When IP lawyers should become the PR police

Brand reputation, an issue straddling the boundaries of PR and intellectual property, is causing IP lawyers to debate where their responsibilities lie.

If we are to believe organisations like INTA, the responsibilities of IP lawyers are changing beyond merely traditional rights such as trademarks and copyright.

But as INTA said during its annual meeting last month, lawyers – in particular those representing well-known brands – should be considering their role as a force for good and thinking about how their positions can evolve to encompass IP, brand valuation, reputation and marketing.

To some this will sound like management speak (and it’s not the first time INTA has made such an assertion over the years). But sources note that they are beginning to consider taking action to salvage their reputation, even in cases where direct infringement of a registered trademark or copyright is not at stake.

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This concern is particularly challenging when a brand’s content is used on third-party platforms such as social media sites.

Rebecca O’Kelly-Gillard, partner at Bird & Bird in London, says brands must ensure they adopt a consistent message.

“It would be inconsistent to put forward one message as a brand but then not take action should that brand be linked to a platform that receives negative press for whatever reason.

“Whatever position any company takes, whether its support for Black Lives Matter or sustainability issues, you have to be consistent throughout or risk the brand being diluted or being labelled a hypocrite.”

Brands also face a challenge in determining where their responsibilities start and end.

Richard Smith, head of distribution and digital partnerships at the BBC in London, has said the organisation’s foray into licensing its content to third-party platforms threw up significant challenges.

Smith, speaking during the INTA annual meeting last month, said: “We had some footage [on YouTube] of the F1 racing driver Lewis Hamilton which we put to a test. We assembled various other publishers and asked them if they thought we should try and control the debate as we do on our own platforms, even though this was not our site, or our regular users.

“Everyone agreed that we should not try and censor the internet.”

However, as Smith explained, the footage later became associated with the “most disgusting, obscene racist comments you can imagine” in the comments section.

“When we showed [the publishers] what had happened they immediately suggested we should take it down [to prevent damage to the brand].

“What is right course of action? Our brand stands for freedom of speech but also for trust and decency – you can easily find yourself caught between the two.”

The BBC’s first director-general John Reith had always stressed the idea of the broadcaster being a force for good, Smith noted.

“What does good like?” he asked. “We have to be impartial but remember that one person’s freedom fighter is another person’s terrorist.”

Niall Trainor, senior director of brand protection at entertainment company eOne in London, says most of eOne’s content is on YouTube Kids, which does not allow comments.

Nevertheless, “we very much see it as the responsibility of the platforms themselves to ensure users comply with their guidelines,” he adds. “While always conscious of brand reputation, we leave the heavy lifting to the platforms.”

However, Trainor notes that the extent to which a brand’s reputation can be damaged depends to a certain degree on the brand in question.

“MMA fighters or boxers can have pretty insensitive material or comments attached to them and it improves their ‘brand’. Needless to say, that’s not the case for us.”

Brands should think carefully before taking down comments that could be considered to fall under the auspices of freedom of speech, O’Kelly-Gillard at Bird & Bird says.

However, she notes that if a YouTube channel is rife with bad comments it can quickly escalate into a reputational issue.

Brands must also think carefully before rejecting the idea of using platforms completely, or removing all consumer interaction, given their potential audience reach, says O’Kelly-Gillard.

However, there are some tactics they can deploy.

“Blackout days, where a brand ceases using a platform temporarily, or pulling adverts can compel platforms to act in a more responsible way,” she notes.

Daniel Kendziur, partner at Simmons & Simmons in Munich, believes this is more an issue of reputation management than a purely legal question.

However, he notes that there are options available that the traditional IP lawyer can deploy, including ensuring that licensing terms contain the necessary provisions to ensure that marks not presented next to discriminatory or reprehensible statements.

He notes that these options have limits if a third party using a trademark is not reliant on the trademark owner’s permission – as is the case with social media platforms where it is up to the brand owner whether they use the platform or not.

Reputation dilution also extends to a brand’s presence on e-commerce platforms, even if there is no direct trademark infringement, says eOne’s Trainor.

He notes that Tmall or JD.com, both Chinese e-commerce platforms, are seen as the place to go for authentic branded products in China.

“However, some of the affiliate platforms (AliExpress, Taobao and 1688.com) have a reputation of being more likely to have counterfeits. We would always insist our licensees or partners avoid these channels, as invariably they will be competing against infringers and will potentially tarnish the brand,” he says.

Removing comments on moral grounds creates challenges, but could counsel wary of being seen to be “policing the internet” use their IP rights to get the same result?

Robbert Keij, partner at Arnold & Siedsma in the Netherlands, believes this may be possible under the EU Trademark Directive.

Under Article 10 of that directive, member states can implement provisions in their national laws that enable owners of well-known marks to take action against third parties, even if they are not using the marks to designate goods and services.

Article 2.20 of the Benelux Convention on Intellectual Property, valid in Belgium, the Netherlands and Luxembourg, allows for this. The German Act against Unfair Competition also has a similar option for brand owners.

The Benelux article can be used to protect against reputational damage, Keij notes, including examples where a platform refuses to remove disparaging comments that would be read alongside – though which are not directly connected to – a brand’s trademark.

Kendziur says that the German law generally applies when a mark is used in a “discrediting or denigrating way”, but that these definitions are rather broad.

The option of using IP laws to quell negative speech appears challenging, although it is possible. Perhaps, then, INTA has something of a point when it talks about the blurred lines between PR, marketing and IP.