Bass, Berry & Sims attorney Paige Mills authored an article that was published by InsideCounsel about how using social media as a defense tactic in intellectual property (IP) infringement disputes can often backfire and create new problems for the alleged infringer. "When faced with a claim of intellectual property infringement, rather than litigate in court, which is expensive and slow, the alleged infringer or junior user tries to sway public opinion by using social media to paint the brand owner as a trademark bully," explains Paige. By doing so, the junior user hopes to force the brand owner to consider a quick and more favorable settlement than otherwise would have been likely.
Although several junior users have had success using these tactics to paint brand owners as bullies, including Chick-fil-A (for trying to stop the use of "Eat More Kale" for t-shirts by an artist in Vermont), the U.S. Olympic Committee (for trying to stop an online knitting community from holding the "Ravelympics") and Proctor & Gamble (for trying to stop the use of "Willa" for pre¬teen skin care products made by an entrepreneurial mom), this tactic can often be dangerous. In the article, Paige explains the downside to this approach and the various arguments the junior user may use in defending this strategy.
The full article "Using Social Media to Defend Against the Trademark Bully" was published by InsideCounsel.com on July 19, 2016, and is available online or in the PDF below.
This content is part of a series of articles focused on intellectual property issues published by InsideCounsel.com and authored by Bass, Berry & Sims attorneys. Click the links below to read other articles in the series.
- "Can You Hear Me Now? How to Make Your Trademark Slogan Heard Over the Crowd," InsideCounsel.com (March 23, 2016)
- "(Don’t) Go Phish: IP Considerations Amid the Rise of Business Email Scams," InsideCounsel.com (April 6, 2016)
- "How to Enforce Your IP Rights Without Waking the Internet," InsideCounsel.com (April 27, 2016)
- "You Successfully Registered Your Trademark. What's Next?," InsideCounsel.com (June 21, 2016)
- "Get Ahead of the Game: The Impact of the New EU Data Protection Law," InsideCounsel.com (August 2, 2016)