"But this great advantage comes with risks too," says Nishan Singh, partner at law firm Adams & Adams. "This is because social media networks are usually a hotbed for intellectual property (IP) infringements. A global infringement of IP rights, which once took weeks or even years to occur, can now happen within seconds on the social media networks."
Unfortunately, Singh points out, protecting intellectual property on the various social media networks is fraught with legal pitfalls.
Usernames, personalised sub-domain names and avatars are not verified when they are created and therefore can create confusion as to the source of the profile. The official Twitter page for the Starbucks Coffee Company has 1,5 million followers. Another example is the official Facebook page for the Coca-Cola Company which has over 31,8 million fans. But it is unclear just how many illegal profiles there are and how many fans and followers these profiles have.
Says Singh: "Despite the popularity of the profiles of leading global brands, there is still confusion as to which is the 'genuine' profile of the true proprietor. This problem is the result of various username squatters and face-squatters using the trade marks of well-known companies as their profile names and profile pictures on social media networks."
"Facebook and Twitter, like other social media networks, have intellectual property infringement policies. Both networks afford the proprietor of intellectual property rights the option to submit a complaint, in the event of an infringement of such rights on these networks. The user or alleged infringer can submit a response to the complaint and, if there are grounds to do so, the network will remove or disable access to the infringing content."
According to Singh, both Facebook and Twitter reserve the right to remove the alleged infringing content from their website, thereby taking on the role of the judge, jury and executioner with regard to complaints. Due to the nature of material generated on social media networks, it is difficult, if not impossible, to weed out all intellectual property infringements.
"Trade marks are generally a territorial concept and the registered or common law rights that have been established in respect of a trade mark only exist in certain countries. This is generally where the proprietor is trading and/or where it has registered the trade mark. As social media networks have a global reach, jurisdiction is a problem in the enforcement of trade mark rights. For example, the proprietor of a trade mark that is registered in South Africa can only enforce its rights in South Africa. If this proprietor submits a complaint in terms of Facebook's trade mark policy regarding infringement by a user that is based in Russia, then strictly speaking, access to the infringing content should be disabled for South African users only," Singh comments.
He points out that in order to submit a complaint in terms of Twitter's trade mark policy, the proprietor of a registered trade mark needs to show that "there is a clear intent to mislead others through the unauthorised use of a trade mark". This requirement is more onerous to establish when compared to the trade mark infringement provisions of the South African Trade Marks Act of 1993, where intention need not be proven.
"Both Facebook and Twitter's intellectual property policies require the complainant to describe how its rights are being infringed. A complaint based on copyright infringement should, in theory, be relatively simple as the mere reproduction or adaptation of a work in which copyright subsists would amount to copyright infringement. Therefore, if a social network user simply copies and pastes a company's logo as its profile picture, this would amount to copyright infringement and should be sufficient for the purposes of a successful complaint," says Singh.
According to Singh a complaint based on trade mark infringement is more complicated. The unauthorised use of a trade mark amounts to infringement, if such use is in the course of trade. Most username-squatters and face-squatters simply use well-known trade marks as their profile names and profile pictures only. They do not necessarily trade in goods or services and therefore are not using the trade mark in the course of trade. Such use therefore does not amount to trade mark infringement.
Due to the uncertainties regarding enforcement of intellectual property rights on social media networks, Singh advises that trade mark owners to take defensive steps to prevent a possible infringement at the outset. The registration and maintenance of business profiles on social media networks may be a daunting task and should therefore be approached strategically; however, when devising a strategy, it is advisable to register the company's trade marks as defensive profiles as an initial step.
Another issue which needs to be addressed is to include both an employee policy which controls what employees can post, blog or tweet on the company's profile, and a user policy, which controls the manner in which friends/followers/connections/fans can use the company's profile.
Social media networks certainly affect the manner in which a company does business. A Web 2.0 generation customer is more than likely to peruse comments on the internet regarding a particular product rather than viewing the product in-store. From a marketing perspective alone, social media networks have enormous power and influence which should not be under-estimated.
Singh cites the example of well-known international retailer GAP as an example. The company was forced to abandon its new logo after receiving negative comments on social media networks. The company received 2 000 negative comments on Facebook and 5 000 people followed a Twitter account that was set up in protest of the new logo. In addition to abandoning its new logo, GAP apologised for the manner in which it handled the situation and acknowledged that it had missed the opportunity to engage with the online community.
Intellectual property (or proposed intellectual property as in GAP's case) is certainly at risk in the social media revolution and enforcement is essential. However, a company's intellectual property enforcement strategy may need to change in the context of social media networks. A company should not over-react - the "infringers" in the social media context are usually friends/connections/followers/fans who are all customers or potential customers.
