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Don’t use IP law as a hammer

In-house trade mark counsel today discussed how visceral reactions to infringement or negative feedback on social media sites can backfire and quickly destroy brand loyalty

Tamara Reznick of Expedia cited the example of Nestlé’s response to a Greenpeace ad accusing the company of purchasing palm oil from companies that are destroying Indonesian rainforests. The campaign used a modified Kit Kat logo and posted negative tweets to the company’s Twitter site using the logo.

Nestlé immediately deleted the tweets and publicly threatened legal action. “They used IP law as a hammer,” said Reznick. “This angered consumers, who wanted to see the actual issue addressed.”

Customer pressure eventually resulted in Nestlé cutting ties with the palm oil companies.

Reznick said examples like this underscore the importance of in-house discussing appropriate tactics with their marketing departments ahead of time.

Reznick was speaking as part of a panel titled “Social Networking: Friend or Foe to Brand Owners” at the McCarthy Institute-Microsoft Trademark Symposium in New York City today. The Symposium’s theme was “Trademark Law and its Challenges”.

Mei-Lan Stark of Fox Entertainment Group said that “the best defence can be a good offence” when it comes to social media, which means constantly engaging users and refreshing content on a daily basis to create brand awareness and loyalty.

The sentiment that brands should tread carefully when using trade mark law as a solution to infringement online was echoed in a later session about ISP liability.

J Scott Evans of Yahoo! passionately told a panel comprising David Bernstein of Debevoise & Plimpton, Martin Schwimmer of Leason Ellis, Peter Becker of Microsoft and Brad Silver of Time Warner that the trade mark community should think twice before suing intermediaries such as Yahoo!

Yahoo! did not allow users to purchase trade marked keywords until February last year, when Microsoft changed its policy to align with Google. Microsoft’s search engine Bing powers Yahoo! Search. However, it still does not allow use of trade marks in ad text.

“We need to be careful as a community about going after and persecuting the one company who’s done the most for you,” said Evans.

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