Q&A with Intellectual Property Attorney Anuj Desai on the Risks of Social Media Use

AGG attorney, Anuj Desai, recently participated in an interview regarding Intellectual Property concerns with the use of social media. 

How does social media make brand protection more difficult?

When you add social media into your marketing efforts you have several more channels to monitor to make sure that your brand is protected. Extra effort and extra manpower are going to be required. You don’t always need a lawyer to do that. A lot of social media services like Facebook, Twitter, Instagram, etc. have terms of service and policies that address intellectual property concerns. But sometimes it can get to a point where you need help to move things along, to perhaps go directly after the infringer rather than continue addressing the issue with the social media service.

What are the risks associated with taking brand enforcement action?

One thing that comes up often is viral backlash. A well-publicized example is McDonald’s sending a notice to a teenager who came up with a charity called McFest. McDonald’s was taken to task by the public for being heavy handed. Another example is when Monster, the energy drink, sent a cease and desist notice to Vermonster, a craft beer brewer from Vermont. That actually generated positive publicity for Vermonster and negative publicity for Monster. Monster ended up withdrawing its claims and settling with the brewer. Oftentimes the public views brand enforcement as Goliath trying to squash David and it doesn’t like that. You have to be careful in picking your brand enforcement battles and taking the right approach, using softer demand letters when the parties are of disproportionate sizes so that the demand is not misconstrued as bullying, triggering a PR firestorm.

Give an example of a brand enforcement approach that impressed you.

Coca-Cola has done a great job in this respect. It collaborated with a fan site to align it with the company’s brand strategy and at the same time nurtured the organic fan movement. Part of having a great brand is you’re going to have fans, but there’s a fine line between being a fan of the brand and infringing on the brand. That’s especially true in social media, which is all about user generated content (UGC), consumers coming together to talk about something in common, such as companies they admire. Some companies have difficulty with that because they want to protect their brand and control what the brand message is, and here you have a Facebook page by someone who loves the brand and wants to post comments and articles about it, and you may not agree with how they’re doing it or what they are saying. Again, monitoring social media is a lot of work for somebody in the company’s marketing or legal department. There are new social media services coming out every year, and you want to make sure you register your trademarks and your names with these services so that other folks do not try to pass themselves off as you.

Interacting with consumers on social media poses risks. Explain that.

A few years ago Netflix decided to raise their rates and split off their streaming and DVD services. A core group that had been with Netflix since its infancy was taken aback by the changes and for several months posted profanity and derogatory comments on Netflix’s Facebook wall. Netflix was likely hoping that the wall would promote only positive views of the company. So you have to be careful about how much interaction you allow and whether you can control the content that comes from the users, otherwise your social media presence can become a mouthpiece for complaints. Encouraging or allowing infringing content also is dangerous. If you have a Facebook wall or Instagram account where copyrighted images are being posted and you’ve been notified of that and you don’t take action to remove them, then you could be held liable for the infringement. And if defamatory comments are posted, a company could be sued for knowingly allowing the offending content to remain on its site. Courtney Love filed a defamation lawsuit because of comments on Twitter, and it settled in her favor.

Please click the link below to download the full interview.