A relevant and timely issue raised at the ABA Forum relates to the role of the internet and "new media" in attacks on franchise systems, and the threat posed by the use of websites, blogs, chat rooms, social networking sites, and virtual worlds. The following paragraphs highlight some of the unique issues raised related to this type of "new media," as it relates to franchisors and franchise systems.
Domain Names. Some franchisors have run into
trouble incorporating their registered trademark into a domain
name, which can severely limit the impact and traffic to the
franchisor's website. Registration of a domain name that
incorporates a trademark used by someone else is not a per se
violation of trademark law, as use of a domain name merely as an
informational part of the internet address does not constitute
trademark infringement. The domain name holder may keep the domain
name so long as it is not registered in bad faith, or the website
is not confusingly similar with the trademark. Thus, franchisors
should work quickly to obtain the domain names applicable to their
franchise system, and may want to consider this issue prior to
registration of its trademark. The Anticybersquatting Consumer
Protection Act otherwise may provide a cause of action if the
franchisor can establish that the registrant has a "bad
faith" intent to profit from a trademark.
Franchisee Websites. Unless otherwise prohibited
by its franchise agreement, franchisees that are authorized to use
the franchisor's trademark may establish related webpages
with domain names that include the franchisor's trademark
as part of the domain name. The franchisee may then use this page
to promote its franchised business. However, several important
issues may arise from this situation. Most importantly, absent
separate agreement within the franchise agreement or otherwise, the
franchisee will continue to own the rights to the domain name when
it leaves the system. The franchisee may then use this site to
complain about the franchisor, or direct business away from the
franchisor. Additionally, the franchisee's web site may
appear in internet searches, and draw traffic away from the
franchisor's web site or other franchisee's web
sites, who may feel as if the web site is encroaching in its
territory. Franchisors should ensure that its franchise agreement
addresses this issue.
Gripe Sites. Gripe sites are websites established specifically to complain or criticize about an entity or business, and are usually registered by incorporating the name or trademark of the business along with some type of negative word. Generally, courts allow such sites to operate as free speech under the First Amendment. However, franchisors may be able to obtain injunctions against such websites if the website engages in some type commercial activity, such as the sale of products.
Protecting Confidential Information. The internet
makes it more difficult to protect trade secrets from dissemination
to the public. Generally, franchisors are less able to find
remedies to protect trade secrets that are revealed online, than
trade secrets revealed by other means. This is due to the fact that
once information becomes "public knowledge,"
under trade secret law, the information is no longer viewed as
protected. As applicable to the internet, if a piece of information
is posted once, the repeated posting or passing along of this
information electronically is no longer actionable. However, in
recent cases, courts have begun to take the view that if a trade
secret owner moves quickly and takes reasonable measures to protect
the trade secret, the owner may be able to restore trade secret
status to information already disseminated on the internet. Thus,
franchisors should regularly search the internet for information,
and react quickly if it discovers that information that can be
classified as a trade secret has been leaked on the internet.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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