We are happy to bring to you a guest post by our Fellowship applicant Madhurima Gadre. Madhurima is a 4th year student at National Law University, Jodhpur. This is her first submission for the Fellowship.
Beginner’s Guide to Combating Infringement on Social Media
Around 2009, some people began adding macro text to a photo of a penguin on the internet. According to Know Your Meme, a website dedicated to documenting viral internet phenomena, this became what’s now known as the “Socially Awkward Penguin” meme – a widely popular format for sharing two-line stories on awkward social encounters.
This blue background image of an off-balance penguin with funny text had been plastered across every message board, forum and social network on the web. Little did the people posting these memes know that this picture of the penguin is the intellectual property of National Geographic.
In 2015, the licensing agency of National Geographic – Getty Images pursued multiple infringement cases involving the Socially Awkward Penguin. Website owners were furious when Getty Images asked them to pay up large sums of money and “settle” the issue. Getty Images, a reputed media company, was heavily trolled on the internet for going after clueless internet users. The ensuing outrage sparked a debate on free speech of internet users versus intellectual property rights of creators. The idea behind this blog post is to give the basics on what IP owners can do to combat infringement of their work on social media.
Step 1: A primary question arises as to how can IP owners keep themselves informed of any social media content that mentions their work? There are various ways to do that. Sites like CyberAlert, Mention, Talkwalker, Topsy, Hootsuites, PinAlerts offer professional social media monitoring services. Social media monitoring is a growing field where an IP owner can easily provide their registered works like trademark, logo etc. and these professionals will do the monitoring at a nominal fee. The best way to be informed of infringement is to have a social media monitoring plan. Having such a plan put in place can notify the IP owner on what goes on online regarding their protected work.
Step 2: What immediate action can be taken when the IP owner is notified of the infringing content? They can (i) send a Cease & Desist letter; or a (ii) Take-down notice; or (iii) use the social media website’s online complaint procedure. Mostly, the fear of getting into legal hassles compels the infringer to desist. A typical scenario these days is when individuals register a username incorporating someone’s trademark. Major brands like Coca-Cola, Nike and Adidas have fallen prey to such “username squatting”. Many social media websites may not consider this type of behaviour to violate their terms of service. For example, Instagram provides the following guidance on its trademark policy page: Using another’s trademark in a way that has nothing to do with the product or service for which the trademark was granted is not a violation of Instagram’s trademark policy. So the social media website’s online complaint procedure may not always favour IP owners. On the other hand, some social media websites may favour IP owners. For example, Twitter provides the following guidance on its trademark policy page: Using another’s trademark in a manner that may mislead or confuse others about your brand affiliation may be a violation of our trademark policy. World Intellectual Property Organization (WIPO) has some interesting thoughts on this issue. Also note that some social media platforms e.g. Instagram have explicit first-come, first-served registration policies for usernames. Accordingly, the best solution for IP owners is preventive registration of usernames to avoid username squatting by others. Early registration of all username variations (even variations of the trademark that will not be used) on social media can reduce vulnerability to a great extent.
Step 3: Don’t get legally aggressive straightaway, try being nice. Consider this infringement case of Jack Daniels. Jack Daniels had a potential lawsuit of copyright infringement where an author’s book cover resembled their whiskey bottle label too closely. Rather than sending out their lawyers to collect damages, Jack Daniels drafted the most polite cease and desist letter to the author. They explained that they appreciated the cover but did not want their whiskey bottle label depicted in that manner and even offered to pay for the costs of changing the cover. By walking away from a lawsuit, Jack Daniels increased its fan-following when the Cease and Desist letter went viral. Even the author got favourable publicity for his book. IP owners can follow this example and turn the tables in their favor.
To conclude, vigilant monitoring, taking advantage of the online complaint procedures and early registration of usernames and can help budding IP owners combat infringement of their work on social media.
Image from here