Talk at EDHEC Research Day, June 28, 2011. Summary of a research paper co-authored with C. Roquilly, to be published in September '11.

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2. Brand Protection on Social
Media
Listen to your consumers, or to your lawyer?
Prof. Cédric Manara
LegalEDHEC Research Center
<www.cedricmanara.com/english>
Summary of a study co-authored with Prof. C. Roquilly
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3. 2001
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4. 2011
• Fired after a negative tweet
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5. Time spent online 
Complaint costs 
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6. Complaint costs 
[Gripe example]
• The Gripe app lets consumers post
complaints about a business and
warns businesses of each
complainer's social media
influence.
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7. Monitoring costs 
[KeepAlert examples]
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8. Example 1 - Starbucks
• June 2011: 2,500+ „starbucks‟
domain names, including
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10. Example 2 – Dr. Martens
• June 2011: 350+ mentions,
including
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12. Example 3 - Cadbury
• June 2011: 300+ mentions,
including:
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14. Starting point
• It has become easy to be aware of
(possible) trademark infringement /
brand image tarnishment
• Should each case be followed by
legal action?
– Costs
– Legal duty
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15. Research question
• Brand protection online: Is there a
good recipe (if any)?
• Empirical studies of:
– Social media terms of use [1]
– Cease & desist letters [2]
– Caselaw [3]
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16. 1. Social media ToS
• To which extent are brand owners
granted protection on social
media?
• Sample of 10
– BG, FB, LI, MS, SL, SK, TW, WI,
WoW, YT
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17. Notify… and grab
• youtube.com/apple – 21 mars
2009 : "squat"
• Today:
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18. Diverging platform policies [1]
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19. Diverging platform policies [2]
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21. On the recipient‟s side
• Twitter (says it)
– gets 10,000 complaints a month
– has 24 people dealing with user
complaints
• Facebook
– ~30 lawyers, mainly focusing on
patents
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22. Social media  Leverage
effect
• For brand protection
• For consequences of action
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23. « Spill over » effect
• Canadian telecom company
NorthwesTel issued a takedown
notice to Facebook over the logo
this group was using to criticize it
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25. • "... Linda Hillier March 7 at 8:56pm
• Hi George,
I had to take your photo down because I received this notice: "We have removed or disabled access to the
following content that you have posted on Facebook because we received a notice from a third party that the
content infringes or otherwise violates their rights:
[Main page image:"Northwestel abuses yukoners, and exploits its monopoly"]
We strongly encourage you to review the content you have posted to Facebook to make sure that you have not
posted any other infringing content, as it is our policy to terminate the accounts of repeat infringers when
appropriate.
If you believe that we have made a mistake in removing this content, then please visit
http://www.facebook.com/help/?page=1108 for more information."
This is the info from the page it leads to: "We have removed or disabled access to content that you posted to
Facebook because we received a notice from a third party that it infringes or otherwise violates their rights. If you
believe that we have made a mistake in removing this content, you are not obligated to respond, but if you wish to
follow up, you can contact us at ip@facebook.com.
If we have also disabled your Facebook account, possible reasons include, but are not restricted to:
• Repeated infringing behavior after receiving one or more warnings from Facebook
• Alleged trademark infringement
• Impersonation of an entity
• Misrepresentation of identity - Facebook profiles are meant to represent a single individual. Groups, clubs,
businesses and other types of organizations are not permitted to maintain an account.
For more information, please visit our Intellectual Property Help Center page."
I had to acknowledge the notice in order to proceed. I am not willing to put my Facebook account on the line for
this photo, but you mentioned that you would be willing to fight with them. Please feel free all of the information is
above, including an email address you can forward your complaint to.
Thanks!
Linda..."
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26. Proposal for a Council Framework Decision
amending Framework Decision 2002/475/JHA on
combating terrorism - Impact Assessment
{COM(2007) 650 final}
• “when a website is successfully
removed from a host server, it
reappears very easily under
another name”
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27. "Streisand effect"
• Online phenomenon in which an
attempt to hide or remove a piece
of information has the
consequence of publicizing the
information more widely
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28. 2. Cease & desist letters
• 394 over TM (December 2010)
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29. What happened after
these C&D were sent?
• Effect in 90% of the cases
– 10% remain
• (100 % republished on ChillingEffects)
• 99.2 % republished elsewhere
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30. Unicorn
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31. 3. Cases
• ~200 cases studied
– 25 relevant
• Success of brand owners in 33%
of the cases
– Removal of the disputed content
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32. 4. What we learn
• Limited efficiency of legal action
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33. Noise
• Complaining customers who use
social media receive
disproportionate attention
• One always hear angry people first
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34. Regulation v. Feed
• Information flow
– continuous / real time
• mood, updates, etc.
– voluminous
• Passive consumption
• Legal (re)action contributes to the
information flow
Verba volent, scripta manent
scripta volent (?) 34

35. Inaction may be a strategy
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36. Questions before action
• Should one interfere in private
space or conversations?
• Should one sue its own clients?
• What is the influence of the target?
• …
• Do social media get us paranoid?
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37. Legal response…
• Legal duty to « maintain »
trademarks
• Boomerang effect of this duty
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38. … or communication
response?
• "The answer to the machine is in
the machine" [C. Clark, 1996]
 The answer to the use of a third
machine is in your use of the
machine (?)
• Hidden advertising is prohibited
– Example: OFT
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40. Thank you
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