NLRB: Use of Social Media Can Be Protected Employee Activity

The rise of social media has led to the application of old law to new forms of communication. For instance, an effort by the National Labor Relations Board to educate workers on their right to engage in protected concerted activity has left some employers feeling that the NLRB went too far in supporting employees’ rights – particularly their right to post disparaging work-related comments on social media forums without reprisal.

Section 7 of the National Labor Relations Act (NLRA) protects all private-sector employees’ absolute right to engage in protected concerted activity, including the right to discuss among themselves their wages, hours, benefits and other terms and conditions of their employment. Generally, this requires two or more employees acting together to improve wages or working conditions, but the action of a single employee may be considered concerted if he or she involves co-workers before acting, or acts on behalf of others. It also requires that the improvement sought benefit more than just the employee taking action, so as to distinguish protected concerted activity from mere individual complaints.

Last year, the NLRB launched a website seeking to educate workers on their right to engage in protected concerted activity. The site provides several examples of cases in which employers violated an employee’s right to engage in protected concerted activity over the Internet. For example, in one case the NLRB issued a complaint against an employer that terminated an employee who criticized her supervisor on Facebook. The Board also found that the employer’s Internet policy, which prohibited employees from making negative statements about the company or supervisors, interfered with the right to engage in concerted activity.

The NLRB has in fact ruled in workers’ favor in a number of social media cases. For example, in Hispanics United of Buffalo, the NLRB considered a case in which an employer discharged five employees because of their Facebook posts. In that case, an employee went on Facebook to solicit her coworkers’ thoughts on work-related criticism she received from a fellow employee. In response, four coworkers weighed in about working conditions, work load and staffing issues at the company. All of the employees’ posts were made off-duty on the employees’ personal computers. The employer terminated all five employees, claiming that their comments constituted harassment of the employee mentioned in the initial post.

An NLRB administrative law judge reviewed the case and found that the employees had been unlawfully discharged. The ALJ found that the NLRA protects employees in “circumstances where individual employees seek to initiate or to induce or to prepare for group action, as well as individual employees bringing truly group complaints to the attention of management,” even if that action takes place online. Since the employees were discussing the terms and conditions of their employment, the discussion was protected concerted activity within the meaning of Section 7 of the NLRA.

While cases like Hispanics United of Buffalo have served as a rallying cry for employers on the NLRB’s perceived overreaching in support of workers, a recent report on NLRB social and general media cases reveals that the NLRB actually sided with employers in slightly more than half the time by finding that employees’ statements on Facebook or Twitter did not constitute “protected concerted activity” under the NLRA. For example, in Karl Knauz Motors, Inc., the NLRB found that an employee was lawfully terminated for his Facebook postings about an accident that took place at a car dealership owned by his employer. The NLRB found that these comments were not protected because they were not related to the terms and conditions of his employment.

Similarly, in another case brought before the Board, an employee who had just been reprimanded by her supervisor posted a Facebook status that consisted of an expletive and the name of the company that employed her. One of her coworkers “liked” that status. Half an hour later the same employee posted a comment expressing her belief that the company did not value its employees. None of the employee’s coworkers responded to that posting. The company terminated the employee for her postings.

On review, the NLRB upheld the employee’s termination, finding that the posts were merely the expression of a personal gripe. The NLRB’s Associate General Counsel summarized the Board’s reasoning by stating, “The Charging Party had no particular audience in mind when she made that post, the post contained no language suggesting that she sought to initiate or induce coworkers to engage in group action, and the post did not grow out of a prior discussion about terms and conditions of employment with her coworkers. Moreover, there is no evidence that she was seeking to induce or prepare for group action or to solicit group support for her individual complaint. Although one of her coworkers offered her sympathy and indicated some general dissatisfaction with her job, she did not engage in any extended discussion with the Charging Party over working conditions or indicate any interest in taking action with the charging party.”

Despite the uproar over the NLRB’s application of “protected concerted activities” to social media, this does not represent a shift from the NLRB’s previous decisions. It merely applies existing policy to a new set of facts brought about by technological changes in how workers communicate. As before, employers may set limits on employee’s social media activities as long as they do not impinge on the employees’ protected concerted activities.

Judge’s Ruling on Antitrust Complaint Has Implications Far Beyond the .xxx Domain

A recent decision by a federal judge in California has brought ICANN’s broad authority over the domain name system once again into question. Manwin Licensing International – perhaps the most lucrative provider of online adult-oriented content – brought an antitrust action against ICANN arising from the establishment of the .xxx top-level domain and the award of the registry contract for .xxx to ICM Registry. Manwin claimed, among other things, that because ICANN’s registry contract with ICM contains no restrictions on the price ICM may charge for its services (while providing for an enhanced fee to be paid by ICM to ICANN) and ICM is insulated from competition on renewal, the award of the contract violated the Sherman Antitrust Act.

In any antitrust case, the plaintiff must establish a “relevant market” that it can show is adversely affected by the anticompetitive actions. Here, Manwin sought to establish that the relevant markets affected by ICANN and ICM were the markets for affirmative registrations (i.e., the lack of an adequate economic substitute for .xxx domain names) and for defensive registrations (i.e., the need for trademark holders to protect their marks by registering .xxx names, for instance, playboy.xxx). The court made short work of Manwin’s claim with respect to the affirmative registration market, pointing out that domain names in other generic TLDs (gTLDs) are an adequate economic substitute for .xxx registrations. Indeed, the court pointed out that one of Manwin’s own websites – youporn.com – is the most popular free adult video website on the internet. Thus, the .com gTLD, among others, provides a perfectly adequate (if not superior) substitute to a .xxx registration.

However, the court was not so forgiving as to the defensive registration market. It held that Manwin adequately identified an adversely affected market in defensive registration because Manwin asserted that trademark owners and registrants of domain names in other gTLDs were compelled to register domain names in the .xxx TLD for defensive or blocking purposes, to protect their marks or other domain names from a loss of goodwill, prevent consumer confusion, or prevent association with adult entertainment. The court found no economic substitute for this market, as, it found the “only way to block a name in the .xxx TLD is to register a name in the .xxx TLD.” Therefore, the antitrust case will proceed with respect to the defensive registration market.

This decision has enormous potential consequences to the domain name registration market, particularly with the coming roll-out of new gTLDs. By way of example, one of the applied-for new gTLDs is .hotel. While Marriott has a very popular website located at marriott.com (as do Hyatt at hyatt.com, Hilton at hilton.com, etc.), these hoteliers may feel compelled to register their corresponding names and trademarks in the .hotel TLD, to protect against cybersquatters.

Compounding the problem, particularly for those with famous marks, is the issue of “typosquatters” who may register common misspellings of the mark in the new gTLD (such as marriot.hotel). Thus, the defensive registration market identified by Manwin has implications that extend far beyond the .xxx TLD — although .xxx has its own unique challenges not found with more mundane gTLDs, as the .xxx TLD’s association with adult content and pornography has the very real potential to tarnish otherwise unrelated marks. Imagine, for instance, pepsi.xxx (probably bad) versus pepsi.hotel (probably innocuous). Whether the existence of this case will cause a delay in the launch of the new gTLDs remains to be seen. It would seem that ICANN would proceed cautiously, as an adverse ruling might lead to a requirement that the registry contracts for gTLDs found to violate antitrust laws be unwound. Time will of course tell.

However, in the end, while Manwin seems to have hit upon a soft spot in ICANN’s shield, its claims ultimately seem overblown and contrary to the rights enjoyed by trademark owners and domain name registrants with respect to .xxx registrations. Setting aside blocking/sunrise rights that were afforded to trademark owners in advance of the public rollout of the .xxx TLD, trademark owners have extraordinary rights with respect to infringing domain names registered in .xxx. A trademark owner has available to it three means of challenging an infringing domain name registered in the .xxx TLD. These are the Rapid Evaluation Service (RES), the Charter Eligibility Dispute Resolution Policy (CEDRP), and the Uniform Dispute Resolution Policy (UDRP).

The RES provides a quick take-down process for infringing registered word marks or personal names of individuals. If an RES claimant shows that the domain name is identical or confusingly similar to a registered word mark that the claimant owns and uses, that the registrant has no rights or legitimate interests in the disputed domain name, and that the domain name was registered and is either being used in bad faith or cannot possibly be used in good faith, the domain name is directed to a page which states that the domain name has been deactivated. Temporary take-downs pending a final decision may be effected within two business days.

Trademark owners may also initiate a CEDRP proceeding, which will be handled by NAF, to challenge .xxx domain names that are being used in violation of the Adult Entertainment Industry eligibility requirements for the .xxx TLD (for instance, the example of pepsi.xxx, above). If the trademark owner is successful in a CEDRP proceeding, the offending domain name registration will be cancelled.

In addition, a trademark owner may initiate a UDRP proceeding with respect to a .xxx domain name registration, just as it might for an infringing domain name in any other TLD. Such a proceeding might result in the cancellation or transfer of the offending domain name – though if the registrant is not engaged in the adult entertainment industry, the domain name will not resolve.

In the meantime, since the Court’s ruling allowing Manwin’s case to proceed, ICM Registry has filed a counterclaim against Manwin, asserting antitrust and trade libel claims, amongst others. In the end, this battle promises to have consequences that extend far beyond the .xxx world in which it is clothed.

Report From an Energized WIPO Conference in Geneva

Each October, the World Intellectual Property Organization (WIPO), a United Nations agency, hosts at its Geneva, Switzerland, headquarters about 50 participants from around the world for a two-day conclave to discuss recent developments and issues surrounding domain name trademark disputes. This conference brings together, in one place (as an added bonus, scenically overlooking Lake Geneva and the French Alps) representatives of domain name registrars and registries, and lawyers from every corner of the globe to discuss the Uniform Dispute Resolution Policy (UDRP), which governs disputes between domain name registrants and trademark owners in most generic top-level domains (gTLDs).

With ICANN’s roll-out of new gTLDs imminent, the UDRP is likely about to experience increased use and importance, as cybersquatters will doubtless target brand owners whenever and wherever possible in the new gTLDs.

The UDRP is not without its faults — but, in general, it provides brand owners with a fast, relatively inexpensive and effective means to shut down domain names that are registered to take advantage of the goodwill attached to their trademarks. At this year’s conference, as with those in years past, the most hotly contested issues involve domain names that  resolve to “criticism” websites. It is with these issues that legal and cultural differences on the borderless Internet intersect and conflict. Many (but certainly not all) representatives from the United States see these issues through the lens of freedom of speech, while participants from elsewhere have no such point of reference. These cases come in two basic flavors.

First, there are the “trademark sucks” sorts of cases (the ubiquitous “suck sites”), and second, there is the more harmful “trademark.com” cases, which then resolve to a site critical of the trademark owner.

Suck site cases are less harmful because there is less risk of initial interest confusion – the likelihood that an Internet user would type the name into his or her browser thinking that the site belonged to the trademark owner. But in this era of the Internet in which search engines drive a great deal of traffic, such sites can cause great harm. However, a small consensus seems to lean toward finding that such domain names are not infringing.

The more hotly contested issue continues to be the trademark.com (including typos, hyphenations and other close variants of the trademark) cases. First Amendment considerations make it very difficult for a trademark owner to retrieve these domain names, when used for noncommercial purposes, in U.S. courts; in other parts of the world, this is not the case. But one UDRP panelist from the United States pointed out that the UDRP process is not a governmental act, and therefore he believes (correctly, I think) that the UDRP should pay no heed to these considerations. At bottom, U.S. trademark owners facing such situations should consider pursuing UDRP cases, understanding that even if they prevail, if the case ultimately lands in court, the likelihood of a successful outcome is diminished.

Other topics discussed included the new proposals for Rights Protection Mechanisms (RPMs) associated with the new gTLDs. While many of these RPMs remain in the discussion stages, they promise to bring to the fore new opportunities for trademark owners to protect their trademarks against cybersquatters who begin infringing in the new gTLD space. A good summary of all of the RPMs can be found here. The most interesting among these is the proposed Uniform Rapid Suspension System, which may bring about a means to temporarily suspend a name (that is, redirect the domain name to a web page revealing the suspension) in an expedited fashion. The devil will be in the details, as the costs and specifics of the proposed program are still up in the air. ICANN, WIPO and the other stakeholders are working on the details, and if implemented, this has the potential to provide trademark owners with another tool to combat those who damage their brands.

WIPO’s conferences are always first class and informative, and the opportunity to hear from and confer with talented, knowledgeable (and opinionated) domain name lawyers from around the world is always a pleasure and a privilege. I was able to meet and work with people from all over the world –from a representative of the Tanzanian registry, to brand managers from Sweden, to IP lawyers from China and Taiwan. And from it, we all are better able to serve our clients who do business on the Internet, which knows no national boundaries.

Domain Names Go Creative: Will We Soon See Dot-Poker?

Domain names on the Internet are about to get much more varied and creative. Soon websites will not just end in the few familiar suffixes like “com” or “edu,” but could end in things like “.movie” or ”.lawyer” or “.lol.”

On Wednesday, the Internet Corporation for Assigned Names and Numbers (ICANN), the organization tasked with regulating Internet domain names, released a list detailing who has applied for new suffixes, also known as top-level domains (TLD). This is the third major expansion ICANN has allowed of domain name suffixes, in addition to a few others that have been allowed on an ad hoc basis. The new system will streamline the application process and allow for up to 1,000 new domain suffixes a year.

The application process allowed companies to apply for their own brand name to use as their domain suffix name. For instance, Apple applied for the “.apple” suffix. Amazon applies for 76 names including “.amazon” and “.zappos.” Google applied for over 100 suffixes, including “.google” and “.youtube,” as well as “.lol,” and “.book.”

An interesting development related to the world of online gaming is that four groups applied for domain names that would end in “.poker.” The companies that applied for the “.poker” suffix are U.S.-based Binky Mill, LLC and Dot Poker, LLC as well as European-based dot Poker Limited and Afilias Domains No. 5. Limited.

Now that the initial list of applicants for TLD’s has been released, the public will have 60 days to comment. This time period will allow for companies and organizations to see whether others’ applications conflict with their interests or their intellectual property. After conflicts are resolved, there will be an appeals process. The new addresses likely will not launch until next year.

It remains to be seen whether these new domain extensions will become popular. Some companies may be able to capitalize on the marketing opportunities presented by the new TLD’s and other generic TLD’s that could become much more common. In any event, domain names are surely going to be more creative starting very soon.