Social media has huge reach and can create viral memes or other content very quickly. However, with great power comes great responsibility. If social media is not properly monitored or controlled, it is possible to lose control of your brand quite quickly.
Similarly, there is a big risk of individuals intentionally or unintentionally hijacking your brand name on social media. For example, the owner of the @johnlewis account on Twitter (a Mr John Lewis based in the USA) has to patiently explain to customers each year why he cannot help them with their enquiries. He is perfectly entitled to use that Twitter handle and, luckily for John Lewis the department store, Mr Lewis approaches the many people who mistake him with good grace and humour.
At the other end of the scale, there are people who deliberately register variations of common account names (or in some cases get in there with the obvious account name first). They may sow further seeds of confusion by adding words like “official” to their biography or in the “about us” section.
The sale of counterfeit goods on social media has become much more common in recent years. It is a particular problem on Facebook where many closed groups operate to sell counterfeit goods and hide infringing activities.
What can you do?
Without a registered trade mark, much of the following will be difficult to achieve. Trade mark registration is the key to comprehensive social media protection.
Set up a social media monitoring programme – Ideally this will track both:
1. usernames (for trade mark infringement); and
2. social media posts (for trade mark and copyright infringement. For example, misuse of your photographs).
This programme should keep track of both people trying to trade off your name or other intellectual property rights such as photographs of your products and people involved in a deliberate strategy to disparage your brand on social media.
There are various software tracking solutions, though they come with a price tag. However, two low technology solutions are:
1. conduct regular (for example, weekly) searches on the main social media sites; and
2. include a reporting tool on your website and social media sites so that your fans can easily let you know if they identify any infringing sites.
Good documentation – in all cases, it is essential that you have good records of your rights and the infringing activity they have been involved in. In many instances, you will not need to rely on this and people will move on to new brands which do not put up as much of a fight. However, if you are dealing with a persistent infringer, full and accurate records of their activities are essential in pursuing more formal legal action. It is very easy for a user to delete social media posts and whilst it is possible to obtain historic posts from a social media platform, this is a time consuming and expensive process which is best avoided if at all possible.
Use the social media platform’s automatic reporting mechanism – (also known as filing a takedown notice). All of the main social media players have some form of semi-automated notice and takedown process. This involves an online form whereby you identify your rights (for example by means of a link to your product on your official website to prove copyright ownership or one of your registered trademarks) and the infringing page or username. It is even possible to use this process to remove a listing from Google’s search index. You need to be careful that all takedown requests are completed carefully and accurately as they are often published in ‘transparency reports’ (for example Google does this on a regular basis).
Send a cease and desist letter – This is the first line of attack by a lawyer. It puts the infringer on notice of your rights, identifies why the other person’s activities infringe your rights and the consequences for the infringer of non-compliance. It is very common for cease and desist letters to be published online so even if you address it as private and confidential it may be widely circulated on the Internet. There are two approaches to cease and desist letters. In more sensitive circumstances, consider sending a relatively nice letter directly to the infringer. If this tactic has failed in the past, the issue is a particular concern for you or things have escalated to an extent that this is unlikely to be successful, ask your lawyer to write to them directly. It is wise to get legal input on both letters as if you over state your rights or suggest that you have a claim for trade mark infringement when you don’t you open yourself up to a legal claim for “groundless threats”.
Nothing – in many instances, doing nothing may be the best policy. If a post has not gained much attention, it is likely to blow over with time. Indeed, if you engage too early you may turn a small grievance into a much bigger issue. This is the risk of automated systems. They do not necessarily pick up on the relative nuances of a situation and can lead issues to blow out of proportion if a standard approach is applied to all potentially infringing situations.
Take home points
As with most things in life, a plan as to how you will achieve something is more likely to result in success than when there is no plan. Accordingly, it is important that you plan how you are going to approach different types of infringement in advance – not all infringements are equal. Some are annoying but the follower numbers are low so will have minimal impact. Others may involve high profile or vocal bloggers who will publish anything you send to them on social media. It is therefore important that you carefully balance what you do and put a plan in place for dealing with each type of infringement.
Rosie Burbidge is a senior associate at the Fashion Law Group at Fox Williams.