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How to harness social media

Facebook and Twitter are becoming more important for trademark counsel every day, yet the law is still uncertain. Simon Crompton explains how a hypothetical consumer product could produce some useful recommendations.

Social media have become the dominant theme of the age. But it is only in the past few years that trademark lawyers have realized how much Facebook, Twitter and the rest will change their profession.

Social media bring brands much closer to their customers. This has many benefits, but it also means legal action—including attempts at trademark enforcement—has marketing and PR ramifications that it rarely had in the past.

Tomorrow’s panel, led by Scott E. Thompson of Greenberg Traurig, will be structured around a hypothetical example, with speakers laying out the issues that a consumer products company faces when launching a new brand and attempting to harness the full force of social media.

The company plans to not only promote the product, but also run a competition online and talk pro-actively to its consumers. The scope of the campaign—and so the session—will be broad, taking in mobile devices, apps, blogs and push-direct marketing techniques.

“At every stage we will compare the strategy of this hypothetical company to successful strategies others have employed in the real world,” says Thompson. One example is Thompson’s client Evian, which launched an advert for its bottled water online back in 2009 featuring babies on roller skates dancing to rap music, all created through CGI technology. The international version has now had 55 million views, the US version 17 million.

“That was just launched online, to kind of stick a toe in the water and test reaction. Now more and more brands look to social media first,” says Thompson. There was also a ‘making of’ video for the advert, which had 5 million views, and last year Evian made a follow-up, the Director’s Cut, showing adults in T-shirts with baby prints.

Such strategies are cheaper, more flexible and reach a broader audience than traditional advertising. The legal risks, however, are equally broad, with the potential for criminal sanctions in almost any country where the internet is accessible.

Elliot Basner at Diageo, who is also speaking on the panel, says this is a particular issue for his company. “As a drinks company you need to be very sensitive to how the law varies between jurisdictions,” he says. “The question is, what do you do when something involving the company on social media is fine in 20 countries but at risk in another 30?”

But while the law is developing, countless examples and horror stories point the way for dealing with social media day to day. First, think global. An isolationist attitude is impossible to maintain given the scope of the Internet; you need to think outside your normal jurisdiction. Second, think outside the box. “Because the law doesn’t address the issues, you need to have a creative legal mind and look at what is a reasonable extension of the law,” says Thompson. Third, do a risk analysis exercise in advance. Consider all the cultural risk, PR risk and legal risk in various countries and anticipate as much as you can.

In the end, though, when a law is in transition the most useful resource is other lawyers. Their experiences and recommendations for what has worked for them are invaluable. Thompson refers to this, and in particular the audience at INTA, as the “brains trust” of trademark experts. “We will find out through discussion, through argument and most importantly through the questions we get from the audience, how social media is living and working around the world,” he says.

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