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Roundtable By Trevor Little

As social media and networking toolsbecome both more sophisticated and moreprevalent, the trademark, legal and brandreputation challenges that they present arelikewise increasing. In many respects,trademark law is still playing catch-up interms of the protection afforded to marks. Assuch, the need for clear strategic advice onthis complex issue has never been greater.WTR sat down with a number of differentspecialists to discuss practical strategies forsocial media engagement, protection andenforcement.

To start, what are the fundamental elements to include in an internal socialmedia policy?

Lisa Greenwald-Swire: A company’s socialmedia persona communicates a great dealto its consumers and acts as another ‘face’ ofthe company. Therefore, it is important tosafeguard the company’s reputation bycrafting a clear internal written policy thatapplies to each person in the company, fromtop to bottom, and that extends to eachemployee’s personal use of social media,even when off duty. At its most basic, a good social media policy should adviseemployees to use good judgement, berespectful and be transparent. Employeesshould be open about their position in thecompany when posting about the company,and also make clear that the viewsexpressed are their own and not those ofthe company. A reasonable reference point to remember is that most postingsonline are there forever and cannot easily be removed.

A number of questions should be askedwith respect to the company’s social mediaaccounts. Who is authorised to create andmaintain social media accounts on behalf ofthe company? In what way will social media

accounts be used by the company? Whatguidelines should those using thecompany’s social media accounts follow toensure that the company’s brand is beingprotected, from both a trademark and apublic relations perspective? Similarly, thereare questions to ask with respect tocompany employees and their personalsocial media accounts. What are employeesnot allowed to post about the company? Areemployees prohibited from speaking onbehalf of the company in their personalsocial media accounts? What are theconsequences for an employee’s failure toadhere to the social media policy?

Rosie Burbidge: Social media – includingpersonal websites, blogs, comments (onshopping sites such as Amazon or Q&A sitessuch as Quora or eHow) and wikis, as well asthe more obvious examples such asFacebook, LinkedIn and Twitter – opens upincredible opportunities. But becauseparticipants are engaging in a conversationwith the world, it also carries with itconsiderable risks – in particular, the risks oflitigation and, perhaps more importantly forbusinesses, of damage to reputation.

Social media policies should notdiscourage staff from sharing their views andideas. However, their use should beresponsible and not reflect badly on thebusiness. This will be second nature to mostpeople, but for the few who are less aware ofthe impact of social media, a clear policy isinvaluable. The business’s trademark value,its reputation and confidentiality (of both thebusiness and its clients) need to bemaintained, and all ‘employees should beaware that so-called online anonymity’ ismisleading. Most companies reserve the rightto track all activity carried out on a workdevice. Even an anonymous private remarkmade from a personal device can be tracked

– for example, an internet service provideraddress can be used fairly easily to identifythe makers of offensive or abusive remarks.

Malia Horine: It is crucial to developcompany principles for personal onlinebehaviour in line with business guidelineswhen employees are engaging inconversations about the company. Staffshould exercise caution in mixing thepersonal with business, and be aware oftheir responsibility for their actions. Aformal policy should therefore includeguidelines on username registration, onwriting social media content on behalf ofthe company and on the authorship ofcontent unrelated to the company, butclearly showing employee affiliation.

How should this be communicated to staffand subsequently policed?

MH: A social media policy should be put inwriting and included as part of everyorganisation’s employee handbook.Guidelines can also be presented to therelevant groups or distributed in hard copyduring team meetings, or offered as a short class through the company’s onlinetraining programme.

LGS: I agree – an internal social mediapolicy can best be communicated via awritten code of conduct that is part of theemployee handbook distributed within thecompany to every employee. This provides aclear protocol for anyone within thecompany who either interacts with thecompany’s social media accounts and/oruses personal social media accounts outsidethe company. Presumably, the company willmonitor its own social media accounts toensure that content adheres to the internalpolicy. However, I do think that policingemployees’ use of their personal socialmedia accounts can be much more difficult.A company need not, and perhaps shouldnot, go so far as to police each individualemployee’s social media accounts forviolations of internal policy. However, thecompany should respond to any violationsthat come to its attention, particularly if

Protecting your brand in thesocial media environmentGlobal trademark practitioners offer practical guidance on the creationand execution of a resilient social media strategy

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the get-up and branding of the social mediasite – particularly in a world where colourmarks are valid in some jurisdictions. As withany new advertising campaign, it is alwaysadvisable to get professional advice first, andtrademark counsel have a useful role to play inthe development and implementation of anonline strategy that deals with issues of bothprotection and enforcement.

In relation to protection, counsel will beable to advise on matters such as thedesirability of registering the company’sbrands (and key brand variations) asusernames on social media sites; the insertioninto legal agreements of clauses dealing withonline use; and the development ofmonitoring programmes in relation to third-party use of the company’s brands. In relationto enforcement, counsel can provideparticularly valuable assistance in thedevelopment of an appropriate strategy.Enforcement in the context of social mediahas its particularities: how you have dealt witha particular ‘infringer’ can spread like wildfireand negative publicity can outweigh any

advantages that might be gained. Anenforcement strategy that encourages acertain lightness of touch, use of the socialmedia sites’ complaints procedures andlitigation as a last resort is likely to be worth itsweight in gold. LGS: As a general rule, it is never too early formarketing departments to consult withtrademark counsel with respect to theircompany’s social media presence. Becausesocial media is a pivotal marketing tool intoday’s increasingly online society, acompany should determine whether a brandis available or can be acquired as a usernameon key social media websites, even beforeselecting the brand itself. It can be dangerousfor a company to invest considerablegoodwill and money in a brand that it onlylater discovers is no longer available onFacebook or Twitter, for example, or – evenworse – is already owned and used by a directcompetitor. Trademark counsel can provideearly guidance as to which trademarks arerelatively clear for a company’s use andregistration, and which are likely to beproblematic because of a potential likelihoodof confusion with existing trademarks.

MH: Prior to posting any content, marketingshould consult with trademark experts andensure that the necessary social mediausernames have been captured. Legal shouldalso be consulted at this point, so they canhighlight any potential negative brandingramifications within the company’s socialmedia plan. If the company is subject togovernmental regulation, it is important forcounsel to make sure an agreement is in placeon whether pages will be open or closed andwhether their content will be monitored.

Turning to external issues, how shouldcompanies then approach the monitoringof social media sites for trademarkinfringement/brand misuse – and how biga problem is it?

MH: An effective social media monitoringprogramme tracks two things: third-partyinfringement of usernames and trademark orcontent misuse within actual social mediaposts, including infringement, unauthorisedsales, offensive or disparaging mentions andso on. Whether or not you have a socialmedia marketing plan in place, the chancesare good that people are already talkingabout and interacting with your brandonline. It is very important that you monitorand be aware of what is being posted, just asyou would other online content. Yourreputation is at stake!

Roundtable Social media brand protection

Lisa Greenwald-SwirePrincipal, Fish & Richardson PCGreenwald-Swire@fr.com

Lisa Greenwald-Swire is a principal in Fish &Richardson’s Silicon Valley office. Her practiceemphasises US and international trademarkcounselling and prosecution, including issuesrelated to branding strategy, domain namedisputes and licensing. Ms Greenwald-Swirealso assists clients with trademark andcopyright infringement issues in federalcourt. She is frequently asked to speak onissues related to trademarks and the Internet,and was most recently named one ofCalifornia’s Top IP Lawyers by the DailyJournal. She has also been listed in the WTR 1000 by World Trademark Review twoyears in a row (2011-2012).

they harm the company’s reputation,divulge confidential company informationor otherwise violate the social media policy.

RB: Staff certainly need to be made fullyaware of the detail of the policy – forexample, through publication on thecompany’s intranet and training sessions. Toensure compliance, businesses shouldconsider expressly including it as part of theemployment contract.

Ideally, social media guidelines shouldhelp employees to participate safely in socialmedia, with minimum risk, either personallyor to the business. This can be achievedthrough a clear social media policy whichclearly delineates between the three sorts ofsocial media interaction: the clearly private(eg, Facebook), the unquestionablyprofessional (eg, LinkedIn) and the blurry line(eg, blogs). But ultimately, the policy and itsenforcement should be proportionate andbalance the concerns of the company withthe freedom of the employee. Telling peoplewhat to do in their spare time is really quiterestrictive. Clearly, however, where someoneis representing the company on social media,the level of monitoring should be muchhigher and pre-clearance of some or all postsmay be appropriate.

MH: Social media policing can be a function ofthe marketing team leadership, the IT group orhuman resources staff – or if your companyhas one, the social media group. The socialmedia monitoring tools available now make itmuch easier to review content and ensure thatit meets company guidelines and is postedwith prior approval. Other tools permit IT staffto review the websites that their employeesvisit during work hours. These are useful if, forexample, the company doesn’t allow its staff tolook at Facebook during the business day.

When considering the company’s socialmedia presence, at what point in theprocess should marketing people consultwith trademark experts? What role cantrademark counsel usefully play?

RB: This completely depends on how thecompany is planning to use social media. Is itabout connecting with customers or is itabout raising profile? Are you educating oradvertising, or both? The guiding principle,however, should be that early consultationmay well prevent expensive litigation. Andremember that social media is online andhence global – so brand guidelines mayrequire updating in light of the global reachof the Internet.

Marketeers will also need to think about

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RB: And there is a potentially unlimitedamount of trademark misuse andinfringement on social media sites tocontend with, ranging from fake brand sub-sites to ‘sucks’ pages and blogs. The extent ofthe problem varies with the type of brand (eg,fashion and technology brands tend to havemore difficulties than life sciences brands),but no brand is immune. It is therefore usefulto have a policy which outlines the approachto be taken to each type of infringement. Thisshould take into account the cost andpotential public backlash. Serious onlineinfringement and counterfeiting should beactively monitored – a number of onlineservices offer this service. For smallerbusinesses, a basic search carried out on aregular basis may be sufficient. Having areporting facility on your official website isvery useful in terms of getting leads on fakesites or pages. At the other end of the scale,misuse (but not abuse) of trademarks maywarrant a friendly email, use of the socialmedia website’s reporting tool or, if on a largescale (or if the friendly approach does notwork), a cease and desist letter. All of theseletters should be tailored to the infringer.

Before sending anything, it is worthconsidering whether the comment reallydamages your brand. Very often, use ofsocial media is in a private rather than acommercial capacity; if it doesn’t damagethe brand and doesn’t infringe your rights,do you need to take any action at all? Thekey, as outlined above, is to have a goodclear policy in the first place.

LGS: Either in-house or outside counselshould be monitoring social media sites fortrademark infringement by checking whether users are infringing the company’strademarks or misleading consumers intobelieving that they are somehow affiliatedwith or authorised by the company whenthey are not. Monitoring typically involvesconducting regular searches on social mediawebsites or via search engines such as Google or Bing for infringement or misuse. It is especially important thatcompanies be vigilant to ensure that thirdparties are not securing the company’s brand as a username (eg,www.facebook.com/’yourbrandhere/) andappearing to present themselves as thecompany or as being associated with thecompany. Companies should also be aware ofinfringers that typosquat on social mediawebsites (eg, www.facebook.com/’urbrand’ orwww.facebook.com/’yourbrand1’), as theseinstances of misuse can be just as confusingto consumers, and the possibilities fortypographical errors are nearly endless.

What initial steps should a trademark ownertake when it finds cases of infringement?

LGS: First, the owner should capture evidenceof the instance of infringement by eithersaving a screen capture or printing theparticular webpage. Next, review the IP policyon the specific social media website anddetermine whether the owner can issue atakedown notification through either a formalletter or an online form directly on the socialmedia website. A determination of whetherthe incident constitutes infringement andshould be removed involves a number offactors, including the nature of the incidentand whether defences to infringement apply,such as nominative fair use. Finally, an ownermay want to consider the practicalimplications of issuing a takedown notice –specifically, whether requesting removal ofcontent may create a public relations fiasco orotherwise do more harm than good.

RB: It’s important to be mindful that in a veryshort space of time, legal letters can bepublished and dissected, and publiccampaigns started against your company –even if you are completely justified in askingsomeone to stop using your mark. Socialmedia involves a conversation and it is open

to companies themselves to engage in thatconversation. So appoint an individual torespond to these sorts of issues. A friendlyemail (or post/comment) saying that yourcompany owns rights in the name and pleasecan they not use it anymore without clearingit first may be a lot more effective, at least inthe first instance, than a long legal letterquoting all sorts of legal issues which the useris unlikely to understand or care about (but islikely to scan in and disseminate).

MH: It’s worth adding that the first step, andone that you should take well in advance ofany infringement actions, is to defensivelyregister the appropriate usernames for yourbrands so that others don’t. This reduces theneed for username monitoring and alsoensures that your marketing departmenthas the usernames it needs when it comestime to register them on popular andemerging social media sites. At a minimum,companies should identify their mainbrands and proactively register thecorresponding vanity URLs. If you thendetect infringement against your brands,your first recourse is the terms of serviceagreement specific to each social media site.Report your claim of copyright ortrademark infringement to the socialnetworking site and have it removed oraccess to it disabled. Facebook, for instance,has two forms of action available toaggrieved parties: an automated IPinfringement form and a DigitalMillennium Copyright Act notice ofcopyright infringement. If necessary,companies can attempt directcommunication with the infringer orpursue arbitration or litigation actions.

Staying in this area, do most social mediasites tend to have comprehensive trademarkand username policies?

MH: As mentioned above, each site has its ownterms of service policy, which serves asrecourse for handling any instances oftrademark misuse. Of course, some policies aremuch more established and the site ownerswork well within their policies. Others are notas well defined or are poorly managed. It isimportant to review and understand thepolicies of all main social media sites that youintend to participate on, preferably before youestablish a presence there.

LGS: While most social media websites havedetailed trademark and username policies andpurport to respect brand owners’ rights, in theend it does indeed comes down to howresponsive a specific site is when a company

Rosie Burbidge Associate lawyer, Rouse Legal UKrburbidge@iprights.com

Rosie Burbidge is an IP lawyer and regularblogger on art law issues for art and artifice.Her particular area of interest is digitalphotography and its use in social media. Sheworks for a variety of IP-rich companies inthe fashion, digital media (including gaming),life sciences and technology industries. Shehas particular expertise in copyright,trademark and domain name infringementand cross-border patent litigation.

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brings allegations of infringement or misuse tothe site’s attention. While some sites areresponsive to communications regardingremoval of infringing material, at the otherend of the spectrum, some social networkingsites may not always respond to takedownrequests expeditiously or may make it difficultto find a point of contact to correspond withregarding IP violations.

RB: I would say that these policies and socialmedia sites’ responsiveness to complaintshave both improved dramatically in the lastcouple of years. All the main social mediasites encourage initial engagement with theindividual concerned before using thepolicy, which may be a cost-effectivestarting point and can enable a quickresolution. However, where there is illegalactivity such as counterfeiting, you mayprefer to make a test purchase and save the relevant web pages before takingstronger action.

Facebook has problems withcounterfeiting, fake sites and individualpages (particularly of celebrities). Facebook’sreporting facility is fairly straightforwardand can be completed directly by the brandowner. It covers copyright as well astrademark infringement, which can beuseful for logos and unregistered butdistinctive brand designs. Twitter is a bitmore complicated, because in many ways aTwitter ID is analogous to a domain name.Only one ID per name is available and it isnot easily transferable. If someone tweets inhis or her own name, which is also the nameof celebrity or a brand (a particular issue forthe fashion industry), there may be littlethat the more famous person can do.

He Fang: In China, the Twitter equivalent isSina Weibo, a popular platform used bymore than 22% of the Chinese internetpopulation. Sina Weibo started arequirement for ‘true-ID’ registration inearly 2012, which requires users to providetheir name and mobile telephone number,which must then be verified. Those whorefuse are barred from posting messagesand limited to reading others’ entries. Thismakes the enforcement and protection onSina Weibo much more straightforward.

In some instances, brand misuse may beaccidental or stem from a genuinemisunderstanding of trademark law (rather than due to wilful infringement).How should a brand owner make that assessment and tailor its approachappropriately, so that it is not seen as heavy handed?

LGS: It is a good point to remember that notall misuse or infringement of a brand comeswith ill will. In some instances, brandowners should be aware that genuine fansof the company, as opposed to competitors,can just as easily misuse a brand. Forexample, fan sites or fan-made products tobe used in conjunction with an owner’sproduct (eg, a knitted pouch for the ‘YourBrand’ widget) can be inappropriatelylabelled so as to result in trademarkinfringement or misuse. The companyshould carefully consider such instances ofinfringement in terms of how it wants to beperceived publicly and/or whether it wantsto risk offending a loyal fan with a takedownrequest. On the other hand, the brandowner has a duty to protect its trademarks,as even the best-intentioned instances ofinfringement can still mislead consumersinto believing that the fan site and fanproduct originate from, or are endorsed by,licensed by or somehow associated with, thebrand owner when they are not.

RB: As noted earlier, a short, polite email ormessage is always a good starting point.

Unless the infringement is really severe orcausing brand damage, you should give theinfringer enough time to respond beforetaking action. You always need to bear inmind that your email, letter or similar couldbe published online. It is useful to imagine it,and give it the same degree of attention, as apress release. You can have standardisedletters/emails, but be careful to tailor themappropriately. Make sure it is not a whollyautomated process – nobody likes to be toldoff by a computer.

MH: Ultimately, the trademark ownershould handle this in the same manner as itwould other instances of onlineinfringement. In many cases, contactingposters and making them aware of the issueis enough to resolve it. Social media spreadsvery rapidly, so a heavy-handed approachcan have negative impacts on a company’sreputation. The company may also choose toignore certain situations rather than addressthem because with social media, it can be‘here today, gone tomorrow’, and the timeand effort required to address a problem willnot pay a high return.

Where an action results in a backlash,should the brand owner seek to engage thecommunity proactively and engage inonline discussion? If so, how, and whoshould take on this function?

RB: This can be done either very well or verybadly. Social media is about people. If abrand breaks the trust of an onlinecommunity, the response should not befrom the ‘brand’, but rather from the peoplerepresenting the brand. Responsibilityshould be taken immediately andunequivocally, and measures put in place toprevent the problem from happening in thefuture. One of the most interestingexamples of this recently was Vogue Spain’suse on its Instagram feed of photos that itclaimed as Vogue images, but which were infact taken from other Instagram users (whowere not credited). No cease and desistletters were necessary – the backlash wasimmediate and Vogue Spain ultimatelyretrieved the situation through anunequivocal apology to the artists involved(and artists in general).

LGS: It is certainly appropriate for acompany to make clear that it has a duty toprotect its IP rights, although this should bedone in a reasonable and measured manner.This is likely an issue that the publicrelations and marketing teams shouldtackle. There are some instances when no

Roundtable Social media brand protection

He FangConsultant, Rouse (China)fhe@iprights.com

He Fang is a consultant to the DisputeResolution Team in China and works on a widerange of contentious IP issues. His experienceincludes advice and advocacy for a range ofright holders across a range of industries. Hehas substantial China litigation andenforcement experience and significantadvocacy experience in the courts. He hassuccessfully advocated for a number of clientsin a series of high-profile and award-winningcases and is widely renowned as an IPlitigation expert in China.

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response is the best one, so as not to callfurther attention to a matter.

MH: Remember that social media is meant tobe a fun and informative way to engage withcustomers. It requires that the brand ownerhave a ‘thick skin’ in certain situations, becauseit is inviting consumers to interact with it, andthey may not always have a positiveexperience or interact with the brand in waysthat the brand owner would like. Social mediatakes place in real time and changes quickly. Itis important to assess the risk of letting asituation go versus addressing it. If you addressit, make sure you understand how the contentcould then be used and what potentialbacklash it might cause. In the case ofusernames, if a third party is using yourusername and is posting content that isdamaging your brand or causing consumerconfusion, it definitely needs to be addressed.

What should brand owners be aware ofwhen using the trademarks of socialmedia sites themselves – for instance, onmarketing messages?

LGS: Where appropriate, brand owners cancertainly make fair use of social media sites’trademarks. For example, in referencing thefact that a company has a Facebook page, itwould be incredibly difficult to convey thisinformation without making reference to theword ‘Facebook’. However, brand ownersshould avoid using a social media site’strademarked and/or copyrighted logos ordesigns without authorisation. When in doubt,brand owners can use the ® or ™ symbolsimmediately following the social media site’strademark to denote their recognition, as wellas to convey to the public that the word orsymbol is that site’s or company’s trademark .

RB: Clearly, the key social media sites allhave registered trademarks for both theirnames and their logos. The Facebook ‘like’symbol is both ubiquitous and a trademark.Each social media site has a different policy– most will allow some online usage withoutpre-clearance, particularly to link to therelevant page (eg, via the Facebook ‘like’button), although some have exceptions forpornographic or gambling websites andonline advertising. For any other use,particularly broadcast usage, permissionshould first be sought. The main thing is tocheck the relevant policy first.

MH: If you point customers to your socialmedia site, make sure that you aremonitoring the site for activity and engagingthem. It has become common practice for

many consumers to handle their customerservice issues through a social media channelrather than call centres, email or even onlinechat. If you are marketing social media as away for consumers to interact with you, besure to have resources in place to supportand respond to them.

Are there any other issues you would like to raise?

MH: It is important for every company todetermine its social media approach. Do youplan to be proactive or reactive with yourmarketing efforts? Which sites will you focuson? Do you have a policy for managingusernames and content? Which of yourbrands or trademarks should be representedon social media sites? What budget andresources do you have for social media, fromboth a marketing and legal standpoint?

Answering these types of questions is anessential first step when navigating today’ssocial media world. Another point that bearsmentioning is that companies should treatusernames as they would a domain portfolioor trademark portfolio. Come up with acentral process and repository formaintaining your usernames and passwords,so you don’t lose access to valuableintellectual property. Be mindful of new sitesemerging in the social media market(Pinterest is a current example), so you don’tmiss the ‘next big thing’. It’s equallyimportant to incorporate social media intoyour monitoring and enforcement practices.

HF: In terms of this ‘next big thing’, there isno question that the mobile space will be thenext battleground in China for socialnetworks and the issues outlined above willapply in the same way. The move to mobile isbeing led by locations-based services, whichuse geolocation software to link users toplaces. More than 69% of the Chinesepopulation access the Internet throughmobile devices. The current leading service isWechat — formerly known as Weixin. This isa mobile voice and text app with socialfeatures such as ‘friend discovery’. In thefuture, it is likely to add features such as‘brands close to me’ and ‘services close to me’,which can be easily shared across thenetwork. As a result, negative brandcomments, again, will be easy to spread.

LGS: Whatever the source in question, it isalways recommended to address anypotential infringement issues in a timelyfashion. This is critical not only to reducethe likelihood of any consumer confusion,dilution or tarnishment of a famous brand,but also because an entity does not want tobe subject to any equitable defences, such aswaiver, laches or trademark acquiescence.

RB: Facebook may not have been quite assuccessful post flotation as everyoneexpected, but it and other websites like it arehere to stay. Ensuring that brands engagewithout appearing too ‘keen’, and enforcetheir rights without being too militant, is adifficult balancing act which needs to betaken seriously and given the appropriatelevel of responsibility. Simply giving the jobof updating Twitter or policing Facebook toan intern is a recipe for disaster. Clearguidance and management support shouldminimise the potential for an‘omnishambles’. WTR

Malia HorineDirector of business & productdevelopment, Corporation ServiceCompanyCIPServices@cscinfo.com

Malia Horine has spent the last decadepartnering with Global 2000 companies andlaw firm clients to develop and maintainstrong business practices for managing theirintellectual property in the onlineenvironment. She is also responsible fordeveloping new tools to help clients topromote and protect their brands online asthe market changes and the challenge ofbrand protection grows. Ms Horine has priorexperience working in both law firm andcorporate environments, with responsibilitiesprimarily focused in brand protection. Thisexperience fuelled her desire to develop andimplement strategies to make the growinglandscape of protecting brands onlinemanageable and effective.