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

1. Protecting assets on social media
The 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. Observation #0
 France: 3rd State in the world for the
number of trademark registrations
Uderzo & Goscinny, Fish fight

3. 3

4. 4

5. Do not buy this car ; you will
get into trouble ; the day after I
got it: broken carter pissing
oil, gearshift always going
back in neutral, etc. ; and as a
bonus, a seller of bad faith
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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
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7. 7

8. 8

9. 9

10. 10

11. 11

12. Observation #1
 Costs to criticize or disparage brands have
decreased
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13. Surveillance tools
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14. 14

15. Observation #2
 Firms have hyper acuteness on how their
trademarks are used by third parties
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16. Paris Court of
First Instance,
April 30, 2008,
H2EPS /
Google
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17. Observation #3
 Actions to protect trademarks / brand
image on social media are increasing
 Empirical observation: success is relative
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18. Research question
 Consumers express negative opinions or
feelings on social media
 Brand image/value crumbling risk
 Efficiency of legal tools to protect
trademark?
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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
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20. Outline
 Empirical study of
• Social media ToS [1]
• Cease & desist letters [2]
• Caselaw [3]
 Findings / Managerial implications [4]
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21. 1. Social media Terms of Service
 Are they an efficient tool to protect
brands?
 Sample of 10 social media
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22. ToS in practice
 youtube.com/apple – March 21, 2009 :
"squat"
 Today:
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23. Diverging policies [1]
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24. Diverging policies [2]
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26. 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
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27. 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”
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28. Social media police
 Twitter [internal source]
• 10,000 notifications / month
• 24 people
 Facebook
• ~30 lawyers (mainly working on patents)
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29. ToS  Leverage effect
 For trademark protection
 … but also for consequences of an action
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30. ‘Spillover effect’
 A Facebook group was using this logo:
 NorthwesTel complained to Facebook
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32. "... Linda Hillier March 7 at 8:56pm
Hi George,
I had to take your photo down because I received this notice: "We have removed or disabled access to the following
content that you have posted on Facebook because we received a notice from a third party that the content infringes or
otherwise 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 posted
any 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 visit
http://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 Facebook
because we received a notice from a third party that it infringes or otherwise violates their rights. If you believe that we
have made a mistake in removing this content, you are not obligated to respond, but if you wish to follow up, you can
contact 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, businesses
and 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 an
email address you can forward your complaint to.
Thanks!
Linda..."
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33. Proposal for a Council Framework Decision amending
Framework 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”
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34. "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
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35. 2. Cease & desist letters
 Study of 394 notices [Oct. 2004 – Dec. 2010]
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36. 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
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37. Unicorn
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38. 3. Caselaw
 Study of ~200 decisions
• 25 relevant
 Success of brand owners in
33% of the cases (!)
• Removal of the disputed content
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39. First findings
 Limited efficiency of „traditional‟ legal tools
• Apparent efficiency of ToS
• Possible undesired effect of C & D
• Low success rate of lawsuits
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40. 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 tools
Insufficient 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

41. 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?
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42. Research limits
 Geographic
• Legal grounds
• Social media
 Temporal
 Data availability
• on actual social media practices
• on actual firms practices
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43. Future research
 Renew the study in n years
 Autoregulation / Governance of social
media
 Pluridisciplinary study
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