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Vedder Thinking | Articles Doing Business on the Internet 2011 Seminar Recap

Newsletter/Bulletin

Social media and/or social networking websites have enjoyed increased recognition of late as valuable tools for enhancing business. For example, increasingly companies are developing a presence on sites such as Facebook, MySpace, Twitter, and YouTube. While a forward-thinking approach to the use of social media sites is to be commended, it is important to recognize the inherent intellectual property risks that these sites uniquely create.

Social media sites represent the "new frontier" for IP infringement due to their ubiquitous nature and their architecture, which allows users to post (possibly without authorization) digital content with relative ease. The two main areas on social media sites in which IP infringement is likely to be most prevalent are (1) in user-generated content and graphics and (2) in user names/Twitter handles. Fortunately, there are strategies that savvy parties can take to protect their valuable IP assets in the face of the social media revolution.

One measure that should be taken as soon as practicable is registering all trademarks as user names/page names/group names with all applicable social media sites. For example, in 2009 Facebook changed its policy to allow users to register URLs for their accounts that follow the format www.facebook.com/username. Parties that are concerned about protecting their IP should register each trademark for a brand as a separate user name. For example, it is now possible to customize a Facebook account such that any time anyone enters a URL with the user name of any of a company’s trademarks, they are automatically redirected to a landing page of that company’s choosing. Furthermore, policies should be implemented to ensure that social media sites are monitored to detect instances of infringement. This monitoring may be performed internally, through third-party monitoring service providers or through law firms, such as Vedder Price.

It is also important to understand the different Terms of Use/Terms of Service governing the use of the different social media sites. For example, the trademark policies of Twitter, Facebook and LinkedIn vary considerably with regard to the scope of protection afforded to trademark owners. Presently, Facebook appears to have a more "pro-trademark owner" policy than other social media sites.

Given the risk that social media sites may be used as tools for infringing valuable IP assets, it is also important to understand what remedies are available. There are two main ways to enforce IP rights that have been violated on a social media site: (1) via a social media site’s internal dispute resolution mechanism or (2) via a traditional dispute resolution mechanism. With regard to the internal dispute resolution mechanism, it is important to be aware that many social media sites offer reporting tools allowing aggrieved parties to lodge complaints of IP infringement. The social media site operators will then attend to such complaints as they see fit. However, it may be the case that the internal dispute resolution mechanism is inadequate for addressing an aggrieved party’s needs. In this situation, it is important to bear in mind the availability of traditional dispute mechanisms. For example, certain situations may call for the preparation and delivery of a cease and desist letter, or in the majority of instances, litigation. Vedder Price attorneys are always available to advise on any social media issues that may arise.

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