Protecting Your Trademarks in Social Media

Use of social media has exploded in recent years. With people spending ever more time online, and fewer “captive audiences” tied to network television, companies increasingly turn to social media platforms, such as Facebook, Twitter, and Instagram, to promote their products.

While social media provides powerful new ways to promote a brand and sell products online, it also requires increasing diligence to police against infringing uses.

According to Pew Research Center, nearly 70 percent of American adults use at least one social media site, and 15 percent of online purchases are now made through social media links. Facebook now reports more than 2 billion monthly active users; LinkedIn, more than 500 million; Instagram, more than 700 million; and Pinterest, more than 150 million.

Reportedly, a whopping 50 percent of brands are now on Instagram. Companies now widely use social media to reach consumers using viral videos, online contests, public interest programs, and personal appeals.

For example, in 2012 Frito-Lay’s Do Us a Flavor campaign allowed fans to suggest their own Lay’s chip flavor, with a $1 million prize for the winner. People could vote for their favorite flavor ideas on the company website, and the top three were sold in stores so that fans could try them before voting for the winner on Facebook or Twitter.

According to Chief Marketer magazine, the campaign increased sales of Lay’s by 12 percent during the contest and garnered impressive online attention.

But with the increased use of social media by brands comes increased infringement. In addition to promoting counterfeit goods through social media, infringers are also creating infringing websites, blogs, and social media pages to capitalize on others’ brands. In this environment, it is important to have a practical approach to policing your brand online.

Implementing a Successful Online Policing Program
There are several considerations for successful online policing. Given the volume of content online, it is not possible or efficient to police every reference to a company’s brands. It is critical to prioritize policing efforts and take a thoughtful approach following certain principles.

Register Key Brands
While, at least in the U.S., a trademark need not be registered to be enforceable, there are important advantages to registering for policing online. For example, Facebook and Instagram require that a registration number or certificate be provided in any trademark-takedown request.

Remember, trademark law protects nearly any term or symbol that is a source indicator. This can include traditional word marks, trade dress, logos, or even colors.

Monitoring For Infringement
The next challenge is implementing an efficient monitoring program given the vast reach of the internet. Some companies do their own policing, conducting regular searches on key brands using search engines, social media, and e-commerce platforms.

There are also vendors that provide social media watch services that can be customized to address a company’s products and issues, or your trademark counsel can help set up an appropriate watch.

Get Familiar with Sites’ Takedown Policies and Procedures
Trademark law prevents others from using a “confusingly similar” mark for related goods or services; for famous brands, the protection is broader and reaches even noncompetitive uses.

Major social media platforms and e-commerce sites publish their takedown policies on their website. It is more efficient to work within their parameters if possible. These companies receive very large volumes of takedown notices. With platforms processing so many requests, you will get a more prompt response if you follow their established policies.

For trademark infringement, these policies generally include reporting the infringing content or item through an online form. This typically requires the claimant to provide information about themselves and the mark, a link to the infringing content, and an explanation of the infringement (if not immediately clear).

Platforms typically have similar procedures to report copyright infringement, or unauthorized “impersonation” pages, depending upon the site.

Generally, the platform itself will not be liable for infringement by its users so long as they respond appropriately to takedown notices. Copyright law provides statutory safe harbors for platforms that do so as part of the Digital Millennium Copyright Act.

Although there is no similar statutory safe harbor for trademark infringement, courts have followed similar principles for trademark claims, finding online platforms liable for trademark infringement only where they reasonably should have known of the infringing content and failed to act.

Choose Your Battles Carefully
It is also important to consider fair use in evaluating whether to send a takedown notice. The “nominative fair use” defense may apply where mention of the brand is essential to identify the product or party being discussed—for example, for non-confusing comparative advertising. Gripe sites or other commentary may well be protected as non-infringing free speech.

Social media platforms often incorporate these “fair use” protections in their policies, with some variations.

For example, Facebook prohibits content or actions that violate someone else’s rights; it allows only authorized representatives to administer an official “page” for a brand, entity, or public figure but allows fan or “gripe” pages, in some circumstances.

Twitter prohibits using trademark-protected materials “in a manner that may mislead or confuse others” but expressly allows clearly marked parody accounts.

eBay prohibits “counterfeits, fakes, or replicas of brand-name items” and “unauthorized copies of a rights owner’s images and/or text” but allows sellers to “mention the brand name” of an item listing as long as they do not falsely suggest that they are an official dealer or reseller or use a manufacturer’s protected text, images, or logo.

Overreaching, sometimes referred to as “trademark bullying,” can also create serious PR issues and even negatively affect your rights.

In many ways, the growth of social media and e-commerce makes it easier for brands to connect with customers but also makes it more challenging to monitor and protect brands online. By registering key brands, implementing a targeted online policing program, and choosing your battles selectively, a company can effectively deal with infringing uses that can do real damage to its brands.

Specialized trademark counsel can help you develop a policing program that fits well for your company. BW

Jennifer Golinveaux is a partner in the San Francisco office of Winston & Strawn LLP. She is an industry leader in trademark and copyright prosecution, and she has obtained some of the most influential decisions affecting internet and technology law. She can be reached at jgolinveaux@winston.com.

Ashley Roybal-Reid is an associate at Winston & Strawn LLP’s San Francisco office. She focuses her practice on complex commercial litigation and intellectual property matters. She can be reached at aroybalreid@winston.com.