September 27, 2011 Articles

Practice Tips for Dealing with Brand Misuse in Social Media

Social media's prevalence has altered the manner in which consumers view and make use of brands.

By Olivier Taillieu and Raffi Zerounian – September 27, 2011

The ubiquity of social media cannot be denied, especially by those who have received a friend request from their mothers on Facebook. The rise of social media has changed how people interact with one another. Further, social media's prevalence has altered the manner in which consumers view and make use of brands. Because of these changes, it is increasing difficult to differentiate promotions that are sponsored by brand owners from content organically created without any company affiliation. The confluence of these factors affect the manner in which brand owners protect their valuable intellectual property.

Naturally, brands owners are very interested in maintaining the strength of their intellectual property rights and minimizing any potential damage to the goodwill that they have worked so hard to create. Consumers freely upload photographs and videos and create fan pages and parody sites that feature certain products or brands. In turn, brand owners receive the benefit of the time and energy that consumers expend promoting their favorite products. Yet, in doing so, brand owners are relinquishing a limited amount of brand control to these social-media savvy consumers.

Given the positive aspects of brand promotion in social media, the difficult question is how to respond when user-generated content potentially harms the brand's goodwill or the brand owner's reputation. Even if the exposure is well-intentioned, user-generated content may be too edgy for the brand or not appropriate for certain audiences that have access to it. Brand owners can and should attempt to mitigate any potential damage to their goodwill or intellectual property rights.

There is some finesse to controlling uses of brands in social media. An approach viewed as heavy-handed or overly corporate may create public outcry or misplaced sympathy for an infringer. Nevertheless, it is critical to appropriately respond to the misuse of brands in social media. We have found the following guidelines useful in successfully resolving such disputes.

Avoid Cease-and-Desist Letters 
Strongly worded cease-and-desist letters often end up in the trash and convey the mechanical corporate message that savvy brands want to avoid. Such correspondence is also easily uploaded onto websites and blogs and may fan the flames of public discontent as the letter makes its way around the Internet.

Pick Up the Phone 
A better approach may be to simply call the other side and have an honest dialogue about why the brand owner is enforcing its intellectual property rights.

Educate the Infringer 
In our experience, the general public does not understand intellectual property law or the harm caused to the value of trademarks or copyrights by unauthorized uses of a brand or copyrighted image. For example, it may be useful to explain that brand owners have a duty to police the use of their trademarks by third parties or they lose their trademark rights. Many times, when contacted, the opposing party feels personally attacked or singled out. Explain why this is not the case.

Send a Concise Letter
If you cannot get the other side to speak with you, send a short letter identifying your intellectual property rights and requesting a telephonic conference. Most of the time, these efforts will succeed in establishing a dialogue with the opposing party. Through this discussion, you should educate the other side about the reasons why the brand owner is reaching out to them.

Strategically Use Outside Counsel
If the opposing party is not responding to in-house counsel, getting outside litigation counsel involved may help push the matter towards an amicable resolution. A short letter introducing the firm and requesting a telephonic conference usually gets the opposing party's attention.

Pick the Right Person to Make the Call 
The person who sends the letter should be carefully selected. During the first telephonic conference, you only have a few moments to gain the trust of the opposing party. Not all skilled attorneys are able to establish a connection in the short period of time that they usually have to do so. In our experience, demonstrated success in similar situations, deep knowledge of the brand and the company's enforcement record, and the ability to empathize can go a long way.

Build and Use Momentum 
Keep in regular contact with the other side. Communications spaced somewhere between one and three weeks apart are generally appropriate. The lapse of too much time between contact may send the signal that the brand owner is not very interested in the dispute. Reaching out too often may cause the other side to clam up. Politely let the other side know that the matter is not going away.

Stretch It Out
Do not make all of your points in your first letter or phone call to the other side. With each subsequent communication, increase the amount of information and law you provide, adding a few new points while reiterating the ones previously made.

Listen Carefully
Even staunch infringers are being driven to act by something. The challenge is figuring out what is motivating them. To some (or many), it is money. To others, it is an apology. Some infringers demand an audience with a business person or request to make a product pitch to the company. Many times, the other side wants to hear from someone who empathizes with their position and appreciates their good intentions. Keep in mind that the dispute is having a greater effect on the infringer than the representative of the brand owner. This, of course, does not mean that the brand [owner] should tolerate damage to its brand. But the approach to resolving the dispute matters. Hopefully there is some overlap between what the infringer desires and what the company can offer.

We hope you find the above tips helpful in resolving disputes over the misuse of brands in social media. Although they will not prove effective against every potential infringer, for the most part, it is a common-sense and reasonable approach that works if executed correctly.

Olivier Taillieu and Raffi Zerounian are with Zuber & Taillieu LLP in Los Angeles, California.