Protecting assets on social media. The example of trademarks

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Presentation of a paper co-authored with Christophe Roquilly on the protection of brand image on social media, University of Strathclyde, Center for Internet Law and Policy, March 1, 2012

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Protecting assets on social media. The example of trademarks

  1. 1. Protecting assets on social mediaThe example of trademarks University of Strathclyde, Center for Internet Law and Policy, March 1, 2012 Cédric Manara, PhD EDHEC Business School / LegalEDHEC Research Center <www.cedricmanara.com>
  2. 2. Observation #0 France: 3rd State in the world for the number of trademark registrations Uderzo & Goscinny, Fish fight
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  5. 5. Do not buy this car ; you willget into trouble ; the day after Igot it: broken carter pissingoil, gearshift always goingback in neutral, etc. ; and as abonus, a seller of bad faith 5
  6. 6. Nanterre court of first instance, February 9, 1979 Is it lawful to criticize a company with posters? Court ordered the removal of posters • One cannot generalize from a specific situation that all cars of the same model have problems … but court observes that it is not forbidden to post the rest of the message • A consumer can publicly reveal facts putting posters on a car 6
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  12. 12. Observation #1 Costs to criticize or disparage brands have decreased 12
  13. 13. Surveillance tools 13
  14. 14. 14
  15. 15. Observation #2 Firms have hyper acuteness on how their trademarks are used by third parties 15
  16. 16. Paris Court ofFirst Instance,April 30, 2008,H2EPS /Google 16
  17. 17. Observation #3 Actions to protect trademarks / brand image on social media are increasing Empirical observation: success is relative 17
  18. 18. Research question Consumers express negative opinions or feelings on social media Brand image/value crumbling risk Efficiency of legal tools to protect trademark? 18
  19. 19. "Social media" ? “a group of Internet-based applications that build on the ideological and technological foundations of Web 2.0, and that allow the creation and exchange of user-generated content” – Kaplan & Haenlein, 2010 19
  20. 20. Outline Empirical study of • Social media ToS [1] • Cease & desist letters [2] • Caselaw [3] Findings / Managerial implications [4] 20
  21. 21. 1. Social media Terms of Service Are they an efficient tool to protect brands? Sample of 10 social media 21
  22. 22. ToS in practice youtube.com/apple – March 21, 2009 : "squat" Today: 22
  23. 23. Diverging policies [1] 23
  24. 24. Diverging policies [2] 24
  25. 25. Exorbitant provisions Most of the ToS expressly forbid the use a of a third party trademark • or any behavior which may violate third parties rights ToS often go beyond legal provisions 26
  26. 26. Provisions sometimes vague “It is often difficult to tell what may or may not be trademarked” “However, use of designer logos and brand names without permission, such as Gucci, Nike, Louis Vuiton [sic !], etc., is usually not acceptable” 27
  27. 27. Social media police Twitter [internal source] • 10,000 notifications / month • 24 people Facebook • ~30 lawyers (mainly working on patents) 28
  28. 28. ToS  Leverage effect For trademark protection … but also for consequences of an action 29
  29. 29. ‘Spillover effect’ A Facebook group was using this logo: NorthwesTel complained to Facebook 30
  30. 30. "... Linda Hillier March 7 at 8:56pmHi George,I had to take your photo down because I received this notice: "We have removed or disabled access to the followingcontent that you have posted on Facebook because we received a notice from a third party that the content infringes orotherwise violates their rights:[Main page image:"Northwestel abuses yukoners, and exploits its monopoly"]We strongly encourage you to review the content you have posted to Facebook to make sure that you have not postedany other infringing content, as it is our policy to terminate the accounts of repeat infringers when appropriate.If you believe that we have made a mistake in removing this content, then please visithttp://www.facebook.com/help/?page=1108 for more information."This is the info from the page it leads to: "We have removed or disabled access to content that you posted to Facebookbecause we received a notice from a third party that it infringes or otherwise violates their rights. If you believe that wehave made a mistake in removing this content, you are not obligated to respond, but if you wish to follow up, you cancontact us at ip@facebook.com.If we have also disabled your Facebook account, possible reasons include, but are not restricted to:• Repeated infringing behavior after receiving one or more warnings from Facebook• Alleged trademark infringement• Impersonation of an entity• Misrepresentation of identity - Facebook profiles are meant to represent a single individual. Groups, clubs, businessesand other types of organizations are not permitted to maintain an account.For more information, please visit our Intellectual Property Help Center page."I had to acknowledge the notice in order to proceed. I am not willing to put my Facebook account on the line for this photo,but you mentioned that you would be willing to fight with them. Please feel free all of the information is above, including anemail address you can forward your complaint to.Thanks!Linda..." 32
  31. 31. Proposal for a Council Framework Decision amendingFramework Decision 2002/475/JHA on combating terrorism - Impact Assessment {COM(2007) 650 final} “when a website is successfully removed from a host server, it reappears very easily under another name” 33
  32. 32. "Streisand Effect" Any attempt to remove something online leads to publication at a larger scale Less visible when it comes to trademarks • Less sensitive content 34
  33. 33. 2. Cease & desist letters Study of 394 notices [Oct. 2004 – Dec. 2010] 35
  34. 34. Fate of a disputed content after a C & D letter is sent? Effective in 90% of the cases • 10% of the content stays online… (100 % republished on ChillingEffects) 99.2 % republished elsewhere 36
  35. 35. Unicorn 37
  36. 36. 3. Caselaw Study of ~200 decisions • 25 relevant Success of brand owners in 33% of the cases (!) • Removal of the disputed content 38
  37. 37. First findings Limited efficiency of „traditional‟ legal tools • Apparent efficiency of ToS • Possible undesired effect of C & D • Low success rate of lawsuits 39
  38. 38. Mix between marketing & legal tools Excessive use of legal tools •Brand image crumbling by lack of •Possible acceleration of viral maintenance negative effect •Acceleration of viral negative •Possible hostile reaction of effect consumers which may crumble brand image Excessive use of marketing toolsInsufficient use of marketing tools •Loss of right on the trademark •Loss of right on the trademark •Brand image erosion by lack of •Non transparent advertising maintenance •Hostile reaction of consumers which may weaken brand image Insufficient use of legal tools
  39. 39. CRITERION ASSESSMENT ELEMENTS Avatar in a virtual world / How it behaves / Substantiated Content nature blog post / Comment on a blog / Discussion about a Wikipedia article / Facebook group / Parodic video… Use of a sign identical to a TM? / Similar? / TM parody? / Intrinsic nature of the content Opinion expressed in a subjective form? Tone? / Obvious bad faith of the author? Contextual analysis of the Visibility on open search tools? / On closed search tools content in relation to the (FB)? / Sociology of participants to a discussion or a trademark target group? / Their psychology? / Their number?Social media policy with respect Do ToS have specific provisions regarding the use of to trademark infringement third parties TM? What are the usual practices of this social media? Is it a regular client regular? / occasional? / prospective? Person who posted the content / A competitor? / Is this person influent?Strategic importance of the social Sociology of the social media users / Main interests of its media members / Geographic scope / Intrinsic power Lasting impact on the brand image? / Alleged Content effect dangerousness of a product? / Effect on stocks price? 41
  40. 40. Research limits Geographic • Legal grounds • Social media Temporal Data availability • on actual social media practices • on actual firms practices 42
  41. 41. Future research Renew the study in n years Autoregulation / Governance of social media Pluridisciplinary study 43

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