Protecting Brands
on Social Media
June 19, 2019
Lisa Greenwald-Swire
Principal
Michelle Parsons
Staff Attorney
Overview
fr.com | 2
Why Should
Brands Care @
Social Media?
Why Should Brands Care @ Social Media?
# Internet Users
4,383,810,342*
*Internet users worldwide as of March 2019 per internetworldstats.com
**World population as of June 2019 per worldpopulationreview.com
7,577,130,400**
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Why Should Brands Care @ Social Media?
# Internet Users
1
1: China
2: India
3: U.S.
4: Brazil
5: Indonesia
6: Japan
7: Nigeria
8: Russia
829 million
560 million
292 million
149 million
143 mliiion
118 million
111 million
109 million
# Internet Users
*Rank as of March 2019 per internetworldstats.com
2
3
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Why Should Brands Care @ Social Media?
# Active Users
2,380,000,000*
*Monthly active users on Facebook in March 2019 per statista.com;
$2.7 billion MAUs on Facebook core products (includes Facebook + Instagram, WhatsApp, Messenger)
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Why Should Brands Care @ Social Media?
# Minutes Spent
74*
*Average #s minutes users spend on social media per day per Infodocket;
% Facebook users that access Facebook daily per Pew Research Center
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Why Should Brands Care @ Social Media?
% U.S. on Social Media
72%*
*% U.S. public that uses social media as of February 2019 per Pew Research Center
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Why Should Brands Care @ Social Media?
• No industry is immune from social media
• Most brick-and-mortar shops have websites
• Even small businesses have social media pages
• News becomes viral instantaneously
• Customer service is reachable by chat/post
Finance Health Care
Insurance Manufacturing
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Why Should Brands Care @ Social Media?
Brands in All Industries Are Going Social…
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Why Should Brands Care @ Social Media?
Even World Leaders are Going Social…
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Why Should Brands Care @ Social Media?
Network and Cable TV is Changing… Even Sports Are Going Social
11 5 M 13# NFL games
Amazon streamed in
2018
# soccer fans
believed to have
illegally streamed the
World Cup
# MLB games
YouTube will stream
in 2019
Why Should Brands Care @ Social Media?
Network and Cable TV is Changing… Even Sports Are Going Social
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Why Should Brands Care @ Social Media?
Users = Visibility
Curated
Content
• Marketing
• PR
• Legal
• HR
• Executives
• Customer Service
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Why Should Brands Care @ Social Media?
Users = Visibility
Curated
Content
Fake
(or
infringing)
Content
• Marketing
• PR
• Legal
• HR
• Executives
• Customer Service
• Sales/Contests
• Phishing
• Fan
• Collect Likes
• Competitor
• Innocent
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Why Should Brands Care @ Social Media?
Users = Visibility
Curated
Content
Fake
(or
infringing)
Content
Curated
& Fake =
Confusion
• Marketing
• PR
• Legal
• HR
• Executives
• Customer Service
• Sales/Contests
• Phishing
• Fan
• Collect Likes
• Competitor
• Innocent
Practice Pointer:
Platforms often refuse
claiming “fan” site;
Reply that logos infringe.
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Protect Brands
on Social Media:
4 Steps
Protect Brands on Social Media: 4 Steps
1. Acquire Handles
2. Monitor Platforms
3. Enforce
4. Don’t Infringe
Practice Pointer:
Preemptive and
systematic approach is
most cost-efficient.
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Protect Brands on Social Media: Acquire Handles
Offensively
• Grab handles anonymously before launch (after clearance)
• Be aware of popular worldwide platforms
• Know the rules of ownership
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Protect Brands on Social Media: Acquire Handles
Consistently
5-50 characters
A-Z, 0-9, “ . ”
15 characters
A-Z, 0-9, “_”
30 characters
A-Z, 0-9, “ . ”, “_”
Practice Pointer:
If you own it, no one else
can!
YouTube
<= 20 characters
A-Z, 0-9
6-20 characters
A-Z, 0-9, “_”, “-”
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Protect Brands on Social Media: Acquire Handles
Globally
YouTube
FB Msg
QZone
Tik Tok
2.3 billion
1.9 billion
1.6 billion
1.3 billion
1.1 billion
1.0 billion
807 million
532 million
500 million
462 million
330 million
330 million
# Active Users*
*April 2019 data per statista.comfr.com | 20
Protect Brands on Social Media: Acquire Handles
Effectively
Each brand page
must be
associated with an
individual/Admin;
however 1 Admin
can be associated
with many pages
Each handle
requires a unique
email or phone
number
For anonymous acquisitions, add
“+” + a number before “@” to
create a unique Gmail address
without needing new email
account
Example:
You can only
deactivate for 30
days at a time, or
your account and
all content may de
deleted
Practice Pointer:
Know the rules of each
platform. Do you have to login
regularly? Do you need to
acquire likes?
1
2
3
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Monitor Platforms: Social Media Audits
• Monthly, Quarterly, Bi-Annually?• What does the budget allow?
• How much infringement is there?
• Do findings affect diligence?
• Hire Vendor*, Run In-house, or Use Outside Counsel?• Internal teams may be more familiar with goods/competitors.
• External teams can reduce PR concerns.
• Enforce or Monitor? Policy?• Once you know the landscape, you can make educated/strategic decisions.
• Create policy to streamline and create efficiencies.
• X
*There are a host of vendors that perform various watching services. While we do not endorse any particular vendor, a
sampling of vendors is included in the Appendices. fr.com | 22
Monitor Platforms: What Are You Finding?
Phishing
Get Likes
Fan
Innocent
Selling
Competing
Counterfeit
Contests
*These are not examples from representative clients, but
examples merely pulled from social media platforms.
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Enforce
Before You Begin
STOP
Think Big Picture!
• What is your enforcement strategy?
• What are your PR concerns?
• What is your budget?
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What Is Your
Enforcement
Strategy?
What Is Your Enforcement Strategy?
Bully or Sloth?
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What Is Your Enforcement Strategy?
Eng’d Mech. Serv. v. Applied Mech. Tech., 584 F. Supp. 1149 (M.D. La. 1984).
The owner of a mark is not required to constantly
monitor every nook and cranny of the entire nation and to
fire both barrels of his shotgun instantly upon spotting a
possible infringer.
Lawyers and lawsuits come high and a financial decision
must be made in every case as to whether the gain of
prosecution is worth the candle.
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What Is Your Enforcement Strategy?
Don’t Be a Bully
Be an Educator
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What Is Your Enforcement Strategy?
Be an Educator: Cite Policies
• Per Twitter’s parody, newsfeed, commentary, and fan accounts policy,
the name should not be the exact name of the account subject without
some other distinguishing word, such as “not,” “fake,” or “fan” (see
https://support.twitter.com/articles/106373).
• This account is [doing x, y, z] in violation of Facebook’s Statement of
Rights and Responsibilities (see https://www.facebook.com/terms.php).
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You may not realize it, but by using the name
Kleenex® as a generic term for tissue, you
risk erasing our coveted brand name that
we’ve worked so hard for all these years.
Kleenex® is a registered trademark and
should always be followed by a ® and the
words “Brand Tissue.” Just pretend it’s a
permanent marker.
- KLEENEX
What Is Your Enforcement Strategy?
Be an Educator: Cite Policies
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What Is Your Enforcement Strategy?
Don’t Be a Bully
Be Engaging
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What Is Your Enforcement Strategy?
Be Engaging: Speak “Brand”
• Make an “inside joke” or reference that a brand fan would appreciate.
• Speak to popularity of brand and responsibilities that come with it.
• Speak for (rather than from) brand - This account looks very similar to Apple Inc.’s
verified account and is using its trademarks. This use is causing confusion.
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What Is Your Enforcement Strategy?
Be Engaging: Speak “Brand”
My walkie talkie is busted so I had to write this note instead. I hear you
launched a Stranger Things pop-up at your Logan Square location.
Look, I don’t want you to think I’m a total wastoid, and I love how
much you guys love the show. (Just wait until you see Season 2!)
But unless I’m living in Upside Down, I don’t think we did a deal with
you for this pop-up. You’re obviously creative types, so I’m sure you
can appreciate that it’s important to us to have a say in how our fans
encounter the world we built… So please don’t make us call your
mom.
- NETFLIX
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What Is Your Enforcement Strategy?
Don’t Be a Bully
Be Kind / Avoid Bad PR
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What Is Your Enforcement Strategy?
Be Kind: Acknowledge Fans
• When possible, reach out by direct message or call infringer and share your
concerns.
• When trying to acquire an important handle and policy is not on your side, be
grateful and offer swag for their fandom (though not in exchange for the handle!).
• Show appreciation; give little reason to get blasted on Twitter.
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What Is Your Enforcement Strategy?
Be Kind: Acknowledge Fans
...It has recently come to our attention that the cover of your book
Broken Piano for President, bears a design that closely mimics
the style and distinctive elements of the JACK DANIEL’S
trademarks…
We are certainly flattered by your affection for the brand, but while we can appreciate the
pop culture appeal of Jack Daniel’s we also have to be diligent to ensure that the Jack
Daniel’s trademarks are used correctly. Given the brand’s popularity, it will probably come as
no surprise that we come across designs like this on a regular basis. What may not be so
apparent, however, is that if we allow uses like this one, we run the very real risk that our
trademark will be weakened…
- JACK DANIEL’S
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What Are Your
PR Concerns?
What Are Your PR Concerns?
Expect All Enforcement Measures to Be Public
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What Is Your Enforcement Strategy?
Beware: Public Opinion
Bully or Sloth?
v.
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What Are Your PR Concerns?
Do You Have PR Protocols?
• Is your client a famous brand?
• Do they claim good corporate ethics?
• Do they have a PR department available to respond
quickly to PR issues?
• Do they engage with customers and complaints
regularly?
• Would a viral PR disaster ruin them?
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What Are Your PR Concerns?
Evaluate PR Risks
# Followers?
Duration?
Each client will have a
different threshold, but
know the # that gives
them pause and review
with them in detail or
send to their PR
department for a final
answer.
How Bad is Use?
Could it really be a fan
site? Or are they clearly
impersonating your
client’s brand? Would
consumers be
confused?
Is Infringer
“White Hat”?
Is the Infringer a non-
profit, a student, a
mother, an otherwise
sympathetic opponent?
Is the use intentional or
just ill-advised?
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What Is Your
Budget?
What Is Your Budget?
Develop Cost-Efficient Strategy
Contact User
If an innocent infringer or
using for other purposes,
message directly or call
and ask nicely.
File Takedown
Analyze what report to
file based on content
and client concerns.
File, provide
requested documents,
and track status.
Request transfer of
handle, if applicable.
Follow-up
Request refused?
Ask for
reconsideration.
Other report
options? File
additional reports.
No response? Send
follow-up.Practice Pointer:
When filing with Twitter,
respond immediately or
case closes.
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What Is Your Budget?
Develop Cost-Efficient Strategy
Demand Letter
If request refused, due to
platform not wanting to
“mediate” or content
across multiple platforms,
send a demand letter
noting prior rights and
infringement.
Contact Executives
If report refused, but is
affecting your client’s
business and/or ability
to control its own
content, contact
executives at platform
and request
escalation. Policies
change regularly!
Other
Get creative! Consider
activity, first use, type of
content (adult,
inappropriate language,
political, etc.). Are there
images? Worldwide
registrations? Take
multiple simultaneous
actions to increase
prompt removal.Practice Pointer:
If refused, reply and file
alt. report at the same
time to expedite result.
fr.com | 44
What Is Your Budget?
What Is Cost of Opting Out?
• Consumer confusion
• Litigation over priority/scope
• Unclear values, loss of goodwill
• Rebranding
• Reduced assets, value
• Lost sales - infringement/counterfeits
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Don’t Infringe
Don’t Infringe
Content Can Be a Landmine
• Your competitors are posting third party content.
• Do your licenses allow social media posting?
• What policies are in place to prevent violations of agreements?
• What if content is misused? Do your waivers protect you?
• Does your use of other brands suggest an affiliation, create risk?
• Could an ornamental use be mistaken for infringing a trademark?
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Don’t Infringe
Share, Post, Re-Publish with Caution
• Content authors can claim copyright in some posts/photos/memes.
• Platforms are protected by license; users are not.
• Sharing within platform = OK; posting elsewhere = RISK.
• Brand owners may be held to a higher standard.
• Commercial use is HIGH RISK.
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Don’t Infringe
Risks: Curator v. (re)Publisher
Don’t make content that you want to control, shareable; if you do, enforce
Once content is shared, there may be dilution, adaption, re-attribution
PostDon’t re-share content that may have IP claims
License or create in-house any content used commercially
(re)Post
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Don’t Infringe
Agence Fr. Presse v. Morel, 769 F.Supp.2d 295, 302–03 (S.D.N.Y. 2011).
• Twitter's terms grant a license to use content only to Twitter and its
partners… the provision that Twitter ‘encourages and permits broad re-
use of Content does not clearly confer a right on other users to re-use
copyrighted postings.
• Rather, that permissive language stands in
contrast to the express, mandatory terms
conferring a ‘license’ and ‘rights’ on Twitter.
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Don’t Infringe
Beware: 3rd Party Content
…unless licensed or authorized, due to:
• Copyright concerns
• Right of publicity concerns
• False advertising
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Don’t Infringe
Jordan v. Jewel Food Stores, Inc., 743 F.3d 509 (7th Cir.2014).
Defendant tried free speech defense, noting it was
congratulatory and noncommercial.
7th Circuit held that the “ad” was commercial speech.
Ad prominently features "Jewel-Osco" logo & marketing
slogan, which are creatively & conspicuously linked to Jordan
in text of ad's congratulatory message. Ad is aimed to
promote Jewel-Osco brand.
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Practice Pointers
Practice Pointers
Enforcement
• Ensure your client doesn’t own and hasn’t licensed the content!
• Track removal reports (record case #s).
• Send in requested documentation.
• Reply quickly (24-48 hours).
• Infringers may call or email begging for reinstatement.
• If you want the handle - request it during takedown; lower cost.
• If no U.S. trademark registration, is there foreign registration?
• If no registration, can copyright be claimed on logo? impersonation?
• Re-file after refusal if alternate arguments available; good faith reason.
• Review takedown policies; they change regularly.
• When possible, add inactivity claim, most platforms use >6 months.
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Practice Pointers
Enforcement
• Twitter requires registration for trademark infringement; if no registration, file for
impersonation.
• Twitter requires POA for trademark infringement; if no POA, file for impersonation
and respond to email requesting confirmation.
• Claim or merge auto-generated Facebook pages so brand can communicate with
clients re comments.
• Facebook allows merging of pages, so you can have one stop for multiple pages;
Beware: once merged, cannot unmerge.
• Instagram Terms of Use prohibit selling.
• Takedowns may be territorial, especially on Facebook.
• Google will use personal email for Takedowns (Google+, YouTube).
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Practice Pointers
The Removal Is Not Always the End
Sometimes the infringer responds:
• Vendor? Licensee?
• Sad story? Threats?
The Brand should have:
• Policy re reinstatement.
• Policy re communicating with infringers.
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Appendix:
Takedown
Mechanisms
Trademark
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Facebook - https://www.facebook.com/help/contact/634636770043106
Twitter - https://support.twitter.com/forms/trademark
Instagram - https://help.instagram.com/contact/372592039493026
YouTube - https://www.youtube.com/reportingtool/trademark?rd=2
Tumblr - https://www.tumblr.com/abuse/trademark
LinkedIn - https://www.linkedin.com/help/linkedin/ask/TS-NTMI
Google Adwords - https://services.google.com/inquiry/aw_tmcomplaint
Google - https://support.google.com/legal/troubleshooter/1114905
iTunes - https://www.apple.com/legal/internet-services/itunes/appstorenotices
Snapchat - https://support.snapchat.com/en-US/i-need-help?start=5104595609059328
Google Play - https://support.google.com/legal/contact/lr_trademark?product=googleplay
Copyright
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Facebook - https://www.facebook.com/help/contact/634636770043106
Twitter - https://support.twitter.com/forms/dmca
Instagram - https://help.instagram.com/contact/372592039493026
YouTube - https://www.youtube.com/copyright_complaint_form
Tumblr - https://www.tumblr.com/dmca
LinkedIn - https://www.linkedin.com/help/linkedin/ask/TS-NCI
Google - https://support.google.com/legal/troubleshooter/1114905
Dropbox - https://www.dropbox.com/copyright_complaint
iTunes - https://www.apple.com/legal/internet-services/itunes/appstorenotices
Snapchat - https://support.snapchat.com/en-US/i-need-help?start=5104595609059328
WhatsApp - https://www.whatsapp.com/legal/#ip-policy
Abuse/Privacy/Spam
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Facebook - Report on Facebook Page
Twitter - Report on Tweet
Instagram - Report on Instagram Page
YouTube - Report on Video Page
LinkedIn - Report on Profile Page
Google+ - Report on Posts
Other
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Privacy - https://www.facebook.com/help/contact/144059062408922
Counterfeit - https://www.facebook.com/help/contact/628238764025713
False Information - https://www.linkedin.com/help/linkedin/ask/TS-NFPI
YouTube
Privacy - https://support.google.com/youtube/answer/142443
Counterfeit - https://www.youtube.com/reportingtool/counterfeit
Circumvention - https://www.youtube.com/reportingtool/circumvention
Report Ad - https://support.twitter.com/forms/ads
Impersonation - https://support.twitter.com/forms/impersonation
Counterfeit - https://support.twitter.com/forms/counterfeit
Vendors
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AppDetex: https://www.appdetex.com
CSC: https://www.cscdigitalbrand.services/en/enforcement-services/takedown-services
Mark Monitor: https://www.markmonitor.com/solutions/defend-your-brand
Pixsy: https://www.pixsy.com
Red Points: https://www.redpoints.com/online-brand-protection
RiskIQ: https://www.riskiq.com/solutions/purpose/brand-protection
Questions?
Thank You! Please send your NY CLE forms or
questions about the webinar to Angela
Park at [email protected]
A replay of the webinar will be
available for viewing at
http://www.fr.com/webinars
© Copyright 2019 Fish & Richardson P.C. These materials may be considered advertising for legal services
under the laws and rules of professional conduct of the jurisdictions in which we practice. The material
contained in this presentation has been gathered by the lawyers at Fish & Richardson P.C. for informational
purposes only, is not intended to be legal advice and does not establish an attorney-client relationship. Legal
advice of any nature should be sought from legal counsel. Unsolicited e-mails and information sent to Fish &
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do not include any confidential information in this message. For more information about Fish & Richardson
P.C. and our practices, please visit www.fr.com.
Lisa [email protected]
(650) 839-5198
Michelle [email protected]
(650) 839-5055
“The opinions expressed are those of the author and do not necessarily
reflect the views of Fish & Richardson P.C., any other of its lawyers, its
clients, or any of its or their respective affiliates. This presentation is for
general information purposes and is not intended to be and should not be
taken as legal advice.”
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