Social networking and intellectual property

By Anuradha Salhotra, Lall Lahiri & Salhotra
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Social media is now an integral part of all our lives. It is a vital tool for both personal and business purposes.

The popular social networking site Facebook – designed by and for college students – went live in September 2006. It was ranked as the most used social networking sites by Compete.com and is used by over 300 million users, including 9-year-olds and 102-year-old Ivy Bean of Bradford in England. The list of social networking sites continues to grow. They include LinkedIn, MySpace, and Twitter.

These social networking sites are used widely by amateurs, professionals and hackers, for whom the convenience of copying, publishing and distribution has changed the flow of information. Since each of these communities allow individuals and organizations to share information through photo and video-sharing, posting of comments, status updates and pokes, these sites have revolutionized the world of online advertisement as well.

Anuradha Salhotra Managing partner Lall Lahiri & Salhotra
Anuradha Salhotra
Managing partner
Lall Lahiri & Salhotra

Online advertising

As social networking sites have become a successful tool for gauging the consumers’ expectations, large corporations are looking at whether entering these websites would contribute to their success in any way. Many corporations are currently using social networks as a marketing tool to communicate with customers about products and services. Pages and communities on these websites are being created for people interested in certain products and activities, with news, promotions, offers, sales, and deals flowing from these sites.

Although social networking websites enable businesses to promote their brands, their use is often accompanied by a multitude of intellectual property (IP) issues and concerns. These include trademark infringements and copyright violations. Businesses and their IP counsels must be proactive and vigilant in protecting their copyright and trademark from infringement by users of these websites.

Watch out for

A company’s trademarks could appear without authorization on a user’s profile page or as part of a user name. It is estimated that over 90% of top 100 brands do not own their Twitter user names. These issues could expose companies and their coveted and protected brands to risk by causing confusion among consumers with regards to advertisement and affiliations.

Cyber squatting has also become common and so it is necessary to reserve the company’s trademarks and their variants on the networking sites. Social network infringements can spread fast and cause irreparable image damage for a company.

Resolving disputes

Many leading social networking sites have adopted dispute procedures to handle these IP issues. In many cases, these procedures are the best solutions for brands faced with IP infringements or other similar issues, such as false advertising and defamation. The procedures allow for removal of infringing content from the website and termination of the infringing user’s accounts with little or negligible interaction between the IP owner and the infringing users. However, careful consideration must be given to common possible defences such as fair use, parody, criticism, commentary, etc., before initiating contact with the user or the site.

The concept of protecting the internet reputation of a name or a mark was settled in Nissan Motor Co v Nissan Computer Corp. In it, the US District Court in the Central District of California ruled that Uzi Nissan, who registered nissan.com to promote his computer sales and service business before the Japanese car manufacturer had done so, was not a cyber squatter. However, the court issued a preliminary injunction, enjoining the defendant from displaying automotive-related advertising and links on his website. The court also directed the defendant to place a prominent disclaimer on his site, informing visitors that it is not affiliated with the car manufacturer and providing users with the website address of the Japanese company.

Tips for IP owners

In order to prevent abuse of trademarks, brand owners should understand the basic terms of service of each website their brands appear on and consider registering every possible domain name that could be associated with their major brands.

Constant monitoring of websites to determine if a trademark is being used without permission would keep potential infringers at bay. Any alleged infringement on social networking websites should be reported and the brand owners should develop and implement anti-counterfeiting programs to combat possible infringement.

Internet and social networking sites can pose difficult enforcement and liability issues, but with appropriate preventive measures, consistent monitoring and enforcement, companies can prevent much harm to their IP assets.

Anuradha Salhotra is the managing partner of Lall Lahiri & Salhotra, which is an IP boutique based in Gurgaon.

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