Feature By Scott Gelin and Seth Kertzer

Protecting your brand on

While existing strategies can be applied The federal, state, international and common laws of trademark, to Twitter, it would be a mistake to ignore the copyright, false advertising, sweepstakes rules, defamation and right of publicity that apply to a brand’s products and to content on a particular ways that the information network is used brand’s website, print advertisements and television commercials by both the public and infringers also apply to postings on Twitter, Facebook, Google+ or other social media. And while it may be hard to imagine that a text string of 140 characters or less might cause issues, tweets are often accompanied by links to photographs, videos and other content (often hosted on dedicated third-party sites, such as TwitPic, Flickr and ), as well The growing influence of Twitter as a social medium cannot be as links to other websites. denied. Twitter users now number more than 200 million This need for multi-level legal compliance can be difficult to worldwide and are generating upwards of 150 million ‘tweets’ per reconcile with the rapid-fire nature of a successful Twitter feed. In day. Once thought to have limited commercial application with no contrast to old-world publishing and even traditional websites, the more than 140 characters per tweet, savvy brands have shown that speed of social media and especially Twitter dictates that much Twitter is an excellent medium through which they can engage review of content must take place very quickly and often occurs only customers and potential customers in wide-ranging conversations after the content has already become available online. As recent about new products, special offers and the brands themselves. scandals and embarrassments from ill-conceived tweeting have Twitter is especially alluring to brand owners with limited demonstrated, it may be simple to delete problem tweets from one’s marketing resources, given that its standard services are free and its own account, but much harder after they have been re-tweeted or new paid advertising services – promoted tweets, promoted trends copied to other sites. and promoted accounts – can be highly targeted towards a brand’s In the modern world of social media, a brand must actively most desirable demographic. The vast majority of top consumer promote an environment that minimises liability without brands are now investing in their Twitter presence and have squelching the quality and spontaneity of its interactions with the consequently developed legions of Twitter ‘followers’. public. Such a balance is best achieved through fluid channels of Unfortunately, like other forms of social media, Twitter is not communication between content creators, marketing staff and without potential legal pitfalls. Due to Twitter’s fast pace and business and legal personnel, allowing for vigilant oversight of all spontaneous atmosphere, brands might not be as careful about the content being published. Those repositories, whether attorneys or content they post as they would in other forms of media, leading to not, must have the authority immediately to take down, alter or potential liability. In addition, bad actors such as coun terfeiters and provide disclaimers for content, and possess knowledge of the steps hackers can utilise Twitter to disrupt brands or target a brand’s required to take such actions immediately. customers to try to sell them fakes. This article seeks to provide Employees creating or otherwise involved in a company’s Twitter practical tips and current best practices on Twitter and soc ial feed must be trained to spot categories of content in need of review, media sites to limit exposure to liability and to pre vent bad actors including those that may implicate defamation law, copyright, from using social media to infringe on a brand’s valuable trademark, right of publicity or false advertising. In the majority of intellectual property. cases, any third-party image, video, audio or software that an employee posts should be cleared by an a ttorney or trained Limiting exposure to liability on Twitter paralegal. Clearing content in a rapid-fire landscape It is a good idea to have a quarterly or semi-annual review with While the casual, free-flowing atmosphere of social media may the marketing and creative departments about what various IP change the nature of a brand’s interaction with its community, a rights are and how to avoid infringement claims. It is absolutely brand’s legal obligations and potential for liability in this context are crucial for companies to empower specific employees as not similarly relaxed. Among the most important things to repositories of rights clearance and takedown information, and understand about a brand’s use of Twitter or any other social media clearly identify them as such to all relevant co-workers. It is just as is that it is governed by the same laws governing all other media. import to have processes in place to clear this con tent. If a

60 World Trademark Review October/November 2011 www.WorldTrademarkReview.com important for this person to be well versed in removal procedures, constraints and terms of use provisions for each rele vant platform so that takedown can happen as soon as possible.

Dealing with hackers and infringers Sadly for brand owners, the same tools that allow brands to identify and target customers in new and efficient ways also allow counterfeiters and other types of infringer to target these same customers for the sale of fakes and knockoffs. Also, as too many brands know well, hackers and internet vandals love to wreak havoc on or parody a brand’s identity, and these shenanigans can cause real damage to the value of a brand.

Avoiding security breaches by hackers As several recent incidents have demonstrated, a brand’s Twitter account can be an attractive target for hackers, who then use the account to send out offensive or embarrassing tweets which appear to be coming from the brand. Soc ial media’s fast pace and casual The need for multi-level legal compliance can be difficult to reconcile with the attitude, combined with the need for many employees to have rapid-fire nature of a successful Twitter feed access to passwords and usernames, create an environment rife with security issues. As such, it is crucial to employ serious security measures for determination is made that rights must be acquired prior to social media accounts, including strong, frequently changing publication on Twitter, TwitPic or elsewhere, a person or position on passwords and well-delineated access to accounts. Brands may also the team should be responsible for seeking to acquire these usage want to keep logs of tweets and re-tweets made by employees so rights. Creating a culture that is both flexible and cautious is easier that they may quickly determine whether they have been hacked. said than done, but implementation of easy-to-follow guidelines will Such records have the additional benefit of allowing brands to know help a brand to negotiate this challenge. which content creators may be best suited for the role and w hich content creators may need additional training. Monitoring third-party produced content In the event of a serious security breach, legal officers at Twitter Though employees for a brand itself can c reate a great amount of should be notified immediately. The security breach notification social content, brands may see even greater value in comments, laws enacted by many jurisdictions may also require that law images, videos and other creative content tweeted from members of enforcement or other parties be notified, and legal counsel should their community. Depending on nature and context, brands have be sought immediately on the discovery of a security breach. In varying degrees of responsibility for such content. addition, ongoing development of relationships with and contacts at Though brands cannot control what others post on Twitter, they social media companies can make a huge difference in getting must be careful in their efforts to incorporate Twitter content into assistance in the event of a security breach. their websites and onto other social media platforms. Content posted on a brand’s website, even if it is just displaying the brand’s Twitter Pursuing counterfeiters feed, must be treated with care. The search results for many popular lifestyle or consumer brands on A brand-owner hosting content provided by its community in the Twitter reveal that, after the brand’s official account and top news United States would be well advised to register as an online service about the brand, there may be any number of accounts offering provider under 17 USC §512(c) of the Digital Millennium Copyright Act. branded goods at outlet or sale prices, often hiding the fact that the This provision provides a ‘safe harbour’ to service providers and other goods are, in fact, fake. Counterfeiters use social media sites to intermediaries from claims of direct copyright infringement or establish a first point of contact with consumers and then provide secondary liability under US federal law based on infringing material them a link to their websites. hosted on their websites or servers. In addition to registering with the A presence on Twitter and other soc ial media sites also benefits US Copyright Office, brands must be responsive to Digital Millennium counterfeiters by adding an air of legitimacy to their opera tions, Copyright Act notices of copyright infringement and take down especially if they have a large number of seemingly reputable allegedly infringing content in order to avail of the safe harbour followers. Social media presence also helps to boost counterfeiters’ provisions afforded to such registered agents. apparent internet traffic so that their sites appear higher on natural Even apart from the Digital Millennium Copyright Act search results for a particular brand. provisions, brands hosting community-generated content must Pursuing counterfeiters on Twitter and other social media sites, employ a high degree of vigilance to ensure th at such content is as elsewhere online, is a difficult task. It is simple for counterfeiters appropriate and legal. Third-party tweets posted automatically to a to open any number of Twitter accounts under different false third-party site, such as Facebook, which a brand may have power to identities and extremely difficult for brand owners to learn the true remove should be monitored and removed as appropriate, though identities of these counterfeiters. Further complicating matters, the legal risks in this context are lower than those associated with counterfeiters target US and EU customers, but increasingly operate brand-owned outlets. A particular position or team should h ave from China or elsewhere outside of these jurisdictions, making them responsibility for removing potentially problematic content from a harder to catch. Still, it is important for brand owners to monitor brand’s website or social media account, whether this content is Twitter and other social media sites for counterfeit sales, as these generated through Twitter, in a comments section or otherwise. It is feeds provide a gateway to their larger operations. www.WorldTrademarkReview.com October/November 2011 World Trademark Review 61 Feature: Protecting your brand on Twitter

takedown process in place. Once the parameters h ave been set up, The search results for many takedown notices can be sent on a daily basis by a designated person or position. Brands would be well advised to take advantage of this popular brands reveal that takedown process, but also track information about users, trends and websites, including screenshots of the offending tweets there may be any number of themselves, as this information may be helpful in discovering and building a case against larger counterfeiting rings. accounts offering branded Twitter prohibits the impersonation of a person, brand or other entity if it is done with the in tent to confuse or deceive other users goods at outlet or sale prices, (although Twitter does allow parody and fan accounts). To address user confusion from impersonations, Twitter has developed a badge often hiding the fact that the for ‘verified accounts’, which is a blue check mark displayed beside the username of an actual brand or person. Twitter is curren tly goods are, in fact, fake testing the programme and will hopefully soon make this certification available to other famous brands or people. WTR

Taking advantage of anti-abuse and takedown programmes Like other prominent social media sites, Twitter has anti-abuse policies and reserves the right in its terms of use to re voke the account of any user who breaks these rules. Among other prohibitions, Twitter’s terms of use prohibit the sale of counterfeit Scott Gelin is a shareholder and Seth Kertzer an associate at goods. The process of letting a site kno w that one of its users is Greenberg Traurig offering counterfeit or pirated versions of a brand’s property is [email protected] known as ‘takedown’. Twitter has a straightforward, easy-to-use [email protected]

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