Protecting Brands on Social Media

Lisa Greenwald-Swire Michelle Parsons Protecting Brands Principal Staff Attorney on Social Media

June 19, 2019 Overview

fr.com | 2 Why Should Brands Care @ Social Media? Why Should Brands Care @ Social Media? # Internet Users

4,383,810,342*

7,577,130,400**

*Internet users worldwide as of March 2019 per internetworldstats.com **World population as of June 2019 per worldpopulationreview.com

fr.com | 4 Why Should Brands Care @ Social Media? # Internet Users

2 1

# Internet Users

1: China 829 million 2: India 560 million 3: U.S. 292 million 4: Brazil 149 million 5: Indonesia 143 mliiion 6: Japan 118 million 7: Nigeria 111 million 8: Russia 109 million

*Rank as of March 2019 per internetworldstats.com fr.com | 5 Why Should Brands Care @ Social Media? # Active Users

2,380,000,000*

*Monthly active users on Facebook in March 2019 per statista.com; $2.7 billion MAUs on Facebook core products (includes Facebook + Instagram, WhatsApp, Messenger)

fr.com | 6 Why Should Brands Care @ Social Media? # Minutes Spent

74*

*Average #s minutes users spend on social media per day per Infodocket; % Facebook users that access Facebook daily per Pew Research Center

fr.com | 7 Why Should Brands Care @ Social Media? % U.S. on Social Media

72%*

*% U.S. public that uses social media as of February 2019 per Pew Research Center

fr.com | 8 Why Should Brands Care @ Social Media?

Finance Health Care

• No industry is immune from social media • Most brick-and-mortar shops have websites • Even small businesses have social media pages • News becomes viral instantaneously • Customer service is reachable by chat/post

Insurance Manufacturing

fr.com | 9 Why Should Brands Care @ Social Media? Brands in All Industries Are Going Social…

fr.com | 10 Why Should Brands Care @ Social Media? Even World Leaders are Going Social…

fr.com | 11 Why Should Brands Care @ Social MediaMedia?? Network and Cable TV is Changing… Even Sports Are Going Social 11 5 M 13

# NFL games # soccer fans # MLB games Amazon streamed in believed to have YouTube will stream 2018 illegally streamed the in 2019 World Cup

fr.com | 12 Why Should Brands Care @ Social Media? Users = Visibility

Curated Content

• Marketing • PR • Legal • HR • Executives • Customer Service

fr.com | 13 Why Should Brands Care @ Social Media? Users = Visibility

Curated Content

Fake • Sales/Contests • Marketing (or • Phishing • PR infringing) • Fan • Legal Content • Collect Likes • HR • Competitor • Executives • Innocent • Customer Service

fr.com | 14 Why Should Brands Care @ Social Media? Users = Visibility

Curated Curated & Fake = Content Confusion

Fake • Sales/Contests • Marketing (or • Phishing • PR infringing) • Fan • Legal • Collect Likes Practice Pointer: Content Platforms often refuse • HR • Competitor claiming “fan” site; • Executives • Innocent Reply that logos infringe. • Customer Service

fr.com | 15 Protect Brands on Social Media: 4 Steps Protect Brands on Social Media: 4 Steps

Practice Pointer: 1. Acquire Handles Preemptive and systematic approach is most cost-efficient. 2. Monitor Platforms

3. Enforce

4. Don’t Infringe

fr.com | 17 Protect Brands on Social Media: Acquire Handles Offensively

• Grab handles anonymously before launch (after clearance)

• Be aware of popular worldwide platforms

• Know the rules of ownership

fr.com | 18 Protect Brands on Social Media: Acquire Handles Consistently

Practice Pointer: Facebook Twitter Instagram If you own it, no one else can! 5-50 characters 15 characters 30 characters A-Z, 0-9, “ . ” A-Z, 0-9, “_” A-Z, 0-9, “ . ”, “_”

YouTube WeChat <= 20 characters 6-20 characters A-Z, 0-9 A-Z, 0-9, “_”, “-”

fr.com | 19 Protect Brands on Social Media: Acquire Handles Globally # Active Users* Facebook 2.3 billion YouTube 1.9 billion WhatsApp 1.6 billion FB Msg 1.3 billion WeChat 1.1 billion Instagram 1.0 billion QQ 807 million QZone 532 million Tik Tok 500 million Weibo 462 million Reddit 330 million Twitter 330 million

*April 2019 data per statista.com fr.com | 20 Protect Brands on Social Media: Acquire Handles Effectively Facebook Twitter Instagram 1 Each brand page Each handle You can only must be requires a unique deactivate for 30 associated with an email or phone days at a time, or 2 individual/Admin; number your account and however 1 Admin all content may de For anonymous acquisitions, add deleted 3 can be associated “+” + a number before “@” to with many pages create a unique Gmail address without needing new email account

Practice Pointer: Example: [email protected] Know the rules of each [email protected] platform. Do you have to login [email protected] regularly? Do you need to acquire likes?

fr.com | 21 Monitor Platforms: Social Media Audits

• Monthly, Quarterly, Bi-Annually? • What does the budget allow? • How much infringement is there? • Do findings affect diligence?

• Hire Vendor*, Run In-house, or Use Outside Counsel? • Internal teams may be more familiar with goods/competitors. • External teams can reduce PR concerns.

• Enforce or Monitor? Policy? • Once you know the landscape, you can make educated/strategic decisions. • Create policy to streamline and create efficiencies.

• X

*There are a host of vendors that perform various watching services. While we do not endorse any particular vendor, a sampling of vendors is included in the Appendices. fr.com | 22 Monitor Platforms: What Are You Finding?

Selling Competing Counterfeit Contests

Phishing Get Likes

Fan Innocent *These are not examples from representative clients, but examples merely pulled from social media platforms. fr.com | 23 Enforce Before You Begin

Think Big Picture!

• What is your enforcement strategy? STOP • What are your PR concerns?

• What is your budget?

fr.com | 24 What Is Your Enforcement Strategy? What Is Your Enforcement Strategy?

Bully or Sloth?

fr.com | 26 What Is Your Enforcement Strategy? Eng’d Mech. Serv. v. Applied Mech. Tech., 584 F. Supp. 1149 (M.D. La. 1984).

The owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer.

Lawyers and lawsuits come high and a financial decision must be made in every case as to whether the gain of prosecution is worth the candle.

fr.com | 27 What Is Your Enforcement Strategy?

Don’t Be a Bully

Be an Educator

fr.com | 28 What Is Your Enforcement Strategy? Be an Educator: Cite Policies

• Per Twitter’s parody, newsfeed, commentary, and fan accounts policy, the name should not be the exact name of the account subject without some other distinguishing word, such as “not,” “fake,” or “fan” (see https://support.twitter.com/articles/106373).

• This account is [doing x, y, z] in violation of Facebook’s Statement of Rights and Responsibilities (see https://www.facebook.com/terms.php).

fr.com | 29 What Is Your Enforcement Strategy? Be an Educator: Cite Policies

You may not realize it, but by using the name Kleenex® as a generic term for tissue, you risk erasing our coveted brand name that we’ve worked so hard for all these years. Kleenex® is a registered trademark and should always be followed by a ® and the words “Brand Tissue.” Just pretend it’s a permanent marker. - KLEENEX

fr.com | 30 What Is Your Enforcement Strategy?

Don’t Be a Bully

Be Engaging

fr.com | 31 What Is Your Enforcement Strategy? Be Engaging: Speak “Brand”

• Make an “inside joke” or reference that a brand fan would appreciate.

• Speak to popularity of brand and responsibilities that come with it.

• Speak for (rather than from) brand - This account looks very similar to Apple Inc.’s verified account and is using its trademarks. This use is causing confusion.

fr.com | 32 What Is Your Enforcement Strategy? Be Engaging: Speak “Brand”

My walkie talkie is busted so I had to write this note instead. I hear you launched a Stranger Things pop-up at your Logan Square location. Look, I don’t want you to think I’m a total wastoid, and I love how much you guys love the show. (Just wait until you see Season 2!) But unless I’m living in Upside Down, I don’t think we did a deal with you for this pop-up. You’re obviously creative types, so I’m sure you can appreciate that it’s important to us to have a say in how our fans encounter the world we built… So please don’t make us call your mom. - NETFLIX

fr.com | 33 What Is Your Enforcement Strategy?

Don’t Be a Bully

Be Kind / Avoid Bad PR

fr.com | 34 What Is Your Enforcement Strategy? Be Kind: Acknowledge Fans

• When possible, reach out by direct message or call infringer and share your concerns.

• When trying to acquire an important handle and policy is not on your side, be grateful and offer swag for their fandom (though not in exchange for the handle!).

• Show appreciation; give little reason to get blasted on Twitter.

fr.com | 35 What Is Your Enforcement Strategy? Be Kind: Acknowledge Fans

...It has recently come to our attention that the cover of your book Broken Piano for President, bears a design that closely mimics the style and distinctive elements of the JACK DANIEL’S trademarks…

We are certainly flattered by your affection for the brand, but while we can appreciate the pop culture appeal of Jack Daniel’s we also have to be diligent to ensure that the Jack Daniel’s trademarks are used correctly. Given the brand’s popularity, it will probably come as no surprise that we come across designs like this on a regular basis. What may not be so apparent, however, is that if we allow uses like this one, we run the very real risk that our trademark will be weakened… - JACK DANIEL’S

fr.com | 36 What Are Your PR Concerns? What Are Your PR Concerns? Expect All Enforcement Measures to Be Public

fr.com | 38 What Is Your Enforcement Strategy? Beware: Public Opinion

Bully or Sloth?

fr.com | 39 What Are Your PR Concerns? Do You Have PR Protocols?

• Is your client a famous brand? • Do they claim good corporate ethics? • Do they have a PR department available to respond quickly to PR issues? • Do they engage with customers and complaints regularly? • Would a viral PR disaster ruin them?

fr.com | 40 What Are Your PR Concerns? Evaluate PR Risks

# Followers? How Bad is Use? Is Infringer Duration? “White Hat”? Could it really be a fan Each client will have a site? Or are they clearly Is the Infringer a non- different threshold, but impersonating your profit, a student, a know the # that gives client’s brand? Would mother, an otherwise them pause and review consumers be sympathetic opponent? with them in detail or confused? Is the use intentional or send to their PR just ill-advised? department for a final answer.

fr.com | 41 What Is Your Budget? What Is Your Budget? Develop Cost-Efficient Strategy

Contact User File Takedown Follow-up If an innocent infringer or Analyze what report to Request refused? using for other purposes, file based on content Ask for message directly or call and client concerns. reconsideration. and ask nicely. File, provide Other report requested documents, options? File and track status. additional reports. Request transfer of No response? Send Practice Pointer: handle, if applicable. follow-up. When filing with Twitter, respond immediately or case closes.

fr.com | 43 What Is Your Budget? Develop Cost-Efficient Strategy

Demand Letter Contact Executives Other If request refused, due to If report refused, but is Get creative! Consider platform not wanting to affecting your client’s activity, first use, type of “mediate” or content business and/or ability content (adult, across multiple platforms, to control its own inappropriate language, send a demand letter content, contact political, etc.). Are there noting prior rights and executives at platform images? Worldwide infringement. and request registrations? Take escalation. Policies multiple simultaneous change regularly! actions to increase Practice Pointer: If refused, reply and file prompt removal. alt. report at the same time to expedite result.

fr.com | 44 What Is Your Budget? What Is Cost of Opting Out?

• Consumer confusion • Litigation over priority/scope • Unclear values, loss of goodwill • Rebranding • Reduced assets, value • Lost sales - infringement/counterfeits

fr.com | 45 Don’t Infringe Don’t Infringe Content Can Be a Landmine

• Your competitors are posting third party content. • Do your licenses allow social media posting? • What policies are in place to prevent violations of agreements? • What if content is misused? Do your waivers protect you? • Does your use of other brands suggest an affiliation, create risk? • Could an ornamental use be mistaken for infringing a trademark?

fr.com | 47 Don’t Infringe Share, Post, Re-Publish with Caution

• Content authors can claim copyright in some posts/photos/memes. • Platforms are protected by license; users are not. • Sharing within platform = OK; posting elsewhere = RISK. • Brand owners may be held to a higher standard. • Commercial use is HIGH RISK.

fr.com | 48 Don’t Infringe Risks: Curator v. (re)Publisher

Post Don’t make (re)Post content that you Don’t re-share want to control, content that may shareable; if you have IP claims do, enforce

Once content is License or shared, there create in-house may be dilution, any content used adaption, re- commercially attribution

fr.com | 49 Don’t Infringe Agence Fr. Presse v. Morel, 769 F.Supp.2d 295, 302–03 (S.D.N.Y. 2011).

• Twitter's terms grant a license to use content only to Twitter and its partners… the provision that Twitter ‘encourages and permits broad re- use of Content does not clearly confer a right on other users to re-use copyrighted postings.

• Rather, that permissive language stands in contrast to the express, mandatory terms conferring a ‘license’ and ‘rights’ on Twitter.

fr.com | 50 Don’t Infringe Beware: 3rd Party Content

…unless licensed or authorized, due to: • Copyright concerns • Right of publicity concerns • False advertising

fr.com | 51 Don’t Infringe Jordan v. Jewel Food Stores, Inc., 743 F.3d 509 (7th Cir.2014).

Defendant tried free speech defense, noting it was congratulatory and noncommercial.

7th Circuit held that the “ad” was commercial speech. Ad prominently features "Jewel-Osco" logo & marketing slogan, which are creatively & conspicuously linked to Jordan in text of ad's congratulatory message. Ad is aimed to promote Jewel-Osco brand.

fr.com | 52 Practice Pointers Practice Pointers Enforcement

• Ensure your client doesn’t own and hasn’t licensed the content! • Track removal reports (record case #s). • Send in requested documentation. • Reply quickly (24-48 hours). • Infringers may call or email begging for reinstatement. • If you want the handle - request it during takedown; lower cost. • If no U.S. trademark registration, is there foreign registration? • If no registration, can copyright be claimed on logo? impersonation? • Re-file after refusal if alternate arguments available; good faith reason. • Review takedown policies; they change regularly. • When possible, add inactivity claim, most platforms use >6 months.

fr.com | 54 Practice Pointers Enforcement

• Twitter requires registration for trademark infringement; if no registration, file for impersonation. • Twitter requires POA for trademark infringement; if no POA, file for impersonation and respond to email requesting confirmation. • Claim or merge auto-generated Facebook pages so brand can communicate with clients re comments. • Facebook allows merging of pages, so you can have one stop for multiple pages; Beware: once merged, cannot unmerge. • Instagram Terms of Use prohibit selling. • Takedowns may be territorial, especially on Facebook. • Google will use personal email for Takedowns (Google+, YouTube).

fr.com | 55 Practice Pointers The Removal Is Not Always the End

Sometimes the infringer responds:

• Vendor? Licensee?

• Sad story? Threats?

The Brand should have:

• Policy re reinstatement.

• Policy re communicating with infringers.

fr.com | 56 Appendix: Takedown Mechanisms Trademark

Facebook - https://www.facebook.com/help/contact/634636770043106 Twitter - https://support.twitter.com/forms/trademark Instagram - https://help.instagram.com/contact/372592039493026 YouTube - https://www.youtube.com/reportingtool/trademark?rd=2 Tumblr - https://www.tumblr.com/abuse/trademark LinkedIn - https://www.linkedin.com/help/linkedin/ask/TS-NTMI Google Adwords - https://services.google.com/inquiry/aw_tmcomplaint Google - https://support.google.com/legal/troubleshooter/1114905 iTunes - https://www.apple.com/legal/internet-services/itunes/appstorenotices Snapchat - https://support.snapchat.com/en-US/i-need-help?start=5104595609059328 Google Play - https://support.google.com/legal/contact/lr_trademark?product=googleplay

fr.com | 58 Copyright

Facebook - https://www.facebook.com/help/contact/634636770043106 Twitter - https://support.twitter.com/forms/dmca Instagram - https://help.instagram.com/contact/372592039493026 YouTube - https://www.youtube.com/copyright_complaint_form Tumblr - https://www.tumblr.com/dmca LinkedIn - https://www.linkedin.com/help/linkedin/ask/TS-NCI Google - https://support.google.com/legal/troubleshooter/1114905 Dropbox - https://www.dropbox.com/copyright_complaint iTunes - https://www.apple.com/legal/internet-services/itunes/appstorenotices Snapchat - https://support.snapchat.com/en-US/i-need-help?start=5104595609059328 WhatsApp - https://www.whatsapp.com/legal/#ip-policy

fr.com | 59 Abuse/Privacy/Spam

Facebook - Report on Facebook Page

Twitter - Report on Tweet

Instagram - Report on Instagram Page

YouTube - Report on Video Page

LinkedIn - Report on Profile Page

Google+ - Report on Posts

fr.com | 60 Other

Facebook Privacy - https://www.facebook.com/help/contact/144059062408922 Counterfeit - https://www.facebook.com/help/contact/628238764025713 LinkedIn False Information - https://www.linkedin.com/help/linkedin/ask/TS-NFPI YouTube Privacy - https://support.google.com/youtube/answer/142443 Counterfeit - https://www.youtube.com/reportingtool/counterfeit Circumvention - https://www.youtube.com/reportingtool/circumvention Twitter Report Ad - https://support.twitter.com/forms/ads Impersonation - https://support.twitter.com/forms/impersonation Counterfeit - https://support.twitter.com/forms/counterfeit

fr.com | 61 Vendors

AppDetex: https://www.appdetex.com

CSC: https://www.cscdigitalbrand.services/en/enforcement-services/takedown-services

Mark Monitor: https://www.markmonitor.com/solutions/defend-your-brand

Pixsy: https://www.pixsy.com

Red Points: https://www.redpoints.com/online-brand-protection

RiskIQ: https://www.riskiq.com/solutions/purpose/brand-protection

fr.com | 62 Questions? Thank You! Please send your NY CLE forms or questions about the webinar to Angela Park at [email protected]

A replay of the webinar will be Lisa Greenwald-Swire Michelle Parsons available for viewing at [email protected] [email protected] http://www.fr.com/webinars (650) 839-5198 (650) 839-5055

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