Many trademark counsel worry about social media, without knowing quite how to tackle it. Normal IP rules seem to be temporarily suspended in comments made on social sites (together with videos, pictures and other contributions, known as user-generated content). But why should such users be able to get away with misuse of a trademark in a way that other companies or media would not? Today’s session should help answer some of these questions, promising to provide information on ‘How to balance protecting your brands with use of these tools’ (social media and social networking).

Anthony Trenton of Denton Wilde Sapte in the UK is the only external counsel on the panel, and he will be looking at the underlying legal points behind trademarks and social media—from a UK and to a lesser extent an EU point of view—before moving on to his practical experience. “The main message I want to get across is that you should approach trademark infringement on social media differently. I will explain why and I will give examples of why this works,” says Trenton. 

The biggest reason for approaching social media differently is that your reaction, indeed the whole action from beginning to end, will be public. Even if the legal notice you make to a trademark infringer is sent privately, it will often be posted by that infringer on the social media site. Counsel at brands that use social media heavily have got used to the idea of drafting letters with the eyes of the world on them—knowing it will likely become public at some point. 

“Being public means that you have to consider the public relations impact of your reaction,” says Trenton. “If it is too aggressive, this could come across very badly and have ramifications for your consumers. In a traditional trademark infringement case, it is between the owner and the infringer. The public might be confused or involved in other ways, but with social media they have signed up to particular page and bought into it. They feel they have a role and an investment at stake and react strongly to any enforcement that seems heavy handed.”

Crafting a flexible approach

While there will always be instances where a traditional approach is appropriate, trademark owners need to be open to other ideas—such as working with the users who have created fan pages that strictly speaking infringe the company’s trademark. A good example is Coca-Cola, which has produced one of the most successful fan pages on Facebook through working with two fans who initially set up the only COCA-COLA page on the social media site.  “Rather than try to shut it down, which could easily have created a backlash, Coca-Cola adopted it and sponsored it, effectively influencing it. So it’s always worth considering cooperation,” says Trenton. “Then the next step should be looking to the official complaint channels that all of the social media have, rather than going straight into litigation. These are often quite effective.”

There are no hard and fast rules as to when to let infringement pass, complain officially or launch litigation. Mostly it is a question of assessing the seriousness and the scope of the trademark infringement. A situation similar to cybersquatting, with a company impersonating a brand for commercial ends, will be much more serious than a logo being used by one commenter on a single page.

Experience is the best way to learn when each action is most appropriate. The session will therefore be useful for the experience it has on show, with four different in-house counsel. Dana Northcott from Amazon will be speaking, alongside Tamara Reznik of Expedia and Kenneth Thompson of LexisNexis. Thompson’s colleague at Lexis, Jon Holt, will be moderating the session. 

The panel will be structured so that Northcott gives an overview of the topic and outlines the relevance of social media. Trenton will then give his points from an outside counsel view and the UK. Reznik will present the problems from an in-house perspective, before Thompson from Lexis will tie the themes together by going through suggested internal guidelines on use of social media that can be used by companies. 

“The aim will be to explain how companies can leverage social media and make the most out of it, while still protecting their brands. That’s the difficult balance that everyone wants to achieve,” says Holt. For him, the danger and the opportunity of social media is encapsulated in the fact that any employee can become the spokesperson for a brand, representing it as a trademark. 

The advantage of private companies

Many lawyers argue that in-house counsel fail to see the upside of social media, however. The approach to trademark infringement has to be different, but once an internal policy is established it’s just a question of sticking to it. And in the long run social media are easier to work with than the many-limbed Internet. 

Many companies are now prioritizing Facebook pages over their own websites. If you search for Skittles, you’ll find the website has very little information on it, directing you instead to the Facebook page or Twitter account. Bacardi announced in January this year that it will switch 90% of its budget for developing online to Facebook; previously 90% went to its own site. Figures from market research company comScore show that visitors to Bacardi’s own sites fell 77% in 2010. 

While social media can seem like a nightmare for trademark counsel, used the right way they can be more efficient, responsive and productive than standard Internet web sites.

1. Register your brands on Facebook, Twitter and other social media even if you have no plans to use them yet.

2. Develop an enforcement strategy that is specific to social media, rather than adapting a general one.

3. Whenever possible, distinguish between genuine fans of the brand and those trying to take advantage of it.

4. Develop a tone that is personal yet professional.

5. Create usage policies for staff that are clear without being heavy-handed.

It is so easy to get the treatment of social media wrong, it’s not surprising that there is no shortage of horror stories. But there are also some great case studies out there that brands can learn from. 

The classic horror story involves a Greenpeace campaign aimed at stopping the deforestation that results from the farming of palm oil. Alleging that Nestlé was destroying the habitat of orangutans, Greenpeace created an ad that showed an office worker biting an orangutan finger instead of a KIT-KAT biscuit. Nestlé had the video taken down from YouTube, given its misuse of the KIT-KAT brand, which had been reworked to spell KILLER. The video was promptly reposted on rival video site Vimeo, however, and received record traffic as word began to spread about it being banned from YouTube. While within its rights as regards trademark law and YouTube’s policy, Nestlé drew far more attention to the video through having it banned. 

The employee put in charge of the Nestlé page on Facebook responded to comments on the page that used the Killer logo by saying that anything infringing the KIT-KAT trademark would be deleted. This was a misjudgment in a space where free speech is prized above all else. 

On the other hand, Coca-Cola managed to cooperate with two fans and create what is now the second-biggest fan page on Facebook with 22 million fans. Another brand that has tried to do something similar are DELL, which has 26 pages and groups and pages on Facebook, 34 Twitter feeds and three photo streams on Flickr.

But more focused use of social media can be successful as well. PRINGLES, for example, uses video particularly well on its Facebook page. By concentrating on one medium it has succeeded in prompting a lot of high-quality user-generated content. And videos have several advantages over other media when they work well—they are easy to consume, easy to distribute and need one good point or joke to work well. 

RED BULL is another good example of a brand that has created a niche for itself on Facebook. Its page features boxes that each launch an individual app, differentiating it sharply from competitors and creating good content that fans will want to come back to. It is also good at using Twitter to stream comments from athletes it sponsors.

Finally, on a smaller scale, BURT’S BEES is a good example of how a Facebook page can make consumers feel more connected to a brand. This skin-care company has a page that provides an insight into how the company is run, its staff and how the products are made. All very simple, but appealing at the same time and much more approachable than on a standard, corporate website.