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In social media, normal rules don’t apply

Aggressively enforcing the letter of the law in the social media world isn’t always the brightest idea, according to Professor Mark Lemley who will be speaking at today’s in-house luncheon. By Fionn O’Raghallaigh

Think back to this time last year, and an enduring memory was the wall-to-wall coverage on all news channels of BP’s catastrophic oil spill from its Deepwater Horizon rig in the Gulf of Mexico.

BP was under fire not just for the oil spill, but for its mishandling of its public relations. This led one speculator to register an unofficial Twitter handle @BPGlobalPR, which struck a chord with the public with its parody of BP’s efforts at brand management, and even managed to have BP’s real life PRs react to postings on its site. At one stage BP asked that the account holder to make it clearer that the handle was not official. “It was not an outrageous request,” says Mark Lemley, a professor at Stanford Law School and partner in law firm Durie Tangri.

The request sparked outrage, and only served to swell followers of the unofficial handle. This is a good example of why trademark owners have to be careful “not to overreach,” says Lemley. Even if the trademark owner is within its rights to make a certain action, it can have disastrous consequences for brand management.

This is the basis of the author’s talk to INTA’s In-House Practitioners Luncheon taking place today, for which attendees have pre-registered. “I’m going to talk about the challenges that social media pose to brands and enforcement,” Lemley told the INTA Daily News.

And Lemley is in a good position to speak about the intersection of IP and technology, with the Internet a consistent theme throughout his career, which dates back to 1992 when he started working with the now defunct Silicon Valley firm Brown & Bain. From there, Lemley moved to Fish & Richardson, helping to set up the firm’s Silicon Valley office.

He began teaching law at the University of Texas Law School in 1994, before returning to the San Francisco region in 2000 to lecture at the University of California, Berkeley. In 2004 he took up his position at Stanford, where he can still be found today.

As a lawyer Lemley works as an IP litigator for clients including Linden Labs, the maker of virtual reality game Second Life.

Lemley, who is married to Google’s former trademark counsel Rose Hagan, argues that in-house counsel, while keen to take advantage of the opportunities social media present, need to also get wise to the perils social media pose to brands. Hence the theme of his talk.

It has been noted many times over how social media is different from traditional media, and so the rules of engagement, so to speak, are different. Social media is about everyone having the chance to chip in, which scares some trademark owners and can lead to them trying to exert control over how their brand is discussed. “That can lead to problems,” said Lemley. “It turns out to be difficult to enforce in that context, without creating a backlash against the trademark owner.”

The Stanford professor offers another example of how mistakes in the online space can damage brands and turn previously unknown sites into a cause célèbre. Surprisingly this example involves the king of social media Facebook, which you might think would know better.

Two Texans set up a site called Lamebook, which describes itself as “a fun humor blog that allows us to all share and marvel at the funny, ridiculous, and outright crazy posts that can be found on your favorite social networking site.” Facebook took exception to the site, although Lamebook was the first to actually sue. “Facebook sued for trademark infringement, and gave the site a lot of publicity,” says the Stanford lecturer.

Lemley is still pondering his tips to avoid these types of incidents, but he has a theory as to why so many brands keep tripping up in the social media world. “I think sometimes maybe outside counsel recommend an aggressive approach,” he explains, “but the problem is they do it without thinking about the publicity.”

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