When IP Issues Arise on Social Media, Try Playing Nice

© 2016 The Texas Lawbook.

By Jeff Bounds

(Sept. 20) – Social media can present a host of intellectual property issues for companies, some of which merit handling in different ways than lawyers have traditionally tackled problems, a panel of experts said last week.

“A large number of people use social media for business, and this creates monitoring challenges,” said Philip Davison, Houston-based trademark copyright counsel at ExxonMobil Corp.

Davison and other panelists spoke Tuesday at the Houston office of Thompson & Knight.

At other companies where he’s worked, hiring outside vendors to search the Internet for abuse of trademarks and logos has resulted in a stack of paper two feet high landing on his desk, Davison said.

“It’s like drinking out of a fire hose,” he said. “I don’t have the time to go through all that.”

ExxonMobil relies on its 70,000-plus employees to bring IP issues to management’s attention, along with lawyers in various locales and its network of friends, he added.

“It’s important to remember that if you don’t enforce your IP rights, you can lose your rights,” he said.

But companies must balance the need for enforcement with the reality that bare-knuckle tactics can backfire in cyberspace, according to Irene Kosturakis, chief IP counsel at Houston’s BMC Software.

“We believe in taking a guarded approach before sending a cease-and-desist letter,” she said.

The other side could post a harshly worded letter online, which can help create an online campaign against your business, Kosturakis said.

“We try to identify if somebody has a relationship at any business that might be using our marks without our permission,” she said.

Whiskey maker Jack Daniels in 2012 turned a potentially difficult infringement issue with a book writer into something good, according to Jennifer Sickler, an intellectual property partner in Thompson & Knight’s Houston office.

The issue was that the cover of the author’s book had a logo similar to what Jack Daniels uses, Sickler said. A company attorney sent the writer a letter with images comparing the colors and graphics of the book cover with the logo in question.

“The letter was worded so reasonably that it had the effect of creating a positive campaign for Jack Daniels,” Sickler said.

Mixed bag from social media platforms

When websites post infringing content, it can be easier to ask the domain service that is hosting the sites to take them down, Davison said.

At legitimate hosting businesses, customers’ contracts contain terms and conditions that bar clientele from putting up infringing content online, Davison said.

Similar rules apply for users of social media sites like Facebook, Twitter and LinkedIn. But some of those sites respond slowly to complaints about IP issues on their users’ accounts, or not at all.

To deal with that issue, Davison has looked up platforms’ trademark designees in a membership directory and gone to them directly. “Then it gets taken care of,” he said.

Another tool is the Wayback Machine, which archives old versions of websites.

BMC used the Wayback Machine to show that a large competitor had used one of its product names in a trademark sense on the web – even after the competitor took down the material and an outside law firm denied in writing that the rival had misused BMC’s trademark.

“They were saying, ‘We’re not using it in a trademark sense,’” Kosturakis said. “We were able to show them that they were as of the date we wrote our letter.”

Dealing with satire and complaints

Executives of large companies risk having their social media accounts hacked, Sickler said.

“The hackers can create embarrassing posts to the detriment of the business’ reputation,” she said.

Thompson & Knight recommends companies ensure executives employ two methods for confirming their identity online, including having passwords for all their social media accounts, she said.

“They should have separate accounts for their personal and professional use,” she said.

ExxonMobil, which is based in Irving, encountered a different social media problem four years ago following a pipeline spill in Arkansas.

A critic of the business took on a Twitter handle called “ExxonCares” to post parodies of the company’s response to the spill.

ExxonMobil did not have a problem with that per se, but did go back and forth with the individual until they added wording to show that the account was satire and not associated with the business, Davison said.

When aggrieved customers take to social media to complain about a business, it helps to reach out to the person directly to talk things through, Kosturakis said.

“It’s best to try to get the conversation off social media,” she said.

During her tenure at the old Compaq Computer, a critic took out a web address, Compaqsucks.com (which is still active, albeit with content that is now in Japanese.)

Issues of freedom of speech can arise in those situations, she added. As a result, BMC has purchased web domains that use its marks in conjunction with pejorative words like “sucks,” Kosturakis said.

But at times, the First Amendment trumps everything, she added. “Some things you will have to let go.”

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