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The Brave New World of Social Media

Date: 19 November 2012
Author: Jocelyn Clarke
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The vast majority of intellectual property disputes dealing exclusively with social media have settled out of court, and to date there have been no relevant trade mark cases in Australia. It is perhaps unsurprising that these issues are nipped in the bud; network providers such as Facebook and Twitter deal with potential infringers using almost identical, if simplified, legal principles adopted by the courts and present in international agreements.

Facebook merely requires an online claim form to be lodged, depending on whether it is a copyright, trade mark or other complaint, and if it can be shown that the owner's legally recognised rights are being infringed, the relevant content will be removed. Similar policies apply for Twitter and Myspace.

One thing is certain: proof of registered trade mark rights is important to ensure removal of any infringing content. Facebook's threshold for justifiable action mirrors that in trade mark law: that confusion over ownership of a registered trade mark is likely to result from the infringing use. Twitter's policy is broader and includes the opportunity to object to misleading use of company names or use in bad faith. As well as strengthening the case for decisive action by a social media provider, trade mark registration is unmistakeable proof of an owner's prior rights.

Of course this defensive method of brand protection on social media sites requires knowledge by the trade mark owner of the infringement. Where there once was a designated advertising space and marketplace, we now have a platform for potential infringement that spans many millions of social networkers across three or four key web sites, where sellers and buyers are only limited by their access to an internet connection. 

The scope for infringement has widened and with it the effort involved in monitoring trade mark use by competitors. Finding potential infringers is not straightforward; traders do not necessarily have profile pages and may only target consumers with intermittent advertisements.

Measures for ensuring more effective brand protection on Social Media sites:

  • To strengthen your position in a potential trade mark conflict, ensure your trade mark is registered.
  • Monitor use of advertising on social media sites regularly and ensure any infringing use is cut off as soon as possible. 
  • Set up a Facebook or Myspace profile in the name of your trade mark and post information on your products/services to attract targeted and relevant advertisements to your page.
  • Paid advertisements on social media sites may have the additional benefit of being able to show an increased likelihood of confusion between your trade mark and that of a potential infringer. The courts have held that merely holding an account in the name of your trade mark on Facebook and Twitter is not enough to prove extensive use.
  • If you become aware of negative commentary about your product or service, assess for false accusations and any deliberate campaigns by competitors. Twitter’s policies are designed to protect parody and opinion and it generally does not intervene in disputes over defamatory statements, however it tends to be tougher on defamers with a commercial interest. To date there have been no court decisions on defamation in social media in Australia, and very few pending cases overseas, as most never get to trial.
  • Any paid endorsement of a competitor’s product by third parties should be identified in tweets and posts. Where there has been a clear attempt at ‘riding off the success’ of brand owners without their consent, Twitter has gone so far as to amend profile names without the user’s consent.

The muddy waters of social media law are not dispersing any time soon, but even so we can see that network providers themselves are beginning to flesh out policies that provide practical means for brand protection.  Progressive companies such as Facebook will continue to evolve their policies to reflect changes in intellectual property law as these types of disputes make their way to the courts, and legal principles founded on traditional forms of advertising are tested in the brave new world of social media.  The position for now appears to be one that favours free speech and expression, whilst those who stand to gain a financial advantage are not being treated so liberally, and effective avenues for brand protection are alive and kicking.

 
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