In Trademark Disputes, David has an Updated Slingshot to Combat Goliath: Social Media

Another consequence of our digital economy capturing national media attention is the utilization of social media and other internet tools to combat trademark disputes.

Corporate investment in branding, advertising and marketing has always been an important consideration for businesses (large and small) as they work to build their brand, name recognition and consumer base.  That effort now involves many different platforms with the advent of the internet and social media.  But as many companies are learning, when it comes to exercising trademark rights, the Web occasionally presents a double-edged sword.  Small business owners on the receiving end of cease-and-desist letters asserting trademark violations have begun to use the internet and social media as an inexpensive defense mechanism.  By letting their customers know of the threatened legal action, a growing number of small businesses, both on-line and bricks-to-mortar, are fighting back in a new way -- they combat the challenge not through an exchange of letters and in the courts, but rather by appealing directly to the court of public opinion.

A February 22, 2012 Wall Street Journal article:  "New Tool in Trademark Fights" noted that as the economy rebounds, trademark conflicts have escalated, with nearly 3,700 cases filed in federal courts during the twelve-month period ending in March 2011.  Those numbers are certain to rise when the latest annual update issues next month.

While IP law commentators are dismissive of the notion that large companies might think twice before launching cease-and-desist letters to small businesses that might be encroaching on their marks because of fear of being "shamed" on-line, the unusual risk bears consideration.  Pity the fool who remains unconscious of the speed with which on-line messaging can spread, and the unwanted "blowback" that can sometimes occur when public perception turns.  The unintended consequences that frequently flow from Web postings can be dramatic (and also can be difficult, if not impossible, to abate).

The "Barbra Streisand effect" needs to be considered when deciding whether to send a cease-and-desist letter.   In 2003, world-renowned singer-actress Barbra Streisand sent a cease-and-desist letter to a photographer who photographed Ms. Streisand's Pacific Coast estate as part of a large government-funded, government-sanctioned photo study of coastline erosion.  Not only did Streisand's lawsuit prove ultimately unsuccessful, but rather than desist from publishing the photo (one of 12,000 taken for the coastal erosion study), the photographer posted the Streisand cease-and-desist letter on-line (as well as the photograph of her estate).  While few knew of the photograph's existence, within one month of the on-line posting, over 400,000 people had viewed the photograph and the cease-and-desist letter had "gone viral."  So remarkable was the reaction to this posting that it spawned a new term — the phenomenon has been coined "the Barbra Streisand effect"  -- where an attempt to hide or remove a piece of information has the unintended consequence of publicizing the information more widely and potentially in an embarrassing way.

This risk of unintended consequences was demonstrated again famously in 2009 when surreptitious recordings of ESPN sportscaster Erin Andrews (taken by a stalker through hotel room peepholes when Ms. Andrews was in a state of undress) went viral.  Until Andrews and her counsel made the matter public, the videos (which already had been posted on the Web for several months prior with little notice) were not directly linked to Ms. Andrews.

While this kind of unintended amplification effect may be less intimidating to large companies needing to aggressively police their trademarks, it is nonetheless, good counsel to trademark owners (and their lawyers) to be aware of this latest twist to the Streisand effect, where small business owners, unable to afford expensive trademark litigation, opt to fight back with less traditional (and inexpensive) means.  Understanding how a smaller, more thinly-capitalized company might react is a more complicated calculus than assuming they will immediately fold.  So rather than launching a heavy-handed, threatening cease-and-desist letter, maybe the first shot across the bow is a telephone call (remember those?!?) before drafting and firing off the letter or email demanding cessation of allegedly infringing behavior.  If sending such a letter is necessary and appropriate, then letters should be written understanding that they may become public.  Carefully crafting such letters can avoid the negative consequences, embarrassment and potential damage that poorly written, heavy-handed letters might bring.

On the other hand, perhaps it also counsels for a more deliberate assessment of whether there really is allegedly infringing behavior in the first place.  As for those small businesses who may be pushing the bounds of the protected brands or marks of others (if they are even aware, or contemplated the possibility of, a potential allegation or violation) the use of social media as a new avant-garde approach to combat a trademark claim is by no means always an intelligent choice.  Indeed, this noveau approach may have its own unintended consequences of highlighting and multiplying the infringing conduct, only worsening the trademark violation.  The best counsel, of course, is for start-up enterprises to take a deliberate and informed approach to the creation of their business names, images, marks and branding, to become aware of others in that space or industry, and to assure they are conscious of any potential risks of infringement.

While the arsenal of potential responses to alleged trademark infringement has expanded, the legal standards are not so fluid.  The evaluation of likelihood of confusion and other traditional touchstones for assessing the risk of trademark infringement will remain the legal standards by which such allegations are measured, regardless of how the on-line public might express itself in response to an on-line attempt to shame a trademark owner seeking, appropriately or not, to assert its rights.