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Companies now watch social networks for trademark infringement

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Facebook, Twitter and other social networking sites can be great tools for companies to communicate with their customers.

The sites also can be fertile ground for trademark infringers who seek to benefit from a brand name or a celebrity’s likeness.

In order to avoid the misappropriation of their image or name, companies should be actively combing through the Internet, according to local attorneys.

“It’s very important to police your trademarks,” said San Diego attorney Andrew Skale, a member of Mintz Levin Cohn Ferris Glovsky and Popeo’s intellectual property section. “Because if you let a lot of people out there infringe your trademarks, on the extreme end, your mark can become generic.

“But more likely to happen is it’s going to weaken the mark if you don’t police it.”

Popsicle is one example Skale gave of a company that let its brand name become part of the public domain.

Lisa Martens, a principal in Fish & Richardson’s San Diego office who focuses her practice on trademark prosecution and litigation, said it’s an especially good idea for companies to look online for counterfeit goods.

“In the real world, companies have to monitor the marketplace for products sold online or in store,” she said. “It’s about constant vigilance in monitoring and enforcing.”

Once a company discovers their brand is being used illegally online, it can go directly to the social networking site and ask to have the illegal account or content removed.

Many of the social networking sites have usage policies that allow for this.

“They can help in removing counterfeit sites because if you put them on notice, and they don’t act, then it’s possible they also can be responsible for infringement,” Skale said. “It’s a strong incentive for them.”

The takedown policies differ from site to site, with some better than others, according to Martens.

Facebook reserves the right to remove an account at anytime and will do so if informed by a company. MySpace requests the trademark owners approach the infringer first and try to work it out on their own. The Twitter policy differs as well, she said. The company will suspend an account if there’s clear intent to mislead consumers.

“The question is, are people reading the information confused?” she said. “Do they think it’s coming from the company.”

Twitter has a “Verified Account” feature designed to eliminate any confusion and give consumers the confidence they’re following the actual celebrity or company.

Companies also can go directly to web hosting companies, which feature user-generated content, to get counterfeit sites removed. They should have takedown policies as well.

Most of the counterfeiting or impersonating in social networking sites can be handled with simple trademark infringement protections. The state of California also has a right of publicity statute that prevents the use of someone’s likeness to sell a product or service without his or her permission.

“If I’m a fan of a celebrity, and I want to find them on Facebook, how do I know which of the 15 are the real ones,” said Skale of Mintz Levin. “That’s why celebrities should be policing vigorously because they want to be connecting with fans.

“If they don’t police, they potentially weaken a vehicle to promote themselves.”

But, he said, they don’t want to alienate the people who are running fan sites that honor the celebrity. Those should be designated properly, however, so viewers know it’s a fan site and not written by the actual star.

The social networks also have become a way for current or former employees to sound off about their boss or employer.

Some companies may want to enact policies that prevent such unflattering online conversations, but they have to be careful, according to San Diego attorney Megan Winter.

“Companies especially interested in their image out there may be tempted to restrict all employee statements, but we’re finding the NLRB (National Labor Relations Board) is not in favor of that,” said Winter, a labor and employment associate with Fisher & Phillips.

In a recent case in Connecticut, the NLRB said such policies were too restrictive of an employee’s right to engage in concerted activity to complain about work-related issues. The case ended up settling.

Companies also have to be careful when setting up their own Facebook page or Twitter account, Winter said.

They should designate specific employees to be in charge of maintaining the account, usually employees from the marketing or business development departments.

“Have a policy that only those employees should be posting on that site so they maintain control over the message,” she said.

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