INTA 2013: sidestepping social media problems


Brand owners heard how to deal with problems related to social media websites at the International Trademark Association annual meeting in Dallas.

Three lawyers – Jeremy Roe, Janice Housey and Tom Lockhart – acted out a mock meeting between fictional social media start up, Grab-U, and its external counsel.

Lockhart, an attorney at Willcox & Savage PC, played the role of Grab-U owner, saying that the company’s success has brought problems – including IP infringement by users (or ‘grabbers’).  

Associate IP general counsel at Anheuser-Busch, Roe, and Housey, a lawyer at Symbus Law Group, advised Lockhart that brands and logos can be protected by both trademarks and copyright.

“Copyright infringement carries specific rules that you must follow, including under the Digital Millennium Copyright Act (DMCA),” Roe said. “You can put DMCA takedown notices on your site.”

If there is a trademark dispute, Roe said, Grab-U could be liable for contributory trademark infringement but this could be prevented by placing a disclaimer in the terms of use saying the company does not incur third-party liability.

Housey said an effective tool would be to create an “abuse button”, which users would click to trigger an in-house legal team investigation.

“What if a brand owner uses the site for fake posts that endorse its brand?” was Lockhart’s next question, with Roe saying “we can address this in the terms of use and suspend the account”.

Another problem posed by Lockhart covered the posting of false and derogatory comments about another brand on the site. “Am I liable?” he said.  

“The terms of use prohibit such postings,” said Housey, adding that the abuse button would again be useful, turning users into online police force that “do most of the work for you”.

The final dilemma pondered by Lockhart covered the online malpractice of phishing, which Roe said is often combined with “spoofing” – attracting a user to a link and taking their personal information.

Writing an education section on Grab-U’s website was one response, according to Roe, who said the company should “make it clear that you’re never asking for password or details”.

Lisa Iverson, a lawyer at Neal & McDevitt LLC, who had been moderating the panel session, said the advice should be seen as a template for how to deal with social media.

But Roe added: “In reality, it doesn’t always work this way.”

This article was first published on 06 May 2013 in World IP Review

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