Young designers embrace social media as an intimate, cost-effective marketing platform. but proceed with caution, Lisa Egan warns.
"Being active on the internet is indispensable to growth and for being relevant,” says designer Dianne Von Furstenburg. “It helps your business to be truly global and truly multi-generational.”
Facebook and Twitter have certainly emerged as spaces where fashion brands and labels can have a more immediate and up-to-date means of engaging with their loyal customer base. While these new forms of media present valuable opportunities for marketing, promotion and customer feedback, brand owners should be aware of the unique legal challenges presented in trying to maintain the integrity of their brands and trade marks.
Social networking media have opened up greater possibilities for infringement of copyright and trade marks on a much larger scale than traditional communication or advertising media.
There are important steps that brand owners should take to ensure they have the best chance of maintaining control of the use of their brands, trade marks and works on Facebook and Twitter.
Facebook is a social networking site on the internet which allows individuals to register as a user and operate their own “Facebook page”. Having a registered Facebook page allows individuals to make personalised updates, send and receive messages and share photos, videos and links, as well as access other individuals’ Facebook pages.
In June 2009, Facebook first allowed brand owners to register their brands as Facebook pages.
By registering a Facebook page, brands can now post messages, information and photos promoting their brands, as well as communicate instantly with their customer base. This provides for direct access to new products, stores, fashion shows and any projects which the brand is involved with, as well as allowing for instant feedback.
However, to register a Facebook brand page there is no need to prove ownership of a trade mark, making it possible for third parties to pose as brands and communicate with customers without any authority from the brand owner. This has the potential to cause damage to a brand if such a situation were allowed to perpetuate and damaging or untrue messages were being communicated in relation to the brand without its knowledge.
If someone registers a Facebook page in the name of a particular brand or trade mark, or posts content posing as a brand owner, the legitimate brand owner can fill out an online form accessible through the Facebook website to have this content removed. If Facebook is satisfied that a brand owner’s intellectual property is infringed, it will remove the relevant Facebook page or offending content.
It is then critical that the brand owner register its brand name and all trade marks with Facebook so that Facebook will know the legitimate owner of these marks if a third party seeks to register any of these as a username in future. All brand owners should be proactive in this regard in ensuring they register the relevant Facebook pages before someone else does this for them.
Of course there may be situations where genuine supporters of a brand and its products create Facebook pages dedicated to their love of particular brands. Brand owners may view this as flattering and possibly even a good source of indirect promotion and therefore be reluctant to seek to remove the page or content due to the risk of alienating those users. If this is the case, it is important that such sites are regularly monitored to ensure that trade marks, brand names and products are not being reproduced illegally and also to ensure that inaccurate messages are not being circulated in relation to the brand.
Twitter describes itself as a “real-time information network powered by people all around the world that lets you share and discover what’s happening now”. The messages sent and received via Twitter are known as “tweets”.
Users of Twitter are able to register Twitter usernames as their identity to post tweets. Therefore it is possible for people with no legitimate connection to a fashion brand to register a Twitter username containing that brand’s name or trade marks.
This presents a potential problem for brand owners because Twitter does not require proof of ownership in order to register a Twitter username. For example, “Coca Cola Co” was originally registered as a Twitter username by two people who were not employed or authorised by the company.
In the US, a restaurant called Z Burger registered the Twitter name of its rival restaurant, Elevation Burger, which was also a registered trade mark. Z Burger then issued tweets under the Elevation Burger username which promoted Z Burger. The illegitimate account was suspended once the real Elevation Burger became aware and notified Twitter.
These examples demonstrate the problems posed by Twitter for brand owners because tweets that appear to be from a legitimate source representing a brand can damage that brand by providing incorrect information about the brand and its products. There is also the potential for illegitimate users of brand names and trade marks to damage a brand’s reputation by making disparaging comments about the brand itself or about other brands.
Interestingly, while 97 out of the top 100 global brands have registered domain names for their brands, 93 have had their brand names registered as a Twitter username by someone else. This can probably be attributed to the fact that Twitter does not require proof of ownership to register a Twitter username.
Brand owners should monitor Twitter for illegitimate uses of their trade marks and brand names. If you do find that your brand name or trade marks have been registered as a Twitter username by an illegitimate third party, you can then file a complaint with Twitter that this has occurred and Twitter is then able to bar this username.
However, Twitter will not transfer illegitimately registered usernames or remove such usernames. Twitter will simply bar use of the name by the illegitimate registrant. Brand owners should also bear in mind that the test applied by Twitter to determine whether a username should be barred is whether there was a “clear intent to mislead people”.
This could be a grey area if the illegitimate registrant has added an extra element to the brand name or trade mark, or made a pun of the name whilst still effectively reproducing it.
To seek to prevent this situation arising in the first place, brand owners should seek registration with Twitter of usernames comprising their brand name as well as additional usernames with any of their trade marks. Even if there is no intention of “tweeting”, brand owners can best prevent illegitimate use by third parties by registering their brand and trade marks as Twitter usernames.
The way in which a brand and its associated trade marks may be used is also something to consider when putting in place licensing agreements with distributors. While brand owners may be happy for a distributor or licensee to use the brand and trade marks or brand name through legitimate advertising means, brand owners may be better placed to control the use of social networking media due to its ability to distribute messages instantly and on such a large scale.
Brand owners should immediately register their brands and trade marks with Facebook and Twitter, so as to have the best chance of preventing illegitimate users and cyber squatters. They should also regularly monitor these sites to ensure that any use of their brands and trade marks is legitimate. The power of the internet is being embraced and brands need to ensure they are making the most of it.
Lisa Egan is a senior associate at Middletons law firm.