By Janet M. Garetto. Trademark Issues in Social Media

Transcription

1 By Janet M. Garetto Trademark Issues in Social Media

2 What Types of Trademark Misuse Can Occur on Social Media Sites? Backdrop = traditional trademark law New sources of problems General rule: activities that may injure your mark s strength/reputation/goodwill Harmful information about your goods/services can be spread within seconds Improper suggestions of affiliation or sponsorship between goods/services Traditional trademark infringement Example vuitton is someone s nickname on Twitter; if you type in twitter.com/louisvuitton, you are taken to an account but it s not the official Louis Vuitton account, which is twitter.com/louisvuitton_us. 2

3 What Types of Trademark Misuse Can Occur on Social Media Sites? Improper dilution of famous marks Blurring occurs in social media when a user uses a famous mark in connection with other goods/services Example User may use its postings to advertise luxurious BENTLEY clothing, jewelry Owner of the famous BENTLEY mark for automobiles does not want to permit usage of its famous mark on such goods Tarnishment occurs in social media when a user associates a famous mark with substandard goods/services Results in damage to famous mark s reputation and injury to famous mark s goodwill 3

4 What Types of Trademark Misuse Can Occur on Social Media Sites? Improper comparative advertising False/misleading advertising Competitors may use each others trademarks to compare goods/services to divert sales but cannot mislead the public Standard = truthful and non-confusing Counterfeit products Competitors that offer imitations of another s goods/services are required to advise the public of this fact 4

5 What Types of Trademark Misuse Can Occur on Social Media Sites? Imposters Impersonation of company employees Statements can be posted by imposters Example Twitterers can camouflage their real identities by posting through Internet cafes / third-party sites An imposter may assert a parody defense Example Twitter allows parody impersonation but it must be clear that the profile is a fake 5

6 Whose Sites Should You Monitor? Prioritize enforcement efforts by knowing your customers Not practical to review every social media platform extensively The more common sites to monitor include Facebook, Twitter, MySpace, YouTube, Wikipedia, Second Life and other virtual worlds, ebay, industry blogs and product and service review sites Know whether your customers typically use social media sites and which ones Sites of competitors Sites of related, but noncompeting goods/services (complementary goods/services) 6

7 Disconnect Between Traditional Trademark Laws and Problems Arising in Social Media There is uncertainty as to whether current trademark laws and enforcement techniques adequately address the trademark issues presented by social networking sites Why? Current U.S. laws and UDRP techniques tend to address infringement of second-level domain names Word appearing in the Web address immediately before the top-level domain (aka the second-level domain) twitter in Enables Toyota to use UDRP against a cybersquatter who acquires 7

8 Disconnect Between Traditional Trademark Laws and Problems Arising in Social Media But social media sites do not provide users with second-level domain names On Facebook and Twitter, for example, users select personalized usernames (not domain names) that appear as part of the URL/web address Each user is assigned a username (such as a Twitter and/or a personalized subdomain which appears after a slash in the Web address (such as facebook.com/username) 8

9 Disconnect Between Traditional Trademark Laws and Problems Arising in Social Media Consequently, the trademark owner may need to rely on traditional trademark principles Unless the site owner will voluntarily remove an infringing username or a squatter will voluntarily give up control of an infringing username to the mark owner Possible limitations also exist on Lanham Act claims Lanham Act (Federal trademark statute) claims may also be limited Requires use of the mark in commerce Some uses may fall outside of the scope of the use in commerce requirement unless the defendant is using the social media site to sell goods/services 9

10 Practical Suggestions for Trademark Enforcement on Social Media Sites Register your brand as usernames on the social media sites Key names and marks (and key variations) Impossible to reserve all marks / misspellings in all domains and social networks Decide if you will use social networks commercially If yes, sign up for accounts and make active use Create your own pages on the various social media outlets Create fans, control your own messaging and create positive image Allows you to better track what others are doing 10

11 Practical Suggestions for Trademark Enforcement on Social Media Sites Determine the type of enforcement strategy you want to take Consider the seriousness of the infringing activity Was it done to cause harm to your brand? Or simply a misguided fan? Remember that message is likely short-lived You want to avoid alienating your key demographics Remember that certain unauthorized use / misuse of your marks should not be ignored Duty to police and enforce unauthorized uses or risk losing rights 11

12 Practical Suggestions for Trademark Enforcement on Social Media Sites Extend your monitoring program to include online platforms Assign employees to oversee the process, learn the terms of use for the major social networks and develop consistent monitoring and enforcement procedures Search engines can help companies find damaging content icerocket.com (searches blogs, Twitter, MySpace, news and images) Google.com/alerts (alerts for use of company names and brands on blogs, the Web, news, videos and discussion groups) technorati.com (searches blogs) 12

13 Practical Suggestions for Trademark Enforcement on Social Media Sites Extend your monitoring program to include online platforms (cont d) Engage an independent monitoring service company What sites will you follow? What will you look for? What can be ignored? What content poses the greatest risk? Negative, inaccurate, misleading comments Infringement Sale of counterfeit goods Can help rehabilitate a brand damaged by negative comments by developing new web pages featuring favorable commentary Will push the less flattering comments and web pages to the bottom of search engine result pages 13

14 Practical Suggestions for Trademark Enforcement on Social Media Sites Revise your branding policies and license agreements to include restrictions on using brands online Develop detailed use policies for employees / 3rd parties who join your user community Address those contexts in which employees / 3rd parties may mention your company / trademark and who may speak on behalf of your company / brand Address what internal evaluation must occur before content is posted that mentions / concerns your brand Add clauses in legal agreements between your company and 3rd parties 14

15 Practical Suggestions for Trademark Enforcement on Social Media Sites Watch your tone with enforcement mechanisms Softer and creative tactics may be better for an innocent infringer Could be a loyal fan/customer Once contacted, many site users are cooperative News of your response can be spread quickly and broadcast to millions Once innocent infringer remedies the problem, some companies are sending out promotional items as a show of thanks 15

16 Practical Suggestions for Trademark Enforcement on Social Media Sites Take advantage of site s complaint procedures Many have demonstrated reasonableness and will suspend accounts Take advantage of site s privacy policies Use litigation as a last resort Negative publicity can outweigh the benefits 16

17 Practical Suggestions for Trademark Enforcement on Social Media Sites Remember that U.S. law permits free speech so some criticism cannot be stopped Have a little humor Gaining complete control over all negative comments and unauthorized activity is not practical 17

18 Twitter Policies General Comments Twitter does not monitor user s content and will not censor content except in limited circumstances Privacy Policy We may disclose any information about you to government or law enforcement officials or private parties as we, in our sole discretion, believe necessary or appropriate to respond to claims, legal process (including subpoenas), to protect the property and rights of Twitter or a third party, the safety of the public or any person, to prevent or stop any illegal, unethical or legally actionable activity, or to comply with the law. Low expectation of privacy 18

19 Twitter Policies Terms of Service Accounts with clear intent to mislead others will be immediately suspended; even if there is no trademark infringement, attempts to mislead others is tantamount to business impersonation. IP Rights Twitter reserves the right, in its sole discretion, to pull content which violates anyone s IP rights and to reclaim usernames where someone else holds a trademark or has a legal claim to the username. Complaint mechanism: results may include removal of the infringing content or banning the infringer from future use 19

20 Twitter Policies Counterfeits Twitter policies say nothing about counterfeits though its basic terms of service tell users they must not violate laws in the users jurisdictions Impersonation Twitter does not allow impersonation of others that does or is intended to confuse, mislead, or deceive others Ways for monitoring such impersonation problematic Name Squatting To minimize, Twitter suspends accounts that are inactive for more than 6 months 20

21 Vendors With Social Media Monitoring Capability MarkMonitor MarkMonitor Brand Protection Covers a wide variety of internet activity including false association and brand defamation on websites and social media sites Comprehensive plan costing $30,000/year for medium-sized company Thomson Social Media Watch (being launched this week) Covers content and trademark usage in Facebook, Myspace, Twitter and Linkedin Cost = $1,000/year per mark Username Watching (being launched this week) Covers Twitter Cost = $750/year per mark 21

22 Vendors With Social Media Monitoring Capability Corsearch Web Monitoring Service (being launched this month at INTA) Attensity Attentio Cision Radian 22

23 Questions? Janet M. Garetto Nixon Peabody 300 S. Riverside Plaza, 16 th Floor Chicago, IL