Protecting Against Trademark Infringement on Social Media

by Latham & Watkins LLP
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Jennifer Barry, a San Diego-based litigation partner, shares best practices for lawyers on confronting trademark infringement and counterfeiting threats by users of social media networking sites.

What are some of the infringement risks that companies face from social media?

Ms. Barry: When companies are dealing with social media there are two things that they need to be thinking about: other people infringing their rights in social media and, if they are going to be embarking on a social media campaign, they need to be thinking about not infringing other people's rights.

If a company is going to be doing its own social media it should consider having some policies and procedures in place internally that guide and control what is posted on those sites. Once something is out there you can never take it back.

Companies also need to be watching and monitoring what other people are doing to make sure that their intellectual property is not being infringed upon. This can be something very extreme, such as a counterfeiter who has posted a fake Facebook page or a fake Twitter feed to try to get people to buy counterfeit goods, or something less extreme, such as someone using a mark that is similar to your company’s or a fan site that is talking about your company and your products.

How can companies protect themselves from infringing on other’s trademarks and having their own trademarks infringed on social media?

Ms. Barry: We usually recommend companies have a particular team that is in charge of their social media and only that team can post content. There should also be checks and balances around what is posted and some sort of approval procedure. This can be challenging because social media is very in the moment. Often we will put together a basic set of written policies and procedures that can be shared with the client’s social media team to make sure that they are thinking about those things when they post.

When it comes to external threats, there are many different ways to monitor. One of the most successful ways that our clients have found to monitor other people's uses and infringements is through their employees seeing it and reporting it to their legal departments. That is essentially the lowest level stage of monitoring. Next, there are third-party vendors that have programs which can go out and scour the web and search for your trademarks and give you reports. In some cases, the client will get us involved when we need to escalate. They may have an internal procedure to send out a notice or a letter to the site to say “Hey, can you please stop doing this?” If that doesn't get the result that they want then they'll often escalate it to us and we will send a demand letter on their behalf.

What steps should companies take if they believe a user of a social networking site is infringing a copyright or trademark?

Ms. Barry: Social media presents a bit of a challenge because it is often difficult or impossible to determine the actual person behind a post or page. However, a lot of these bigger social networking sites do have takedown procedures, so if you have a clear case of infringement you can just go through the takedown procedure on the site. Those are usually successful. But, when that doesn't work or when you have a situation like a fan site or something that is not a clear cut infringement, it can get a little bit challenging. You might have to do some investigation to find out who owns it.

What advice do you have for companies considering embarking on a social media campaign?

Ms. Barry: Companies should not be afraid of social media. It can be daunting and oftentimes companies will say it is not worth the effort. I encourage my clients to think about whether social media is right for them. Some clients feel as though they have to be out there, but they are not really in an industry that is consumer driven or where the general public is their target audience. There is no reason to spend the time and money if this is not really a good fit for you. Social media requires a lot of time and effort—you can't put up a page and then update it once every three weeks. I recommend my clients think not only about the legal aspects of what they are doing, but also to ask themselves from a  business standpoint, “Is this something we should be doing?” If you are going to do it, then you need to commit to doing it and doing it right.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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