none of our work is outsourced to offshore labor.

Last May we also met our primary Business Advisor, Paige Craig, who seemed like a perfect match to join our board.  Paige is an Angel investor out of the Los Angeles area who truly knows his way around a startup. Brian Solis also joined around the same time as a business advisor and PR advisor.

In October we decided to take the business a step further, so we relaunched KnowEm offering some of the services that our dashboard clients had been using all year.  We were also happy when Matt Inman decided to work with us and come on board as our creative director and give our site an excellent new interface.

It was around this time we were introduced to Robert Siciliano, and invited him to join us as a board member.  Robert is nationally recognized as an expert in identity theft, so he seemed to be a perfect fit to make sure that our order processing was as secure as possible and that our users were not at risk for identity theft.

Since the new year began, the last 3 months have been very hectic; we acquired another site, we were selected out of 200+ finalists for the SXSW Business Accelerator, and we have formed some new amazing and unique partnerships (you’ll hear more about those in the next few weeks).

We just want to say thanks to everyone who made this first year a great one!