Growing Social Media Changes the Face of Intellectual Property Disputes

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Avenues of social media such as YouTube and Facebook allow users to contribute to individual pages with self-generated content that may infringe upon intellectual property rights. Accordingly, as social media continues to thrive, so do potential trademark infringement disputes. In attempting to resolve these disputes, it is helpful to consider strategies that will lead to desirable outcomes for the involved parties.

First, it is important to establish contact with the other side. Initiate communication through the medium that houses the violation to get the other side’s attention. For example, if the violation involves an unauthorized Facebook page, send a message on Facebook regarding the page in question.

As you begin to establish contact, remember that the most aggressive approach is not always the most effective. The offending party will likely ignore a stern cease and desist letter, or alternatively, become defensive, making future interactions more difficult and strained. A cordial and even-toned letter is more likely to generate an effective response and a possible resolution. For example, it is ineffective to immediately send a letter demanding that the opposing party take down the infringing material under the Digital Millennium Copyright Act (“DMCA”). The DMCA criminalizes the improper use of trademark material and allows for parties to issue a “takedown notice” asking the violating party to remove the infringing material from the social medium. Nonetheless, communicating with the other party before taking strong action, allows for the opportunity to gather background information while sustaining the right to proceed with DMCA procedures later. In addition, gathering such information will prevent the possibility of liability for making false claims of infringement under 17 U.S.C. ยง 512(f).

However, if the other side is not responsive, then prepare and send a written letter explaining the underlying intellectual property dispute and requesting a telephone call for further discussion. It is often helpful to explain the dispute to the opposing party. For example, explaining that trademark owners have a duty to monitor usage of their intellectual property will prevent the violating party from feeling personally attacked.

In addition, do not underestimate the value of listening to the other side. Remaining open to the opposing position may lead to unexpected resolutions that are mutually beneficial. The famous example of how two Coca-Cola fans introduced the brand to Facebook is a striking example of how working together can produce a solution that benefits both parties.

After establishing contact with the other side, make sure to sustain communications. Long periods without any contact suggest disinterest with the dispute, lessening the significance of the dispute. However, excessive communication runs the risk of suggesting an aggressive position, which threatens resolution proceedings in its own right. Maintain regular communication to continue progressing forward towards a solution.

While it is essential to work to protect the intellectual property rights at issue, remember that the approach and strategy employed may make the difference between an amicable resolution and heated and lengthy litigation.

At the Law Offices of Salar Atrizadeh, we guide our clients through the transactional and litigation pitfalls using legal knowledge and experience. Please contact us today online or at (310) 694-3034 to set up a confidential consultation.