#OnlinePitfalls – Effective management of sports intellectual property rights on social media platforms - Part 2 of 3

Published 06 September 2013 By: Leonard Glickman, Michael Alvaro

Social Media Logos - Twitter, Instagram, Facebook and Google+

In part 2 of this Trademarks in Sports trilogy, Len Glickman and Michael Alvaro discuss the challenges and opportunities of leveraging and protecting brands and trademarks on social media platforms.

The explosion of social media has wholly changed the backdrop against which the business of sport operates. It creates an interactive playground where fans engage with star athletes and teams develop and market their trademarks and brands. Nevertheless, the social media craze requires that sports brands align their strategies around developing a strong online presence and enforcing their intellectual property rights ("IPRs"). This process creates both opportunities and challenges for IPR holders.

Teams, players, and organizations often create social media accounts which embody their trademarks and other IPRs. Along with positive exposure comes the task of monitoring IPRs on social media platforms. Individuals within an organization, who are charged with creating social media content, must ensure that they are properly using the organization's trademarks and that unauthorized uses outside of the organization are identified and addressed. A carefully crafted protection and enforcement strategy is necessary in the world of social media in order for an IPR holder to maintain the integrity and value of one of their most valuable assets, their brand.

 

The current social media landscape

The presence of social media is extensive: blogs, micro-blogs, and photograph and video file sharing sites are some of the most accessed web pages on the Internet. Facebook, Twitter, Youtube, Pinterest, Wordpress, and LinkedIn rank as some of the most popular social media sites by American users.Other popular platforms, including Instagram, Foursquare, and Vine, allow for user generated content to be shared across social media platforms. This amplifies public accessibility to information and increases the pace at which the information becomes available. The 2012 Summer Olympics in London attracted over 116,000 postings per minute on Twitter alone.The range of social media platforms creates a universe that appeals to individuals of any age or interest and provides an opporGB Twittertunity for sports organizations and athletes to engage with social media users.

Users are constantly interacting with IPR holders either through direct communication, or by sharing their posts. To provide an example, in 2012, Team Great Britain had the second most popular sports posting on Twitter. The account received over 67,000 re-tweets at the end of the Summer Olympics for a posting that highlighted the team's extraordinary medal haul (see right).3 This was only behind T.J. Lang's profane request for the National Football League ("NFL") to end the officiating labour dispute after a controversial touchdown call cost his Green Bay Packers a victory. Over 98,000 users re-tweeted the post and over 28,000 users marked it as a "favourite".4

 

Benefits of social media for intellectual property rights holders

Trademark visibility and exposure

Engaging with fans and consumers is at the heart of any organization's interest in social media. It provides an avenue through which trademarks can be used to create brand awareness and develop goodwill. By way of example, in 2011, Adidas launched the "Adidas All In" campaign. The campaign promoted three Adidas sub-brands (Adidas Sport Performance, Adidas Originals, and Adidas Sport Style) and had Lionel Messi, David Beckham, and Derrick Rose, among others, as brand ambassadors. The centrepiece ad of the campaign has amassed almost 3 million views on Adidas' Youtube channel. The campaign provides constant exposure for the primary Adidas trademarks on clothing and products, associates it with top athletes, and spans multiple social media platforms.

 

Monitoring information

A strong social media profile requires sports teams, athletes, and organizations to monitor discussions about their brands and trademarks. They can evaluate and assess positive and negative perspectives of their brand and competitor brands, and also determine whether users are potentially infringing their IPRs online. There are various player agencies, teams, and leagues that monitor social media. Specifically, the International Olympic Committee social media guidelines, which are applicable to athletes, coaches, officials, members of the media, and other accredited persons, restrict the posting of video or audio of Olympic events, and disallow use of Olympic trademarks on blogs or social media, among other provisions.5

The ability to frame the conversation is also critical; IPR holders can post specific photographs, comments, contests, or create hashtags. Almost every team has an associated hashtag, with the most popular belonging to the San Francisco Giants (#sfgiants) and the New York Yankees (#yankees) of MLB.6

 

Risks of social media for IPR owners

Alongside the positive aspects of social media are potential problems that IPR owners must be aware of, including username squatting, challenges in bringing forward infringement claims, inappropriate comments by athletes on their Twitter feeds, and inadvertent infringement by IPR holders of third party IPRs.

 

Username squatting and difficulty bringing suit

Most social media platforms require username registration. However, individuals can register a trademarked name or brand, as part of his or her user profile or user ID, prior to the true "owner". This initially was an issue with domain names and cybersquatting. In 2009, a California federal district court awarded over 800 domain names of well-known athletes and celebrities to Chris Bosh, now of the Miami Heat of the National Basketball Association ("NBA"). The defendant, Luis Zavala, had obtained the domain names through his company, Hoopology.com. He registered and used the domain "chrisbosh.com", among others, to generate traffic, and ultimately revenue to his company, without the knowledge or consent of Bosh.Bosh was granted default judgment under the Anticybersquatting Consumer Protection Act ("ACPA").Among those individuals whose names were also misappropriated were professional basketball players Amare Stoudemire, Carmelo Anthony, and Steve Nash, along with other athletes and celebrities such as Dale Earnhardt Jr. and the children of Britney Spears.9

While Bosh was successful in the domain name arena, the same issue in the social media context is more complex. In reality, it is unlikely that Bosh would succeed in a suit under the ACPA had Zavala registered social media usernames as opposed to domain names. The ACPA specifically protects second level domain names, while social media sites provide users with either a username or a subdomain name.10

The holder of the mark, therefore, would have to bring a traditional Lanham Act claim,11 which requires use of the mark in commerce, without the consent of the IPR holder.12 Canada allows an IPR holder to bring suit for use of a registered mark in a way that will likely depreciate the value of the attached goodwill.13 However, "use" of a brand on social media for trademark purposes is not necessarily "use" in the realm of commerce, and because of fair dealing and non-commercial use exceptions to uploading content, a plaintiff may struggle to enforce their IPRs.14

Twitter has policies in place allowing IPR holders to reclaim usernames from imposters,15 but is sometimes reluctant to delete imposter accounts. An individual can create an account "impersonating" another individual or organization as long as the profile states that the account has no affiliation with the trademark holder, or is clearly a parody.16 The problem is that the parody statement is often placed in the user's account "biography", which is not always in plain sight. Twitter and Facebook can "verify" accounts of certain famous athletes or brands to avoid this issue; however, not every IPR holder is eligible for verification.

Username squatting and the creation of parody accounts of athletes, coaches and general managers is popular practice in the sports industry. Often, if a parody or imposter account closely resembles an official account, "followers" may be inclined to associate statements of the parody account with the IPR holder. The number of imposter accounts and potential for problems is high. On Facebook alone, over 80 million accounts are fake.17

In early July 2013, a fake Instagram account of Jodie Meeks of the Los Angeles Lakers posted a picture of Dwight Howard portrayed as a Women's National Basketball Association Player. Various news articles were released under the belief that the account was official, and that the posting was in response to Howard's choice to sign with the Houston Rockets.18 A parody account of Dave Nonis (@GMDaveNonis), General Manager of the Toronto Maple Leafs, humours fans with comments relating to recent team transactions and activity. The parody Nonis recently tweeted that he would be bringing Sean Avery to Maple Leaf Captain Dion Phaneuf's wedding. The tweet was a reference to a comment made by Avery in 2009 regarding Elisha Cuthbert, which caused the NHL to suspend Avery. Cuthbert is now married to Phaneuf, but had formerly been in a relationship with Avery.19

Tony La Russa, former manager of the St. Louis Cardinals, brought suit against Twitter after an imposter, "@TonyLaRussa", inappropriately tweeted about the baseball team.20 La Russa attempted to hold Twitter contributorily liable under trademark laws for failing to recognize the account as an imposter.21 Similarly, Oneok, Inc. brought suit against Twitter for contributory trademark infringement when an imposter "@Oneok" account tweeted "official" statements about the company. Oneok claimed that Twitter failed to provide them with the contact information of the imposter and transfer control of the account.22 Both cases settled and the complaints were dismissed after Twitter removed or transferred the imposter accounts.23

The case of Tiffany Inc. v. eBay Inc.,24 while not a sports related case, illustrates the difficulty in succeeding in a trademark infringement suit against a service provider. Tiffany argued that eBay engaged in contributory trademark infringement whenever eBay users sold counterfeit Tiffany products. The Court did not find eBay liable because all listings infringing Tiffany's IPRs that were brought to eBay's attention were promptly removed by eBay. For listings that were not brought to eBay's attention, eBay was still safe, as it did not have specific knowledge of the infringement, even though they were aware that counterfeit Tiffany products were potentially being sold on their service.25

 

Inadvertent infringement of third party trademark rights

Nike I WillCompanies must take care to avoid inadvertent infringement of third party IPRs when posting on social media. Earlier this year, the performance apparel and sporting goods company, Under Armour, filed suit against Nike for infringement of the registered mark, "I Will". Under Armour vigorously promotes their brand on social media sites such as Facebook, Pinterest, and Twitter. The mark appears on gift cards, retail store displays, and a variety of other advertising materials and is promoted by numerous athletes including Olympic gold medal swimmer Michael Phelps and mixed martial artist Georges St-Pierre (see above). The mark was also used in conjunction with the Under Armour "Protect this House" and "Sweat Every Day" campaigns. Nike, on their Facebook page and Youtube channel, promoted campaigns using the words "I Will" in their slogans. "I Will" was often written in bold lettering on the Nike advertisements (see right).26 Nike recently filed a defence, claiming that the "I Will" trademark is not a famous mark and is too common to be afforded trademark protection.27

 

Faux pas comments

Inappropriate comments on social media can directly affect the value of a trademark and the reputation of an individual. In 2011, Rashard Mendenhall of the Pittsburgh Steelers made controversial statements on Twitter in relation to the death of Osama bin Laden, and subsequently had an endorsement contract terminated by Champion.28 Sponsors view every comment and every action on social media as impacting their brand and the value of their mark. Inappropriate comments on social media can directly impact the value of the goodwill attached to a trademark, which is largely why many endorsement contracts contain "morals clauses".

Another recent example occurred in July 2013, following the acquittal of George Zimmerman. Victor Cruz, wide receiver of the New York Giants, tweeted: "Thoroughly confused. Zimmerman doesn't last a year before the hood catches up to him". The tweet was promptly removed and an apology issued by Cruz, professing that his intention was never to create a tweet that would incite violence.29

 

Social media risk management

Despite the many pitfalls, IPR holders can take steps to protect themselves against the risks of social media. The first step is to ensure that the trademark is registered in relevant jurisdictions and on all relevant social media platforms.30

Leagues and teams should also introduce a policy and guidelines on how social media should be used by team employees and players. The NHL, NBA, and NFL have implemented restrictions on social media, including blackout periods on game days.31 The most important aspect of any social media policy is to have clear guidelines and firm goals relating to the policy's use.32

Organizations frequently implement social media monitoring positions. The New Jersey Devils of the NHL allow a select group of two-dozen fans to exclusively run their award winning social media platform called "Mission Control".33 The Devils have a Digital Command Center located in their arena, from where they manage all social media activity. They have become one of the most recognized users of social media in the NHL. Having only a select group of individuals focused on social media ensures that the group receives detailed social media education.34 Having only these individuals oversee the entire process and learn the terms of use of the various platforms allows a team or organization to maintain control over social media output.35 Teams may also consider hiring social media monitoring companies;36 however, a number of states, including Michigan, Washington and California, have banned this practice in relation to college players and coaches because of the associated privacy risks.37 The New Orleans Saints and New Orleans Pelicans recently publicized that they would also be creating a unified digital media department to provide daily content to fans.38

IPR holders should apply for account verification, if available. Facebook pages and Twitter profiles place a checkmark beside the profile name to confirm a verified account; however neither has an account verification application. Rather, the social media profile will reach out to worthy individuals.39 Twitter and Facebook both recommend linking the social media profile to an official website to assist in confirming account authenticity.40 If unofficial fan pages are identified, teams or athletes may want to consider approaching the creators to co-run the profile. This was successfully accomplished by Coca-Cola, who now co-author a Facebook fan page originally created by two fans of the brand.41

If enforcement is necessary, choosing an appropriate method is significant to ensure avoidance of negative social media repercussions.42 Since it may be difficult to bring suit, the most effective way to enforce social media may be through the complaint or trademark infringement reporting mechanisms provided by the social media platform.43 This is generally an efficient way of addressing infringements, as numerous individuals are employed by the social media providers to receive and address the complaints.44

Enforcement through litigation may also have a negative effect on the IPR holder. A non-sports related example occurred in 2008, when Scrabble brought suit against a Facebook game called "Scrabulous". Users of the application created a Facebook group to protest the lawsuit, with 55,000 members joining, and numerous members burning their Scrabble board game.45 Benefits and risks associated with lawsuits must be balanced to avoid unwanted negative publicity.

In a Quebec case, Lassonde Industries Inc., owner of the OASIS juice brand, brought a trademark infringement suit against Deborah Kudzman and her Olivia's Oasis line of beauty products. At trial, Lassonde's infringement claim was dismissed on the basis that there was a "glaring dissimilarity" between the two brands and no chance of confusion between consumers. The court held the action to be abusive and ordered Lassonde to pay $25,000 in punitive damages and $100,000 in legal costs.

On appeal, the Quebec Court of Appeal overturned the trial court's award of punitive damages and legal costs. News of the decision in this David v Goliath battle (Lassonde had more than $760 million of revenue in 2011 compared to Ms. Kudzman's $250,000) went viral on Twitter and Facebook and consumers threatened a boycott of Lassonde products. The social media outcry resulted in Lassonde settling the matter and compensating Ms. Kudzman for her legal expenses in the longstanding dispute. The moral of this story and the Scrabble story is that the courts of social media can sometimes be more powerful than the courts of law.

In part 3 of this Trademark in Sports trilogy, Len and Evan examine efforts by the International Olympic Committee and FIFA to implement event specific trademark legislation to protect event marks and sponsors and discourage ambush marketing.

 

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Author

Leonard Glickman

Leonard Glickman

Leonard Glickman is a partner in the firm’s Business Law Group where he provides transactional and intellectual property advice to clients in the entertainment, sports, fashion, food and retail industries.

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Michael Alvaro

Michael Alvaro

Michael Alvaro is a member of the 2013 summer student class at Cassels Brock.

Michael is a candidate for joint Canadian and American J.D. degrees at the University of Windsor Faculty of Law and the University of Detroit Mercy School of Law. He graduated with an Honours Bachelor of Arts in History and English from the University of Toronto.

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