“Social Media and Trademark Law” Talk Notes

By Eric Goldman

Today, I gave a talk at Suffolk University’s event “Social Networking Sites: Law, Policy and Practical Strategies” on Social Media and Trademark Law. My talk notes:

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1. Overview

A. Trademark doctrine is inherently elastic

* Schizophrenia about consumer protection vs. producer protection

* Hard to legally model consumer mental processes

* Trademark law relies on commercial/non-commercial distinction, and that model breaks down on the Internet

B. TM doctrine becomes more incoherent as it gets further away from product counterfeiting

* Little value to marching through doctrinal analyses in other circumstances

C. Internet technologies permit TM uses completely unrelated to product counterfeiting

* Pressure on TM law

- And SNSs feel pressure to do private ordering, although their efforts are often kludgy and inconsistent

* Pressure for new or expanded para-trademark rights

- ACPA

- False advertising/false designation of origin

- Defamation

- Publicity/privacy rights

- Identity theft/E-personation (“knowingly and without consent credibly impersonates another actual person through or on an Internet Web site or by other electronic means for purposes of harming, intimidating, threatening, or defrauding another person”)

- CFAA, trade secret, etc.

2. Namespace Disputes

A. Usernames are scarce and valuable

* Namespace proliferation with every new social media

* Leads to username squatting

B. Value + emotion = messy divorces

* Co-venturers (Tea Partiers, OMGFacts)

* Employee/contractor (Maremont, PhoneDog)

C. Doctrinal Ambiguities

* Does using a username create trademark rights? i.e., is it a qualifying “use in commerce”?

* Can a username, on its own, infringe trademark rights? Analogies to domain names

* Must the namespace operator adjudicate complaints to manage its liability? Even if not required, will the operator adopt a private ordering system that is dispositive in practice?

D. Username litigation is rarely cost-justified!

3. Content Source Confusion

A. Taxonomy of types of Content Source Confusion

* Competitive Injury. Ex: Ron Paul (YouTube video)

* Griper. Ex: Iacovelli (fake posts in doctor’s name)

* Parody. Ex: LaRussa, Coventry, BPGlobalPR

B. TM law isn’t designed to protect against content source confusion, but sometimes courts do it anyway

C. Enforcement raises Streisand Effect risk and is rarely cost-justified

4. Brands Can’t Control Social Media

A. Social media gives brands unprecedented engagement with customers, but things can go wrong

B. Companies can self-injure their brands with ill-timed/ill-advised posts

* Kenneth Cole: “Millions are in uproar in #Cairo. Rumor is they heard our new spring collection is now available online at http://bit.ly/KCairo -KC”

* Entemann’s: “Who’s #notguilty about eating all the tasty treats they want?!” on same day as Casey Anthony’s verdict

* Ketchum exec James Andrew tweet “True confession but i’m in one of those towns where I scratch my head and say “I would die if I had to live here!“” while on way to client, FedEx.

C. Users control brands; brands don’t control users

* Nestle: Nestle took down Greenpeace’s critical video from YouTube, users complained on Nestle’s FB page, Nestle chided them for their behavior, users went crazy

* McDonalds: hashtag #McDStories became a “bashtag”

* For more, see my Online Word of Mouth article