Our consuming society is globally shifting to social media and online marketplaces. This trend has created incredible opportunities for some, and significant losses for others. The traditional mediums for advertising, such as print, radio and television, are losing significant traction to digital spaces. Brand owners are trying to catch the wave by finding new ways to connect with the younger demographic audience. As such, the demands to enhance desirability of brands and deliver products to targeted demographics is growing rapidly and, in turn, brands are hiring the services of social media influencers.
As with all new practices, many legal questions may arise. To that end, we will try to clarify some of the grey areas regarding trademark protection as it relates to social media influencer marketing.
New marketing strategy but same old rules apply
There are varying definitions of an “influencer”. The term is so commonly used that it now appears in the Cambridge Dictionary. The term generally refers to someone “who affects or changes the way that other people behave”. Influencers could be compared to the opinion leaders of the current era and their recommendations are highly valued by their followers.
How does the brand owner and influencer work together? Essentially, a brand owner/influencer forms a partnership wherein a brand owner provide incentives to the influencers to create and post content for them. The type of post could be a product review, recommendation, promotion, or simply a trademark mention.
When posting content on an online platform, the general rule is the same as it is anywhere else. If the content cites another person’s trademark, brand name, or logo, the influencer must obtain specific permission to use the brand’s name. In a digital world where a right-click on any image or a copy/paste makes it easy to repost another’s intellectual property, brand owner needs to be aware that they, unfortunately, cannot control every aspect of their digital presence.
Navigate between “bad buzz” and brand awareness
Handling wrongful use can backfire in an unpredictable way and brand owners need to take this into careful consideration. In the non-digital business world, lawyers frequently send cease and desist letters to businesses operating with infringing use of trademarks or copyrighted material. However, in the digital world, a brand owner send a cease and desist letter to an indelicate influencer misusing his IP rights, it can generate a “bad buzz” and unwanted reactions. Essentially, it can create a viral backlash that is not in anyone’s control and shed a bad light on the brand owner resulting in more harm than benefit for the brand.
Therefore, brand owners should take a new attitude relating to use of their IP online. Instead of fearing brand dilution with the vast uses of their image, many brand owners are accepting the fast pace of the internet and loss of control on social media in exchange for more interaction, feeling of authenticity and brand awareness.
Obvious trademark misuse or appropriation
Nevertheless, brand owners should remain alert to the types of unauthorized appropriations that are the most problematic. For example, to post on social networking platforms, users must choose a pseudonym and it is not uncommon for malicious users to choose a name that implies that they are the official account or a distributor affiliated with a brand. Sometimes, they even go as far as to include a registered trademark, e.g. @HERMÈS®_official, @CHANEL®_distributor, @Real_LOUISVUITTON®, …
As a preventive measure and in an attempt to prevent this phenomenon, major platforms such as Facebook®, Twitter®, Instagram® and YouTube® verify the legitimacy of public figures including famous brands. This verification process allows the consumers of these social networks to have more confidence in the accounts marked as certified of their favorite brands.
In response to brand owners noticing that their intellectual property is being used without permission, online selling platforms as Amazon® and eBay® have developed efficient processes to allow the registration of products and IP rights to simplify the removal of suspicious listings.
Another good practice to stay in control is to keep a whitelist of all legitimate sellers. This is a useful step to identify any suspect or unauthorized sellers. Online marketplaces like Amazon® and Alibaba® also have a system where users that repeatedly offend one’s IP are ‘blacklisted’. These large platforms have also developed effective notice and take down systems.
By becoming more familiar with these different platforms, brand owners can maintain some control and quickly stop a wide range of infringements.
Misleading advertising, a form of trademark infringement
Influencers could also be held liable for false or misleading advertising. Every statement made by an influencer could result in liability. If before a judge, it can be proven that an influencer was fully aware that the product he or she was promoting infringed the rights of a third party, the influencer and the company that contracted with him are likely to be found guilty of trademark infringement, either jointly or individually. The judge will also take into account the extent to which the product advertised by the influencer could cause confusion in the public mind. This likelihood of confusion is the cornerstone of any claim of trademark infringement.
Mitigating the risks with a well written partnership agreement
A brand owner/influencer partnership agreement must be carefully examined before considering any collaboration. It is essential to analyze the environment, as well as the product, to be promoted. It must not infringe upon one’s prior rights and even more so a competitor’s rights.
A well written agreement should address the following::
– Assign ownership in the content created;
– Foresee the liabilities of the influencer in case the content created is damaging the image/reputation of the brand owner;
– Foresee the liabilities of each party in case the content is infringing third party’s rights;
– Clarify in which context the brand owner can reuse the content created for his own marketing initiative;
– Foresee the possibility for the brand owner to check and edit the content that the influencer will post.
Paid brand owner/influencer partnership agreements are a fairly new territory and a basic contract simply will not cover the unique details of social media environments. When it comes to copyright options, trademark rights, idea ownership, crafting intentional usage and ownership rights, clauses in the contract are paramount. GEVERS is at your disposal to assist you in securing these projects.
François Willems – Intellectual Property Attorney