This content is from: Trademarks

Develop your online enforcement strategy

In-house counsel discussed the most effective response to online infringement at two sessions at the INTA Annual Meeting this week, recommending IP owners take a strategic approach to brand protection.

“Our clients often say ‘can you stop that?’ when one of our brands faces criticism online,” said Rebecca Borden of CBS Corporation. “But we have to be careful. If you take a very tough approach you can look heavy handed, it draws attention to the issue, and given that our organization is about freedom of speech we don’t want to contradict ourselves.”

Instead she urged IP owners to rethink the wording of their standard cease and desist letters, and to take a more lenient approach to fans whose enthusiasm for a brand has crossed the line into infringement. “It doesn’t hurt us to say ‘we recognize you’re a fan and we appreciate that’ and then to explain why we need to enforce our rights to ensure that the creators get paid and that we don’t breach any of our other contracts.”

Pinterest’s Anthony Falzone agreed. “It pays to be nice and respectful to people.”

Borden revealed one of the more unusual requests that she has had to consider while working for the broadcasting company, which airs episodes of Star Trek. CBS was asked whether images from Star Trek could be used on the gravestone of a fan of the sci-fi show. Lawyers had to weigh up whether giving the go-ahead would interfere with a licensing deal the company has with a coffin maker who produces Star-Trek themed caskets, but ultimately sanctioned the request.

In another session on social media in China on Monday, Stanislas Barro of Kerring, which owns brands including PUMA, GUCCI and BRIONI, outlined some of the practical challenges involved in enforcing IP rights online in a country with 618 million internet users, 91% of whom have at least one social media account. He explained how many sellers of counterfeits advertise their products on Sina Weibo to receive maximum exposure, but shift their negotiations with buyers to WeChat, where their conversations remain private. “We get cut out of the discussions at that point,” he said.

“There is lots of ground to cover, the Internet is moving fast and it is a challenge to keep up,” he concluded. On the positive side, however, brand owners are doing more to share best practices for dealing with the problem, and there have been encouraging signs from the authorities, including the establishment of specialized cybercrime units, he said.

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