One of the (many) remarkable things about the growth of social media over the past decade is that what had initally seemed like a fad, and then was reborn as a business model, has now simply transitioned into being the landscape itself. As a lawyer who deals with such things, I’ve been fascinated to watch the number of “social media” questions I get each week steadily shrink. Instead of “please help me with this Facebook issue!” or “Twitter is driving me crazy!” I’m getting more questions that just presume a social media component. The fact that a media campaign, or a branding effort, or a promotion, or a creative work of any kind, is going to be shared, featured or used on social media is standard operating procedure, not a special feature. This has become so much the case that it makes you wonder if social media is even worth talking about as an independent phenomena anymore. Once everything is social media, why bother to act like its different from the entire world.
I’ll be honest: most of my speeches and articles and blog posts and tweets over the years have centered on the basic fact that social media is different from what came before. It is the opposite of broadcast models. It requires you to get into conversations. It requires you to view your IP rights and your customers and your competitors as participants in your marketing practices rather than a mere audience. But at this point, that’s all a given. If you do virtually anything in the world — as an individual, a company, a government, a charity, you name it — there is a social media angle. Looking at Google News, I cannot find a single thing that happened this week that wasn’t somehow affected by social media, and in many instances was platformed on social media itself. Isolation from the social web and the mobile web and whatever else you want to call it is now a pipe dream for everyone who engages in moderen commerce, political activism, government service, artistic expression, or even tries to get a date.
So maybe we need to reorient ourselves. When Neal Stephenson goes to work on a new business that promises to bring the world of Snow Crash (and, cough cough, The Secret Root) into being, where we won’t simply talk to each other on social media but will live our lives inside electronic networks that mimic our physical reality, perhaps we should consider ourselves near the end of the “social media era.” When something is so pervasive that the world cannot be separated from the phenomena anymore, and the law is finally beginning to adjust to the new reality (although we’ll have more to say about that soon), and the next things can already be seen on the horizon, that’s the moment when the paradigm has completed its shift. But that’s also the moment where we should buckle our seatbelts.
Everything is about to change. Again.
Earlier this week, I talked a bit about trademarks and how they work. Today, however, I’d like to discuss the real way they work on social media platforms.
The answer: very, very well.
In fact, they work almost too well. You see, trademarks are all about control. They are about ensuring that everyone knows exactly who is standing behind a good or a service, and if you lose control of your trademark, it will cease to mean anything. If your trademark ceases to mean anything, then it ceases to be a trademark.
But social media only works if you give up a degree of control. In the pre-Internet world, if you were to see someone using your trademark without permission, you would immediately send them a demand letter and (if they ignored you) sue them. Today, the calculus is a bit more complicated. First, your demand letter may very well end up posted online, and you may well be subject to public mockery. Second, depending on what exactly is being done with your mark, stepping in may do more to harm your brand than to help it. You miss out on the viral power of social media and the insidious ways that it can burrow into the tastes of the public.
So, how can you tell when a social media use should be stopped, and when it should be ignored? Of course, there is no bright line rule (the facts can always have an impact on whether taking action is justified) but there are some rules of thumb that are worth keeping in mind as you watch third parties use your trademark on Facebook, or some other powerful media platform that didn’t even exist a few years ago.
(1) Is someone pretending to be you. This is obviously the most serious type of online trademark infringement, and should almost always be addressed aggressively. In a wired world, the amount of damage a rogue actor pretending to be you can accomplish in a few short days cannot be overstated.
(2) Is someone pretending to be affiliated with you? This is a bit more subtle. Are they really trying to imply association, or are they simply big fans? Are there ways to work with them to alter their positioning so that it is clear that while they like you, they aren’t actually you? If someone is trying to get a free ride off of your good will for their own commercial purposes, or saying things that are either wrong or troubling, that can be a serious problem, but you have to calculate whether you are benefiting too.
(3) Is someone counterfeiting your products? This falls into the same category as (1). This can cause real harm, and should be stopped. Few people would even consider this controversial, as it is very much in the spirit of consumer protection.
(4) Is someone trying to direct traffic to themselves using your name? This is, again, a bit more complicated. Much of what is considered “domain name infringement” or “cybersquatting” falls here. Some of this can be quite nefarious, and in fact is redirecting traffic that should honestly be yours. That is something that is best addressed on a case by case basis, but shouldn’t be ignored. It can also arise in the context of keyword advertising purchases — someone buys your trademark as a search term and tries to get consumers to visit their site instead of yours. This issue is still being actively litigated, but while many of the cases seem to imply that keyword buys are perfectly legitimate in a great many contexts, there are still scenarios that may present issues and are worthy of discussion with counsel.
(5) Is someone trying to talk about you? This is, without a doubt, the most common “trademark” issue on social media platforms. The whole point of brand participation in social media is to inspire conversation. But not all conversation is positive. Some of it may be wrong, or harsh, or filled with annoying comparisons. But that is often the price of admission. And many of these uses are “fair” uses privileged under either the Lanham Act or the First Amendment. Being seen as an online bully can often be worse than whatever is being said about you, and trying to make tenuous trademark arguments to stop it can often backfire. Meeting bad speech with more speech is often a better solution in this context.
So in other words, the basic approach to trademark use on social media platforms is “think before you do anything you may later regret” but don’t necessarily let that stop you from protecting your rights where it is appropriate. The same laws apply online — the only real change is that everyone now has a megaphone, including your consumers. Remember that, and everything will work out in the end.
Each year I attend the enormous International Trademark Association Annual Meeting, this past year held in rainy San Francisco. INTA (as it is popularly known) has grown from having a few hundred attendees roasting marshmallows around a fire in the 1970s (then it was known as the USTA), to housing more that 9000 lawyers today in every hotel within a mile of the Moscone Center. This coming year, it will be in D.C., which will be swarming with even more lawyers than is typical on a beautiful spring day in our capitol city.
As different as they may be (and they come from all over the world, from countries both significant and profoundly obscure) many of these lawyers share an important characteristic: they are disturbed by social media and what it means for branding. In this, they are no different than many of our clients, most marketers, and just about anyone who bothers to think about these things.
Now this is all something that we have mentioned before, but it is worth discussing again because the problems continue to grow more complex and more distressing, and the opportunities grow more vivid and more intricate.
It used to be that trademark use took place by you, and only you. If someone else used your trademark it was not only a bad thing, but it could be devastating for your brand and the viability of your trademark. Heck, even licensing your trademark wasn’t permitted in the early days of modern trademark law. Today, however, while trademark owners still must guard against their mark becoming generic and unprotectible, marketing consultants will now badger you and claim that you actually wantyour brand to be the subject of third-party use on the web. According to just about everyone, you should allow your trademark to be used by others, every day, all over these fine intertubes. And most importantly, the use of trademarks in social media is uncontrolled, often confusing, and subject to laws that were first developed in a time when the founder of IBM still (allegedly) believed that “there is a world market for maybe five computers.” What is a poor, besieged trademark owner to do?
Thankfully, however, all of the panic over trademark use on the Internet and through social media channels is to a certain extent undeserved. While trademark law has not exactly caught up to the complexities of a modern networked world, trademark law is in the end about confusion, and confusion is an idea that easily translates across any media platform.
The first thing to understand is that trademarks (unlike copyrights and patents) are not property. No, really, it’s true. Instead, they are consumer protection devices, intended to protect the public. Obviously, as the years have gone by and guild marks have slowly mutated into a crazy quilt of unconventional trademarks, it can often seem like they are no different than any other asset. But in fact, they are fragile things that can easily become generic if too popular, or abandoned if not used assiduously, or damaged if not used consistently.
What all of this means is that simply because someone else is using the same word that you have been using to identify yourself does not necessarily mean that they are “infringing” anything. You can have “Jones” as the trademark for industrial screws, and “Jones” as a trademark for women’s clothing, all at the same time. That said, some trademarks are so famous that they can seemingly occupy the field — try calling your new car brand ”Coca-Cola” and see what happens.
In other words, all of these things are subject to the equities of a given situation, and multi-part tests weighing the strength of the mark, the similarity of the goods, and a whole host of other elements are used to determine whether a likelihood of confusion exists. And that is the case whether or not you are online, or not.
But while confusion is the same irrespective of whether you are selling hamburgers or bytes, the web has changed one thing fairly dramatically — it has virtually eliminated geographic isolation. When I first started practicing, the idea that a trademark use could be limited to, say, New Jersey was taken for granted. Local businesses were genuinely local, and if someone else used the same trademark in Arizona they would likely never run into each other or create any chance of confusion. Today, a search engine doesn’t care where you are, and it may pull up results right next door or across the globe. For that reason, while trademark infringement is arguably the same as it has always been, the trademark clearance process has become even more of an art. How much is enough, and what types of things are neessary in order to feel comfortable with the choice of a trademark? And on the other side of it, how concerned should you be if another party adopts a trademark similar to yours in another part of the country, or even the world?
So while general panic is not warranted, even as these complexities grow ever more entangled with each passing step into the cloud, it is important to realizse that trademarks are a central part of your identity online — in many cases the only one — and attention must be paid to these issues from the very start.
More to come on how this specifically matters in the world of social media — and whether that is different from online use more generally.
Today is an exceptionally important day in my beloved Chicago – the first truly open election for Mayor in over two decades. The leader in the race to replace retiring Mayor Daley is former congressman, Presidential Chief of Staff, and famed profanity artist Rahm Emanuel. The Saturday Night Live routines nearly write themselves.
So what on earth does this have to do with social media and the law?
Actually, quite a bit, as Rahm has faced an interesting social media conundrum from the moment he first declared for the race this past September, a problem faced by many businesses every day. Nearly as soon as his candidacy was rumored in the press, Rahm Emanuel had to deal with an imposter on Twitter, known as @MayorEmanuel.
Even worse, this imposter was very, very funny. So funny, in fact, that he quickly garnered thousands of followers. Several times more, in fact, as Rahm had himself. Telling caustic tales of surfing Lake Michigan with David Axelrod and Carl the Intern during the big blizzard, and campaign stops in the many neighborhoods of Chicago (while splitting his off-hours between a crawlspace and an igloo), it was hilarious, incredibly NSFW, and incredibly clever.
Now typically when a public figure is faced with an imposter, they run to Twitter to take it down, or (in some extreme cases) run to court. But Rahm (who is not exactly famous for being a subtle guy) did a much smarter thing.
He didn’t try to take it down, he didn’t sue “John Does 1-20″ in a desperate effort to uncover the parodist. Instead, he got into the spirit of the thing, and mockingly offered $2500 to a charity of the author’s choice if he or she is willing to come forward. He has apparently learned one of the most difficult lessons for any brand owner (or celebrity): the difference between infringing behavior that should be stopped, and infringing behavior that not only harms no one, but in fact may be beneficial.
Prof. Thomas McCarthy — probably the greatest expert on trademark law of the 20th century — recently spoke at a joint synmposium on trademark law held by the University of San Francisco’s McCarthy Institute and Microsoft. (To toot my own horn, I moderated the panel on trademark dilution — which was a significant thrill!) At this conference, which was quite amazing, Prof. McCarthy took many brand owners to task for not understanding this same lesson that Rahm Emanuel seemed to understand instinctively.
It is very easy to be too aggressive, or not aggressive enough, said Prof. McCarthy, when enforcing your IP rights, especially online. And that is because too many people don’t spend the necessary time thinking about what they actually will be accomplishing by sending that cease and desist letter. Did Mastercard really gain anything through its failed effort to stop Ralph Nader from using it’s “Priceless” campaign? Would Rahm have done his public image any favors by suing an anonymous funny person? Would it have made him appear petty and overly sensitive? Does having someone out there making fun of you mean that you actually … matter?
So yes, there are many times that you need to aggressively pursue legal remedies when someone out there is using your brand, or your name. But think about it first — you may conclude that discretion is the better part of valor.
One of the great brand consultants in our fine nation (and someone I’m proud to have as a co-author and a client), is Mary Morgan of the Morgan Network. She has been systematically interviewing folks for a series entitled “Marketing Sense,” seeking their thoughts on critical issues to marketers today. As part of that effort, Mary recently interviewed me — which was both fun and interesting. While this interview is short, it does provide me with the opportunity to sound off on some of the legal issues that are important to marketers. I hope you enjoy it (even if it means you have to look at my face made for radio). Please also check out the great interviews with Wendy Kritt (Senior Director of Global Consumer Relations of Kraft Foods) and Matt Berman (the genius behind Bolt Barbers).
Legally Social spent this past weekend at Blogworld New Media Expoin Las Vegas, and can safely report (a) that the world of social media remains dynamic, forward thinking and intense; (b) that people in social media still don’t think about the legal ramifications of what they’re doing as much as they ought to, and (c) Las Vegas is profoundly amusing.
I live-tweeted a several panels (you can follow me @legallysocial) but for me the most important aspect of the conference was seeing the interaction between the old social media format (which was highly informal and largely consisted of bloggers talking amongst themselves) and the new paradigm (which is far more focused on commerce, marketing and co-branding). Once upon a time, bloggers could joke about “taking the Boeing” as shorthand for selling out. Now, the idea of “selling out” is preposterous, with the word “monetize” thrown around more often than any other word including “and” “the” or “a”. Social media interaction is no longer thought of as a hobby for pajama-clad folks blogging from their basement; instead it is a sophisticated marketing tool used by the largest companies in the world (and the smallest) to develop dialogue with their customers. To be sure, the number of social media devotees focused on their hobbies and their lives remains large, but what is interesting is that this more informal world is now almost indistinguishable from the land of professional marketers.
This will lead, of course, to all sorts of interesting issues over the next few years, ranging from brand control and privacy to employment law and innovation. But right now, we should all be pleased to witness the early stages of a new communications paradigm. Web 2.0 is still less than a decade old (at most). We have many years (and many more versions) yet to come. It is an exciting time, indeed, and next year should be even better.